- PTAB · Sep 5, 2023 · IPR2023-00153 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood of success on the IMU–Okabe and IMU–Okabe–Li grounds; it found the petition timely under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“addresses a situation where a pleading is deficient (where a party lacked standing to sue) and not situations, such as here, where the service itself was defective. See GoPro, Paper 38 at 12–15. GoPro requires us to consider “the date on which a complaint was served in accordance with the law.” Id. at 15 (emphasis added); Sur-reply 4 (quoting GoPro, Paper 38 at 15). In fact, GoPro points out that the Board has recognized that “a complaint improperly served does not trigger the § 315(b) time bar.” GoPro, Paper 38 at 14 (citing IpDatatel, LLC v. ICN Acquisition, LLC, IPR2018-01823, Paper 17 at 10–18 (PTAB Apr. 17, 2019)). In IpDatatel, the Board explained that “served” in § 315(b) requires compliance with Rule 4 of the Federal Rules of Civil Procedure, and that mere “notice” is not “legally effective” “service.” See IpDatatel, Paper 17 at 13–18 (rejecting patent owner’s argument as conflating “service” with “notice”) (citing Freedom Watch, Inc. v. Org. of the Petroleum Exporting Countries, 766 F.3d 74, 81 (D.C. Cir. 2014)); see also In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00850, Paper 14 at 10 (PTAB Sept. 6, 2019) (same).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 23–24). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation, and would have understood how to implement such systems.” Id. at 6. Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Prelim. Resp. 1–4. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 14
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,346,017 - Netflix, Inc. v. Lauri ValjakkaInstitution deniedPTAB · Aug 7, 2023 · IPR2023-00423 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Netflix did not show a reasonable likelihood that claims 10 or 11 were unpatentable over either asserted § 103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . 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). Upon consideration of the arguments and evidence presented, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to either claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “adopt[s] Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’102 Patent as well as the asserted prior art.” Prelim. Resp. 7. Based on our review of the record at this stage, we find Petitioner’s assessment to be consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. “Fingerprint” Petitioner contends that the term “fingerprint” should be construed as “a bit string, derived (or computed) directly from the content, that uniquely represents the content.” Pet. 15–16 (citing Ex. 1003 ¶¶ 55–57; Ex. 1005, 14:13–14; Ex. 1008, 10:3–5; Ex. 1012 ¶ 720; Ex. 1013, 14). Patent Owner adopts Petitioner’s construction. Prelim. Resp. 7. To the extent necessary for purposes of this Decision, we also adopt Petitioner’s construction.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For the reasons given, we are not persuaded that Petitioner has demonstrated sufficiently that limitations [10B] and [10C] of claim 10 are taught or suggested by Downs. We therefore determine that the Petition does not demonstrate a reasonable likelihood of prevailing on this obviousness challenge as to claim 10. In view of the foregoing, we do not address Petitioner’s analysis or Patent Owner’s response to the other limitations of the claim.” slip op. at 24
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,726,102 - PTAB · Jul 20, 2023 · IPR2023-00378 · APJ Kara L Szpondowski · IPR · Institution
Instituted IPR on claims 1–8 and all petition challenges after finding a reasonable likelihood that claims 1–4 are unpatentable over Drell, Knappe, and Voois.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review is authorized 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) (2016). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Drell would produce beneficial results. Pet. 19 (citing Ex. 1003 ¶¶ 154– 159). For example, Petitioner contends that it would have been obvious to a person of ordinary skill in the art, “when implementing a mixer in Drell, to use a plurality of summers (one for each participant) as Knappe teaches, because this would allow for generating separate audio instances for each conference endpoint,” which would “complement Drell’s teaching of generating separate instances for each endpoint.” Id. (citing Ex. 1003 ¶¶ 156, 137; Ex. 1008, 2:19–21, 6:66–7:4). Petitioner further contends that a person of ordinary skill in the art “would have been motivated to implement Drell’s mixer, per Knappe’s teachings, to include a separate summer for each participant because doing so would allow for the exclusion of audio of the participant receiving the mixed audio, thereby avoiding undesirable audio effects.” Id. at 20 (citing Ex. 1003 ¶¶ 158–160).” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and three or more years of professional experience relating to conferencing systems in packet-based networks, or without said professional experience, further education relating to conferencing systems in packet-based networks.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that a “mixed data stream” is a “data stream including at least audio data and video data,” which Petitioner asserts is supported by the claim language and Specification of the ’525 patent. Pet. 8–10. Patent Owner, as noted above, did not file a Preliminary Response in this proceeding and, therefore, has not proposed constructions for any claim term or challenged Petitioner’s proposed construction of “mixed data stream.” For purposes of this Decision, given that no claim terms are in controversy on the current record, we find that no express claim construction is necessary. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - PTAB · Jul 20, 2023 · IPR2023-00382 · APJ Karl D Easthom · IPR · Institution
The Board instituted inter partes review of claims 19–29 on all asserted § 103 grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent art at the time of the effective filing date of the claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in the art is a hypothetical person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art include the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. One or more factors may predominate. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Petitioner relies on the ordinary and customary meaning under Phillips. Pet. 7–8. At this stage, it is not necessary to construe explicitly any claim terms, because any explicit construction would not alter the outcome. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obviousness showing for purposes of institution. Accordingly, we determine that Petitioner shows a reasonable likelihood that it would prevail with respect to its contention that claim 19 would have been obvious over Knappe, Elliott, VPN Textbook, and Hendricks.” slip op. at 32
Claim constructioncites KSR · GrahamPatents in suitUS 9,843,612 - PTAB · Jul 20, 2023 · IPR2023-00380 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 10–18 based on the § 103(a) obviousness ground over Drell, Knappe, Elliott, Hendricks, and Doganata.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the ’612 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The subject matter of the ’612 patent generally relates to the technical field of audio/video conferencing systems. A Person of Ordinary Skill in the Art (“POSITA”) in March 2003 would have had a working knowledge of the conferencing art. Ex._1003 ¶ 27. A POSITA would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and three or more years of professional experience relating to conferencing systems in packet-based networks, or without said professional experience, further education relating to conferencing systems in packet-based networks. Id. ¶¶24–27.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner relies on the ordinary and customary meaning under Phillips. Pet. 7–8. At this stage, it is not necessary to construe explicitly any claim terms, because any explicit construction would not alter the outcome. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“on Elliott as supplementing Drell’s teachings “by showing that it was known, when using an ‘Internet Protocol-based (IP-based) network 18 for multi-media collaboration,’ to secure the communications using a ‘virtual private network (VPN) . . . which uses IP or IP-tunneling.’” Pet. 32 (quoting Ex. 1007, 4:11–32; citing Ex. 1007, 2:66–32 (“Multi-media collaboration” includes “voice, fax, data, video, etc.”)). Therefore, Petitioner contends, “[i]t would have been obvious . . . to utilize VPN tunneling in Drell’s system for communicating audio and video data over Drell’s Internet network 106 because it would secure communications in Drell’s system.” Id. at 32–33 (Ex. 1003 ¶¶ 158–172, 194–195). Finally, Petitioner relies on Hendricks as supplementing “Drell’s” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,843,612 - PTAB · Jul 20, 2023 · IPR2023-00377 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to all challenged claims of the ’332 patent on the grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“working knowledge of the available audio and video conferencing art. Ex_1003 ¶27. A POSITA would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and three or more years of professional experience relating to conferencing systems in packet-based networks, or without said professional experience, further education relating to conferencing systems in packet-based networks. Id. ¶¶24-28.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “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))). Petitioner relies on the ordinary and customary meaning under Phillips. Pet. 9–10. Based on the current record and without any opposition from Patent Owner, we discern no need for express construction of any term to resolve any controversy at this stage of the proceeding.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“3:41–49, Fig. 1; Ex. 1007, code (57), 5:35–39, 6:1–11, 8:16–39, Fig. 1). Further, Petitioner argues, the person of ordinary skill “would have been motivated to combine the teachings of Knappe and Elliott to produce . . . obvious, beneficial, and predictable results,” including “the sharing of collaboration data in a multiparty conference” and “the use of a VPN to protect communications between conference participants.” Id. at 21–25 (citing Ex. 1003 ¶¶ 136, 138–153). For example, Petitioner argues, “[e]xchanging collaboration data was standardized (e.g., under the T.120 standard) and VPN tunneling was conventional by the time of Knappe and Elliott and the earliest claimed priority of the ’332 patent,” and “implement[ing] Knappe’s transmission of various types of data as collaboration data” “would have been obvious . . . in view of Elliott’s teachings . . . because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Id. at 22 (citing Ex. 1003 ¶¶ 140–141). Still further, Petitioner contends, “[s]uch a combination would have simply involved combining prior art element according to known elements to yield predictable results, namely allowing participants in Knappe’s system to share various types of data during a conference for collaboration purposes.” Id. at 23 (citing Ex. 1003 ¶ 144). 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 provides a rational underpinning to support combining the teachings of Knappe and Elliott and makes a sufficient showing with respect to this limitation.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,253,332 - Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution deniedPTAB · Jun 20, 2023 · IPR2023-00152 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 42). Patent Owner proposes claim constructions for “set of pixels,” “pixels that lie along a link/length of pathway between the starting point and the ending point,” and “in a loop.” Prelim. Resp. 17–28. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a nonlinear pathway. Second, Petitioner’s argument relies on AEM teaching that “AECS6 necessarily allows a user . . . to select any or all pixels of the layer to be nontransparent and thus included in the layer’s mesh to be moved and animated.” Pet. 21. We disagree, however, that AEM discloses selecting pixels to be nontransparent and including these pixels in a mesh to be moved and animated. That AECS6 arguably allows selected nontransparent pixels to be included in a mesh is not sufficient to establish that AEM discloses doing so. Petitioner contends that AECS6 and the screenshots of AECS6 created by Dr. Greenspun establish the background knowledge possessed by a person of ordinary skill in the art but does not explain adequately why AECS6’s alleged capability would cause one of ordinary skill in the art to understand AEM to teach selecting pixels of a layer to be nontransparent and including the selected pixels in the layer’s mesh. See Pet. 17 n.6 (quoting Qualcomm, 24 F.4th at 1376). Again, any pixels selected to be nontransparent being included in a mesh is mere happenstance.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,558,342 - Lyft, Inc. v. Agis Software Development LLCAll claims unpatentablePTAB · May 25, 2023 · IPR2022-00513 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–26 are unpatentable as obvious: claims 1–12 and 14–25 over Makoto, Konishi, Hamynen, and Scaer; claims 13 and 26 with the additional reference Van Bosch.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that the level of ordinary skill proposed by Dr. Terveen is not significantly different from that proposed by Petitioner and that Petitioner’s proposed level of ordinary skill is consistent with the ’838 patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We accept Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education and experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art. We otherwise adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no express constructions are necessary. Pet. 7 (citing Ex. 1002 ¶ 35). Patent Owner does not address claim construction. See PO Resp. require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 foundUnpatentable
“ordinary skill in the art would have had reason to combine the teachings of Makoto and Scaer because it would have allowed users to specify areas of interest using symbols on Makoto’s map and share those areas of interests with others, providing users with real-time information about traffic conditions or other places of interests such as meeting and dining facilities. Id. at 41–43 (citing Ex. 1005 ¶¶ 126–129; Ex. 1007 ¶ 55; Ex. 1010 ¶¶ 3, 40–41, Fig. 9; Ex. 1002 ¶¶ 152–156). Petitioner further argues that a person of ordinary skill in the art would have found it obvious to allow for participant selections to be provided via a touch screen, as taught by Hamynen. Id. at 42 (citing Pet. § VIII.A.1(m)). According to Petitioner, a person of ordinary skill in the art would have had a reasonable expectation of success combining the teachings of Makoto and Scaer because it would have involved the use of well-known computer programming principles to implement a straightforward extension of Makoto’s teachings. Pet. 43 (citing Ex. 1002 ¶ 156). For limitation 1[p], Petitioner relies on a combination of teachings from Makoto, Hamynen, and Scaer. Pet. 44–46. Petitioner argues that Makoto, as modified by Hamynen’s touch screen teachings (see limitation 1[m] above) and by Scaer’s area of interest teachings (see limitation 1[o] above), teaches user interaction on a mobile device to select a position on the map shown on the device’s display, which is then converted into location coordinates. Id. at 44–45 (citing Ex. 1007 ¶¶ 38, 55, Fig. 4; Ex. 1002 ¶¶ 159–161). Petitioner also argues that a person of ordinary skill in the art would have had reason to combine the teachings of Makoto, Scaer, and Hamynen because the combination would have allowed users to specify areas of interest by selecting them on a displayed map, improving the overall such an implementation would have involved combining well-known techniques. Id. at 45–46 (citing Ex. 1002 ¶¶ 162–163). Petitioner contends Makoto in view of Scaer also teaches displaying a symbol representing the location of the selected position or area of interest on a map as well as transmitting the GPS information of that area of interest to the location information service providing device 305. Id. at 46 (citing Pet. § VIII.A.1(o); Ex. 1002 ¶¶ 164–164). In its Patent Owner Response, Patent Owner does not present any argument as to limitations 1[o] and 1[p]. See PO Resp. In its Sur-reply, Patent Owner argues that “Petitioner’s combination fails because it fails to disclose each and every element of the claimed invention, specifically the requirement that a second mobile device is configured to identify participant interaction with a display of the second mobile device, the participant interaction indicating selection of a position on the participant map and entry of the new entity of interest at the selected position.” PO Sur-reply 13–14. According to Patent Owner, Hamynen’s disclosure is about selecting the user’s own approximate position and “has nothing to do with entering a new entity of interest at the selected approximate position,” and Scaer “merely uses a form to enter the event information and the form requires the manual entry of specific coordinates.” Id. at 14 (citing Ex. 1007 ¶ 55; Ex. 1010 ¶¶ 40–41, Fig. 9). Patent Owner further argues that “[t]here is no motivation to combine the references to further modify the combination of Makoto’s static map as modified with Hamynen’s pointer-device map with the additional features of Scaer because Scaer’s form requires manually entering coordinates to generate a map with a new event.” Id. Patent Owner also argues that there is no motivation to add pointer-device capabilities to enter coordinates to a form when Hamynen’s map already purportedly converts input received from a pointing device into coordinates.” Id. (citing Ex. 1005 ¶ 56; Ex. 1007 ¶ 37). According to Patent Owner, there “would have been no motivation to modify the Makoto-Scaer combination, which already purportedly received coordinates inputted by users, to add the feature of obtaining coordinates which were already obtained using Scaer’s form.” Id. at 14–15. We consider Patent Owner’s new argument raised in Patent Owner’s” slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). On balance, considering the record before us, Petitioner has shown, by a preponderance of the evidence, that the combination of Makoto, Konishi, Hamynen, and Scaer would have rendered the subject matter of claims 1–12 and 14–25 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 46
Patent outcomesUS 10,341,838 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,341,838 - Lyft, Inc. v. Agis Software Development LLCAll claims unpatentablePTAB · May 25, 2023 · IPR2022-00514 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–31 are unpatentable under §103: claims 1–12, 16–19, 23–29 over Makoto, Konishi, Paul, and Hamynen; claims 13–15, 30–31 with Agrawal; and claims 20–22 with Scaer.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and arguments raised during the trial in this inter partes review. For the reasons discussed below, we determine that Petitioner has proven by a preponderance of the evidence that claims 1–31 of the ’100 patent are unpatentable. See 35 U.S.C. § 316(e) (2018) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”).” slip op. at 2
- 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 science, software engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems.” Pet. 5–6 (citing Ex. 1002 ¶¶ 18–20); 515 Pet. 9–10. Petitioner further argues that “[m]ore education can substitute for practical experience and vice versa.” Pet. 6; 515 Pet. 10. Patent Owner does not dispute this assessment or offer its own assessment. See PO Resp. In his declaration, Dr. Terveen testifies that “a person of ordinary skill in the art would have a bachelor’s degree in computer science or computer engineering with one to two years of experience in the field of computer programming for communications system, or the equivalent education and work experience.” Ex. 2004 ¶ 27. We determine that the level of ordinary skill proposed by Dr. Terveen is not significantly different from that proposed by Petitioner and that Petitioner’s proposed level of ordinary skill is consistent with the ’100 patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We accept Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education and experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art. We otherwise adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express constructions for any claim term. See Pet.; 515 Pet.; PO Resp. We do not need to construe expressly any claim terms to resolve the patentability issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 foundUnpatentable
“re-generated each time a request is made, with Konishi’s feature of sending positions because Makoto already purportedly discloses obtaining map information.” PO Sur-reply 3. This conclusory argument is untimely and also does not address Petitioner’s reasoning that downloading a map would overcome the problems of having to store large amounts of data locally, as might be required “depending on the size and resolution of the digital map.” Pet. 22–23 (citing Ex. 1002 ¶¶ 29–33, 71–72, 217; Ex. 1007 ¶ 54; Ex. 1014, 6:14–20, 14:59–15:3). There may be some situations in which it is desirable to download a map and others in which it is not necessary. Konishi’s disclosure of transmitting a map to a mobile device would certainly provide a benefit when the device does not already include the map. Having considered the full trial record, based on Petitioner’s persuasive argument and evidence, we find that the combination of Makoto and Konishi teaches “receiving, from a server, mapping data including a map and coordinate translation data correlating coordinates of positions on the map with corresponding coordinates of geographical locations” and that a person of ordinary skill in the art would have combined the teachings of Makoto and Konishi with a reasonable expectation of success, as asserted by Petitioner.” slip op. at 25
Patent outcomesUS 10,299,100 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,299,100 - PTAB · May 5, 2023 · IPR2022-01537 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–14, finding a reasonable likelihood of success on the Walton040–Li017 ground and the Walton040–Li017–Tufvesson ground for claims 2 and 9.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Because the evidence does not show a significant relationship between Petitioner and the petitioner of the -01468 proceeding, General Plastic factors 1, 2, 4, and 5 weigh against discretionary denial. As explained above, this is Petitioner’s first petition challenging the ’941 patent and there is no indication of a significant relationship under Valve and factor 1 between Petitioner and the petitioner of the -01468 proceeding. Accordingly, Petitioner did not file a second petition following-on to a first petition under factors 2, 4, and 5. In other words, this is not a case where we need to address concerns that Petitioner is “strategically stag[ing] [its] prior art and arguments in multiple petitions” in order to refine its positions based on lessons learned from Petitioner’s filing of an earlier petition. General Plastic, Paper 19 at 17; Code200, Paper 18 at 5.” slip op. at 11
- Other 314aDecided for petitioner
“judicata or the preclusive effect of an earlier decision. Id. To the extent Patent Owner contends that res judicata, or claim preclusion, should apply, we note that “[c]laim preclusion applies when ‘(1) the parties are identical or in privity; (2) the first suit proceeded to a final judgment on the merits; and (3) the second claim is based on the same set of transactional facts as the first.”’ Phillips/May Corp. v. U.S., 524 F.3d 1264, 1268 (Fed. Cir. 2008) (quoting Ammex, Inc. v. U.S., 334 F.3d 1052, 1055 (Fed. Cir. 2003)). As discussed above with regard to our serial petition analysis under General Plastic, the petitioners for this proceeding and the -01468 proceeding are not identical. Nor does Patent Owner allege that the petitioners are in privity. Therefore, res judicata, or claim preclusion, does not apply in view of the -01468 proceeding.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“proceeding, Petitioner has made a sufficient showing that the combination of Walton040, Li017, and Tufvesson teaches or suggests the subject matter of dependent claims 2 and 9. On this record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the combination of Walton040, Li017, and Tufvesson renders obvious claims 2 and 9.” slip op. at 63
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“determine if these claims require that the transmissions are limited to transmissions to individual mobile stations with transmission parameters specific to that mobile station, as Patent Owner argues. As noted above, limitations 1C and 6C each recite that “the control message contains transmission parameters allocated to the mobile station for a subsequent transmission of data by the base station over a frequency subchannel to the mobile station in a time slot.” This language does not explicitly require that the control message’s transmission parameters are limited to an individual mobile station. Nor does this language exclude a control message that includes transmission parameters allocated to multiple mobile stations. Similarly, “transmission parameters specific to the mobile station” of limitations 8C and 13C and “the mobile station-specific transmission parameters” do not exclude a control message that includes transmission parameters allocated to multiple mobile stations or otherwise require that a control message’s transmission parameters are limited to those for a single mobile station.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,075,941
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.