- Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00846 · APJ David C Mckone · IPR · Institution
The Board instituted review of claims 1–29, finding a reasonable likelihood that claims 1, 2, 4, 5, 7–13, 15, 16, 18–24, and 26–29 are obvious over Burger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). 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 ’954 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” we should construe “access message” to mean “a signal or notification 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 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that “it would have been obvious to a [person of ordinary skill in the art] to incorporate the age verification method of Robinson in Burger so that Burger’s system can be used by businesses interested in conducting transactions that require age-verification.” Pet. 93. Petitioner argues that it would have been predictable to include Robinson’s age-verification feature in Burger’s system in light of Robinson’s explanation that merchants and their employees face penalties if they sell age-restricted goods (e.g., alcohol or tobacco) to underage individuals. Id. at 94–95 (citing Ex. 1006 ¶ 5; Ex. 1003 ¶¶ 79–80). Dr. Traynor testifies that there would have been “a reasonable expectation of success because it merely involves combining known elements in a manner that would have been easily implemented and obvious to” a skilled artisan. Ex. 1003 ¶ 80. At this stage of the proceeding, we credit Dr. Traynor’s uncontroverted testimony. As to claims 3, 14, and 17, Petitioner points to Robinson’s description of a user registering a biometric sample, identity-verifying information (SID), and age-verifying information with a database of an age-verification system. Pet. 95–96 (citing Ex. 1006 ¶¶ 14–15, 28, 43, 48; Ex. 1003 ¶¶ 175– 178). Petitioner argues that, in the combination of Burger and Robinson, Robinson’s age-verifying information would be stored in the database of Burger’s network server 114. Id. at 95 (citing Ex. 1003 ¶ 176). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. Prelim. Resp. 26. On the current record, Petitioner has shown sufficiently that Robinson teaches the additional limitations of claims 3, 14, and 17, and that a skilled Burger and Robinson.” slip op. at 29
- Expert testimonyPetitioner expert creditedOther
“Petitioner contends that Burger’s pocket vault 102 is “an integrated device.” Id. at 23 (citing Ex. 1005 ¶¶ 94–95, 118, 134, Fig. 2; Ex. 1003 ¶ 90). Petitioner argues that write-once memory 212, a storage element that is not capable of being subsequently altered, persistently stores biometric data of the user, and that other hard-wired memory stores a pocket vault ID and encryption/decryption information. Id. at 24–27 (citing Ex. 1005 ¶¶ 112, 114, 118, 127, 129, 154, 182, 551–552, Fig. 2; Ex. 1003 ¶¶ 22–23, 91–96). Dr. Traynor testifies that it would have been obvious to implement the hardwired memory as protected, write-once memory so that sensitive information that is not subject to change (e.g., device ID, encryption information) is kept secure and not tampered with. Ex. 1003 ¶ 98. We credit this testimony at this stage of the proceeding.” slip op. at 18
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,954 - PTAB · Aug 29, 2024 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1, 32, 38, 39, 47, 52, and 54 on all asserted grounds after finding a reasonable likelihood of prevailing on the Richardson–Zhao challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“(1) 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, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 22 (citing Ex. 1003 ¶¶ 39– 42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” Prelim. Resp. 20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner responds that “denial of institution [does] not require addressing the construction of claim terms.” Prelim. Resp. 19. However, Patent Owner also notes that “during the related ITC investigation[, Petitioner] proposed a specific construction for ‘USB input circuit’ that excludes USB input circuits having bidirectional capabilities . . . [and is] contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit.” Prelim. Resp. 19–20 (citing Ex. 2009, 25– 33; Pet. 65). Patent Owner contends that the proposed construction in the ITC investigation is “contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit, and is therefore clearly germane to this proceeding.” Id. at 25 (citing Pet. 65). Patent Owner’s argument regarding purported inconsistent positions by Petitioner may have some merit. But, on this record, Patent Owner’s argument is not fully developed. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,447,023 - 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 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
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 ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00232 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–6 and 8–17 based on reasonable likelihood that Google would prevail on the asserted obviousness grounds over Ludtke, alone or with Kon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). 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 ’730 patent.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for patent owner
“third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 7:10–22, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’730 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 5:42–56, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. 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. See id. at 6:32–64, Fig. 5 (describing activities of an agent). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Remaining claim terms 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 12
- 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 at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 5 (citing Ex. 1003 ¶¶ 31–32, 54–56). 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§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,352,730 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00233 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 based on a reasonable likelihood of prevailing on obviousness grounds over Ludtke or Ludtke and Kon.
RulingsInstitution decision- Prior constructionPrior construction adoptedDecided for patent owner
“The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority,” or “third party that operates a trusted authority,” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’954 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:5–17, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’954 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:37–51, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:30–33) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 7:27–59, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, are presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third party that operates a trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third party that operates a trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining claim terms 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 12
- 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 at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 63–67 (citing Ex. 1006 ¶¶ 194, 234, 241, 265–266, Figs. 5, 9; Ex. 1003 ¶¶ 184–185). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 68 (citing Ex. 1003 ¶¶ 186–187). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claims 10 and 13. Pet. 69 (citing Ex. 1003 ¶ 188). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 3, 14, and 17, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,886,954 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 23, 2024 · IPR2024-00234 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–18 based on the asserted obviousness grounds over Ludtke and Ludtke with Kon.
RulingsInstitution decision- Prior constructionPrior construction adoptedDecided for petitioner
“The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:8–20, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, the parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’905 Patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:39–53, Figs. 3–4. However, despite trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:33–36) refers to an agent’s relationship to the principal parties to the transaction, not to level of activity the agent engages in. See id. at 7:30–642, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, is presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (“The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third-party trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third-party trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining claim terms 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4–5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. See Prelim. Resp. Based on the record presented, including our review of the ’905 Patent and the types of problems and solutions described in the ’905 Patent and cited prior art, we adopt Petitioner’s definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 43–46 (citing Ex. 1006 ¶¶ 194, 234, 241, 264–265, Figs. 5, 9; Ex. 1003 ¶¶ 66–70). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 50 (citing Ex. 1003 ¶¶ 152–153). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claim 11. Id. at 51 (citing Ex. 1003 ¶ 155). Patent Owner does not yet provide separate arguments for claims 2 and 11. See Prelim. Resp. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 2 and 11, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,298,905 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00407 · APJ Thu A Dang · IPR · Institution
Instituted IPR on claims 1–20 of the ’289 patent over four § 103 grounds: Giobbi ’157/Giobbi ’139; with Dua; Broadcom; and Broadcom with Giobbi ’157.
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
- BurdenOther
“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. 32–35) that is not required by 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 “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, a 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 its completion “enabl[es] access to secure physical or digital assets,” i.e., “enables one or more of an application, a function, and service.” See Pet. 35. a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, wireless communication interface . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 33
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28– 29, 67–68; Prelim. Resp. 27−29. 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],” and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification proves 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 secure information,” nothing in the Specification limits “local, secure 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 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” as claimed 6 We are unpersuaded by Patent Owner’s contention that “the permissive language ‘in this example’ does not expand the definition ‘local secure information’” because “it applies to the sensors.” Prelim. Resp. 28. The Specification is clear that, in this example, “the” same service access keys 118 contained by the sensor allow the sensor to unlock information “used as local secured information.” See Ex. 1001, 3:43–50. 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 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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 is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803. 2. “receiver-decoder circuit (RDC)” Patent Owner proposes construing “receiver-decoder circuit” appearing in claims 1, 3, 7, 14, and 16 as “a component or collection of components, capable of wirelessly receiving data in an encrypted format and decoding the encrypted data for processing” as “construed” by the district court in the Samsung case. Prelim. Resp. 7–8 (citing Ex. 2001, 4; Ex. 2004, 4). Petitioner contends that, “[f]or purposes of this proceeding, Petitioner adopts this construction [adopted in the district court].” Pet. 5. We determine no explicit construction of “receiver-decoder circuit” is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00405 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that at least one challenged claim would be unpatentable under the asserted § 103 grounds.
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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided 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– 29, 67–68; Prelim. Resp. 22−23. Further, nothing in the Specification or the 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. 22. 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. 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.” Id. (citing Ex. 1001, 3:50–57) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a corresponding service block can be used as “local secure information,” nothing in the Specification limits “local, secure 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 contends.6 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” as claimed 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 › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“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. 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.” Id. (citing Ex. 1001, 3:50–57) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a corresponding service block can be used as “local secure information,” nothing in the Specification limits “local, secure 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 contends.6 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” as claimed 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
- 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. 4–5. 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. That is, a determination of whether a term is indefinite is not the same things as construing a claim term. Thus, the district court’s determination that “hybrid device” is not indefinite did not construe that term, much less provide a construction of “enabled” recited in the claim. Accordingly, although 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” limited to “exchanging an access key for information held within a service block of a PDK,” as Patent Owner contends. Prelim. Resp. 19.” slip op. at 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentablePTAB · Jul 2, 2024 · IPR2023-00578 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Anthony and Hanggie, alone or in combinations with Matthews and Robertson.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“does not generate the claimed images because it displays active applications in 3D space, where “the user can interact with the control buttons on the window, [thus] the window (object) is not an image.” PO Resp. 41, 46. Both parties agree that the language of claim 1 (limitation [1d-1]) requires interacting with an image in order to prompt the replacement of the image in 3D space with objects within 2D space. See Tr. 46:25–47:3; Pet. 55–56. Accordingly, Patent Owner’s argument that Hanggie cannot teach the claim limitation because there is interaction with an image runs contrary to the plain meaning of the claim language and Patent Owner’s view of that language. Additionally, we agree with Petitioner’s arguments that the disclosures of the ’868 patent support the claimed interactivity of the images in the 3D space. Pet. Reply 2–5. In particular, Petitioner refers to the ’868 patent’s explanation that “the 3D GUI runs as an Active X control within the Internet Explorer web browser,” and “once [a] file, document, application or desktop is added to the virtual space 300, it is fully interactive and functional and appears no different from, or close to, the original way the program functions when it was not in the 3-D Cartesian space 300.” Id. at 4 (citing Ex. 1001, 5:33–44, 21:12–28, 21:29–43; Ex. 1033 ¶¶ 11–12). Petitioner asserts, and we agree, that the Specification provides support that the images in 3D are interactive and function in a similar manner to those as corresponding objects in 2D. Id.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“use of items in 2D space and difficulties in finding files, this argument is based on Anthony’s prior art discussion offered to identify the need for improvements that are solved by its 3D invention. See Ex. 1007 ¶¶ 6, 8. But the issue identified as the problem with 2D items, that is, difficulties in finding 2D files, is not at issue in the combination of the prior art that Petitioner proposes. As discussed, in the combination that Petitioner asserts, with the selection of a maximize button on a 3D window, the window would be displayed in 2D and would occupy all or most parts of the screen—so in that combination, difficulties in finding the 2D files would not be an issue. Pet. 57 (citing Ex. 1003 ¶ 111). Further, Petitioner offers the advantages that this presentation in 2D space would conserve power and allow certain users to interact with an application in a 2D environment. Ex. 1003 ¶¶ 66, 69. Accordingly, we credit Dr. Fuchs’s testimony that Petitioner’s proposed “specific experience [of the combination] would not deter a user from replacing images in 3D space with an object in 2D space.” Ex. 1033 ¶ 48. We also do not find persuasive Patent Owner’s argument that Anthony’s approach is different from the claimed invention because its method for” slip op. at 65
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“suggested to one skilled in the art, objective evidence of nonobviousness (so called “secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). “[E]vidence of secondary considerations may often be the most probative and cogent evidence in the record.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). “[T]o be accorded substantial weight in the obviousness analysis, the evidence of secondary considerations must have a ‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient connection’ between the evidence and the patented invention.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “The patentee bears the burden of showing that a nexus exists.” WMS” slip op. at 66
Patent outcomesUS 9,696,868 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,696,868
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.