- Google LLC v. Safecast Limited LLCAll claims unpatentablePTAB · Oct 3, 2024 · IPR2023-00652 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–4, 6–9, and 12–15 are unpatentable as obvious over Plotnick and Parekh; the Board did not reach the Plotnick-only ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that an artisan of “ordinary skill in the art would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent education or work experience, and at least two years of work or research experience in multimedia systems.” Pet. 8–9 (citing Ex. 1002 ¶¶ 41–45). In the Preliminary Response, Patent Owner “adopt[s] Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’302 Patent as well as the asserted prior art.” Prelim. Resp. 8. Patent Owner does not address Petitioner’s proposed level of skill in the Response. See Reply 1; see generally Response. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art. As Patent Owner argues, Petitioner’s proposed art and ’302 patent specification, except that we delete the qualifier “at least” to eliminate vagueness as to the stated amount of experience.” slip op. at 8
- Expert testimonyPetitioner expert creditedOther
“Petitioner persuasively explains further as follows: By the 2000s, the V-chip was known by POSITAs, and even in mainstream media, as a technology that would enable parents to program restrictions in their TVs to block offensive content from being played to their children. [Ex. 1040] ¶226. Thus, the motivation to reduce the risk of minors being exposed to inappropriate content was well-known by POSITAs at the time of the invention. Ex-1040 ¶227. This motivation applied equally, if not even more so, when PVR technology made it possible to record content for time-shifted viewing and thus made it possible to record late night content and for playback during the day. Ex-1040 ¶227. Plotnick itself describes that “the relative appropriateness of the prepared ad schedule may change as circumstances change” and that “[s]uch circumstances may include, but are not limited to, the time of day, program or type of program being watched channel selection, identity of the current viewer, and timing/duration of the upcoming avail.” Ex- 1006 ¶51 (incorporated by reference into Ex-1005 ¶¶2–14, 36, 194); Ex-1040 ¶227. Plotnick thus teaches and provides a motivation to ensure that time-shifted advertisements are appropriate for the time of day that they are played, including considerations based on the identity of the viewer. Id. And a POSITA would have looked to common standards, including local broadcasting regulations, to determine what timing and general public as appropriate. Ex-1040 ¶228. Reply 14–15. As Petitioner shows, Plotnick, viewed through the lens of a person of ordinary skill in the art aware of well-known program restrictions to block offensive TV content from children, teaches restricting time-shifted viewing of inappropriate ads based on the time of day and identity of the viewer in order to comply with local regulations, thereby further suggesting implementing Parekh’s FCC time restrictions. Accordingly, as outlined above, the record supports Petitioner’s showing based on the combined teachings of the references.” slip op. at 35
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board own§112(f) appliesDecided for petitioner
“claims 1 and 12, Petitioner contends that the corresponding structure is “hardware and/or software arranged to perform steps 102, 104, and 112 of FIG. 8 of the ’302 Patent, as described at 6:40–62 and 7:17–27 of the specification.” Pet. 16–17. Tracking the claim language in limitations 1.e.1 and 1.f, Petitioner identifies the recited function of the “control means” as follows: (1) “to read said first field and said clock signal and said rules database”; (2) “to apply said local broadcasting time regulation to each advertisement before said advertisement is shown”; and (3) “to update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing.” Id. at 16. However, steps 102, 104, and 112 of Figure 8 represent structure do not clearly link to recited functions (1)–(3) of the control means. First, steps required by claim 1. See Ex. 1008, Fig. 8 (Step 102 describing a “mix of adverts”; step 112 describing “record any key depressions”), 7:17–17 (describing other functionality not required by the claim 1). Second, to the extent the process flow of Figure 8 also represents some algorithmic structure, it is unclear how much of any such structure clearly links to the recited functions of claim 1––as opposed to the unclaimed functionality described in Figure 8. As we did in the Institution Decision, we construe the corresponding structure of the control means as PVR hardware and/or software arranged to perform the recited functions of (1) to read said first field and said clock signal and said rules database; (2) to apply said local broadcasting time regulation to each advertisement before said advertisement is shown; and (3) to update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing. See Inst. Dec. 12. It is uncertain whether the specification clearly links specific hardware and/or software to these claimed functions, other than generally disclosing a PVR, which Petitioner also points to as corresponding structure. See Pet. 17 (pointing to the disclosed PVR as performing disclosed steps 102, 104, 112); Ex. 1001, 4:43 (describing “a PVR 60 for use in a system according to the invention” according to Figure 4 (described above)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“asserting that Plotnick does not teach a first field with “a local broadcasting time,” “the time of day at which said advertisement may be shown,” or similar specific language, limitation 1.c.1 does not require such specificity. PO Resp. 10; Sur-reply 5–6, 18.5 Rather, limitation 1.c.1 recites “a header comprising a first field related to a local broadcasting time regulation,” as Petitioner argues. See Reply 5. Like the claim language, the ’302 patent specification also does not support Patent Owner’s narrow claim construction requiring a specific form of a time of day restriction in the header’s first frame. The specification generally states that “[e]ach advert . . . contains a header . . . which records . . . any restriction on the time of day at which it may be viewed.” Ex. 1001, 3:67–4:24 (emphasis stated). It also generally states that “[t]he time of day 5 The Response at page 10 obliquely slips in what appears to be a claim construction argument in one sentence and the Sur-reply adds pages to expand the argument. Compare Response 10 (possible claim construction argument) and Reply 5–6 (refuting Patent Owner’s argument by relying on “the words of the claims), with Sur-reply 4–6 (expounding on the claim construction argument), 15–19 (similar). regulations.” Id. at 3:14–15 (emphasis added). In any event, even if these embodiments specify a certain form for the time of day information or restriction (they do not), limitation 1.c.1 is broader than these embodiments because it does not require storing a specific form for a time of day restriction or information in the first header frame either directly or by implication. The Sur-reply points to Table 1 of the ’302 specification, but Table 1 lists several items, including a “Field Name” that includes “Warnings,” namely, “Keywords to match against viewing regulations.” See id. at 4:1–22 (Table1, “Fields in advertisement headers”); Sur-reply 5–6 (arguing without support that “claim 1 requires the ‘first field’ to have ‘a local broadcasting time’ of the advertisement which is regulated by the ‘local broadcasting time regulation’), 18 (arguing that (1) “[n]either Parekh nor Plotnick discloses ‘the metadata of an advertisement includes the local broadcasting time regulation,’” and (2) “‘the time of day at which said advertisement may be shown’ is not included in the metadata of the combination of Plotnick and Parekh.”).6 Patent Owner appears to rely on the disclosure of the “Time of Day” Field Name in Table 1 and describes “[c]ode to indicate time of day when advert may be shown.” See Sur-reply 5–6 (reproducing Ex. 1001, Table 1). Again, limitation 1.c.1 is broader than various descriptions of different types of header fields described in the specification, for example, it 6 These two Sur-reply arguments contradict each other by implying the metadata (claimed header first frame) must include both “the local broadcasting time regulation” and “the time of day at which said advertisement must be shown.” In any case, as determined herein, limitation 1.c.1 requires neither.” slip op. at 26
Patent outcomesUS 9,392,302 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,392,302 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00706 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).6 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in the -715 case also support the need for two petitions. Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. 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 neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9–10. 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 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00715 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Vicor had not shown a reasonable likelihood of prevailing on any challenged claim over the asserted grounds.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).7 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in this case also support the need for two petitions.8 Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in power engineering” as of the date of the invention and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 47–48). 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 8 We address the merits of the priority issue below. Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 9. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9. 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 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - PTAB · Oct 1, 2024 · IPR2024-00705 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6 under all five grounds, finding a reasonable likelihood of unpatentability based on Zeng-014 and Vinciarelli-218.
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 neededOther
“the first electronic component’ for the first connection part is a structural feature or relationship.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 52–54). Here, claim 1 requires a structure in which the first connection part comprises a first terminal at one end coupled to a surface of a carrier such as a circuit board, and a second terminal at the other end attached to a surface of the first component, such that the first connection part has mechanical support of the first electronic component. See Ex. 1001, 15:31–37. We are persuaded by Patent Owner’s contention that “this claim language connotes sufficient structural characteristics that preclude a product-by-process.” Prelim. Resp. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resorting to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has repeatedly warned that there has to be evidence of “glue” to make this specific combination, and not just the use of the claim as the roadmap for making the combination of prior art. See, e.g., InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (“Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”). Here, Petitioner’s alleged motivations to modify the modules Vinciarelli-218 to use the “connection part by curving a piece of metal against an electronic component” of Zeng-014 (Pet. 69) reflect impermissible hindsight bias.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,819,263 - Meta Platforms, Inc. v. Sitnet, LLCInstitutedPTAB · Sep 10, 2024 · IPR2024-00530 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–16, finding a reasonable likelihood that the claims would have been obvious over the four asserted Gage- and Shida-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis is guided by the USPTO Director’s Memorandum issued June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation”, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Interim Procedure”). That Memorandum provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner 4 U.S. Patent Appl. Publication No. 2003/0162557 A1, published August 28, 2003, filed December 24, 2002 (Ex. 1006, “Shida”). 5 U.S. Patent Appl. Publication No. 2008/0208605 A1, published August 28, 2008, filed October 20, 2007 (Ex. 1007, “Sinha”). stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, i.e., a Sotera stipulation.” Interim Procedure 9. Petitioner has submitted such a stipulation. Paper 7, 10. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- 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. 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 1–16 of the ’345 patent to determine whether: 1) claims 1, 3–8, 10–13, 15, and 16 are unpatentable under 35 U.S.C. § 103 as obvious over Gage;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are unpersuaded by Patent Owner’s contentions that a “roll call query” is “an optional service provided by an ‘event node server.’” Prelim. Resp. 13; Prelim. Sur-reply 2–3. Although Patent Owner points to “examples” in the Specification in which “roll call query” is “detailed” (Prelim. Resp. 13), these portions of the Specification merely show exemplary embodiments and not a definition. That is, although the referenced portions of the Specification indicate “examples” in which the “roll call query” is “an optional service provided by an ‘event node server’” (id.), nothing in the Specification limits “roll call query” to “an optional service provided by the ‘event node server,’” as Patent Owner contends. Id. Any special definition for a claim term must be set forth in the Specification with reasonable clarity, deliberateness, and precision. See 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 “roll call query” as claimed is not limited to an optional service provided by any event node server. We determine no further explicit construction is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“unpatentable over Gage and Mitchell. Pet. 44–49. In particular, Petitioner contends that a POSITA reading Gage, “would have understood that there could be many reasons for a subscriber to fail to respond to the disaster response system queries” (id. at 44), and “would have sought out references similar to Gage that additionally teach techniques for enabling other users or subscribers to provide status updates for non-responsive subscribers” (id. at 45). According to Petitioner, “Mitchell discloses a similar system as Gage,” wherein “an ‘intelligent headcount system’ . . . ‘ensur[es] that all persons have been accounted for . . . in real time in response to an emergency or disaster declaration” (Pet. 45 (citing Ex. 1013 ¶ 11)), wherein the POSITA “would have been motivated to modify Gage to enable accounted for (responsive) subscribers to provide information relating to the status of unaccounted for (nonresponsive) subscribers, as taught by Mitchell.” Id. at 46 (citing Ex. 1003 ¶¶ 142–144). At this stage in the proceeding, Patent Owner merely asserts that “[f]or the reasons detailed supra, Gage fails to disclose all the elements of independent claims 1, 8, and 13 upon which claims 2, 9, and 14, respectively depend,” wherein “[t]he Petition fails to assert Mitchell . . . overcomes the deficiencies.” Prelim. Resp. 23. As discussed supra Section II(D)(3)(a), we find unavailing Patent Owner’s contention that Gage fails to disclose all the elements of independent claims 1, 8, and 13. Having reviewed Petitioner’s arguments and supporting evidence in the present record, we determine that Petitioner has made a sufficient showing that Gage in further view of Mitchell teaches the limitations recited in claims 2, 9, and 14. Furthermore, based on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Gage and Mitchell.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,877,345 - Meta Platforms, Inc. v. Sitnet, LLCInstitutedPTAB · Sep 10, 2024 · IPR2024-00531 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1–20 are obvious over Burfeind and Crowley, claims 1–8 and 11–18 over Smith and Sinha, and claims 9, 10, 19, and 20 …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 37 C.F.R. § 42.4(a), the Board has authority to determine 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 neededOther
“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). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“organizer’s user device, Burfeind’s organization device “saves the information entered . . . to the organization device.” Pet. 28 (citing Ex. 1004 ¶¶ 110, 114, 162). Further, Petitioner contends Crowley teaches that, “when a user sends information relating to an event (e.g., a ‘venue’ location), the system verifies that the information is related to the event by ‘verify[ing] the user’ and ‘check[ing] to see if the location information . . . is present in the system.’” Id. (alterations in original) (citing Ex. 1005 ¶¶ 59, 62–63, 66; Ex. 1003 ¶¶ 71–73). According to Petitioner, a POSITA would have found it obvious “to implement Crowley’s verification techniques in Burfeind to verify that the information provided by Burfeind’s event organizer is related to an event.” Id. at 29–30 (citing Ex. 1003 ¶¶ 114–120). That is, a POSITA “would have recognized the benefits of enabling Burfeind’s system to verify the validity of the event information, as taught by Crowley.” Id. at 30 (citing Ex. 1004 ¶¶ 57, 107, 146, 162; Ex. 1003 ¶¶ 114–118). Having reviewed all of Petitioner’s assertions regarding this limitation, we determine on this record that Petitioner has made a sufficient showing that the combination of Burfeind and Crowley teaches “verify[ing] that the information item is related to the situation,” as recited in claims 1 and 11. Furthermore, based on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Burfeind and Crowley.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,470,682 - PTAB · Aug 26, 2024 · IPR2024-00565 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1 and 5–8, on all asserted grounds, after finding a reasonable likelihood of success on the Li, Wu, and Paunikar challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed in showing that at least one of the challenged claims is unpatentable on the following challenges to patentability, including: Claims 1 and 5–8 as unpatentable over Li, Paunikar, and Wu. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’845 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan) as having “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related subject, and three years of work experience in computer networking, including experience with the IPv4 and IPv6 protocols, or a related field,” and noting that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003, Bhattacharjee Decl. ¶ 62). Patent Owner does not contest Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 19. The level of ordinary skill in the art may be evidenced by the references themselves. See 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 the level of skill agreed to by the parties appears commensurate with the subject matter of the ’845 patent and the references, we apply this description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003, Bhattacharjee Decl. ¶ 201. For example, the ’845 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21, Ex. 1003 ¶ 201; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 78–79 (citing Ex. 1003, Bhattacharjee Decl. ¶ 207). As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 79–80 (citing Ex. 1003, Bhattacharjee Decl. ¶ 211). Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 76–80; Ex. 1003 ¶¶ 199–212. On this record, Petitioner shows sufficiently that an ordinarily skilled artisan would have had reason to combine the cited teachings of Li and Wu.” slip op. at 51
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,451,845 - PTAB · Aug 13, 2024 · IPR2024-00561 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1 and 6 on both § 103 grounds, finding a reasonable likelihood that each challenged claim would be shown obvious over either asserted reference combination.
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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating the exercise of discretion to deny institution under Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). The art presented in the Petition is not “substantially the same” as the art previously presented to the Office when there is a material difference between them. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Only terms that are 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this time, we determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Furthermore, on the current record, we are also unpersuaded by Patent Owner’s contention that Petitioner’s reasons for combining Wainner and Bocci are “purely hindsight based.” Prelim. Resp. 27–28. In particular, we are unpersuaded by Patent Owner’s contention that “[n]one of the purported motivations to combine Wainner and Bocci even address the specific depicted in annotated Figure 2 of Wainner in the Petition, Petitioner relies on Wainner, and not Bocci, for teaching two separate multi-segment pseudo-wires sharing a link. See Pet. 28–31; Ex. 1030, Fig. 2. As Petitioner clarifies, “Wainner does disclose these elements,” wherein “Bocci would have supplemented Wainner’s disclosures.” Pet. 24. Petitioner contends that “Wainner itself explains that it teaches a ‘particular embodiment of a method for providing point-to-multipoint multihop distribution using Pseudo[-]wires (PWs)’ that avoids scalability problems.” Id. at 25 (citing Ex. 1030 ¶ 6). Further, Petitioner contends that Bocci also “explains that implementing multi-segment pseudo-wires provides scalability benefits.” Id. (citing Ex. 1031, 3–4). Based on this current record, we find availing Petitioner’s contention that “both Wainner and Bocci contain teachings, suggestions, and motivations to combine the references together.” Id. (citing Ex. 1040 ¶ 62). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that the combination of Wainner in view of Bocci teaches “setting up a second pseudo-wire between said input router and a second output router [], wherein the second pseudo-wire comprises said first link and a third link set up between said intermediate router and said second output router,” wherein “said first link being shared by the first and second pseudo-wires,” as recited in claim 1. Furthermore, based on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Warner and Bocci.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,130,775 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Aug 13, 2024 · IPR2024-00573 · APJ Thu A Dang · IPR · Institution
The Board instituted inter partes review of claims 1, 5, 6, 8–11, 13, and 14 on all three §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
“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
“does not suggest a requirement that information be received from a PDK in exchange for an access key. Nothing in the Specification clearly limits the integrated, secure memory “enabl[ing] one or more of an application a function, and a service” to “receiv[ing] information from a PDK in exchange for an access key,” as Patent Owner proposes. Prelim. Resp. 21–28. Thus, we determine that “enabl[ing] one or more of an application a function, and a service” does not require receiving information from a PDK in exchange for an access key. Id. We are unpersuaded by Patent Owner’s contention that the Specification implicitly defines “enabl[ing] one or more of an application a function, and a service” as requiring receiving information from a PDK in exchange for an access key. Prelim. Resp. 21–28. As Patent Owner argues, “the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” Id. at 20 (citing Trustees of Columbia Univ. v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016) (emphasis added)). However, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue as requiring “receiving information from a PDK in exchange for an access key.” Id. at 21–28; In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“We find Patent Owner’s arguments unavailing. In particular, Patent Owner is relying on a claim construction of “enabling,” requiring “providing an access key in exchange for information held locally in the PDK’s service blocks” (Prelim. Resp. 29–31) that is not consistent with our construction discussed above. As discussed above, we determine that the term “enabl[ing] an application, a function or a service” is not limited to, and does not require, “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, an RDC requesting profile data stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein upon its completion “‘enabl[es] access to secure physical or digital assets’ (‘enabling one or more of an application, a function, and service’).” See Pet. 37. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of the integrated RDC and integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - PTAB · Aug 8, 2024 · IPR2024-00485 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that claims 1–10 would have been obvious over Li and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Petitioner notes that several claim terms previously were construed by a district court in another case. Pet. 10–14 (citing Ex. 1036). Patent Owner proposes construing the term “domain” to mean “a network or subnetwork and its address space that are under common control.” Prelim. Resp. 19–21. Petitioner disagrees with Patent Owner’s proposed construction of the term “domain.” Pet. 31. We determine that no claim terms require express construction for purposes of this Decision. As discussed below, even if we assume that the term “domain” means “a network or subnetwork and its address space that are under common control,” Petitioner shows sufficiently that at least one of the challenged claims is unpatentable. See Section II.E.1. As a result, we need not resolve the parties’ dispute about the meaning of the term “domain” for purposes of this Decision. 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.’”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“As discussed above, Petitioner presents evidence that although Li-2 “never became an official Internet-Draft published in the IETF directory,” Li-2 remained in the IETF’s staging folder. Pet. 20–22; Ex. 1009 ¶¶ 10–11. But the evidence of record indicates that the IETF’s staging folder may contain thousands of documents. Prelim. Resp. 35; Ex. 1008 ¶ 4; Ex. 1044. This raises the issue of whether a person of ordinary skill in the art exercising reasonable diligence could have located Li-2 simply by browsing the filenames of the numerous documents in the IETF’s staging folder. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response. Petitioner also presents evidence that the IETF’s Datatracker included Li-2 for “a given period” after the authors canceled Li-2. Pet 22; Ex. 1008 ¶ 11. But Petitioner does not indicate how long the IETF’s Datatracker would have included Li-2 (e.g., hours, days, weeks, years). See Pet. 22; Prelim. Resp. 36; Ex. 1008 ¶ 11. This raises the issue of whether Li-2 was present in the IETF’s Datatracker such that a person of ordinary skill in the art exercising reasonable diligence could have located Li-2. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response.” slip op. at 7
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003 ¶¶ 213–214. For example, the ’844 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21; Ex. 1003 ¶ 213; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 69; Ex. 1003 ¶ 210. As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 68–69; Ex. 1003 ¶ 207. Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 69–70; Ex. 1003 ¶¶ 210–211.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,451,844
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.