- Western Digital Technologies, Inc. v. Longitude Licensing Ltd.All claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01286 · APJ David C Mckone · IPR · Final written decision
Claim 4 is unpatentable as obvious over Itoh and over Itoh in combination with Muljono.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have a bachelor’s or the equivalent degree in electrical or computer engineering or a related field, and 2–3 years of professional experience relating to integrated circuit design.” Pet. 3 (citing Ex. 1003 ¶ 13). Petitioner further contends that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for [a person of ordinary skill in the art].” Id. Petitioner states that it “does not imply that a person having an extraordinary level of skill should be regarded as [a person of ordinary skill in the art].” Id. at 3–4.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“depends, recites “[a]n output buffer circuit for outputting data in the form of an input pulse train at a predetermined output impedance and slew rate.” Because Patent Owner contends that the asserted prior art fails to teach outputting data “at a predetermined output impedance” as recited in the preamble (PO Resp. 16), we first determine whether the term “at a predetermined output impedance” is limiting. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation omitted). “Further, when reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation.” Id. “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (citation omitted).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”)). “Predetermine” simply means “to determine beforehand.” Predetermine, MERRIAM-WEBSTER DICTIONARY, available at https://www.merriam-webster.com/dictionary/predetermine. As Petitioner observes, we typically understand “a” to mean “one or more.” See KCJ, 223 F.3d at 1356. Thus, the ordinary meaning of “a predetermined output impedance” is one or more output impedances determined in advance. Patent Owner does not point to any claim language to support its argument that a predetermined output impedance is limited to a single output impedance. As explained in more detail below, the specification does not redefine “a predetermined output impedance” to mean a single output impedance or exclude or disavow multiple output impedances from among those that can be determined in advance.” slip op. at 18
- Prior constructionPrior construction adoptedDecided for petitioner
“second n-channel MOS transistor have a smaller device size with a smaller gate width than said first p-channel MOS transistor and said first n-channel MOS transistor.” In the Institution Decision, we preliminarily construed “smaller device size” and “smaller gate width” to be synonymous, rather than two separate requirements. Dec. 11–13. Patent Owner acknowledges the understanding set forth in the Board’s Institution Decision, and accepts that the proper comparison is between the combined device size of the P2, N2 pair with the device size of the combined device size of the P1, N1 pair. In other words, if the device size of P2 is less than the device size of P1, and the device size of N2 is less than the device size of N1, then the size requirements of claim 4 are satisfied. PO Resp. 16. Thus, it appears that Patent Owner does not contest our construction or propose an alternative. On the complete record, and for the reasons set forth in our Institution Decision, we maintain our construction of “smaller device size” and “smaller gate width” as synonymous.” slip op. at 22
Patent outcomesUS RE43,539 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham - PTAB · Jan 28, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–3, 5, 7–13, 15–19, and 23–25 based on the asserted grounds; the Board found a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’448 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’448 patent was filed after March 16, 2013, the effective date of the relevant amendment, the AIA versions of §§ 102 and 103 apply. communication technologies.” Pet. 5 (citing Ex. 1003 ¶ 13–15). For purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner contends that “no claim elements need a formal construction for purposes of resolving controversies in this proceeding.” Pet. 5. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Zhang, in light of Zill’s suggestion, to generate wakeup packets at Zhang’s server 404 rather than at end user 406. Pet. 36 (citing Ex. 1004 ¶¶ 61, 62; Ex. 1003 ¶¶ 112–119). Petitioner contends that doing so would have allowed Zhang to accommodate more types of requesting computers, including legacy hosts that might not have the software or hardware to securely process Zhang’s query replies and generate wakeup messages. Id. at 36–37 (citing Ex. 1004 ¶¶ 61, 62, 64, 65, 77; Ex. 1005 ¶ 111; Ex. 1003 ¶ 113). Petitioner also argues that generating the wakeup messages at the server would improve security, as servers would have been able to operate better security features. Id. at 37 (citing Ex. 1004 ¶ 36; Ex. 1005 ¶¶ 40, 111; Ex. 1003 ¶¶ 114–115). Petitioner further argues that generating wakeup messages at the server would have reduced the quantity of messages exchanged containing sensitive information, reducing the risk of interception by a malicious actor. Id. at 37–38 (citing Ex. 1003 ¶ 116). Petitioner further argues that it would have been more efficient to generate the wakeup message at the server, as Zill suggests, as the server can include optimized hardware. Id. at 38 (citing Ex. 1003 ¶ 117). According to Petitioner, the combination would only require combining familiar elements according to known methods, to yield predictable results, and that a skilled artisan would have a reasonable expectation of success doing so. Id. at 38–39 (citing Ex. 1003 ¶¶ 118–119). Patent Owner does not yet contest these allegations. Upon consideration of Petitioner’s evidence, including Mr. Kardashov’s testimony, we are persuaded that Petitioner shows sufficiently that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Zhang and Zill.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - PTAB · Jan 28, 2025 · IPR2024-01192 · APJ Michael J Strauss · IPR · Institution
The Board instituted inter partes review of claims 1–10 and 16 on all asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’916 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–10 and 16 of the ’916 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the ’916 patent “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 12–14). Patent Owner has not provided any proposed qualifications for a person of ordinary skill in the art. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’916 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 9 (citing Ex. 1003, ¶¶ 43–44; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011), Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. § 42.100). Patent Owner presents no proposed claim constructions at this time. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“First, Petitioner contends, with the Kardashov Declaration providing supporting testimony, that a [person of ordinary skill in the art] would have understood that implementing [the] Lorex Manual’s system to include a conventional “network server” that facilitates hole-punching (as suggested by Kim941) would provide an improved and advantageous approach for establishing a P2P connection between the DVR and remote client device when the DVR is located behind a firewall and/or network address translator (NAT) that would otherwise prevent the remote client device from initiating a P2P connection with the DVR (e.g., due to common security policies of firewalls/NATs that block unsolicited inbound communications from devices outside of the DVR’s local network). Id. at 15 (citing Ex. 1003 ¶ 74; Ex. 1008 ¶ 18–19, 121).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,916 - Western Digital Technologies, Inc. v. Longitude Licensing Ltd.All claims unpatentablePTAB · Jan 15, 2025 · IPR2023-01200 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 2, 6, 7, 10, 11, 14–19, and 25–27 are unpatentable as obvious over Lee alone or Lee and JEDEC.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art would have had a working knowledge of the memory system art that is pertinent to the ’369 patent, including memory systems and memory controllers. A [person of ordinary skill in the art] would have had a bachelor’s degree in electrical engineering, or an equivalent, and approximately two years of professional experience relating to field of memory systems. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not challenge Petitioner’s description of someone of ordinary skill. PO Resp. 12; see also Ex. 2003 ¶ 21. The parties agree on a description of a person of ordinary skill in the art, and this description appears consistent with the subject matter of the ’369 patent and the asserted prior art. We, therefore, continue to use the same description that we adopted in our Institution Decision, as it is consistent with the challenged patent and the asserted art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill). C. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Petitioner contends that no claim terms require express construction. Pet. 15 (citing Ex. 1003). Patent Owner agrees that no express construction of any claim term is necessary. PO Resp. 12. We agree with the parties that no claim terms require express construction. 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) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy). We therefore use the ordinary and customary meaning of the claim terms as would be understood by a person of ordinary skill in the art at the time of the claimed invention. D. Prior Art References” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here, Petitioner expressly identifies in the Petition a specific reason to combine the Lee and JEDEC references: higher bandwidth capabilities. Pet. 60–61. Petitioner explains that “[s]ynchronous memory—using a clock signal for sampling information—provides the benefit of higher bandwidth capabilities.” Pet. 60–61. Petitioner cites to page 5 of the Prince reference (Ex. 1006) to support this assertion. Id. at 61. Prince is a textbook entitled “High Performance Memories—New architecture DRAMs and SRAMs evolution and function.” Ex. 1006, cover. Page 5 of Prince is in Section 1.2 titled “New Memory Architectures to Improve Bandwidth.” Id. at 5. Page 5 of Prince states: New interface architectures are also being used to improve the bandwidth of the RAMs. The most common is the synchronous interface. Making a memory synchronous puts it under the control of the system clock. “Wait states”, during which the processor must wait for the output data from the RAM, can be reduced or eliminated. With a synchronous RAM the input addresses can be latched into the memory, freeing the processor to perform other tasks until the data is available after a known number of cycles. While the intrinsic speed of the RAM does not increase by the addition of a synchronous interface, the effective speed in the system increases since the processor no longer waits for the RAM to operate. Id. (emphasis added).” slip op. at 60
Patent outcomesUS 7,697,369 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,697,369 - Netflix, Inc. v. VL Collective IP LLCAll claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00891 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–22 are unpatentable, including as anticipated by Comps; the majority finds Comps’s Tracks 1 and 3 example meets the claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and supported by the testimony of Dr. Bederson. See Ex. 1003 ¶¶ 28–30. Dr. Goodrich testifies that “Dr. Bederson and Petitioner offer a slightly different definition of the POSITA, which is similar to my definition” and that his “opinions would not change were” he “to adopt the definition of POSITA offered by Petitioner.” Ex. 2011 ¶ 54. Accordingly, we adopt Petitioner’s proposal, which is materially the same as Patent Owner’s proposal for purposes of this Final Written Decision, as Dr. Goodrich testifies. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“1. content-related data segments Claim 1 recites “content-related . . . data segments.” Patent Owner construes this phrase as “segments of content data that have a syntactical meaning within the respective data file.” PO Resp. 12. As Patent Owner notes, the ’794 patent specification states that “[t]he term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Id. at 12–13 (quoting Ex. 1001, 4:9–22); Ex. 1001, 4:9–22 (second emphasis added). The ’794 specification supports Patent Owner’s position that the emphasized sentence essentially defines the term “content-related . . . data segments.” PO Resp. 13–15. However, as Petitioner argues, nothing in the sentence restricts “content-related data segments” to “content” only, for example, “sampled audio,” instead of also including information relating to the content. See Reply 3 (arguing that “the phrase ‘content data’ appears nowhere in the ’794 patent and was not part of the ‘inventors’ express lexicography’ for ‘content-related . . . data segments,’ as P[atent] O[wner] incorrectly contends”). Petitioner points out that Patent Owner’s reliance on the specification refers to “content-related . . . data segments” and “contentbased data segments.” Id. (emphasis by Petitioner) (quoting Ex. 1001, 4:9– 22). Petitioner also contends that the specification refers to describing data, contradicting Patent Owner’s position that the data segments must include content. Id. at 7 (“[A]ccording to at least one embodiment of the invention, media data, in particular video or audio data, and/or metadata, in particular encoded according to the XML standard, are described by way of the first and/or second data file.”) (emphasis by Petitioner) (quoting Ex. 1001, 3:4– 10). Moreover, as Petitioner argues, “the word ‘data’ should be given its plain and ordinary meaning,” so that “even if the [unrecited] phrase ‘content data’ is included in the Board’s construction . . . . the term ‘content data’ would include any information relating to the content.” Id. at 4. As noted above, both parties point to the specification’s definition of “content-related . . . data segments”: “The term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Ex. 1001, 4:9–22. This passage indicates that data segments are content-related or include content, such as a “speech signal,” and that these segments “have a syntactical meaning” with respect to the source of the signal, such as a speaker. See Inst. Dec. 9 & n.8, 17 (observing that “[t]he term ‘content-related’ is somewhat subjective because there is not much guidance in the ’794 patent specification as to what a ‘syntactical meaning’ encompasses”). In context, one plain meaning of the term “syntax” is “[t]he way in which words are put together to form phrases and sentences.” Ex. 3002 (THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 1305 (1976)). However, as indicated above, the ’794 patent refers to video images and audio sounds with a syntactical meaning, showing that it embraces broader subject matter than the plain meaning of “syntax.” Patent Owner’s argument that the ’794 patent refers to “content-” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“segments.’”). Comps supports Petitioner and states that “two syllables represented by the fields TEXT[1] and TEXT[2] must be presented to the user.” Ex. 1004, 3:39–40 (emphasis added). Accordingly, Petitioner persuasively maps each of these text fields to an “associated one of the content-related first data segments [Nf3 and Nf4, respectively] on the basis of an assignment rule [the SYNCH process],” as claim 1 requires.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“1. Claim 6 Petitioner identifies particular passages in Comps and Wan as teaching or suggesting the subject matter additionally recited in claim 6 and provides reasons for combining the teachings. Pet. 50–51. The record supports Petitioner’s showing. See id. Patent Owner does not provide separate arguments for claim 6. See generally PO Resp. Based on the full record, we determine that Petitioner shows by a preponderance of evidence that Comps and Wan render claim 6 unpatentable. 2. Claims 7, 8, and 22 Claim 7 recites “[t]he method as claimed in claim 1, further” slip op. at 68
Patent outcomesUS 8,605,794 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - PTAB · Nov 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Remand
On remand, the Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Sturman and Ho.
RulingsRemand decision- RemandOther
“(“Decision Denying Institution” or “DDI”). Petitioner filed a request for Director Review and the Director vacated and remanded our Decision Denying Institution. Paper 11 (Petitioner’s Request for Director Review); Paper 12 (“Remand Dec.” or “Remand Decision”). Specifically, the Director directed that we: shall issue a new decision on institution resolving the claim construction of “a non-promotional background object.” Consistent with Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005), the Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary. See, e.g., Samsung Elecs. Co., Ltd. v. Slyde Analytics, LLC, IPR2024-00040, Paper 14 at 7–8 (Vidal Aug. 2, 2024) (discussing the Phillips framework). The Board shall consider all remaining necessary issues, and determine whether to institute trial consistent with this decision. Id. at 7–8 (footnote omitted).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Sturman and Ho. 4. Analysis of Claims 2–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’089 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 26–36. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“draws a distinction between foreground and background objects. Specifically, the prosecution history makes it clear that foreground objects are “in the forefront of the game play as primary objects to be manipulated or used during game play” and that background objects are “outside the primary focus of game play and as unexpectedly interactive components.” Ex. 1002, 85. However, whether an object is “outside the primary focus of game play and as unexpectedly interactive components” is based solely on the subjective perspective of the user. That is, what one user may consider a primary focus or expected object, another might consider outside the primary focus and unexpected. As the Director made clear in the Remand Decision, it is “improper[]” to have a claim construction “based on the subjective perspective of a user.” Remand Dec. 7; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). Accordingly, we cannot and do not adopt that as our construction of the term background. Not finding a construction of “background” based on the intrinsic evidence, we turn to the extrinsic evidence. See Remand Dec. 7 (“[T]he Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary.” (emphasis added)). Specifically, as part of the Decision Denying Institution, we considered various dictionary definitions of the word “background.” According to those definitions, “background” refers to “[t]he part of a pictorial representation that appears to be in the distance and that provides relief for the principal objects in the foreground.” Ex. 3002 (AMERICAN HERITAGE DICTIONARY); see also Ex. 3003 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM-WEBSTER DICTIONARY). Consistent with those dictionary definitions, we construe the term “background” to mean the part of a pictorial representation that is not in the foreground. The prosecution history provides more useful guidance as to what a “non-promotional” object is. As the applicant argued in the Amendment discussed above, a non-promotional object is one “which does not have an ‘area’ in which advertisements directly appear, but instead represents a ‘hot spot’ that, upon activation, causes ‘hidden promotional content’ to then appear.” Ex. 1002, 85–86. In other words, a non-promotional object does not display a promotional message unless the hotspot is activated. This understanding of the meaning of non-promotional is consistent with an earlier argument (Ex. 1002, 113–25) the applicant made during the prosecution of the ’089 patent.12 At that time, the applicant argued: In an exemplary embodiment, the location in-game may be represented by a non-promotional object, such as a blank chalk board depicted in the background of the gaming environment. See Applicant’s Specification at ¶ [0045]. Upon activating the hot spot (e.g., by throwing a dart at the chalk board), a promotional message may be drawn on the chalk board and displayed to the user. See id. In other words, Applicant’s amended claims 15 and 22, inter alia, may present promotional content once the game user activates, unknowingly, a “hot spot” associated with a non-promotional object—the non-promotional object is not an ordinary or visible place for advertisement, the 12 This argument was made on December 2, 2011, which is prior to the amendment adding the term background on July 15, 2013. Compare Ex. 1002, 117 (then pending claim 15 without the word “background”) with id. at 80 (amendment adding “background” to claim 15). user does not know that the object has a hidden hot spot, and the user does not know that activating the hidden “hot spot” will display promotional content. Ex. 1002, 122 (emphasis added).” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Moreover, even if we did consider only the specific references addressed in the Preliminary Response, we would not reach a different outcome. Patent Owner focuses on a high-level comparison of the references. See Prelim. Resp. 13–19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”); Nokia of Am. Corp. v. Alexander Soto, IPR2023-00680, Paper 18 at 7 (PTAB Mar. 28, 2024) (Vidal) (determining the Board erred when “rather than identify material, substantive overlap between the arguments presented in the Petitions and those previously presented to the Office, the Board’s analysis relied on its discussion of high-level similarities but lacked detailed reasoning”); Wolfspeed, Inc. v . The Trustees of Purdue University, IPR2022-00761, Paper 13 at 7 (PTAB Mar. 30, 2023) (Vidal) (vacating the Board’s decision when the “analysis of the first part of the Advanced Bionics framework did not consider sufficiently the material differences between” the art the Office previously considered and the art the Petition cited). Nor were any of Petitioner’s Reply arguments improper. We expressly authorized Petitioner to respond to Patent Owner’s arguments that the prior art relied on in the Petition was substantially the same as prior art that was considered. Ex. 3005 (Email from the Board to the parties) (“Petitioner is authorized to file a preliminary reply brief addressing 1) Patent Owner’s arguments under 35 U.S.C. 325(d). . . .”). Moreover, given the facts of this proceeding, it is not reasonable to require Petitioner to anticipate “substantially the same prior art” arguments and address them in the Petition. Accordingly, Petitioner’s argument is a proper reply argument. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00784 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim across the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“The plain meaning of “an integrated, secure memory storing local, secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28, 59; see also Prelim. Resp. 19–21. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 23. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 22. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition]” (id.), this portion of the Specification merely shows an exemplary embodiment and not a definition. See Ex. 1001, 3:50–57. In particular, the language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” See id. (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local, secured information,” nothing in the Specification limits “local, secured information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Prelim. Resp. 23. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here.” slip op. at 8
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 4. In particular, we disagree that the District Court in the Samsung case provided any construction for the term “enabled.” Id. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26.7 That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, the District Court’s determination that “hybrid device” is not indefinite did not constitute a construction of that term, much less provide a construction of “enabled” recited elsewhere in the claim. In any case, even if assuming arguendo that the referenced portion of the district court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” as being limited to when an application, function, or service “receives information from a PDK in exchange for an access key,” as Patent Owner contends. Prelim. Resp. 8. b) Means-plus function analysis Patent Owner further contends that the term “enabling” “may further be defined by way of a means-plus-function analysis.” Prelim. Resp. 8. According to Patent Owner, “§ 112, para 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting a sufficient structure for performing that function.’” Id. (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). Patent Owner contends that because none of “the ‘local secured information’, ‘wireless communication interface’ [and] ‘enablement signal’ provide sufficiently definite structure,” the term 7 Even if the Court’s explanation that “[a]n application, function, or service is ‘enabled’ by a PDK when it receives information from a PDK in exchange for an access key” is an express construction, the Board is not required to adopt that construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is no dispute that the board is not generally bound by a prior judicial construction of a claim term.”).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“We are unpersuaded by Patent Owner’s contentions. In particular, we are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 8. As Petitioner points out, “none of the claims of the ’960 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although this presumption is rebuttable and can be overcome if the challenger demonstrates that the claim term fails to recite sufficiently definite structure (see Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021)), we are unpersuaded that Patent Owner has demonstrated that claim terms “wireless communication interface,” “local secured information,” and “enablement signal” fail to recite sufficiently definite structure. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. We agree with Petitioner that the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’960 patent to determine whether: 1) claims 1–6, 8–11, and 14–19 are unpatentable under 35 U.S.C. § 103 as obvious over Dua and Giobbi ’157; 2) claims 1–7, 10, 11, and 14–19 are unpatentable under 35” slip op. at 49
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00783 · APJ Thu A Dang · IPR · Institution
Instituted review of claims 1–20 on five obviousness grounds: Dua and Giobbi ’157; that combination with Kotola; Buer; Buer with Giobbi ’157; and Buer with Nishikawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’289 patent to determine whether:” slip op. at 46
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 26– 27; see also Prelim. Resp. 28. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 27. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 28. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition],” this portion of the Specification merely shows an exemplary embodiment and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Prelim. Resp. 28 (citing Ex. 1001, 3:43–50) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local secured information,” nothing in the Specification limits “local, secured information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.7 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The plain language of “hybrid device” does not suggest a requirement that the “hybrid device” comprises an integrated PDK. Further, nothing in the Specification clearly limits or redefines “hybrid device” to a device comprising an integrated PDK, as Patent Owner proposes. Prelim. Resp. 3– 4. Although Patent Owner contends that the District Court construed “hybrid device” as “comprising an integrated personal digital key (PDK)” (id. (citing Ex. 2001, 3)), as Patent Owner points out, the District Court’s construction was predicated on the use of “PDK” in the “hybrid device” recited in the independent claims of a family member of the ’289 patent. Prelim. Resp. 3–4. In view of the plain language of the claims and the Specification, we determine that the term “hybrid device” recited in claims 1–16 and 19 is not limited to “comprising an integrated personal digital key (PDK).” We determine no further explicit construction of this term is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 14. As Petitioner points out, “none of the claims of the ’289 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although, as Patent Owner argues, this presumption is rebuttable and can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure” (Prelim. Sur-reply 1 (citing Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021))), we are unpersuaded that Patent Owner has demonstrated that “PDK,” “RDC,” “enabling signal,” and “local secured information” fail to recite sufficiently definite structure. Prelim. Resp. 14–17. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. We agree with Petitioner that the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00782 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6, 8–15, and 17–20 based on six § 103 grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 17. As Petitioner points out, “none of the independent claims of the ’042 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although, as Patent Owner argues, this presumption is rebuttable and can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure” (Prelim. Sur-reply 1 (citing Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021))), we are unpersuaded that Patent Owner has demonstrated that “PDK,” “RDC,” and “enabling signal,” fail to recite sufficiently definite structure. Prelim. Resp. 17–20. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. According to Petitioner, the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; see also Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368).” slip op. at 12
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 13. In particular, we disagree that the District Court in the Samsung litigation provided any construction for the term “enabled.” Id. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26.8 That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, the District Court’s determination that “hybrid device” is not indefinite did not constitute a construction of that term, much less provide a construction of “enabled” recited elsewhere in the claims. In any case, even if assuming arguendo that the referenced portion of the District Court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” as being limited to “exchanging an access key for information held within a service block of a PDK,” as Patent Owner contends. Prelim. Resp. 28.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00775 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that claims 1, 2, 4–9, 11, 12, and 14–17 are obvious over Burger and claims 3, 10, and 13 over Burger and Robinson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In IPR2024-00232, we made clear that “exclud[ing] any active participant in a transaction” from the construction of third-party trusted authority would exclude preferred embodiments of the ’730 patent and, therefore, is presumptively incorrect. IPR2024-00232, Paper 10 at 11–12 (citing Ex. 1001, 5:42–46, 6:32–64, 7:10–22, Figs. 3–5, 7; Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023)). We also explained that “active participation alone does not make an entity a party to the transaction.” Id. at 22–23. Instead, we evaluate a party’s relationship to the transaction to determine whether it is a principal party to the transaction or a third-party. Id. at 11 (“The ‘witness’ role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in.”), 22 (“We agree with Petitioner that, in this example, the TPCH is separate from, and thus a third party to, the principal parties to the transaction (the user and the vendor) and also a third party to the financial institution that pays the vendor.”). To be clear, below, we evaluate Petitioner’s showing as to obviousness over Burger based on the ordinary meaning of third-party trusted authority, namely, “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Remaining claim terms (including “access message”) Patent Owner acknowledges that “the plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” enabling or announcing access,” allegedly consistent with a district court construction. Prelim. Resp. 2–7. As Petitioner has shown a reasonable likelihood of success under the arguably narrower ordinary meaning of “access message,” it is not necessary, at this stage of the proceeding, to further construe this term. Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,352,730
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.