• Volkswagen Group Of America, Inc. v. Neo Wireless LLCInstitution denied
  PTAB · May 5, 2023 · IPR2022-01538 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, chiefly because the cited art did not teach a request for a probing signal.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on any of the challenged claims of the ’302 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record at this stage, we find that Petitioner’s proposal is 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). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Accordingly, for purposes of this decision, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for patent owner

    “Because Petitioner fails to provide sufficient evidentiary support, we decline to construe the claimed “request” as “any signal that after receipt by a mobile station, causes the mobile station to transmit the probing signal to the base station,” as Petitioner asserts. Pet. 17. Instead, we agree with Patent Owner that “the term ‘request’ as recited in the claims does not require construction beyond plain and ordinary meaning.” Prelim. Resp. 20; see also Pet. 11 (arguing that “[a]ll claim terms should receive their plain and ordinary meaning, in the context of the ’302 patent specification, under the Phillips standard”). Petitioner’s remaining arguments regarding the claimed “request” are directed to whether the “request” would have been obvious in view of Tong. Pet. 17–19. As noted above, Petitioner acknowledges that “Tong does not expressly disclose the base station 14 transmitting ‘a request’ for a pilot signal.” Id. at 18. Nevertheless, Petitioner asserts that Tong discloses the claimed “request” because Tong teaches the assignment of shared and user-specific resources and that, once this assignment is done via downlink channels, each mobile terminal in a cooperating group will transmit data to the base station using the shared resources and user-specific pilots. Id. at 17–18 (citing Ex. 1005, 6:62–71, 7:11–21, Fig. 7). According to Petitioner, “a POSA would have found it obvious that for Tong’s base station 14 to assign shared and user specific resources via downlink channels, downlink signals would need to be transmitted from base station 14 to those mobile terminals 16” and that “[a] POSA would have also understood that each of these downlink signals” slip op. at 23

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s reliance on the declaration testimony of Dr. Min fails to provide any additional basis to support Petitioner’s assertion that “a POSA would have understood that the claimed ‘request’ is any signal that after receipt by a mobile station, causes the mobile station to transmit the probing signal to the base station.” Pet. 17 (citing Ex. 1003 ¶ 75). The cited portion of Dr. Min’s testimony simply mirrors the Petition, and does not provide any other citation or explanation in support of Petitioner’s position. See Ex. 1003 ¶ 75. As such, we accord Dr. Min’s testimony little weight on this issue. Consequently, we agree with Patent Owner that “[t]he only purported support the Petition provides for its proposed special meaning of the claims’ ‘request’ language is, in effect, to assert a lack of support for any special meaning of this claim language.” Prelim. Resp. 19.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,771,302
• Volkswagen Group Of America, Inc. v. Neo Wireless LLCInstituted
  PTAB · May 4, 2023 · IPR2022-01567 · APJ Charles J Boudreau · IPR · Institution

  The Board instituted inter partes review of claims 1–18 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on the obviousness challenges.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “first General Plastic factor weighs against exercising our discretion to deny institution. In General Plastic, the petitioner filed a set of five follow-on petitions after its own earlier petitions for inter partes review of the same two patents were denied on the merits. Gen. Plastic, Paper 19 at 2–3. Petitioner here, as Patent Owner admits, has not previously filed any petition directed to the ’450 patent. Moreover, although General Plastic has not been limited to instances where multiple petitions are filed by the same petitioner (see, e.g., Valve, Paper 11 at 9 (stating that “when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors”)), we find no evidence of record in the present case that Petitioner shares any relationship with Dell. Unlike in Valve, in which the Board found a “substantial relationship” to exist between different petitioners where the earlier and later petitioners not only were co-defendants in district court litigation but the earlier petitioner’s accused products in the litigation incorporated technology licensed from the later petitioner, we find no evidence in the record before us of any similar relationship between Petitioner and Dell. We are not persuaded that Petitioner’s and Dell’s both being defendants in district court litigation involving the ’450 patent rises to the type of “significant relationship” described in Valve. Cf. Valve, Paper 11 at 10. This case also differs from Ericsson, where the Board found that a petitioner had “implicitly created” a relationship with earlier petitioners “by using the prior petitioners’ work as a menu and picking and choosing from their work product.” Ericsson, Paper 8 at 12. Notwithstanding Patent Owner’s citation of Ericsson (Prelim. Resp. 49), Petitioner here does not rely on prior art “pick[ed] and cho[sen]” from any earlier petitions. b. Whether, at the time of filing of the first petition, the petitioner knew of the prior art asserted in the second petition or should have known of it Patent Owner does not contend that Petitioner knew or should have known of the prior art asserted in the Petition at the time Dell filed the petition in IPR2021-01486. Indeed, it appears from the record that the ’450 patent had not yet been asserted against Petitioner as of the time Dell filed its petition in September 2021. See Paper 5, 3; Pet. 3 (identifying March 29, 2022, as filing date of first district court proceeding against Petitioner involving the ’450 patent). Unlike in Ericsson, where the petitioner picked and chose from among references previously cited in earlier petitions challenging claims of the same patent, the prior art asserted here by Petitioner was not cited in any prior petition for review of the ’450 patent. See Ericsson, Paper 8 at 12–13. And again, we find no evidence in the record of any significant relationship between Petitioner and Dell. Thus, whether Petitioner knew of, or should have known of, the prior art relied upon in this Petition at the time Dell filed its petition is of no import under this factor. For this reason, we determine that the second General Plastic factor does not weigh in favor of exercising our discretion to deny institution.” slip op. at 18

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). 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 demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute inter partes review of claims 1–18 of the ’450 patent on all asserted grounds. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Ex. 1003 ¶ 52; see also Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Patent Owner does not provide its own assessment regarding the level of skill in the art, or otherwise dispute Dr. Wilson’s testimony. See generally Prelim. Resp.; see also Ex. 2001 ¶¶ 21–23 (Mr. Alberth acknowledging Dr. Wilson’s assessment and testifying that he “accept[s] Dr. Wilson’s proposed qualifications of a POSITA” for purposes of his Declaration). Based on our review of the record at this stage, we find Dr. Wilson’s assessment to be is 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). Nonetheless, we further find that the qualifier “at least” before the number of years of academic or industry experience introduces unnecessary ambiguity into the assessment as it lacks any upper bound. Accordingly, we adopt Dr. Wilson’s assessment, minus the qualifier “at least,” for purposes of determining whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 12

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

    “Having considered the parties’ arguments, we agree with Petitioner that no terms or phrases in the claims require express construction at this stage of the proceeding. 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))). First, regardless of whether we adopt Patent Owner’s construction of “time-frequency coordinate” as “one dimensional time-frequency coordinate,” we find, as discussed in more detail below, that at least Vijayan089 teaches such a one-dimensional time-frequency coordinate. See, e.g., infra § III.E.3.c. Second, we also conclude that we need not expressly construe the term “time-frequency resource unit.” See Prelim. Resp. 6. Notwithstanding Patent Owner’s contention that Petitioner’s district court co-defendants proposed a construction for that term in co-pending litigation, Patent Owner itself points out that “Petitioner has made no attempt to apply Defendants’ proposed litigation construction . . . for any of its grounds” in this proceeding. Id. at 6–7 (citing Pet. 44–48, 74– 80). Accordingly, we preliminarily find that the parties appear to agree that plain and ordinary meaning of “time-frequency resource unit” should apply in this proceeding. Nonetheless, we identify below a potential dispute with regard to the construction of the claim limitation “each unit containing a set of frequency subcarriers in a group of OFDM symbols” that is underdeveloped on the present record. See infra §§ III.E.3.c, III.F.3.c. The parties are advised to address the construction of that limitation in their briefing in the course of trial. D. Discretionary Denial Under 35 U.S.C. § 314(a)” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,447,450
• Volkswagen Group Of America, Inc. v. Neo Wireless, LLCInstituted
  PTAB · May 2, 2023 · IPR2022-01539 · APJ Hyun J Jung · IPR · Institution

  The Board instituted IPR of claims 1–30 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–30 of the ’512 patent on all presented challenges. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that one of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent field, or an advanced degree in those fields, as well as least 3–5 years of academic or industry experience in mobile wireless communications, or comparable industry experience.” Pet. 11–12 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s proposal and does not propose a level of ordinary skill in the art. See generally Prelim. Resp. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10

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

    “On the present record, we agree with Patent Owner that “second pilots of a second type” does not need express interpretation. Prelim. Resp. 8. We also see no reason to interpret expressly the wherein clause quoted above at this stage because Patent Owner has not yet presented its support for adopting its proposed interpretation which, as Patent Owner notes, is in dispute. Prelim. Resp. 8; Ex. 2005, 7. Patent Owner should consider history, and possibly other evidence support its proposed interpretation. We note that Patent Owner’s interpretation requires adding “same” to the wherein clause, but the record at this stage does not make clear why claims 15 and 23 should be narrowed in that manner, when the plain language of the claims is broader.” slip op. at 12

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

    “Petitioner, however, cites to a portion of Tong that describes how to provide feedback for beam-forming multiple antennas in an OFDM architecture like Kim’s. See Pet. 18–19 (citing at least Ex. 1005, 4:49–55, Petitioner’s position that one of ordinary skill in the art would have modified Kim so that Kim, like Tong, includes determining a channel quality indicator for beam-forming. See, e.g., Ex. 1005, 6:59–64, 8:50–66. Tong provides evidence that the proposed modification was within ordinary skill in the art. See id. Even if Petitioner’s proposed combination does not include determining a channel quality indicator, as argued by Patent Owner, Tong indicates beam-forming provides benefits without having to receive feedback on channel conditions. See, e.g., id. at 8:50–66. Thus, on the preliminary record, Petitioner’s arguments and cited evidence for “wherein at least some subcarriers of the first plurality of subcarriers or the second plurality of subcarriers are beam-formed” are sufficient for institution.” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,965,512
• Netflix, Inc. v. Lauri ValjakkaInstituted
  PTAB · Apr 18, 2023 · IPR2022-01568 · APJ Barbara A Parvis · IPR · Institution

  The Board instituted IPR on claims 1, 3–6, 8, 9, 11–17, 19, and 20, finding a reasonable likelihood they are obvious over Green, Amini, Lee, and Yau.

  RulingsInstitution decision

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

    “this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Green, Amini, Lee, and Yau teaches each recitation of claims 1 and 9. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made Petitioner’s proposed modifications. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claims 1 and 9 are unpatentable under 35 U.S.C. § 103(a) as obvious over Green, Amini, Lee, and Yau.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “For the aforementioned reasons, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made Petitioner’s proposed modifications. We find that Petitioner’s reasoning is not undermined by Patent Owner’s arguments based on the preliminary record before us at this early stage in the proceeding.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “particular case.” Id. Patent Owner’s argument best pertains to the last factor, i.e., the level of skill of active workers in the field. Patent Owner’s evidence, however, pertains to only two individuals and, at this early stage, we do not discern a reason to require that an author of a prior art reference be a person of ordinary skill. On the current record, we find Petitioner’s proposal is consistent with the level of skill reflected in the ’167 patent Specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We, therefore, adopt Petitioner’s proposal. Our conclusions herein, however, would not change under Patent Owner’s proposal.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “Neither party has urged that we construe the aforementioned claim terms in the instant proceeding. Based on the record before us, we do not discern a need to construe explicitly those claim terms to resolve a dispute before us in this proceeding. 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 controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We, therefore, use the plain and ordinary meanings of those terms. However, our analysis at this preliminary stage would not change using the constructions adopted by the District Court. Prelim. Resp. 3; Ex. 2002.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,495,167
• Meta Platforms, Inc. v. Almondnet, Inc.Instituted
  PTAB · Apr 10, 2023 · IPR2022-01481 · APJ Charles J Boudreau · IPR · Institution

  The Board instituted IPR on claims 1–4, 6, 7, 10, 11, 14, 16, 18, and 19 based on a reasonable likelihood they would be obvious over Meyer, Zeff, and Roth.

  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) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine, based on the record before us, that Petitioner has established a reasonable likelihood that it would prevail in showing that at least one of the challenged claims is unpatentable, and we institute an inter partes review.” slip op. at 2

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

    “Petitioner contends that there was ample motivation to combine Meyer, Zeff, and Roth. Pet. 52–56. According to Petitioner, the combination would have predictably resulted in an incentive system “in which the account provider in Meyer . . . automatically provides a bid to the service provider (‘ad network’) reflecting a price cap . . . to the third-party websites whose advertising space is controlled by the service provider computer (‘within media property advertising space controlled by the ad network’).” Id. at 52–53 (emphasis omitted) (citing Schmandt Decl. ¶ 135). Petitioner contends that the proposed combination “could have been implemented in a number of ways,” either with the account provider being an advertiser that sponsors its own incentives or working with multiple different parties issuing incentives. Id. at 53 (citing Ex. 1003, 16:1–5, 24:38–41, 30:23–32, 33:10–14). Petitioner further contends that “Meyer, Zeff, and Roth are analogous references in the same field . . . and would have been reasonably pertinent to a number of problems faced by the ’089 inventor.” Id. at 55 (citing Schmandt Decl. ¶ 137). Still further, Petitioner contends, Zeff provides express motivation to combine, citing, for example, its disclosure that auctions are “a good place to buy and sell excess ad inventory,” that “advertisers can usually get pretty good prices on well-recognized [auction] sites, and that auctions are “a way to generate revenue on inventory that would otherwise go unsold.” Pet. 55 (emphasis omitted) (quoting Ex. 1004, 81) (citing Schmandt Decl. ¶¶ 139, 140). Citing the testimony of Dr. Schmandt, Petitioner argues that “an auction and bidding system could have resulted in a substantially lower price than the account provider [in Meyer] might otherwise have paid.” Id. (citing Schmandt Decl. ¶ 139). Further, “[a]n ordinarily skilled artisan would have also appreciated that using an auction would have solved the problem of deciding how much to charge for advertising,” according to Petitioner, as “[a] known benefit of auctions is their ability to obtain the most appropriate price based on direct purchaser feedback through competitive bidding.” Id. (citing Schmandt Decl. ¶ 138). Still further, Petitioner contends, a skilled artisan “would have had more than a reasonable expectation of success” in making the proposed combination, and the combination “could have been readily implemented using conventional programming techniques and was fully enabled.” Id. at 56 (citing Schmandt Decl. ¶ 143).” slip op. at 31

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

    “Petitioner “does not believe an express claim construction is necessary at this time for this IPR.” Pet. 13. Patent Owner agrees but further responds that “the Petition appears, at least in some instances, to apply a meaning to the claim phrase ‘redirecting . . . without transferring to the ad network computer any profile information related to the visitor’ that is inconsistent with the language of the claims, especially in view of the intrinsic record.” Prelim. Resp. 6. Patent Owner continues, “[t]he phrase ‘redirecting . . . without transferring to the ad network computer any profile information related to the visitor’ appears in each independent claim of the ’089 Patent.” Id. Patent Owner further asserts that “[a]s the claims make clear, the BT computer system of the preambles must ‘redirect[] the visitor computer to an ad network computer,’ and must do so ‘without transferring to the ad network computer any profile information related to the visitor.’” Id. at 6–7 (citing Ex. 1001, claims 1, 10, 16). Patent Owner contends that it is clear from the claim language itself, supported by the specification and prosecution history, that redirection of the visitor computer to the ad network computer must not result in transmission of any visitor profile information from the BT computer system to the ad network computer. Id. at 7–9 (citing Ex. 1001, 9:47–65; Ex. 1013, 138–39 (prosecution history of ’089 patent)). Patent Owner concludes, “[a]side from recognition of that very basic requirement, no further construction . . . is necessary at this time, and the Board can and should defer providing a formal construction of this term except to confirm the stated distinction.” Id. at 9. We agree with the parties that no formal construction is necessary at this time. With respect specifically to the claim phrase “redirecting . . . without transferring to the ad network any profile information related to the visitor,” we find that phrase to be clear on its face that redirection must occur without transferring profile information related to the visitor. To the extent that Patent Owner’s arguments suggest reading in a further limitation that visitor profile information may not be transferred after the redirection step, those arguments present a potential issue that is underdeveloped on the record before us, and we decline to adopt such a construction at this stage of the proceeding. The parties will have the opportunity to brief this issue fully during trial to the extent necessary to resolve the issues in dispute in the proceeding.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of networkbased computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 11–12 (citing Schmandt Decl. ¶¶ 10–14). Petitioner adds that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 12. applies. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011); see Ex. 1001, code (63). 2 At this stage, neither party has presented any evidence on the fourth Graham factor. Patent Owner does not challenge this description at this stage. Prelim. Resp. 5–6. We adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it is consistent with the prior art before us in this proceeding.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,508,089
• ADT, LLC v. Vivint, Inc.All claims unpatentable
  PTAB · Mar 28, 2023 · IPR2022-00071 · APJ Jameson Lee · IPR · Final written decision

  Claims 1, 2, 4, 8–10, and 12 are unpatentable as anticipated by Monroe and obvious over Monroe, Monroe and Fadell, Jin, or Jin and Monroe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “including a “bachelor’s degree in electrical engineering,” that is not a literal test. We know of no precedent from the U.S. Court of Appeals for the Federal Circuit, and Patent Owner has cited none, that requires the stated level of education for the level of ordinary skill in the art to be met literally without considering any equivalence. The inclusion of a statement of formal technical education in the articulated statement facilitates understanding for comparison purposes because, typically, (1) an expert would have a formal technical education, and (2) a formal degree is associated with an ascertainable or known curriculum. Accordingly, Petitioner may show that Mr. Parker possesses at least the level of skill corresponding to that of one who has a bachelor degree in electrical engineering.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “4. “predefined area” The term “a predefined area” is recited in each of independent claims” slip op. at 20

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

    “g) Conclusion Petitioner has proven by a preponderance of the evidence that claim 1” slip op. at 44

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

    “2. Obviousness over Monroe Alone Petitioner’s arguments for obviousness over Monroe alone for claims 1, 2, 4, 8–10, and 12 are the same as its assertion that Monroe anticipates these same claims. Petitioner states: “As discussed above in [the ground based on anticipation by Monroe], Monroe discloses all the limitations of claims 1, 2, 4, 8, 9, 10, and 12. Thus, the claims can be cancelled on singlereference obviousness grounds as well as anticipation grounds.” Pet. 26. Petitioner cites Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019), for the position that a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim obvious under 35 U.S.C. § 103. Id. Patent Owner presents no arguments to the contrary. We agree that an anticipatory reference can be deemed, pro forma, to render the anticipated claims obvious. All the limitations are disclosed by the single reference and no modification is necessary. Accordingly, for the same reasons discussed above, Petitioner has proven by a preponderance of the evidence that claims 1, 2, 4, 8–10, and 12 would have been obvious over Monroe alone.” slip op. at 52

  Patent outcomesUS 10,325,159 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,325,159
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Mar 2, 2023 · IPR2022-01480 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Roth and its combinations did not show a reasonable likelihood of establishing the challenged claims’ obviousness.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “We agree with Patent Owner’s argument that Petitioner has failed to demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement in claim 1. See supra Section III.C. We concluded from the language of the claims and the prosecution history that the “third-party server computer” cannot be part of the recited “system comprised of one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprised of one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprised of one or more computers.” See Pet. 19. As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 11. In Petitioner’s analysis of claim element 1(b), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the computer system,’ i.e., by the system which includes view server 320.” Pet. 34 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 12). Petitioner further argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 24. This argument also is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprised of one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 19. Those computers are also part of the web server system in Roth (id. at 18) identified as the “third-party server computer” (id. at 20), and therefore, the web server system cannot be separate from the “third-party computer system.”” slip op. at 18

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

    “We agree with Patent Owner that construction of this term is necessary and we find that the claimed “third party server computer” in claims 1, 17, and 21 and their dependent claims must be different from the “system [comprised of]/[comprising] one or more computers” recited in the preambles of claims 1 and 21 and the “tangible computer-server device” recited in the preamble of claim 17.3 As Patent Owner points out, the language of the claims compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claims 1 and 21 recite that the “system” described in each claim’s preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Ex. 1001, 12:64– 3 We do not express an opinion as to whether the preambles are limiting. 13:1, 14:56–60. Claim 17 similarly recites that the “tangible computer-server device” described in the claim preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Id. at 14:17–21. If the third-party server computer were not separate from the “system [comprising of/comprising] one or more computers” or “tangible computer-server device,” the system or device would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. DISCRETIONARY DENIAL Patent Owner asserts that the Board should exercise its discretion to deny institution of inter partes review under 35 U.S.C. § 325(d). See Prelim. Resp. 13–26. Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,959,146
• ADT LLC / Alarm.Com, Inc. v. Vivint, Inc.All claims unpatentable
  PTAB · Feb 10, 2023 · IPR2022-00714 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–3 and 6–11 as obvious over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.

  RulingsFinal written decision

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

    “meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons discussed below, we find the plain and ordinary meaning of “determining a current location of the user” to include determining a physical location of a computing device associated with the user.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “b) Our Analysis For the reasons below, we construe “aggregate presence service” to mean “a service that receives, stores, and provides presence-related information,” and we disagree with Patent Owner that such a service needs to include geographic location information obtained from a location service. The parties agree that that “presence-related information” already includes location information. Patent Owner’s proposal would have us read the requirement of using a location service into the claims, which, as discussed above, we decline to do on the record before us. As with “determining a current location,” discussed in Section III.C.1 above, we see no lexicographic definition or clear intent in the specification defining “aggregate presence service” in the manner that Patent Owner argues. To be sure, the ’739 patent specification does define other terms. See, e.g., Ex. 1001, 4:42–44 (“The term computer readable media as used herein refers to both storage media and communication media.”). But the specification does not define “aggregate presence service” in any way, much less using such express language. The portions of the specification that Patent Owner points us to (PO Resp. 20–22) as defining the claim term fall well short of what is required under Federal Circuit precedent to show a lexicographic definition. In relevant part, all the specification says is that a “doorbell presence application” may provide an “[a]ggregate presence service” with information regarding a user’s location, and that “aggregate presence service 534 updates a presentity store 528 and enables watcher client application 504 to provide the notification to the user.” See Ex. 1001, 7:20–26, Fig. 5; see also id. at 7:40–61, 9:42–61, Figs. 6, 9. There is no disclosure in the specification distinguishing the term “aggregate presence service” from the term “presence service” in a specific way, let alone any other disclosure requiring the use of a location service in the manner that Patent Owner argues. The record therefore does not support Patent Owner’s position.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We determine, on the complete record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding unpatentability of the challenged claims.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

  Patent outcomesUS 7,956,739 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,956,739
• ADT LLC / Alarm.Com, Inc. v. Vivint, Inc.All claims unpatentable
  PTAB · Feb 10, 2023 · IPR2021-01374 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–3 and 6–11 as obvious over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We determine, on the complete record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding unpatentability of the challenged claims.” slip op. at 10

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

    “location service,” and that mandates a narrow construction of the claim term to exclusion of all other methods of determining a location. PO Resp. 11; PO Sur-reply 6. The specification, however, makes it abundantly clear that the use of a “location service” is “optional.” See, e.g., Ex. 1001, 5:30–36, 5:45, 7:20–24; see also Ex. 2001 ¶ 83 (Dr. Shoemake agreeing that the “[u]se of the ‘location service’ is ‘optional’”). For example, Figure 2 of the ’739 patent, a portion of which is reproduced below, depicts the location service 236 using a dashed line, thus indicating that it is an optional component of the doorbell presence service architecture. Ex. 1001, Fig. 2. Referring to the location service 236, the specification states: Doorbell application 232 is configured to receive notification from doorbell 202, communicate with presence server 234 and optional location service 236 to determine a location and reach the user through computing device 204, and perform tasks for execution of action(s) selected by the user. Ex. 1001, 5:33–38 (emphasis added). The specification further states that “[subscriber location function] 342 may be an interface function for the optional location service 236 of architecture 200.” Id. at 6:39–40 (emphasis added). The specification therefore leaves little doubt as to the optional nature of the location service. And Patent Owner asks that we import this limitation, which the specification clearly designates as optional, into the claims. We decline to do so. See MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp., 847 F.3d 1363, 1369 (Fed. Cir. 2017) (affirming the Board’s decision not limited to limit the claims to a feature that the specification made clear was optional); H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1334 (Fed. Cir. 2014) (“The optional nature of such services negates any argument that such a limitation in the claim is implied as necessary to the invention.”); Phillips, 415 F.3d at 1323 (warning against “importing limitations from the specification into the claims”). slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “b) Our Analysis For the reasons below, we construe “aggregate presence service” to mean “a service that receives, stores, and provides presence-related information,” and we disagree with Patent Owner that such a service needs to include geographic location information obtained from a location service. The parties agree that that “presence-related information” already includes location information. Patent Owner’s proposal would have us read the requirement of using a location service into the claims, which, as discussed above, we decline to do on the record before us. As with “determining a current location,” discussed in Section III.C.1 above, we see no lexicographic definition or clear intent in the specification defining “aggregate presence service” in the manner that Patent Owner argues. To be sure, the ’739 patent specification does define other terms. See, e.g., Ex. 1001, 4:42–44 (“The term computer readable media as used herein refers to both storage media and communication media.”). But the specification does not define “aggregate presence service” in any way, much less using such express language. The portions of the specification that Patent Owner points us to (PO Resp. 20–22) as defining the claim term fall well short of what is required under Federal Circuit precedent to show a lexicographic definition. In relevant part, all the specification says is that a “doorbell presence application” may provide an “[a]ggregate presence service” with information regarding a user’s location, and that “aggregate presence service 534 updates a presentity store 528 and enables watcher client application 504 to provide the notification to the user.” See Ex. 1001, 7:20–26, Fig. 5; see also id. at 7:40–61, 9:42–61, Figs. 6, 9. There is no disclosure in the specification distinguishing the term “aggregate presence service” from the term “presence service” in a specific way, let alone any other disclosure requiring the use of a location service in the manner that Patent Owner argues. The record therefore does not support Patent Owner’s position.” slip op. at 25

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

    “(3) Our Analysis On the complete record, Petitioner has shown by a preponderance of the evidence that an ordinarily skilled artisan would have had sufficient reasons to combine the teachings of Oh with those of Forbes and TS23.141, in the manner proposed by Petitioner, with a reasonable expectation of success. See Pet. 40–43; Pet. Reply 22–23, 26; Ex. 1017 ¶¶ 217–224; Ex. 1032 ¶¶ 69–76. Petitioner explains that implementing the teachings of Forbes and TS23.141 in Oh’s system would have resulted in the benefits of using the IMS infrastructure as well as utilizing a “presence server” to manage presence information from monitoring systems installed in any number of properties. Pet. 41–42. Mr. Rysavy testifies: Communication of presence information and voice and other data via the IMS infrastructure, as disclosed in Forbes and TS23.141, would have provided the expected benefit of providing “access independent, IP-based multi-media services,” which allowed the system to communicate with any number of IP-based terminal devices and applications, including push-to-talk cellular, VoIP, video streaming, email and instant messaging. Ex. 1017 ¶ 221. He further testifies that a person of ordinary skill in the art would have recognized that IMS’s “access independent” infrastructure would have facilitated the interconnection of devices such as PDAs, web-pads, and PCs disclosed in Oh. Id. He also testifies that an ordinarily skilled artisan would have recognized that Oh’s system could benefit from the “presence server” disclosed in Forbes and TS23.141 to manage presence information from multiple monitored properties. Id. ¶ 222; see also Ex. 1032 ¶¶ 71–72 (explaining how the proposed combination would work). Mr. Rysavy’s testimony persuasively demonstrates that an ordinarily skilled artisan would have been motivated to apply the teachings of Forbes and TS23.141 to Oh’s system.” slip op. at 60

  Patent outcomesUS 7,956,739 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,956,739
• Samsung Electronics Co., Ltd. / Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01260 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

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

    “D. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations).4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Secondary considerations may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, and praise. See id. at 17–18; Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). We analyze the asserted grounds with these principles in mind.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’582 patent would have had “at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field.” Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Petitioner asserts further that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not challenge this definition of the level of skill at this time. Prelim. Resp. 6. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 5

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

    “Petitioner and Patent Owner agree that for purposes of this proceeding “no claim construction is necessary.” See Pet. 5 (citing Ex. 1002 ¶ 35); Prelim. Resp. 6. At this stage of this proceeding we determine that no claim terms require express construction in order to determine whether or not to institute inter partes review because doing so would have no effect on the analysis below. 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 6

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

    “system with Merriman’s ‘automatic URL redirection’ teachings fails because it is unsupported by any articulated, nonconclusory reasoning or rational underpinning.” PO Resp. 11 (citing KSR, 550 U.S. at 418). We agree with Patent Owner that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. PO. Resp. 11. Specifically, we agree that there is no motivation to add Merriman’s URL redirection to Philyaw’s system. See PO Resp. 11. We further agree with Patent Owner that Petitioner “fails to provide any evidence that a POSITA would have believed Philyaw to lack any important detail (or contain any other deficiency) with respect to user exits of websites” that would prompt a person of ordinary skill in the art to look to other references such as Merriman. PO Resp. 12. Rather, as discussed in detail below, Philyaw specifically addresses what happens when a user exits a vendor website. Ex. 1005, 26:39–44.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,244,582

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.