• SAP SE v. Teradata US, Inc.Instituted
  PTAB · Nov 17, 2021 · IPR2021-00855 · APJ Lynne E Pettigrew · IPR · Institution

  Instituted IPR of claims 1–7, 26–33, and 52–57 on all asserted grounds after finding a reasonable likelihood of prevailing on obviousness over Deshpande ’98 and Shim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’357 patent. Accordingly, we institute an inter partes review of claims 1–7, 26–33, and 52–57 of the ’357 patent on the grounds asserted in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “privy.”). Accordingly, we determine that this factor does not weigh either for or against exercising our discretion to deny institution in this case.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “would have been motivated to combine the teachings of Deshpande ’98 and Shim for a variety of reasons, most notably because Deshpande ’98 explicitly states that in-cache aggregation is the next logical step in multi-dimensional cache development, and Shim advantageously provides an implementation of that aggregation suggested by Deshpande ’98. Pet. 38. Thus, Petitioner contends, a person of ordinary skill in the art “would have been explicitly directed to look for opportunities to improve on Deshpande ’98’s system via in-cache aggregation,” and that direction would have naturally led to Shim. Id. at 39 (citing Ex. 1006 ¶ 98). Relying on Dr. Lehner’s testimony for support, Petitioner contends that “[a]ccessing data from cache memory is well known to be significantly faster than accessing data from a database,” “[i]n-cache aggregation [as taught in Shim] increases the amount of cached data that is eligible for answering a current query,” “[m]ore eligible cache data . . . results in more cache hits,” and “a greater number of cache hits results in faster average performance.” Id. at 39–40 (citing Ex. 1006 ¶¶ 99–100). Petitioner also notes that Shim cites to Deshpande ’98. Id. at 41 (citing Ex. 1003, 10). Finally, Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success in implementing the combination of Shim and Deshpande ’98 in view of Shim’s example descriptions and pseudocode algorithms. Id. (citing Ex. 1006 ¶ 102).” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “this stage of the proceeding. Pet. 16. Patent Owner agrees that most terms do not require construction, but disagrees as to the term “active cache,” recited in independent claims 1, 26, and 28. Prelim. Resp. 9. Patent Owner proposes construing that term to mean a “cache that can not only answer queries that match data stored in the cache, but can also answer queries that require aggregation or other computation of the data stored in the cache,” in accordance with the ’357 patent’s description of an “active cache.” Id. at 10; see Ex. 1001, 3:1–5. As Patent Owner points out, the Petition acknowledges that description of an “active cache” in the ’357 patent and appears to apply such a construction in its unpatentability analysis. Prelim. Resp. 9–10 (citing Pet. 35, 72). In view of the ’357 patent’s description of an “active cache,” at this stage of the proceeding we adopt the proposed construction of “active cache” as a “cache that can not only answer queries that match data stored in the cache, but can also answer queries that require aggregation or other computation of the data stored in the cache.” During trial, if appropriate, the parties may further address the construction of this term.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,763,357
• SAP SE v. Teradata US Inc.Instituted
  PTAB · Nov 15, 2021 · IPR2021-00863 · APJ Russell E Cass · IPR · Institution

  Instituted review of claims 1–3, 5–9, 11–13, 15, and 17–19 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “1. “Data Temperature” Petitioner argues that the term “data temperature” in claims 2–3, 8–9, and 12–13 “includes any value representing the number or frequency of accesses of particular data in storage, either in absolute or relative terms.” Pet. 11–12 (citing Ex. 1001, 8:44–47, 15:37–42, 18:24–27; Ex. 1003 ¶ 34). Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. Prelim. Resp. 17. At this stage of the proceeding, and based on the present record, we adopt Petitioner’s proposed construction of this term.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “At this stage of the proceeding, and based on the present record, we determine that Petitioner’s three proposed constructions of “persistent data temperature” are reasonable and, as discussed further below, that Petitioner has established a reasonable likelihood that “persistent data temperature” is disclosed or suggested by the prior art under any of the three constructions. For purposes of institution, we need not determine which of these three proposed constructions is correct; however, the parties may address this issue further if appropriate during the trial. 3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience.” Pet. 9 (citing Ex. 1003 ¶ 30). According to Petitioner, the person of ordinary skill would have been familiar with “DRAM cache, flash or other solid-state storage device[s], tape, optical media, and other well-known storage types,” “[c]oncepts of data ‘temperature,’” “[m]ulti-level storage tiers and managing data storage between volatile devices (e.g., cache) and non-volatile devices (e.g., disk) based on temperature,” and “[w]ell-known concepts such as volatile storage, non-volatile storage, and data persistency.” Id. at 9–10 (citing Ex. 1005, 2:23–38, 5:65–6:3, 21:33–43, 25:21–62; Ex. 1010 ¶¶ 3–4; Ex. 1004 ¶¶ 18– 52; Ex. 1001, 8:7–13). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 17. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’623 patent and the asserted prior art of record.” slip op. at 10

  • Expert testimonyPetitioner expert creditedOther

    “sufficiently established that Morris inherently discloses this element based on the evidence of record. Petitioner does not point to specific portions of Morris that expressly state that storage information associated with storage of data in the disk drive (such as temperature values 420 in Figure 4) are provided to the cache, or that indicate that this step is necessarily present in Morris’s system. For example, it appears that there might be other places for storing temperature information or other ways of providing that information to the cache. Additionally, Dr. Long does not explain why one of ordinary skill would have “necessarily” understood that Morris’s process would have checked data HEADER 410 in Figure 4 to see if it contained a temperature value, and then used this temperature value as part of the Figure 2 steps, rather than obtaining the temperature value from another source. However, we determine that, for purposes of institution, Petitioner has sufficiently shown that element 1.3 would have been obvious over Morris. Petitioner’s obvious argument is supported by Dr. Long’s testimony that, when using data temperature to determine whether data should be stored in the cache (as reflected in Figure 2), it would have been obvious to “check[] the data ‘HEADER’ (410 in FIG. 4) to see if it contained a ‘temperature value’ (420 in FIG. 4), and then us[e] this temperature value as part of the FIG. 2 steps.” Ex. 1003 ¶ 51. As Dr. Long explains, data objects 400 with headers 410 and temperature values 420 in Figure 4 are “stored on a disk drive.” Id. ¶ 46. Dr. Long further testifies that one of ordinary skill “would have recognized the expressly disclosed ‘temperature value’ variable” 420 stored on the disk “as the best measure of a given data object’s temperature and the first place to check for whether a disk-stored data object had an associated temperature.” Id. “Given the express disclosure of this [temperature value] variable” 420, Dr. Long continues, it “would have been a natural choice” for the person of ordinary skill in the art to use it “when evaluating whether to cache data being read from the disk,” and one of ordinary skill would have had a reasonable expectation of success in doing so. Id. Contrary to Patent Owner’s argument, this testimony provides logical reasons why one of ordinary skill would have provided the temperature value from the disk to the cache, and is not merely “conclusory.” We reach a similar determination as to Petitioner’s obviousness argument based on the process for determining whether data should be deleted from the cache in Morris’s Figure 3. Petitioner’s argument is supported by Morris’s statement that “[t]he data temperature is stored with the data object in the cache,” and Dr. Long’s testimony that it would have been obvious to have “this data temperature in the cache originate[] from the ‘temperature value’ retrieved from the disk when originally storing the data in the cache.” Ex. 1004 ¶ 53; Ex. 1003 ¶ 54. Dr. Long further explains that “it would have been obvious to implement the Morris system in this way because the temperature maintained on the disk was the most natural source for the value of the data temperature stored in the cache,” and one of ordinary skill “would have used that approach with a reasonable expectation of success.” Ex. 1003 ¶ 54. “In fact,” according to Dr. Long, “given that the temperature value was persistently stored with the data on the disk,” the disk “was the only logical source for a reliable temperature value when deciding whether to load the data into the cache,” because “[a]ny other source would have risked being inaccurate or out of date and would have needlessly and redundantly stored the temperature in another location.” Id. This testimony provides logical reasons why one of ordinary skill would have provided the temperature value on the disk to the cache.” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,720,623
• SAP SE v. Teradata US Inc.Instituted
  PTAB · Nov 15, 2021 · IPR2021-00861 · APJ Russell E Cass · IPR · Institution

  The Board instituted IPR on claims 1–16 and all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Based on the present record, we do not find Patent Owner’s proposed construction supported by the intrinsic evidence. The ordinary meaning of “manage the storage of data in the volatile storage” does not require limiting the number of copies of the data in the volatile storage, and Patent Owner does not argue to the contrary. Turning to the language of the other claims, we note that claim 5, which depends from claim 1, specifically includes additional language stating that the data is stored “only in one of two portions of the volatile storage,” but claim 1 does not include such language. The use of this additional limitation in dependent claim 5 suggests that the inventors did not intend it to be included within claim 1’s broader language reciting “manag[ing] the storage of data in the volatile storage.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315–16 (Fed. Cir. 2005) (en banc) (“the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim”). Turning to the ’923 patent specification, the portions of the specification Patent Owner relies on appear to discuss a preferred embodiment of the invention, rather than limiting the invention itself. The portions of columns 14 and 15 upon which Patent Owner relies discuss Figure 3 which, the specification explains, “depicts a volatile storage 300 that uses a persistent temperature-based storage management technique as well as a conventional storage management technique in accordance with one embodiment.” Ex. 1001, 14:48–51 (emphasis added); see id. at 5:5–8 (also describing Figure 3 as being “in accordance with one embodiment” of the invention). Interpreting claim 1 to require maintaining only a single copy of a data portion in either the first portion or second portion, where that language does not exist in claim 1, would be tantamount to reading a limitation from a preferred embodiment into the claims, which would be improper. See Philips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Patent Owner does not identify any portions of the specification suggesting that limiting the number of copies of the data in the volatile storage is a necessary part of the invention, or that the inventors intended to expressly or impliedly define “manage the storage of data in the volatile storage” to include this requirement. Consequently, at this stage of the proceeding, we do not adopt Patent Owner’s proposed construction requiring that “manag[ing] the storage of data in the volatile storage” requires “coordinating placement of data into and out of the volatile storage so as to limit the number of copies of the data in the volatile storage.” The parties may further address the meaning of this claim phrase during the trial, if appropriate.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working 2 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience as it typically involves at least two years of additional study focused exclusively on computer science, as well as a thesis or project spanning several terms to implement a substantial project.” Pet. 12–13 (citing Ex. 1003 ¶ 31). According to Petitioner, the person of ordinary skill would have “understood the advantages of partitioning a volatile memory into multiple different sections (e.g., buffer pools) and applying multiple different storage management (e.g., cache replacement) policies to those different sections, and known how to implement such designs.” Id. at 13 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 14. For purposes of institution, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’923 patent and the asserted prior art of record.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “At this stage of the proceeding, Petitioner has made a sufficient showing that Lee discloses this claim element. Paragraph 17 of Lee discloses the use of a temperature-based storage management technique and a non-temperature-based storage management technique (the LRU replacement policy), and that both “may be used to manage a cache.” Ex. 1004 ¶ 17. Based on the present record, Petitioner sufficiently shows that Lee’s disclosure of using these techniques “to manage a cache” involves “manag[ing] the storage of data in” the cache, because both techniques operate in order to control what data is stored in the cache. We do not find Patent Owner’s argument persuasive because it is based on Patent Owner’s proposed construction of “manag[ing] the storage of data in the volatile storage” to require “limit[ing] the number of copies of the data in the volatile storage,” which we do not adopt. See § II.A.2, supra. Consequently, we determine that, on the record before us, Petitioner’s cited evidence sufficiently supports its contentions regarding this limitation.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,851,923
• Autostore System Inc. v. Ocado Innovation LimitedInstitution denied
  PTAB · Oct 8, 2021 · IPR2021-00798 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “storage locations, but that this grid is defined by a structural framework. Ex. 1001, 14:5–6. Thus, we agree with Patent Owner that the language of claims 1 and 23 strongly suggests that the structural framework defines the grid of storage locations, and not merely that the structural framework provides open areas within which storage containers could be arranged in a grid-like pattern.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “After considering the parties’ arguments and evidence, for the reasons set forth below, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As discussed in Section II.A.2 above, we construe “a structural framework defining a grid of storage locations,” as recited in claims 1 and 23, to require that a “structural framework” define the grid of storage locations, as opposed to these locations being defined merely by the orientation or location of stacked containers. Petitioner identifies no Accordingly, we are not persuaded that Petitioner demonstrates a reasonable likelihood that independent claims 1 and 23 are anticipated by Lert.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “would have been obvious over Lert. Pet. 21–53. Petitioner’s obviousness arguments with respect to these claims do not resolve the issues noted above with respect to independent claims 1, 13, and 23. In particular, Petitioner provides no persuasive argument that one of ordinary skill in the art would have modified Lert to have a structural framework that defines the storage locations or to have delivery containers stored within storage containers and delivered to picking workstations. Accordingly, Petitioner has not shown a reasonable likelihood that claims 1–8, 13–20, and 23 would have been obvious over the disclosures of Lert.” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,796,080
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515
• Hulu, LLC / Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00647 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–5 and 12 were not shown unpatentable over Pyle and Marusi or Lewis and Marusi because each ground failed to establish a required claim limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 7–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’720 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “‘[t]he plain language of the claim clearly indicates only a single [list] is used’ to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 15 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’720 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’720 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[d], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[c] and discussed above. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Fundamentally, Petitioner fails to provide any reason in the Petition as to why one of ordinary skill in the art would have found it obvious to retrieve a list of assets based on Lewis. Instead of providing a reason as to why retrieving a list of assets would have been obvious, Petitioner points to a result achieved by Lewis—generating a dynamic manifest file that contains a list of URLs to container files containing content. In the context before us, pointing to a result to allege that a step in a process leading to the result would have been obvious is insufficient without also providing a reason with rational underpinning. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Here, Petitioner relies upon the result of Lewis’s process—generating a dynamic manifest file containing a list of URLs—as the only basis as to why a previous step in the claim would have been obvious without providing any reason why the achieved result means the previous step would have been obvious. Further, although Petitioner cites to Dr. Reader’s declaration (Ex. 1003 ¶ 233), Dr. Reader’s testimony does not provide any further explanation or reason as to why this aspect of limitation 1[c] would have been obvious.11 Rather, the Petition’s 11 To the extent Petitioner relies upon its discussion of the combined teachings of Lewis and Marusi as set forth at the beginning of Petitioner’s discussion of this ground (see Pet. 54–57), that portion of the Petition does not provide an additional reason why retrieving a list of assets as recited in discussion appears to be exactly the same as Dr. Reader’s testimony on this point. Thus, Petitioner’s argument that it would have been obvious to retrieve a list of assets in light of Lewis is not supported sufficiently on the record before us.” slip op. at 46

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDecided for patent owner

    “In its Reply, Petitioner contends that “[c]ontrary to [Patent Owner’s] claim that Lewis does not teach a list and that there was no reason to modify Lewis’ system ([PO Resp.] 30–32), the Petition and Dr. Reader clearly explain why lists and database operations would have been obvious to a [person of ordinary skill in the art].” Pet. Reply 19 (citing Pet. 62–63; Ex. 1003 ¶¶ 237–239). Petitioner reiterates the position asserted in the Petition—that it would have been obvious to retrieve a list of assets because Lewis teaches that a dynamic manifest file contains a list of URLs to container files containing content. Id. Petitioner also contends that “Lewis itself explains that it was well-known that manifest files contain a list of media assets to be played.” Id. (citing Ex. 1006 ¶ 20 (noting that “Manifest Resp. 37–38 (citing Ex. 2010 ¶ 79). In its Reply, Petitioner responds to Patent Owner’s assertion by pointing to stored video segments 375 as assets, not just processed video segments 315a–c. Pet. Reply 19 (citing Ex. 1003 ¶¶ 230–231). In the Petition, Petitioner did not assert or rely upon stored video segments 375 as teaching the recited “assets” or “list of assets”; rather, Petitioner relied upon processed video segments 315a–c. See Pet. 62. Petitioner’s attempt to assert, for the first time, in its Reply that processed video segments 375 also teach the recited “assets” is an improper reply argument. See, e.g., Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74, available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Generally, a reply . . . may only respond to arguments raised in the preceding brief. . . . ‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability . . . of an original . . . claim . . . .”); see PO Sur-reply 16–18 (discussing Petitioner’s new argument). Petitioner’s attempt to (1) rely upon stored video segments 375 to teach the recited assets and (2) assert that Lewis teaches, as opposed to rendering obvious, retrieving a list of assets are both new arguments that are inappropriately raised for the first time in Petitioner’s Reply and, therefore, we disregard them. file 257 includes entries 258a through 258f”), Fig. 2 (noting that Figure 2 shows entries pointing to video segments)).” slip op. at 45

  Patent outcomesUS 9,270,720 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,270,720
• Netflix Inc. / Hulu, LLC v. Divx, LLCNo claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1, 5, 8, 9, 13–15, 18, and 21–23 were not shown unpatentable because Kaku was not established as analogous art.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNot shown unpatentableNon analogous artNot shown unpatentable

    “A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subject matter, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. In re Bigio, 381 F.3d at 1325. The field of endeavor test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention. Bigio, 381 F.3d at 1325–27. A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Clay, 966 F.2d at 659.” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner proposes constructions for three claim terms, including the term “trick play functionality.” Pet. 22–23. Patent Owner argues for construction of the related claim term “the first and second indexes enabling trick play functionality.” See PO Resp. 41–49. We determine that it is not necessary to provide an express interpretation of any of those claim terms because construction of the proposed terms does not impact our determination that Petitioner has not shown that one of the prior art references is analogous to the claimed invention. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9

  • ExcludeMotion to exclude, deniedNot reached

    “Under the particular circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, we have determined that Petitioner has not demonstrated by a preponderance that Kaku is analogous prior art to the ’792 patent and do not reach Petitioner’s arguments on the motivation to combine Kaku with Zetts or Seo. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 34

  • Strike new argumentNew argument disregardedGranted

    “As discussed above (supra § III.E.4.a), Petitioner’s papers fail to link Dr. Reader’s declaration testimony on the level of ordinary skill in the art to the analogous art inquiry and fail to identify a field of endeavor for the ’792 patent. We therefore agree with Patent Owner that Petitioner’s demonstrative slide 53 presents improper new arguments that have not been previously made. See Paper 38, 2 (“The parties may only rely upon evidence that has been previously submitted in the proceeding and may only present arguments that have been previously made in the submitted papers. No new evidence or arguments may be presented at the hearing.”), 5 (“Demonstratives are not a mechanism for making new arguments.”). We therefore sustain Patent Owner’s objections. We note, however, that demonstratives are not evidence. See id. at 5 (“Demonstrative exhibits used at the hearing are not evidence, nor will they be relied upon as evidence. Rather, demonstratives are visual aids to a party’s oral presentation regarding arguments and evidence previously presented and discussed in the papers”); CTPG 84 (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). In this Final Written Decision, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record, not on the demonstratives.” slip op. at 35

  Patent outcomesUS 8,472,792 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,792
• Platform Science, Inc. v. Omnitracs, LLCRehearing granted
  PTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Aug 13, 2021 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–3, 5, 6, 10–12, 14, and 15 were not shown unpatentable under the three § 103 grounds because the combinations did not establish the encrypted-frame limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” Pet. 14 (citing Ex. 1003 ¶¶ 65–67). Patent Owner does not address, expressly, the level of ordinary skill in the art in its Response. See generally PO Resp. Dr. Nielson, however, applies Petitioner’s proposed level of ordinary skill in his Declaration (Ex. 2009 ¶ 34) and does not indicate that he does otherwise in his Second Declaration (see generally Ex. 2024). In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that “the challenged claims are invalid under their plain and ordinary (‘P&O’) meaning.” Pet. 15 (citing Ex. 1003 ¶ 99). In the Preliminary Response, Patent Owner raised the meaning of two claim terms—“user encryption key” and “content encryption key.” Prelim. Resp. 40–44, 46–48. In the Institution Decision, we addressed each term to the extent necessary to resolve the controversy presented, and we found, in each instance, that Petitioner’s mapping of the prior art to these limitations of the claims was sufficient on the record presented at the time. See Inst. Dec. 12– 15 (discussing the construction of the terms), 22–28 (discussing limitation 1[a], which includes “user encryption key”), 28–31 (discussing limitation 1[b], which includes “content encryption key”). In particular, on the preliminary record, we found that “Chen’s master key Kw teaches the recited ‘user encryption key’” (id. at 28) and “Chen’s work key Kw teaches the recited ‘content encryption key’” (id. at 30). In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” Dec. 12–15. Additionally, we need not construe other claim terms to resolve the present controversy before us.6” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “techniques, and standards in the industry regarding the same in an attempt to explain how one of ordinary skill in the art would have understood Chen at the time of the ’920 patent. As discussed herein, the weight of the evidence is very closely balanced. Fundamentally, however, it is Petitioner’s burden to establish how one of ordinary skill in the art would have understood Chen and the combined teachings of Chen and Grab-333. And, as we find herein based on the full record developed during trial, Petitioner does not establish that the combined teachings of Chen and Grab-333 would have met limitation 1[c]. Below, we walk through the parties’ arguments and evidence, starting with the Petition, and then we discuss our findings regarding Chen in light of the full trial record.” slip op. at 24

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “To begin, 37 C.F.R. § 42.23(b) specifies, in relevant part, that “[a] sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.” 37 C.F.R. § 42.23(b). The Consolidated TPG repeats the above-quoted language of the rule and also explains that [s]ur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony. As noted above, a sur-reply may address the institution decision if necessary to respond to the petitioner’s reply. This sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony. Consolidated TPG at 73–74. Accordingly, Rule 42.23(b) provides a blanket prohibition on a patentee filing exhibits with a sur-reply, as Patent Owner has done here.” slip op. at 54

  Patent outcomesUS 9,184,920 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,920
• Facebook, Inc. v. Thaddeus GabaraInstitution denied
  PTAB · May 25, 2021 · IPR2021-00201 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable; the cited combinations did not teach or suggest a stationary map.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’698 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “through 14, Petitioner has not shown sufficiently7 that the map shown Figure 13b is stationary, as recited in claim 1. Petitioner does not rely upon Roussos as teaching the “stationary map” recited in claim 1 or assert that one of ordinary skill in the art would have modified Kim in light of Roussos to satisfy this claim limitation. See, e.g., Pet. 27–30 (relying upon Kim); see also id. at 26 (discussing the proposed combination as including Roussos’s coordinate system). Accordingly, Petitioner has not shown sufficiently that the combination of Kim and Roussos teaches or suggests a stationary map as recited in claim 1.” slip op. at 23

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). At this stage of the proceeding, the parties agree that the claim terms should be given their plain and ordinary meaning. Pet. 13; Prelim. Resp. 28. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,836,698

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.