• ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Aug 11, 2022 · IPR2021-00455 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Chardon and HDMI 1.3a because the combination does not disclose data that itself identifies a controllable function.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As Patent Owner observes, the two proposals differ “in terms of the level of experience specifically with home theater systems.” Id. at 10. Because all of the challenged claims make specific reference to a “home theater device,” Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15– 19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 10–11 (citing Ex. 2003, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 17

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

    “phrase creates a degree of ambiguity, we are mindful that “the claims themselves provide substantial guidance as to the meaning of particular claim terms” and that “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. In this instance, the related phrasing that appears in the “automatically adding” and “causing” limitations of issued independent claim 1 is illuminating. Both of those limitations refer to “the controllable function of the controllable appliance that was identified by the data received from the controllable appliance.” Ex. 1001, 17:11–14, 17:21–24 (emphasis added). There is no question that the only antecedent for “the data” in these limitations is the “data that functions to identify a controllable function of the controllable appliance” recited in the “receiving” limitation. See id. at 17:8–9. And there is no apparent room in the language “that was identified by the data” for the introduction or consideration of such “other information” that Petitioner would like to use “in connection with” the recited “data” to identify the controllable function. See Reply 2.” slip op. at 19

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

    “Petitioner reasons that a person of ordinary skill in the art would have combined such teachings from HDMI 1.3a with Chardon’s system because HDMI 1.3a “is a technical guide for the interoperability of the HDMI standard and how HDMI enabled devices operate,” and that “Chardon relies on HDMI capabilities to facilitate communication and monitoring-device state changes in its system.” Pet. 30–31 (citing Ex. 1005, 4:18–21; Ex. 1010, 17; Ex. 1003 ¶¶ 130–131). According to Petitioner, “[a] person of ordinary skill in the art would have therefore turned to at least one of the versions of the HDMI Specification to fill in any details in Chardon with respect to how HDMI-capable devices, such as those of Chardon and the ’486 patent operate, and would have had a reasonable expectation of success in doing so.” Id. at 31. Petitioner supports this reasoning with testimony by Dr. Russ that it is a “well-known industry practice” to rely on HDMI 1.3a as “specification of an industry standard” when “designing and building devices that implement the HDMI standard, incorporating all of the capabilities it offers.” Ex. 1003 ¶ 133. Patent Owner disputes the sufficiency of Petitioner’s showing. In” slip op. at 35

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The difficulty with Petitioner’s and Dr. Russ’s position is that it is inconsistent with our adopted claim construction that the data itself identify a controllable function of the controllable appliance from which the data is received. See supra § II.C. As Patent Owner asserts, HDMI 1.3a “does not contemplate the exchange of any information that itself functions to identify a controllable function of a playback device.” PO Resp. 24 (emphasis added). All that the “Deck Status” message indicates in the example of Figure 17 is that the current status of the playback device is “Stop.” We also are not persuaded by Petitioner’s and Dr. Russ’s argument that HDMI 1.3a’s Tables 13 and 26 disclose that “Deck Info” information is returned with the “Deck Status” message, and that such “a deck status message includ[es] the features that the device can provide (e.g., play, pause, stop, etc.).” Pet. 41; Ex. 1003 ¶ 117. Reliance on such “Deck Info” information is problematic at least because it is “other information” that would be used in combination with the “Deck Status” to determine controllable functions of the controllable device, which is precluded by our adopted claim construction.” slip op. at 36

  Patent outcomesUS 10,325,486 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,325,486
• Astronics Test Systems, Inc. v. Teradyne, Inc.All claims unpatentable
  PTAB · Jul 20, 2022 · IPR2021-00350 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Schinabeck; the Board did not reach the Miyamoto and Frame grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s definition of the level of ordinary skill in the art with minor modification (Dec. 8–9; see Pet. 20). In particular, we removed the qualifier “at least” from the education level and from the experience level, because the qualifier introduces ambiguity. Patent Owner does not dispute this determination of the level of a person of ordinary skill in the art at the time of the invention (PO Resp. 8). Thus, we determine an ordinarily skilled artisan at the time of the invention would have had (i) a bachelor’s degree in electrical engineering, computer engineering, or a related field and (ii) one year of experience with testing of electronic equipment. We determine this asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’479 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “execute a user program, the test equipment comprising” is the preamble and that it is limiting (Ex. 1003, 13:57–58; PO Resp. 9). In particular, Patent Owner contends, “the preamble of claim 1 [is] limiting because it serves as antecedent basis for multiple terms in the body of the claim, and it supplies ‘essential structure’ of the claimed invention” (PO Resp. 9). Petitioner does not address this contention (see Pet. Reply 4–5). We agree with Patent Owner that the preamble is limiting because the body of the claim refers to the user program as well as the automatic test equipment (Ex. 1003, 13:57–58, 14:14–17; see Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ([D]ependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention”)). Patent Owner asserts the following limitation, “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), “although formatted within the same paragraph as the preamble[,] is not actually part of the preamble, but rather part of the body of the claim” (PO Resp. 10). However, further in its argument, Patent Owner flips its statement in arguing “input signal having a value” and contends this is a “requirement[] of the preamble” (id. at 11). Petitioner’s contentions are only directed to the limitation (Pet. Reply 4–5).” slip op. at 12

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

    “Initially, we note the claim recites “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), Thus, due to the recitation, we determine the input signal could be either that the signal connection point receives an input signal or the channel circuit receives an input signal (id.). The next limitation recites the comparison sub-circuit has “a signal input . . . wherein each of the comparison sub-circuits is adapted to produce a comparison output signal at the comparison output having a value input signal” (id. at 13:62–14:3). The claim does not recite that the “signal input” receives “the input signal.” Nevertheless, in light of the claim language and the Specification and because Petitioner has contended both interpretations are shown, we interpret the recited “input signal” as the signal received from the UUT. The portion of the ’479 Patent describing, in part, Figure 1, cited by Patent Owner discloses ATE 139 includes multiple instruments that may generate and measure signals. A host computer 120 executes a software program that controls operation of each of the instruments. Host computer 120 may be programmed to analyze these outputs to determine whether the system under test 189 is operating properly. Such programming is traditionally a part of a user program and drives programmed values and compares measured values to expected values on one or more signal lines connected to the UUT. These steps may be programmed for multiple lines for multiple test cycles (Ex. 1003, 3:32–51; PO Sur-reply 3). The ’479 Patent further describes an “ATE . . . provide[s] stimulus to . . . the UUT and then measure[s] the output to determine if the UUT has performed to its specifications” (Ex. 1003, 1:30–33; PO Sur-reply 3). Thus, these descriptions support both interpretations. Nevertheless, the ’479 Patent describes a signal being supplied and compared to expected values. Accordingly, we interpret “an input signal” as being the signal received from a unit under test (UUT).” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We determine Schinabeck teaches the structure of the comparison sub-circuits recited in claim element 1a. Indeed, given that switches and comparators were known (Tr. 35:5–8; Ex. 1026, 17:17–18:8, 30:16–22), we determine switching certain switches on or off is a switch performing the same function it had been known to perform, yielding no more than one would expect from such an element (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). Thus, turning switches off or on in Schinabeck’s circuitry, would not have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19)). A skilled artisan is “a person of ordinary creativity, not an automaton” (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). An ordinarily skilled artisan “must be presumed to know something” about the art “apart from what the references disclose” (In re Jacoby, 309 F.2d 513, 516 (CCPA 1962)). We further credit Dr. Wicker that an ordinarily skilled artisan “would have understood that switch K3a can be opened or closed depending upon the desired test set-up” and “by definition, switches are controlled to be open or closed” (Ex. 1001 ¶ 90). And again, Schinabeck contemplates use of the circuitry as recited, as described in claim 10 discussed supra. We thus are persuaded that Schinabeck teaches or at least suggests limitation 1a). We are also not persuaded Petitioner used impermissible hindsight reconstruction as the circuitry elements in Schinabeck are being used as was known to be used for the purpose of “monitoring response signals during automated testing of any other circuit elements –– Petitioner is relying on closing switches in the disclosed circuity of Schinabeck (Pet. 25–27). Additionally, Schinabeck discloses coupling comparison circuits to the same response signal (Ex. 1008, 11:49–53, 12:56–13:7, 4:49–66 and thus, Patent Owner’s contention that this grouping is “not any ‘desired’ configuration for functional or parametric testing” in Schinabeck is not supported by Schinabeck’s disclosure.” slip op. at 31

  Patent outcomesUS 7,395,479 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,395,479
• Google LLC v. Parus Holdings, Inc.Institution denied
  PTAB · Jul 18, 2022 · IPR2022-00355 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–16 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.

  RulingsInstitution decision

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

    “For these reasons, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1 as obvious over Buchner or obvious over Buchner and Launey.” slip op. at 32

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). In its Preliminary Response, Patent Owner contends that we should exercise our discretion to deny the Petition because Petitioner’s invalidity grounds will be resolved in a district court case3 before our deadline for a final written decision. Prelim. Resp. 15–17 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). However, because we find that Petitioner is not likely to prevail on the merits, and deny on that basis, we do not need to address whether we should exercise our discretion to deny based on the district court case.” slip op. at 10

  • 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. First, the ordinary meaning of “internet address” in the context of the claims is an address that conforms to IP. Claim 1, for example, recites “providing a computer operatively connected to the internet.” This is a reference to the Internet, the global network conforming to TCP/IP. Later references to “internet address” should be read in this context. See Phillips, 415 F.3d at 1314 (The Federal Circuit’s “cases provide numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term.”). The Specification confirms that the Internet is a specific network and not just any network: “[T]he present invention allows users to control and monitor other systems and devices that are connected [to] the Internet or any other network by using voice commands.” Ex. 1001, 1:25–28; see also id. at 1:32–43, 1:53–56 (“Furthermore, the use of laptop or desktop computers to access the Internet requires either a direct or a dial-up connection t[o] an Internet Service Provider (ISP).”). The Specification gives a specific example of a uniform resource locator (URL) as a device identifier. Id. at 17:52–54 (“Each record will contain at least a device identifier, which may be in the form of a URL.”). It also states that “data is transmitted using the uses “internet” to distinguish the Internet from other networks. It follows that an “internet address” is an address on the Internet (or at least conforming to IP), and not an address on any arbitrary network. As Phillips counsels, “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” 415 F.3d at 1313.” slip op. at 12

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

    “We agree with Patent Owner. Petitioner has not introduced persuasive evidence that a TCP/IP based bus would have been an obvious replacement for Buchner’s IEEE 1394 bus. Petitioner makes this argument in conclusory fashion, and Mr. Lipoff largely repeats this argument in his testimony, without meaningful additional testimony and without identifying the basis for that testimony. Ex. 1002 ¶¶ 116–117. If Mr. Lipoff contends that the 1997 IEEE article shows that an IEEE 1394 bus can be swapped for a TCP/IP bus, he has not explained that adequately or shown where the article supports such an argument. Thus, Petitioner’s contention is largely conclusory attorney argument driven by hindsight. Petitioner has not shown a reasonable likelihood that it would prevail in showing that Buchner teaches “said instruction set comprising: at least one internet address, said at least” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,386,455
• Google LLC v. Traxcell Technologies, LLCInstitution denied
  PTAB · Jul 11, 2022 · IPR2022-00442 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Google did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “We thus determine that Petitioner does not adequately demonstrate that the second wherein clause of the update limitation is met by Myr as Petitioner contends. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claims 1 and 11 as unpatentable under 35 U.S.C. § 103(a) over Myr and Yiu, nor on its challenge of claim 22 as unpatentable under 35 U.S.C. § 103(a) over Myr, Yiu, and Machida. Because Petitioner’s challenges of the various challenged dependent claims suffer from the same defect by virtue of those claims’ dependence from one of the challenged independent claims, we also conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in its challenges of claims 5, 7, 8, 11, 12, and 17–19 as unpatentable under 35 U.S.C. § 103(a) over Myr and Yiu, nor its challenges of claims 2, 6, 13, and 16 as unpatentable under 35 U.S.C. § 103(a) over Myr, Yiu, and Machida.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in Computer or Electrical Engineering, Computer Science, or equivalent training, in addition to approximately 2 years of experience working on telecommunications navigation and geolocation systems.” Pet. 2–3 (citing Ex. 1003 ¶¶ 30–34). Patent Owner proposes that a person of ordinary skill in the art “would have at least a Master of Science (‘MS’) Degree in Computer Science, Computer Engineering, Cartography, or equivalent work experience in the field of computer networks, along with knowledge of the general structure of networked communication systems, its hardware and software components and underlying communications technologies.” Prelim. Resp. 6. Patent Owner further proposes that a person of ordinary skill in the art “would be familiar with the latest communications standards.” Id. (citing Ex. 2001, 7). Neither Patent Owner nor Mr. Van Essen explains why the higher educational level is necessary, and, on the current record, we do not discern a basis for reaching a different conclusion under either proposed articulation of the level of ordinary skill. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Michalson, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Both parties note that, for a related patent, the Eastern District of Texas previously construed the term “preference flags,” recited in challenged independent claims 1, 11 and 22 of the ’147 patent, as “two or more flags to control access to tracking of the user.” Pet. 3 (citing Ex. 1008, 54–55; Ex. 1003 ¶¶ 35–36); Prelim. Resp. 5 (citing Ex. 1008, 54–55). Both parties state that they apply this construction in their briefs. Pet. 3; Prelim. Resp. 5. In light of the parties’ apparent agreement, and because the district court’s construction appears reasonable, we adopt it for purposes of this Decision.” slip op. at 9

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

    “The specification of the ’147 patent does not use the term “navigation information” outside of its title and claims, and we discern insufficient reason to include “composed as a number of segments” as part of its construction because the claims explicitly further limit “navigation information” by reciting such segmentation. See Ex. 1001, 128:17–19 (claim 1 reciting “wherein the first processor further sends the user navigation information to the network as a number of segments”), 130:21– 23 (claim 11 reciting “sending the user navigation information to the at least one other processor outside the network as a number of segments”), 132:54– 57 (claim 22 reciting “wherein the first processor further sends the user navigation information to the at least one other processor outside of the network as a number of segments”). Nevertheless, consistent with the dictionary definitions Patent Owner provides, we agree that the “term ‘navigation information’ includes at least ‘a course or way (route) from one place to another.’” Prelim. Resp. 5. In adopting such a construction for purposes of this Decision, we additionally note that each of independent claims 1, 11, and 22 further recites “traffic congestion information” as a distinct term. See Ex. 1001, 128:21–22, 130:26–27, 132:51. We accordingly treat “navigation information” and “traffic congestion information” as distinct in meaning. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”).” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,820,147
• Epic Games, Inc. v. Ingenioshare, LLCInstituted
  PTAB · Jun 7, 2022 · IPR2022-00295 · APJ Steven M Amundson · IPR · Institution

  The Board instituted IPR on claims 7–12, 22–24, and 33–67 on all petitioned grounds, finding a reasonable likelihood of success on the § 103(a) combinations.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in light of the Texas case where Patent Owner has asserted the ’038 patent and other patents against Petitioner. See Prelim. Resp. 7–12; supra § II.B.” slip op. at 16

  • Parallel petitionsDecided for petitioner

    “Under the circumstances here, two petitions challenging claims in the ’038 patent will not place a substantial and unnecessary burden on the Board or Patent Owner. In IPR2022-00202, the Board will consider challenges to related U.S. Patent No. 10,142,810 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 9 (PTAB May 23, 2022) (granting institution of inter partes review); supra § II.B. In IPR2022-00291, the Board will similarly consider challenges to related U.S. Patent No. 10,708,727 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00291, Paper 10 (PTAB May 24, 2022) (granting institution of inter partes review); supra § II.B. Thus, in other proceedings the Board will consider and become familiar with Diacakis, Tanigawa, and Hullfish and the relevance of those references to claims in related patents.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. Petitioner also asserts that “[a]dditional education might 5 The record does not include evidence concerning objective indicia of nonobviousness. compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 92–97. At this stage of the proceeding, Patent Owner does not address the educational level or work experience of a person of ordinary skill in the art. See, e.g., Prelim. Resp. 1–7, 12–16. Based on the current record and for purposes of institution, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’038 patent and the asserted prior art.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,492,038
• Epic Games, Inc. v. Ingenioshare, LLCInstitution denied
  PTAB · May 26, 2022 · IPR2022-00297 · APJ Joni Y Chang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 5, 7, 53, 54, 56, 57, and 59 obvious over Furlong or Diacakis.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Each of these claims does not reintroduce the term “message” in the body of the claim but instead relies on the instance of “message” introduced in the preamble for antecedent basis. Notably, the first reference to “message” in the body of claim 1 (Element 1.1) appears in a limitation (“receiving, by the server, the message from the person using the first device”), describing a positive step in the claimed “method.” Similarly, the first reference to “message” in the body of claim 53 (Element 53.3) appears in a limitation (“wherein the at least one computing device [of the server] is configured to receive the message from the person using the first device”), describing a structural feature (“computing device”) of the claimed “server.” As Patent Owner notes, the “message” recited in each of Elements 1.1 and 53.3 refers back to the phrase “a person, using a first device, trying to 8 electronically convey a message from the first device to a second device” recited in the preambles. Prelim. Resp. 1−2, 10. Because claims 1 and 53 require the server (or the computing device in the server) to “receive the message from the person using the first device,” the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in the preambles of these claims is essential to understanding the limitations in these claims, not merely reciting an intended purpose of the claimed invention. This “indicates a reliance on both the preamble and claim body to define the claimed invention.” Catalina, 289 F.3d at 808; Bell Commc’ns Research, 55 F.3d at 620; Shoes by Firebug, 962 F.3d at 1368. Therefore, the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in each of the preambles of claims 1 and 53 is limiting.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Notably, neither the authenticated session with PLAS 15, nor the request from the third-party application (steps 500 and 502), is the “message” the person is trying to convey to the device of the user, as required by Element 53.3. Significantly, Furlong discloses that, after PLAS 15 notifies the third-party application of the subscriber’s availability (step 512), “the application sends the message to the subscriber (step 514)” directly, not via the server, PLAS 15. Ex. 1007 ¶ 94 (emphasis added), Fig. 5. Thus, PLAS 15 in Furlong does not receive the message the third-party application (person) is trying to convey to the device of the subscriber (user).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Here, Petitioner asserts that a person of ordinary skill in the art of the ’407 patent would have had “a Bachelor’s degree in Computer Science, or equivalent field and three to five years of experience working with Internet communication systems.” Pet. 23 (citing Ex. 1003 ¶¶ 67−72). At this juncture, Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. 2 At this time, the parties do not address objective indicia of nonobviousness, which accordingly do not form part of our analysis. See Pet. 75 (“Petitioner is unaware of any evidence of secondary considerations that would support a finding of non-obviousness.”). 10 For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’407 patent, prior art of record, and supported by the testimony of Dr. Kevin Almeroth.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,744,407
• Epic Games, Inc. v. Ingenioshare, LLCInstituted
  PTAB · May 24, 2022 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Institution

  The Board instituted IPR on claims 1–9 and 15–17 on all asserted § 103 grounds, finding a reasonable likelihood that Epic would prevail on at least one challenged claim.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation, and Patent Owner does not, at this time, propose any different articulation. See Ex. 1003 ¶¶ 92–97. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. 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 9

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

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Although “Petitioner does not believe that any terms need to be construed to assess the arguments presented” in its Petition, Patent Owner raises an issue with respect to the challenged claims’ recitation of a “network-based portal.” See Pet. 25; Prelim. Resp. 15–16. In particular, Patent Owner contends that “[t]he specification of the ’727 Patent uses the term ‘network-based portal’ consistently as being at the server-side of a network.” Prelim. Resp. 15. Patent Owner supports its contention by identifying examples where the specification of the ’727 patent describes a “portal” as separate from a “mobile phone” or from a person’s “wireless device.” Id. at 15–16 (citing Ex. 1001, 6:12–13, 6:32–33, 6:55–63, 16:1–3). But the specification also includes numerous examples where the portal functionality is implemented in a “mobile phone,” i.e., a client-side device. See Ex. 1001, 3:10–19, 9:3– 10:2, 10:17–13:27, 14:64–15:54, Figs. 7–11. For example, the specification explains that a “mobile communication device,” such as a “mobile telephone,” may perform steps depicted in Figures 7 through 11. See id. at 9:4–8, 10:17–28, 11:60–12:5, 13:1–9, 14:7–13, 14:66–67, 15:44–46; see also id. at 14:36–38 (identifying a “mobile telephone” as an example of a “mobile communication device), 17:53–55 (same). And Patent Owner categorizes a “mobile phone” as a client-side device. See Prelim. Resp. 16– 22. To adopt Patent Owner’s exclusion of client-side functionality from the scope of the recited “network-based portal” would thus exclude preferred embodiments. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Accordingly, for purposes of this Decision, we decline to adopt such an exclusion. The parties will have an opportunity to elaborate on their positions for proper construction of “network-based portal” during the trial. On the record before us, we do not find it necessary to construe any other term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Among such reasons, Petitioner identifies both references’ teachings regarding prioritization of communications from certain individuals, as well as the similarity of Diacakis’s “presence and availability” information with Loveland’s “current circumstance” information. Id. at 53–56 (citing Ex. 1007 ¶¶ 8, 24; Ex. 1008, 3:45–5:24, Figs. 1–2). Petitioner supports this identification with testimony by Dr. Almeroth, who also supports Petitioner’s contention that the combination would both yield predictable results and be reasonably expected to succeed. Ex. 1003 ¶¶ 152–161; Pet. 54–57. At this time, Patent Owner disputes neither Petitioner’s reasoning to effect the combination nor Petitioner’s specific analysis of the individual limitations of claims 7–9. On the current record, and mindful of the standard that applies during this preliminary phase of the proceeding, we find that Petitioner’s reasoning is sufficiently supported by rational underpinning.” slip op. at 25

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner

    “discretion under 35 U.S.C. § 314(a) to deny the Petition in light of the state of the related litigation. Prelim. Resp. 9–14 (citing, inter alia, NHK Spring Co., Ltd. v. Intri-plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). But on the same date Patent Owner filed its Preliminary Response, the district court granted Petitioner’s motion to dismiss for improper venue, thereby terminating the related litigation. See Ex. 3001, 9. We agree with Petitioner that “this dismissal moots Patent Owner’s arguments based on Fintiv” and that “[b]ecause there is no longer any parallel proceeding, there is no basis for a discretionary denial under § 314(a).”4 Reply 1. We accordingly decline to exercise our discretionary authority to deny the Petition.” slip op. at 33

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,708,727
• T-Mobile USA, Inc. v. Traxcell Technologies, LLCInstituted
  PTAB · May 24, 2022 · IPR2022-00669 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–30 under all six §103 grounds and granted T-Mobile’s motion to join IPR2021-01552.

  RulingsInstitution decision

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the petition and any 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.” As elaborated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review as to the challenged claims and grounds raised in the Petition. We also grant the Joinder Motion.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “We are persuaded by Petitioner’s arguments. Because the Petition challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

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

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,918,196
• Google LLC v. Defenders Of The American Dream, LLCInstitution denied
  PTAB · May 18, 2022 · IPR2022-00112 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Because Petitioner has not sufficiently shown that Silva discloses “an image recognition task [that] comprises an instruction to select one image corresponding to the selected image category from the matrix of non-overlapping randomly selected images,” we find that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that claims 1–17 would have been obvious in view of Silva, either alone or in combination with Osborn or Osborn and Pinkas.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security and/or artificial intelligence” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 34–39). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’578 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 19

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

    “Claim Construction Petitioner asserts that it interprets the claims “using the standard used in civil actions under 35 U.S.C. § 282(b), in accordance with the ordinary and customary meaning as understood by a POSA and the patent’s prosecution history,” but does not identify any constructions. Pet. 6. Patent Owner does not address claim construction in the Preliminary Response. Under these circumstances, we find that we need not engage in formal claim construction, although we do address some claim language in the course of the obviousness analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). D.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “Moreover, the prosecution history removes any doubt about whether these claims are limited to an instruction to select only one image. As explained above, the applicant changed “an instruction to select an image” to “an instruction to select one image” in response to a rejection in which the Examiner was relying on the Pratte reference for the instruction. See Ex. 1002, 404, 427. The applicant then argued that Pratte failed to teach the “image recognition task” because “Pratte does not instruct a user to select ‘one image,’ but instead ‘instructs a user to select all images that are associated with animals.’” Id. at 435. We conclude that the amendment and associated argument evidence a clear and unmistakable narrowing of the claims to systems with instructions to select one image corresponding to the category, and excluding systems, like Pratte, in which the user is instructed to select all images associated with a category. See Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (explaining that “for a statement during prosecution to qualify as a disavowal of claim scope, it must be ‘so clear as to show reasonable clarity and deliberateness’ and ‘so unmistakable as to be unambiguous evidence of disclaimer’”) (quoting Omega Engr., Inc, v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)); see, e.g., SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1379 (Fed. Cir. 2021) (limiting claims where “the applicants argued that [the prior art] had a ‘hierarchical’ relationship between fields and values that fell outside the scope of the amended claims”). The disclaimer arises even though the applicant made other arguments in the same response. See SpeedTrack, 998 F.3d at 1380. Silva, like Pratte, instructs the user to select all images that fall into a category––see Ex. 1005, 1325 (“The user is then asked to identify, from each column available in the test, which image relates to the label.”)––and thus does not meet the claim language requiring an instruction to select “one” image. Notably, this problem cannot be cured by mapping the claimed “matrix” to a single column of Silva, because the claims also require that the “matrix” comprise at least one of each of the three categories of images, and Silva has three columns that are a mix of images known to be in the category and known to not be in the category, and a fourth column that consists of entirely unknown images. See Ex. 1005, 1325 (“One special column will contain all those images whose relation to the current label we want to verify, while all the others contain the remaining images whose relation to the label the system is confident about, i.e. they certainly do or do not relate to the label.”).” slip op. at 25

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,621,578
• Microsoft Corp. v. Parus Holdings, Inc.Institution denied
  PTAB · May 11, 2022 · IPR2022-00137 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 or 2 were obvious over either asserted combination.

  RulingsInstitution decision

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

    “We accordingly determine that Petitioner fails adequately to support its contention that the combination of Perrone, Kumar, and Madnick meet claim 1’s requirement for “a rank number assigned to each one of said web sites and stored in said database.” See Ex. 1001, 19:56–57. We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Perrone, Kumar, and Madnick.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “Petitioner seeks to fill the resulting gap by contending that a person of ordinary skill in the art “would have understood Kumar’s ranking teachings would have been appropriately applied to distinct web sites when the web sites each represent a satisfactory source for desired information.” Id. at 24. Petitioner advances this contention notwithstanding the fact that Perrone fails to disclose a database containing a list with multiple web sites, and notwithstanding the fact that Kumar fails to disclose distinct web sites. Petitioner’s gap-filling contention thus seeks to compensate for what is absent from the references themselves. But “[t]o draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Petitioner’s additional citation of Anycasting fares no better. Notably, Petitioner does not rely directly on Anycasting as part of its patentability challenge. Instead, Petitioner cites Anycasting to support its gap-filling argument, specifically for the proposition that “distinct web sites may be considered equivalent sources of particular information (‘replicated servers’) for desired information, such as news.” Pet. 24. In doing so, Petitioner relies on Anycasting’s statement that “whereas the many web news sites (e.g., CNN Interactive, Time Magazine and USA Today) carry different information, they, nevertheless, can be construed as being replicated servers for some applications.” Ex. 1008, 1390 (emphasis added).3 Petitioner does not specifically address the limited applications for which this statement might apply. Regardless, Anycasting’s statement falls far short of supporting a general equivalence of replicated servers and distinct web sites 3 Petitioner’s citation to page 1392 appears to be a typographical error. that would thereby render inconsequential Kumar’s silence on distinct web sites. See Prelim. Resp. 31 (“Anycasting fails to remedy Kumar’s failure to disclose the ranking of multiple, distinct web sites.”).” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies, such as web-based information retrieval systems.” Pet. 4. Petitioner adds that “[a]dditional education may substitute for lesser work experience and vice-versa.” Id. Dr. Terveen supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶¶ 25–28. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Terveen, we adopt it for purposes of this Decision. 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 9

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

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner does not believe any claim language requires express construction” to resolve its challenges, nor does Patent Owner propose any express construction of any claim term. See Pet. 6. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,721,705

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.