• Cisco Systems, Inc. v. Portsmouth Network Corp.No claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the asserted obviousness combinations did not cure the failure to show the claimed request and routing steps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art in the field of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of its Response. PO Resp. 5. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 11

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

    “Neither party contends that any formal claim construction is necessary. See Pet. 12 (“Petitioner submits that, for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.”); PO Resp. 4 (“Here, at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’279 Patent’s claim terms.”). Patent Owner notes, however, that Petitioner had asserted specific constructions in the Cisco litigation for the term “predetermined,” as recited in claims 1, 10, 14–16, and 18, and for the term “quantum.” PO Resp. 4. Specifically, according to Patent Owner, Petitioner proposed that “predetermined” be construed as “determined before the data flow request” and that “quantum” be construed as “an amount of a requested resource by which to increase or decrease.” Id. (citing Ex. 2007). Patent Owner contends asserted prior art combinations disclose or render obvious the challenged claims under these constructions. Id. Because our conclusion that Petitioner has not demonstrated that any of the challenged claims are unpatentable does not turn on the construction of either “predetermined” or “quantum,” there is no need for us to construe those terms. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We again are not persuaded by Petitioner’s argument. As an initial matter, we find no argument with respect to “best effort data traffic” or dropped packets in the Petition. See Tr. 12:10–21 (conceding that “the phrase ‘best effort’ was not in the Petition” but arguing that it was raised in response to the Patent Owner Response). Moreover, we are unable to identify any argument in the Patent Owner Response to which this line of argument is properly responsive, and Petitioner does not identify any such line of argument. Instead, Petitioner’s argument appears to advance belatedly a new theory. See 37 C.F.R. § 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 73–74, available at” slip op. at 43

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “We credit the supporting testimony of Dr. Olivier on the points discussed above, as it is explained sufficiently and consistent with the testimony simply mirrors the Petition and does not explain sufficiently why a person of ordinary skill in the art would have understood Kovvali in the manner Petitioner asserts. See Pet. 35; Reply 17–18; Ex. 1003 ¶ 83.” slip op. at 44

  Patent outcomesUS 7,035,279 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,035,279
• Cisco Systems, Inc. v. Portsmouth Network Corp.Some claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00505 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 13, 14, 16–19, 21, and 22 are unpatentable as obvious over Gai under theory 1B; claims 11, 12, 23, and 24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. at 667.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “The most common type of MAC bridge is a switch, which has multiple ports connecting it to LANs, other switches, host computing systems, or other network elements. Switches can be roughly classified as access switches or core switches. An access switch has ports that connect to LANs and/or to other network endpoints, such as user computer systems. Core switches interconnect the access switches into a Wide Area Network (WAN), by direct connection between the core switch and access switches and/or by connection to other core switches. Core switches that are directly connected to access switches are referred to herein as edge switches. Ex. 1001, col. 1, ll. 27–38. Both parties refer to this disclosure when arguing whether particular switches in the asserted prior art (Gai) qualify as an “access switch” or “edge switch.” See Pet. 5, 22, 27–28 (“edge switches are ‘[c]ore switches that are directly connected to access switches’”), 71; PO Resp. 31–32 (“The ’986 patent discloses that ‘[a]n access switch has ports that connect to LANs and/or to other network endpoints.’ . . . The ’986 patent also discloses that edge switches are ‘[c]ore switches that are directly connected to access switches.’”); Reply 20, 22. Dr. Houh and Dr. Olivier do so as well. See Ex. 1003 ¶¶ 39, 66–67, 82–83, 166, 171, 193; Ex. 2001 ¶ 80. Based on the full trial record, we agree and conclude that the descriptions of “access switch” and “edge switch” in the ’986 patent reflect what was understood to be the plain and ordinary meanings of these terms at the time of the invention. Accordingly, we interpret “access switch” to mean a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems, and interpret “edge switch” to mean a core switch that is directly connected to an access switch.” slip op. at 12

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

    “and conclude that Petitioner has not shown sufficiently that a person of ordinary skill in the art would have been motivated to designate switch 117 as the root switch when implementing the network reconfiguration method of Gai. The only mention of an access switch connected to port 7 of switch 114 is at column 13, lines 59–63 of Gai. While that sentence establishes that such an access switch may exist in the network, it does not state or imply that it would be the root switch. Instead, when discussing the operation of the Figure 1 network, Gai only identifies switches 120 and 121 as the root switch. See Ex. 1005, col. 10, ll. 37–41, col. 11, ll. 60–64, col. 14, ll. 16–20, col. 15, ll. 27–29, 38–51, col. 16, ll. 42–45. To be sure, Gai does disclose that “execution of the spanning tree algorithm causes the switches to elect a single switch, among all the switches within each network, to be the ‘root’ switch,” where “[e]ach switch has a unique numerical identifier (switch ID) and the root is the switch having the lowest switch ID numeric value,” such that an access switch can be the root switch if it has the lowest switch ID. See Ex. 1005, col. 2, ll. 42–47, col. 10, ll. 29–36. As Patent Owner and Dr. Olivier explain in detail, though, Gai expressly cautions against doing so. Gai discloses that [d]epending on the configuration of a given network, the location of the root can significantly affect the distance that messages must travel. For example, many networks include a plurality of switches designated as access switches that provide connectivity to LANs, end stations, etc., and a plurality of backbone switches that, in turn, interconnect the various access switches. If the root is located at an access switch and the principal server utilized by the end stations (i.e., clients) is coupled to a backbone switch, the average distance between end stations and the primary server may be quite high, resulting in inefficient network operation. In addition, the backbone switches may become partitioned as ports between them are blocked. Id. at col. 3, ll. 17–29; see also id. at col. 10, ll. 26–29 (the “location of the root may affect the average distance (i.e., the average number of hops) a message travels and/or cause undesirable partitioning of backbone switches”). Thus, the location of the root is not an unimportant consideration—it affects the distance messages must travel and can cause backbone switches to be partitioned. See id. Gai, therefore, discloses that “[t]o reduce the average distance and avoid partitioning of the backbone switches, it is desirable to locate the root at a backbone switch.”10 Id. at col. 3, ll. 29–31 (emphasis added). Switch 117 in Petitioner’s modified Figure 1 is an access switch, not a backbone switch. See id. at col. 6, ll. 10–12 (“Access switches are preferably coupled to entities (e.g., LANs, end stations, etc.) whereas backbone switches provide the interconnections between access switches.”).” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “We agree with Petitioner. For purposes of claim 1, which does not recite “downstream” communication of dummy traffic (unlike claims 11, 12, 23, and 24), the only modification to Figure 1 is the addition of switch 117 and server 112e—otherwise, in Petitioner’s analysis, Gai’s method operates exactly as described when a failure occurs at root port 3 of switch 114. See Pet. 69–73, 81–85; Tr. 47:20–48:2. That modification is expressly supported by Gai, which discloses the following: Rapid reconfiguration entity 234 similarly generates one or more separate multicast messages 400 for each remaining entity directly coupled to access switch 114 (i.e., entities or end stations on LANs 102–104). In each message 400, entity 234 loads SA field 414 with the address of the corresponding entity. Each of these messages are similarly forwarded by access switch 114 through the new forwarding port (i.e., port number four). In addition, entity 234 generates and transmits one or more multicast messages 400 for entities reachable through switch 114 on ports other than its root port. For example, if port number seven at switch 114 were coupled to another access switch, entity 234 would transmit multicast messages 400 carrying the source address of entities directly coupled to this additional access switch as well. Thus, at least one multicast message 400 is generated and transmitted for each entity directly coupled to or downstream of access switch 114 (relative to the root). As set forth above, upon receipt of these multicast messages 400, the other devices within network 100 update their corresponding filtering databases with the new destination ports, as necessary. Ex. 1005, col. 13, l. 50–col. 14, l. 3 (emphasis added). Gai thus expressly contemplates the addition of “another access switch” coupled to port 7 of switch 114. Switch 117 in the modified Figure 1 is such a switch. See PO Resp. 30 (Patent Owner arguing that “a [person of ordinary skill in the art] would understand that switch 117 is an access switch”); Ex. 1018, 84:14–85:9 (Dr. Olivier agreeing that switch 117 is an “access switch”). And because an “access switch” has “ports that connect to LANs and/or to other network endpoints, such as user computer systems,” and the above disclosure mentions “entities directly coupled to th[e] additional access switch,” switch 117 would be directly connected to a device like server 112e as well. See Ex. 1001, col. 1, ll. 31–33; Ex. 1005, col. 13, ll. 59–63; supra Section II.B. We credit Dr. Houh’s testimony that Gai in its written description expressly discloses the particular “variation of the topology” of Figure 1 that Petitioner asserts. See Ex. 1003 ¶ 165. Third, Patent Owner argues that Petitioner has not established that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Gai to meet the claims.” PO Resp. 14–16 (citing Ex. 2001 ¶¶ 47–49). Patent Owner’s arguments are primarily directed to Petitioner’s asserted modification for its “1A” theory. See id. To the extent Patent Owner’s arguments apply to claim 1 and “1B,” we disagree, as Gai expressly describes the asserted modification to Figure 1 (i.e., adding an access switch connected to port 7 of switch 114). Thus, we are persuaded that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the method of claim 1 based on Gai’s full disclosure.” slip op. at 33

  Patent outcomesUS 6,917,986 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,917,986
• Juniper Networks, Inc. v. Monarch Networking Solutions LLCSome claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00175 · APJ Norman H Beamer · IPR · Final written decision

  Claims 7, 9–11, 13, 14, 16, and 17 are unpatentable as obvious over Biswas and Kumar; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 14 (citing Ex. 1003 ¶¶ 62–64). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 8–9. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. 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). The parties submit that no claim construction is necessary. Pet. 14; PO Resp. 15. We have not been presented with the need to construe any claim terms for this Decision. D.” slip op. at 11

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

    “We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. We are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Ex. 1003 ¶¶ 77, 97–101. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Biswas and Kumar.” slip op. at 13

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

    “This disclosure is inconsistent with any suggestion that the Fangman system, when routing a telephone call to its destination, identifies the private IP address of the destination telephone by determining the port range to which the port number of the destination telephone belongs. When Fangman describes the NAPPT process, it does not indicate that port ranges are used, but rather repeatedly states that port numbers are used: The [service gateway] receives a data packet from the IP device, including a public destination IP address . . . a destination port number . . . and source information, NAPPTs the data packet, using the [public destination IP address] and the [destination port number] to identify the [IP telephone] . . . . Ex. 1024, code (57). Performing NAPPT on the data packet received from the destination may include using the public destination IP address and the destination port number to uniquely identify the IP telephone, and changing the public destination IP address to a private source IP address of the IP telephone while leaving the destination port number unchanged. Ex. 1024, 4:28–33. The SG 170 may maintain a table of semi-permanent mappings of the external IP address and ports to the internal hosts and ports. Ex. 1024, 8:49–51.” slip op. at 33

  Patent outcomesUS 8,693,369 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,369
• Qualcomm Incorporated v. Network System Technologies, LLCInstituted
  PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution

  The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.

  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 › §315(b) time barNot time barredDecided for petitioner

    “§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16

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

    “If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 7,373,449
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 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 10

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

    “We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32

  Patent outcomesUS 9,094,525 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,525
• ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentable
  PTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10

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

    “We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23

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

    “We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25

  Patent outcomesUS 10,930,276 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,930,276
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00377 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1, 2, and 11–13 are unpatentable over Hui; the contingent motion to amend is denied because substitute claims 29, 30, and 39–41 are unpatentable over Hui.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “A motion to exclude evidence must be filed to preserve a prior objection to evidence and must identify the objections in the record. 37 C.F.R. § 42.64(c). An objection to evidence submitted prior to the institution of the trial, including evidence submitted with a petition to institute inter partes review, must be filed within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). Once a trial is instituted, any objection must be filed within five business days of the service of evidence to which the objection is directed. Id. The objection must identify 9 Patent Owner quotes Paper 26 which was expunged and replaced with Paper 36. See Ex. 3001. 10 Paper 30 was expunged and replaced with Paper 37. the grounds for the objection with sufficient particularity to allow for correction in the form of supplemental evidence. Id. An objection to deposition evidence “must be made during the deposition.” 37 C.F.R. § 42.64(a).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner’s arguments. Petitioner is correct that the ’204 Patent does not redefine compression to exclude quantization, or otherwise disavow the scope of “compression.” We also agree that compression is a broad and basic term that encompasses any form of compression. We agree, however, with Patent Owner that compression and quantization should not be interpreted as having the exact same meaning. Patent Owner’s arguments, however, focusing on the purposes of quantization and compression are misplaced. In cases where quantization results in a reduced data size, quantization can be encompassed by the term compression. We find that, consistent with the ’204 Patent Specification, the scope of the term “compress[ing]” may include quantization, so long as the quantization results in using fewer bits than the original digital representation, i.e., a reduction in data size. For the foregoing reasons, we decline to adopt Patent Owner’s proposal that “‘compress[ing] the estimated CSI,’ should be construed as plain and ordinary meaning, which excludes ‘quantizing the estimated CSI’ without further separately applied compression.” See PO Resp. 20; PO Sur-reply 9. As demonstrated in the analysis below, we need not provide an explicit claim construction for “compress[ing] the estimated CSI.” The ordinary and customary meaning applies to “compress[ing] the estimated CSI.”” slip op. at 30

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’204 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent plus knowledge of [multiple-input, multiple-output (“MIMO”)] and [orthogonal frequency-division multiplexing (“OFDM”)]. Pet. 19 (citing Ex. 1002 ¶ 19). Patent Owner offers a slightly different description as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’204 patent would have had at least a Bachelor’s Degree in electrical engineering, computer engineering, or a related field, and approximately one year of experience in the design or development of wireless communications systems or the equivalent, including knowledge of MIMO and OFDM. Id. (citing Ex. 2001 ¶ 31). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’204 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 32

  • Expert testimonyPetitioner expert creditedOther

    “excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board. Furthermore, Patent Owner’s arguments challenging the credibility of Dr. Roy go to the weight that should be given to Dr. Roy’s Declaration testimony, not the admissibility of the Declaration. In our patentability analysis that follows, we account for the evidence that Dr. Roy’s Declaration is substantially the same as Dr. Akl’s Declaration, the supporting evidence cited therein, as well as Dr. Roy’s deposition testimony in determining the appropriate weight to give Dr. Roy’s testimony when weighing the record evidence.” slip op. at 14

  Patent outcomesUS 8,249,204 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,249,204
• Gaf Materials LLC v. Kirsch Research And Development, LLCAll claims unpatentable
  PTAB · May 24, 2022 · IPR2021-00192 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–33 are unpatentable: claims 1, 8–12, and 19 are anticipated by Lou; the remaining claims are obvious over the stated Lou-based combinations.

  RulingsFinal written decision

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

    “patent. See Phillips, 415 F.3d at 1315–17. The term “extrusion lamination” does not appear anywhere in the ’482 patent outside of issued claim 1, but our understanding is supported by the prosecution history of the ’482 patent. Claim 1 as originally filed in the application that issued as the ’482 patent recited, in relevant part, “a reinforcing scrim of interwoven strands for supporting tensile forces in multiple directions; and at least one layer of thermoplastic material affixed to a side of the reinforcing scrim for providing a weather-resistant barrier.” Ex. 1002 (’482 patent prosecution history), 33. In response to a rejection of the claims as anticipated by U.S. Patent No. 5,523,357 to Peterson, describing a rubber mill calendering process, the applicant amended claim 1 to add the phrase “by extrusion lamination.” Id. at 71, 76. We find nothing to suggest that a person of ordinary skill in the art would have understood that amendment to add a requirement of an additional layer of thermoplastic material, separate and apart from the “at least one layer of thermoplastic material” already recited in the original claim, to serve as a binder between the scrim and the original layer of thermoplastic material. The applicant explained in remarks accompanying the amendment, “Peterson fails to disclose forming a thermoplastic layer over the reinforcing scrim by an extrusion lamination process.” Id. at 71 (italics, underlining, and capitalization omitted). We, thus, find that the added phrase specifies how the recited “thermoplastic material” must be “affixed” to “the side of the reinforcing scrim,” but does not alter the recited function of the thermoplastic material, namely, “for providing a weather-resistant barrier.” Although the applicant’s remarks further state that “[c]ontrarily [to the rubber mill calendering process of Peterson], the roofing underlayment of the present invention is formed by an extrusion lamination process which bonds the various layers together, including the pre-formed films, reinforcement scrim, and slip-resistant material” (id.), claim 1 does not recite “pre-formed films” or “slip-resistant material”; such additional layers are recited in dependent claims 5 (“metallized film”) and 2 (“layer of slip-resistant material”), respectively (Ex. 1001, 6:29, 6:37). Looking finally to the extrinsic evidence of record, including the testimony of the parties’ experts and other exhibits filed by the parties, we find no persuasive evidence to show that the recitation of extrusion lamination requires an additional layer in addition to the recited scrim and the at least one layer of thermoplastic material affixed to a side of the scrim. In that regard, notwithstanding Patent Owner’s contentions, we are not persuaded that “extrusion lamination” and “extrusion coating” are mutually exclusive. Rather, we credit Mr. Kaczkowski’s testimony that extrusion coating would also be considered “extrusion lamination” if, for example, it “results in the extrudate being permanently bonded to the substrate.” Ex. 2020, 28:17–20. While Patent Owner argues that Mr. Kaczkowski’s statement “is nothing more than restatement of the extrusion coating process,” and “[t]o think otherwise would require believing that ‘extrusion coating’ involves a thermoplastic layer that is extruded, and thus coated, onto a substrate with the result being that it is not permanently bonded, i.e., it will delaminate from the substrate” (PO Sur-reply 5), we disagree with Patent Owner’s further contentions that “[s]uch a product makes no sense” and “[u]nder Petitioner’s theories, the [prior art] would not work” (id.). Although there could indeed be extrusion coating processes that would result in coatings that are not permanently bonded, it does not follow that the cited prior art used such processes. Further, although a laminate may be affixed to substrate by an adhesive or other binder, we find no persuasive evidence in the record that the binder must be a separate layer from the laminate.” slip op. at 21

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

    “the “reinforcing scrim of interwoven strands” recited in claim 1 and Lou’s polypropylene polymer 2 to the recited “thermoplastic material.” Id. at 22– 23. Petitioner further contends that Lou discloses “affixing the thermoplastic material by extrusion lamination,” citing Lou’s disclosures that “[e]xtruder 20 supplies polypropylene polymer 2 through a slit orifice to deposit a thin continuous coating on the surface of sheet 1” and that coated sheet 3 is pressed by a calendaring nip formed by heated and unheated rolls. Id. at 23 (quoting Ex. 1005, 2:34–44) (citing Ex. 1003 ¶ 19; Ex. 1005, 2:45– 49).” slip op. at 34

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

    “Having considered the parties’ respective arguments, we find that Petitioner’s contentions are supported by the evidence of record, and we find that Petitioner has articulated sufficient reasoning with rational underpinnings (including support both from the cited prior art and from Mr. Kaczkowski’s testimony) to combine the relevant teachings of Lou and Goodacre. We disagree with Patent Owner’s suggestion it is insufficient that Mr. Kaczkowski opined that a person of ordinary skill would have evaluated the proposed combination based on the combined teachings of the asserted references. As the Supreme Court has explained, When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103. KSR, 550 U.S. at 421. Patent Owner does not dispute Goodacre’s teachings or that combining those teachings with Lou would increase the tensile strength of Lou’s underlayment, but appears instead only to fault Mr. Kaczkowski for not determining whether those solutions would be less expensive than other alternatives. Such arguments are not persuasive. Although, as cited above, Petitioner alleges in the Petition that a skilled artisan would have recognized cross-lamination as “a simpler, less costly way to manufacture a nonwoven reinforcing scrim . . . consistent with Lou” (Pet. 37), we find that is only one among several reasons identified by Petitioner and Mr. Kaczkowski for the combination (see, e.g., id. at 34–35 (additionally identifying increased tensile strength as a well-known benefit of orienting polyolefin fabric)), each of which is independently persuasive.” slip op. at 53

  • ExcludeMotion to exclude, grantedGranted

    “Motion to Exclude. Federal Rule of Evidence 801 defines “hearsay” as a “a statement that: (1) the declarant does not make while testifying in the current trial or hearing; and (2) a party offers in evidence to prove the truth of the matter asserted in the statement.” Fed. R. Evid. 801(c). We agree with Petitioner that Patent Owner is offering Dr. Reitman’s testimony for its truth. As Petitioner points out, Dr. Reitman’s testimony is presented in the Patent Owner Response in alleged support of Patent Owner’s argument. See Reply Mot. Excl. 1 (citing PO Resp. 22 (“Maureen Reitman recognized that ‘extrusion coating’ and ‘extrusion lamination’ were two different processes”; “[A]s Ds. [sic] Reitman recognized, a POSITA would understand ‘extrusion coating’ to be different than ‘extrusion lamination.’”)). Further, Rule 802 provides that hearsay is not admissible unless a federal statute, the Federal Rules of Evidence, or other rules prescribed by the Supreme Court provide otherwise. Fed. R. Evid. 802. We agree with Petitioner that no exception or exclusion applies in this case. Mot. Excl. 1. Although, as Patent Owner contends, Federal Rule of Evidence 703 provides that “[a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed,” and that “[i]f experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted,” we are not persuaded that opinions of others offered in litigation are the sort of “facts or data” that experts in the field of roofing underlayments would reasonably rely on in forming their own opinions.” slip op. at 64

  Patent outcomesUS 6,308,482 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,308,482
• Vudu, LLC v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10

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

    “Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. 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).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35

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

    “rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41

  Patent outcomesUS 10,270,830 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,270,830
• Vudu, Inc. v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10

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

    “Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. 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).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable

    “The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12

  Patent outcomesUS 10,313,414 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,313,414

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.