- Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1, 2, and 6–8 were not shown unpatentable because the prior art combinations did not establish the claimed messaging through the server system.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Tr. 78:6–10. Patent Owner responded “I don’t think it makes any difference for this panel’s determination.” Tr. 78:13–14. We agree and determine that the differences in the level of skill offered by the parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” See Inst. Dec. 10. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself 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)Term construed board ownDecided for patent owner
“1. media player Patent Owner contends that, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’289 patent refers to application software and does not encompass hardware devices.” PO Resp. 14 (citing Ex. 2022 ¶¶ 92–93). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player.’” Pet. Reply 1. Rather, Petitioner states the media players relied upon in the Petition are all application software. Pet. Reply 1–2. Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 24–27)—are application software. The third ‘media player’ is likewise not a hardware device.” Pet. Reply 2 (alteration in original). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Muthukumarasamy “controls delivery of selected media content and selects and controls the media devices that deliver the selected media content according to a media type of the selected media content.” Because Muthukumarasamy teaches that the media device displays media content from various disparate sources depending on the media type and media source, a [person of ordinary skill in the art] would have understood the media device loads an appropriate media player depending on the media type and source. Pet. 23–24 (citing Ex. 1008 ¶ 47; Ex. 1005 ¶¶ 66–67). Petitioner, however, proffers insufficient evidence or argument that the content choices described in paragraph 47 of Muthukumarasamy would have led an ordinarily skilled artisan to understand a media player is obtained and loaded in the content presentation device. Rather, Dr. Bederson makes conclusory statements without providing evidence to support the assertions (Ex. 1005 ¶¶ 66–67).” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Muthukumarasamy discussed above. In particular, Petitioner has not explained how Hayward teaches receiving the one or more messages in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing content from the file,” and “identify a location of the particular media player.” Pet. 41–45. More specifically, Petitioner contends that a person of ordinary skill in the art “would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate control of internet content presented at the content presentation device using any number of media players through embedded media player pages, as described in Hayward.” Pet. 65. However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the content presentation device” (Pet. Reply 22), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required messages being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above. Accordingly, Petitioner has not shown that the combination of Muthukumarasamy and Hayward teaches “receiving, in a server system, one or more messages from a personal computing device . . . wherein the one or more messages, . . . identify a particular media player for playing content from the file wherein the media player is a computer application operable to present content and control presentation of the content,” as recited in claim 1 and commensurately recited in independent claim 6. Additionally, because claim 2 depends from claim 1 and claims 7 and 8 depend from claim 6, we conclude that Petitioner has not established by a preponderance of evidence that the subject matter of claims 2, 7, and 8 would have been obvious over the combination of Muthukumarasamy and Hayward.” slip op. at 37
Patent outcomesUS 8,904,289 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,904,289 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00795 · APJ Debra K Stephens · IPR · Final written decision
Claims 1, 2, and 5–9 were not shown unpatentable over Muthukumarasamy alone or with Hayward because the claimed signals identifying a media player were not shown to pass through the asserted server system.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. Media player Patent Owner contends, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’251 Patent refers to application software and does not encompass hardware devices” (PO Resp. 13 (citing Ex. 2022 ¶¶ 81–92, 95)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 23–26)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We determine that Hayward does not cure the deficiencies of Muthukumarasamy discussed supra. In particular, Petitioner has not explained how Hayward teaches receiving the one or more signals in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing the video content” (Pet. 38–41). More specifically, Petitioner contends “a [person of ordinary skill in the art] would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device using any number of media players through embedded media player pages, as described in Hayward” (Pet. 15, 40 (citing Ex. 1005 ¶¶ 60, 102)). However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device . . .” (Pet. Reply 22 (emphasis omitted)), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required signals being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above.” slip op. at 39
Patent outcomesUS 8,356,251 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,356,251 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00793 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–5, 8, 11, 12, 14, 15, 27, and 28 were not shown unpatentable as obvious over Muthukumarasamy alone or with Hayward.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“‘media player’ in the ’528 patent refers to application software and does not encompass hardware devices” (PO Resp. 16 (citing Ex. 2022 ¶¶ 83–91, 94)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all application software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 21–24)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded. Even if the zHub and the zNode would be used to control the volume on the TV on which the streamed content is displayed, this device cooperation does not show the particular messaging recited in the claim. More specifically, even under Petitioner’s scenario that the “Volume Up” command flows from the IED (“personal computing device”) through the zHub/zNode (“server system”) to the TV (“content presentation device”), this command does not “identify a particular media player for playing content from the file.” Petitioner has not shown any messages in Muthukumarasamy that “identify a particular media player for playing content from the file” and flow from the IED through the zHub/zNode to the content presentation device. Thus, Petitioner’s assertions about devices working together fall short of proving by preponderant evidence that Muthukumarasamy discloses the particular messaging contents and path recited in claim 1.” slip op. at 30
Patent outcomesUS 8,782,528 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,782,528 - PTAB · Aug 30, 2023 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable as obvious over Badros alone or with Harkins.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review requires that “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). Determining whether a reasonable likelihood has been met has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition, and for the reasons explained below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“Petitioner proposes the term ‘render’ should be construed as expressly defined by the applicant’s lexicography in the ’329 patent claims and specification to mean ‘the process of requesting and loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser.’” Id. (quoting Ex. 1001, 7:15–19). The cited portion of the ’329 patent is accurately quoted but it is not clear on the current record whether the ’329 patent defines “render” as requiring both the requesting and loading of content or merely just the loading of content that has been requested. In multiple other instances, including the claims themselves, “render” is used exclusively in reference to the loading of content and not the requesting of it. See, e.g., Ex. 1001, 7:9– 10 (referring to “a pre-defined area of the ad content display page where the content is to be rendered”), 8:19 (referring to “content that was already rendered on the page”), 9:11–15 (“Content is only rendered on an ad content display page to a viewer when and/or to the extent that the pre-defined ad content display page triggering area is within, or within a pre-defined distance outside of, the viewer’s browser screen dimensions and scrolling position.”), 69:3–4 (claim 1 reciting “wherein the browser is further configured to render the replacement advertisement in the predefined area”). For purposes of this Decision, we apply the following construction for render: loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser. slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner proposes “[t]he term ‘replacement advertisement’ should be construed to mean ‘a new ad/content rendered in place of a previous ad/content’ as used in the context of the ’329 patent claims and specification.” Pet. 10. Petitioner supports its proposed construction with the following disclosure by the ’329 patent: “The billboard module may also cease rendering or send additional requests to the ad dispatcher server to select a new ad/content to render in the billboard module, say if the billboard was in view for a pre-determined period of time, or has been scrolled outside the viewer’s browser window dimensions.” Pet. 10 (quoting Ex. 1001, 12:65–13:3). For purposes of this Decision, we apply Petitioner’s proposed construction for replacement advertisement.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“discussed limitations, Petitioner also proposes that we construe “th[e] ‘in response to’ limitation [of claim 1 as] non-limiting because it requires a condition precedent that need not ever occur.” Pet. 34–35 (same). We are not persuaded and reject this proposed construction. The full limitation at issue recites: (b) in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time, causing a communication to be sent to one or more dispatcher servers. Ex. 1001, 68:59–63. As properly construed on the present record, the “in response to” language modifies the recited step of “causing a communication to be sent to one or more dispatcher servers” such that the step must be “in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time.” In short, “causing a communication” is a required step of the method of claim 1.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,443,329 - Ademco Inc. v. Ecofactor, Inc.Institution deniedPTAB · Jul 21, 2023 · IPR2023-00409 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“under the statutory ground advanced. 37 C.F.R. § 42.104(b)(4). Thus, the Petition must identify how “the claimed invention [of each challenged claim] as a whole would have been obvious . . . to a person having ordinary skill in the art” in view of Leen, Trundle, and Ehlers. 35 U.S.C. § 103. The Petition does not do this. In particular, and as Patent Owner argues and as we explain below, the Petition fails to show what it maps to the recited “thermostat system”/“thermostat” includes, or would have been modified to include, a processor configured to “receive geo-positioning data from the location-aware mobile device and automatically adjust a temperature value based on the geo-positioning data,” as recited in claim 1. Prelim. Resp. 11–19.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person having ordinary skill in the art “would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with (i) process control, (ii) automation systems, (iii) or a comparable field of work.” Pet. 8 (citing Ex. 1002 ¶12). Patent Owner does not dispute Petitioner’s definition. Prelim. Resp. 7–8. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’890 patent and the asserted prior art and is not challenged by Patent Owner, we apply it in our analysis below.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“(Ex. 1021 at 2) in a related civil action, but neither party offers an express construction of the preamble. Pet. 3; Prelim. Resp. 8. In fact, both parties state that Petitioner’s grounds of unpatentability do not turn on whether the preamble is limiting. Pet. 3; Prelim. Resp. 8. We do not explicitly construe any limitations, as it unnecessary to decide the Petition. However, we agree with the court and the parties that the preamble of claim 1 is limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). This is the case here as the body of claim 1 twice refers to “the thermostat” for which the only antecedent basis could be “A thermostat system.” Ex. 1001, at claim 1.” slip op. at 7
- BurdenDecided for patent owner
“E. Analysis of Ground I (Petition Ground “1A”) A Petition must “identify” how a challenged claim is unpatentable under the statutory ground advanced. 37 C.F.R. § 42.104(b)(4). Thus, the Petition must identify how “the claimed invention [of each challenged claim] as a whole would have been obvious . . . to a person having ordinary skill in the art” in view of Leen, Trundle, and Ehlers. 35 U.S.C. § 103. The Petition does not do this. In particular, and as Patent Owner argues and as we explain below, the Petition fails to show what it maps to the recited “thermostat system”/“thermostat” includes, or would have been modified to include, a processor configured to “receive geo-positioning data from the location-aware mobile device and automatically adjust a temperature value based on the geo-positioning data,” as recited in claim 1. Prelim. Resp. 11–19.” slip op. at 11
Claim constructioncites GrahamPatents in suitUS 10,584,890 - PTAB · Apr 14, 2023 · IPR2022-01489 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Claim 1 – Conclusion For these reasons, Petitioner has demonstrated a reasonable likelihood of proving that claim 1 would have been obvious over the proposed combination of Lairson and Erdogan, and over the proposed combination of Lairson and Tsai-133.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner contends that this is a typographical error and “wherein” was intended. Prelim. Resp. 8 n.2. Petitioner asserts that “each of the challenges presented in this Petition” addresses “adding a third set of layers with oxygen on a second side of a substrate.” Pet. 8. Because we find Petitioner’s contentions to be sufficient for institution even under Patent Owner’s proposed construction, we need not address Patent Owner’s proposed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We also conclude that no express claim construction is necessary for any other claim terms. See id.” slip op. at 12
- Skill levelSkill level board ownOther
“Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ794 patent, we apply a slightly modified 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.”. On this record and for the purposes of institution, we determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“However, Patent Owner’s arguments regarding the combination are directed towards a bodily incorporation of structures described in the references, rather than the combination of their teachings proposed by Petitioner. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Given the teachings in each reference and our direction that an ordinarily skilled artisan is a person of ordinary creativity, we find, on this preliminary record, that Petitioner has adequately shown that an ordinarily skilled artisan would have applied Lairson’s teachings regarding a short-pass filter with Erdogan or Tsai-133’s teachings concerning filter layers on both sides of a substrate used to form a bandpass filter. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Petitioner’s proposed combination does not involve adding the exact layers taught in Erdogan and Tsai-133 on the second side of the substrate to Lairson’s short-pass filter on the first side of the substrate. Pet. 33–34, 36– 39. Rather, Petitioner proposes, in one example, using the same materials for filter stacks on both sides of the substrate. Id. at 37–38. Thus, Patent Owner’s arguments that adding the second-side layers disclosed in Erdogan and Tsai-133 to the first-side layers of Lairson is not responsive to Petitioner’s proposed combination. Additionally, on the present record, we credit Petitioner’s declarant’s uncontroverted testimony that Lairson does not explicitly describe a bandpass filter with a long pass filter, and thus that one of ordinary skill would have looked to Erdogan and Tsai-133 for the technique of using a long-pass filter on the other side of the substrate. Id. at 34–37 (citing Ex. 1002 ¶¶ 152, 158). On the present record, and for the purposes of institution, Petitioner sufficiently shows that the combination of Lairson and either Erdogan and Tsai-133 teaches a near infrared band pass filter comprising a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen, and a second set of layers on the first side, wherein the second set of layers includes oxygen. Additionally, on the present record and for the purposes of institution, Petitioner sufficiently sets forth its showing with respect to the motivation to combine the teachings of Lairson with those of Erdogan or Tsai-133 as it proposes.” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,131,794 - Go1 Pty, Ltd. v. Opensesame, Inc.InstitutedPTAB · Feb 27, 2023 · IPR2022-01439 · APJ Stacy B Margolies · IPR · Institution
The Board instituted IPR on all challenged claims, 1–16, finding a reasonable likelihood they are unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary Response, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’113 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner states that it “generally agrees with Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 11. Patent Owner adds that “the level of ordinary skill in the art is more often premised not upon obtaining a formal degree in computer engineering, computer science, etc., but through years of hands-on experience in the field, often coupled with formal coursework that may or may not lead to a degree in the enumerated fields.” Id. (citing, e.g., Ex. 2001 ¶ 49). We determine on the current record that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art, and we therefore adopt that level for the purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express constructions for any claim terms. See Pet. 8 (“To resolve the particular grounds presented in this Petition, Petitioner does not believe that any term requires explicit construction.”); Prelim. Resp. 11 (“Patent Owner believes that the patent claims at issue can be interpreted without the need for the formal construction of any claim terms.”). We determine that no claim terms require express construction in order to determine whether to institute inter partes review.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner sufficiently shows that, in implementing Sperle’s teachings, a person of ordinary skill in the art would have considered Madison, given its disclosure of a similar system architecture and similar goals and benefits. Pet. 16–18; Ex. 1002 ¶¶ 76–83. Petitioner also sufficiently shows that an ordinarily skilled artisan would have been motivated to combine Madison’s teachings with Sperle’s teachings to provide improved access to content, improved authorization of users, an improved licensing system, and robust reporting. Ex. 1006 ¶ 6 (explaining as background that “a need exists for an improved system and method for controlling access to digital content, particularly streaming media content, and authorizing end users”); Ex. 1005 ¶ 11 (disclosing that “learning management system 140 often offers robust reporting capabilities”); Ex. 1002 ¶ 82. Petitioner also sufficiently shows that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the basic e-learning teachings of Sperle with the controlled content delivery system taught by Madison. Pet. 20–21; Ex. 1002 ¶¶ 83–86. Such a combination would have included (i) applying the access and license control software teachings of Madison to Sperle’s teachings regarding reporting module 214; and (ii) adding the browser-based content-accessing features of Madison into the similar browser-based user systems of Sperle. Pet. 20–21; Ex. 1002 ¶¶ 83–84. An ordinarily skilled artisan would have had a reasonable expectation of success because Sperle and Madison purport to solve controlled e-learning content delivery systems in similar ways and propose solutions using the same type of hardware and software with similar functionalities. Pet. 20–21; Ex. 1002 ¶¶ 85–86.” slip op. at 30
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,784,113 - Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01184 · APJ Debra K Stephens · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“8. Conclusion Based on the record before us, we determine Petitioner’s proffered arguments, evidence, and supporting testimony fails to establish a reasonable likelihood that Petitioner would prevail in showing that claims 1–7, 9, 10, 12–14, 17, 18, 20–23, 27, 30, and 31 would have been obvious over Pilgrim, Gibbons, Lairson, and Yoda.” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“II. ANALYSIS A. Discretionary Denial – 35 U.S.C. § 314(a) Patent Owner argues that we should exercise discretion to deny institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution (Prelim. Resp. 49–54). Petitioner argues we should not discretionarily deny institution under Fintiv (Pet. 66–67). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. Discretionary Denial – 35 U.S.C. §325(d) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 325(d) because of the Petition’s “reliance upon the secondary references Gibbons, Lairson, and Yoda. Gibbons and Lairson were considered by the Examiner, and Yoda does not contain any meaningful additional disclosure or basis for unpatentability that was not considered by the Examiner” (Prelim. Resp. 21–22). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged in those grounds would have been obvious as discussed below, we do not reach this issue.” slip op. at 9
- Skill levelSkill level board ownOther
“Based on the present record including the disclosure in the ʼ269 Patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements (see Pet. 6). More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ269 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 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,588,269 - Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01281 · APJ Sharon Fenick · IPR · Institution
Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–3, 6–11, 13–17, and 19 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution. Prelim. Resp. 43–47. Petitioner argues we should not discretionarily deny institution under Fintiv. Pet. 58–59; Paper 9. 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Petitioner uses the pre-AIA statutory framework in its analysis. Pet. 1 n.1. Patent Owner does not comment on this. The ’794 patent claims priority to a provisional filed before March 16, 2013, the effective date of the applicable AIA amendments. Thus, we refer to the pre-AIA version of 35 U.S.C. § 103. Our decision would be the same were we to apply the AIA version of the statute. Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8
- Skill levelSkill level board ownOther
“Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ526 patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements. More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with 3 In the present record, neither party presents arguments or evidence relating to secondary considerations. five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts the term “center wavelength” (recited in claims 8, 9, and 17) should be interpreted as “the average of the two half-power wavelengths (i.e., [full width half maximum]) in a passband.” Pet. 15 (citing Ex. 1001, 7:53–56, 9:1–4, FIGS. 7D, 8C, 9B; Ex. 1037, 5; Ex. 1039 ¶ 47). Petitioner asserts the term “passband” (recited in claim 14) should be interpreted as “a wavelength range within which a signal can pass through a filter and outside of which the signal is blocked,” as per Patent Owner’s construction Id. (citing Ex. 1037, 12–15). Patent Owner does not directly address Petitioner’s proposed interpretations or provide its own constructions for any claim term. See generally Prelim. Resp. Having considered the record, we conclude that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). E. Claims 1, 2, 3, 6, and 8 – Obviousness over Pilgrim, Yoda, and Thelen” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,131,794 - Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution deniedPTAB · Feb 7, 2023 · IPR2022-01183 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 9–18, 20, 21, 24, 25, and 27–30 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review as to the challenged claims of the ’526 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc), i.e., as construed in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1313. “Importantly, 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.” Phillips, 415 F.3d at 1313. An inventor may rebut that presumption by providing a definition of the term in the specification “with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not directly oppose Petitioner’s definition of a POSITA. See generally Prelim. Resp. Patent Owner does, however, state that “Petitioner’s expert has proposed a definition of a POS[IT]A that does not include specific experience in the design of optical filters” and “[m]ere general experience in optical elements does not demonstrate that a POS[IT]A would have possessed the specific abilities to design a brand-new multilayer optical interference filter from scratch, or to recreate and modify the materials from Yoda, as would have been required” in the asserted combination of Pilgrim and Yoda. Prelim. Resp. 33. Based on the present record including the disclosure in the ʼ526 patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements. More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ526 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“of lower refractive index layers, and two specific properties: 1) that at least one of the one hydrogenated silicon layers is thicker than one of the lower refractive index layers, and 2) that the plurality of hydrogenated silicon layers have at least a specified refractive index at a given wavelength. Ex. 1001, 11:8–16. Petitioner argues that Pilgrim teaches the desirability of an optical filter stack having specific properties, and that Yoda teaches an optical filter having the claimed layers. However, even if it would have been desirable to use Yoda’s Si:H filter layers and those layers would have had the recited refractive index properties, as Petitioner asserts, Petitioner fails to show that an ordinarily skilled artisan would have obtained Pilgrim’s cited filter properties for an optical filter stack when implementing Yoda’s filter layers in Pilgrim’s optical filter stack. The optical filter that Pilgrim discloses, and that Petitioner relies on to teach the claimed optical filter properties, has a passband that “is centered on 950 nm with a full bandwidth of approximately +/-25 nm” and a “shift in [passband] center between an [angle of incidence (AOI)] of 0 degrees and an AOI of 40 degrees [that] is approximately 15 nm.” Ex. 1004 ¶ 26. Yoda is silent with regard to whether its filter layers could be used in an optical filter having a limited shift at a passband center, as disclosed by Pilgrim. As Patent Owner points out, “no reference cited [in] the Petition describes a design for any optical filter with a center wavelength shift of 15 nm over the 0° to 40° AOI range.” Prelim. Resp. 3. And Yoda does not “consider how the center wavelength would shift based on AOI.” Id. at 22. Petitioner’s assertion that optical filter properties and the filter layer properties are “routinely optimized parameters” (Pet. 24) does not adequately explain that an ordinarily skilled artisan would have implemented the filter layer properties taught by Yoda in an optical filter to obtain the properties disclosed by Pilgrim. Still further, Petitioner’s assertion about routine optimization is conclusory and is not supported by evidence. Nor is Petitioner’s argument that one of ordinary skill in the art would have had a reasonable expectation of success in “optimizing parameters” to design a filter for Pilgrim’s application supported by adequate evidence. Petitioner must show not only “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention,” but also “that the skilled artisan would have had a reasonable expectation of success in doing so.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc. 688 F.3d 1342, 1360 (Fed. Cir. 2012). Petitioner’s assertion that a POSITA would have expected to succeed in optimizing the parameters and designing a filter for Pilgrim’s application and to meet Pilgrim’s design goals in light of the guidance about how various processes and parameters impacted the index of refraction and extinction coefficient of Si:H and the POSITA’s ability to simulate the performance of the filter designs using the optimized materials (Pet. 22) does not address whether a POSITA would have had a reasonable expectation of success in creating an optical filter with the required properties using the filter layers described by Yoda. Petitioner has not shown a POSITA would have had the “ability to simulate the performance of the filter designs using the optimized materials.” Pet. 22. For example, Petitioner has not discussed what specific simulation techniques or tools would have been used by a POSITA. Furthermore, although Petitioner’s expert asserts the POSITA would have been led to select hydrogenated silicon as the high-refractive index material and would have further found it obvious to design the material to increase the refractive index to meet the design goals, while still maintaining a low extinction coefficient. These goals would have been achieved by tailoring the deposition processes and conditions, as well as the hydrogen content of the hydrogenated silicon material, as was known to the POSITA (Ex. 1002 ¶ 145), that statement does not explain how the tailoring the deposition processes and conditions and the hydrogen content would have led to successfully maintaining the low extinction coefficient, let alone to successfully creating an optical filter with Pilgrim’s required passband characteristics. Rather, as Patent Owner points out, the evidence cited in the record before us suggests “the design of [an optical] bandpass interference filter with a narrow bandwidth and low center wavelength shift is not trivial.” Prelim. Resp. 31 (citing Ex. 1001, Fig. 7C). Specifically, in detailing the requisite filter layers for an exemplary filter, the ’526 patent describes a filter stack of 48 layers of materials having varying thicknesses, an “[antireflective] coating includ[ing] 5 layers, and the total coating thickness [being] about 5.7 µm.” Ex. 1001, 8:1–12, Figs. 7B–7C.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,222,526
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.