• Amazon.Com, Inc. v. M2m Solutions LLCAll claims unpatentable
  PTAB · Jul 25, 2023 · IPR2022-00260 · APJ David C Mckone · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious: claims 1–6 and 13 over Kloba, Multer, and Hoyle; claims 7–30 over combinations adding Loughran and, for certain claims, Fong.

  RulingsFinal written decision

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

    “Petitioner does not believe that any term of the ’442 patent need be construed; the claims should be given their plain meaning.” Pet. 8. Patent Owner concurs with that approach for present purposes, but expressly reserves its future rights to offer counter arguments and evidence in any instances where Petitioner or the Board may act to expressly or implicitly construe any claim term in a manner inconsistent with its plain and ordinary meaning, and/or where they may elect to propose or adopt specific claim constructions of any claim terms. PO Resp. 2–3. No explicit construction of any claim term is required for the purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “PO Resp. 18–19 (citing Ex. 2013 ¶ 27). Patent Owner’s proposed level of skill is not materially different from that proposed by Petitioner, and Patent Owner does not argue that the level of skill we adopted in the Institution Decision is erroneous. The parties do not argue that any issue in the case turns on any difference between the proposals. We maintain our finding that Petitioner’s proposal reflects the correct level of skill in the art. However, our findings and conclusions in this proceeding would be the same under Patent Owner’s proposal.” slip op. at 13

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “teaches the additional limitation of claims 16 and 19. Collateral estoppel precludes a party from re-litigating an issue if (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX, 909 F.3d at 1377 (quoting Stephen Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). In the ’1205 FWD, the Board found that Kloba teaches the additional limitation of claims 16 and 19 of the ’989 patent. Ex. 2011, 83–85. The additional limitation of claims 16 and 19 of the ’989 patent is identical to the additional limitation of claims 16 and 19 of the ’442 patent (including the unique identifier). Ex. 1011 (claim chart comparing claims 16 and 19 of the ’989 patent to claims 16 and 19 of the ’442 patent). Thus, the ’1205 FWD presented the identical issue and actually litigated and adjudicated the issue. We address Patent Owner’s argument as to the identity of the issue below. Resolving this issue was necessarily required to determine whether claims 16 and 19 of the ’989 patent were unpatentable. Ex. 2011, 83–85. Patent Owner was fully represented in the ’1205 IPR and Patent Owner does not contend otherwise.” slip op. at 63

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

    “that combining the teachings of Kloba and Hoyle in the manner limitation 1[f] recites would have been an obvious adaptation of the disclosed technology at the time of the invention. The Supreme Court has held that “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417. We “must ask whether the improvement is more than the predicable use of prior art elements according to their established functions” because “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. And when making this analysis, we are not confined to “seek[ing] out precise teachings directed to the specific subject matter of the challenged claims;” instead we look more broadly to what the evidence as a whole shows was known and “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. Notably, here, that skilled artisan is someone who has a substantial amount of education and training in the relatively complex technology at issue. See § I.C above.” slip op. at 48

  Patent outcomesUS 10,791,442 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,791,442
• Crowdstrike, Inc v. Open Text Inc.Instituted
  PTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution

  The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13

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

    “Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21

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

    “f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,418,250
• Crowdstrike, Inc. v. Open Text Inc.Instituted
  PTAB · Jun 15, 2023 · IPR2023-00124 · APJ Michelle N Wormmeester · IPR · Institution

  The Board instituted inter partes review of claims 1–4, 7–10, 12, and 15–18 on all asserted grounds; Morris-based grounds met the institution threshold, while Capalik-based grounds did not.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv at 9. The parties agree that, according to median time-to-trial statistics in the Western District of Texas, where the related litigation is pending, the expected trial date for the related litigation is mid-July 2024. Pet. 70; Prelim. Resp. 9. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 9 (District Court Order Granting Third Amended Scheduling Order); Prelim. Resp. 9–10. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about two months later than the deadline for the Board to issue a final written decision. See Pet. 71. This time difference is sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11

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

    “Under § 325(d), we apply a two-part analysis, first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16

  • BurdenInstitutedInstituted

    “3. Summary In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Morris alone as well as over Petitioner’s proposed combination of Morris and van Oorschot. Claims 2–4, 9, 10, and 12 depend from claims 1 or 8. Having reviewed Petitioner’s arguments asserting that claims 2, 4, 9, 10, and 12 would have been obvious over Morris alone as well as Petitioner’s arguments asserting that claims 2– 4, 9, 10, and 12 would have been obvious over Morris in combination with van Oorschot, (see Pet. 25–30, 32–35), we also determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to these dependent claims.” slip op. at 39

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

    “On the record before us, at this stage of the proceeding, there does not appear to be any claim construction dispute. Accordingly, for purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,578,045
• Netflix, Inc v. Robocast, Inc.Institution denied
  PTAB · Jun 9, 2023 · IPR2023-00182 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Netflix did not show a reasonable likelihood that claims 1–2, 7–9, 11–12, 15, and 26–28 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Both parties support their proposals with testimony by their respective experts. See Ex. 1003 ¶ 41–44; Ex. 2017 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “previously construed certain terms for the ’451 patent claims, i.e., for an ancestor of the subject ’819 patent that shares a substantially common written description. Pet. 18–19; Prelim. Resp. 6–8 (citing Ex. 1014 (claim construction order in cases involving Microsoft and Apple)). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner states that it “does not necessarily agree that the prior district court constructions are correct, but the constructions are nonetheless satisfied by [the asserted] Grounds.” Prelim. Resp. 6–8; Pet. 18–19. Patent Owner also states that the Board panel in the 1125 IPR adopted the same constructions for “show structure of nodes,” “node,” and “interactively variable duration information,” which Patent Owner asserts also appear in relevant claims of the ’819 patent. Prelim. Resp. 8. Since both parties purport to apply these constructions, we do as well for purposes of this Decision. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). We have thus reviewed the court’s claimconstruction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1014, 16–17; Pet. 18; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 26, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1014, 2–13; Pet. 18; Prelim. Resp. 6–7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claims 1 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22–23; Pet. 19; Prelim. Resp. 7–8.” slip op. at 15

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

    “With this understanding of Escobar, we agree with Patent Owner’s argument. That is, independent claim 1 defines a method in which presentation of the “advertisement content” occurs in connection with automatic presentation of other content, namely “content . . . presented . . . in accordance with said show structure.” Ex. 1001, 17:53–56, 17:65–67. Escobar’s two-level gateway structure is not consistent with this requirement, and neither Petitioner nor Dr. Houh provides sufficient explanation of how Escobar’s advertisement insertions are otherwise presented in connection with the automatic presentation of the objects/assets. Because Petitioner does not sufficiently show that this aspect of the claim is disclosed by, or would have been obvious over, Escobar, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Escobar alone or over Escobar in combination with Rege.” slip op. at 34

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,606,819
• Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentable
  PTAB · May 31, 2023 · IPR2022-00162 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–7, 10, and 12 are unpatentable: Harding anticipates and renders claims 1–7 and 12 obvious; the listed combinations render claims 3, 4, 10, and 12 obvious.

  RulingsFinal written decision

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

    “1. “detent position” In its Petition, DJI argued that the claim term “detent position,” as recited in independent claim 1 of the ’752 patent, should be construed to mean “zero-force position.” Pet. 9. In its Patent Owner Response, Textron cited documentation from the parallel district court case that the parties “agree to construe ‘detent position’ to have its plain and ordinary meaning,” and stated that “there is no dispute between the parties as to the meaning of the term and . . . no explicit construction is necessary.” PO Resp. 8–9 (citing Ex. 2016, 5). Based on the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “Based on the fully developed trial record, we agree with DJI that the claim phrase “engaging . . . when both the longitudinal controller and the lateral controller are released” should not be limited to controllers on two separate control sticks. That is, we adopt the plain and ordinary meaning for the phrase “when both the longitudinal controller and the lateral controller are released” and construe this term as encompassing either single control stick or multi-stick control configurations. We begin with a review of the specification of the ’752 patent. See Phillips, 415 F.3d at 1315 (stating that “the specification is ‘the single best guide to the meaning of a disputed term’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The “single stick” aspect of our construction finds support in the specification, which consistently reinforces that the lateral and longitudinal controllers may be embodied by a single control stick. Ex. 1001, 2:55–61, 3:18–29, 5:21–27, 8:27–30, 8:49–57, 9:6–10, 10:44–47. As two examples, the specification refers to when the “pilot moves the control stick,” and in another, the specification references where, “[i]n the preferred embodiment, the first 0.1– 0.2 inch of aircraft stick movement is used to determine whether the stick is in the detent position.” Ex. 1001, 8:49–57, 10:44–47 (emphases added). Textron does not identify explicitly, nor could we find a single instance, where the specification of the ’752 patent references using two control sticks. Furthermore, we agree with DJI that the word “both” recited in dependent claims 6 and 7 does not require two separate control sticks, but rather refers to releasing both the longitudinal and lateral controllers. The crux of Textron’s argument appears to be that, because dependent claims 6 and 7, unlike independent claim 1, require releasing both the longitudinal and lateral controllers to activate a state, they cannot be embodied by a single stick, stating “if the controllers were not separate, how could they be independently released?” PO Resp. 10. Textron’s argument, however, conflates “controllers” and “sticks.” As we discuss above, the specification of the ’752 patent repeatedly teaches having both the longitudinal and lateral controllers be actuated by a single control stick. Textron does not support its argument with evidence from the specification, nor does it support its position that, when dependent claim 6 and 7 refer to “the longitudinal controller” and “the lateral controller,” they are referring to the separate control sticks to actuate these two different controllers. Instead, dependent claims 6 and 7 are agnostic as to whether the longitudinal and lateral controllers are set up to actuate on a single control stick or on multiple control sticks. In summary, we accord the claim phrase “engaging . . . when both the” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 11–12 (citing Ex. 1002 ¶¶ 61–62). In its Patent Owner Response, Textron agrees with the level of skill in the art as proposed by DJI, arguing the following: a person of ordinary skill in the art . . . at the time of the invention of the ’752 Patent would have been someone with at least the equivalent of a Bachelor’s degree in mechanical engineering, aerospace engineering, electrical engineering, robotics or similar discipline covering principles of the design or operation of flight controls for helicopters, drones, or other rotary aircraft, as well as one year of experience working on the design, development, implementation, or operation of such technologies. [Textron] also agrees that significant experience could substitute for formal education, and significant education could substitute for work experience. PO. Resp. 4–5. Based on the fully developed record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’752 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Final Written decision, we adopt DJI’s proposed level skill in the art and apply it in our anticipation/obviousness analysis below.” slip op. at 18

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

    “h. Summary In summary, we have reviewed DJI’s arguments and supporting evidence as to how the teachings of Harding account for all the limitations of independent claim 1, and we agree with and adopt DJI’s analysis. See Pet. 16–28. Accordingly, DJI has demonstrated by a preponderance of the evidence that the subject matter of claim 1 is anticipated by and would have been obvious over the teachings of Harding. 5. Claims 2–5 and 12 DJI also contends that dependent claims 2–5 and 12 of the ’752 patent are unpatentable under §§ 102(b) or 103(a) as anticipated by or rendered obvious over the teachings of Harding. Pet. 28–38. DJI explains how the teachings of Harding account for the subject matter of each dependent claim, and provides reasoning as to why a person of ordinary skill in the art would have been prompted to modify the teachings of this reference. Id. During trial, Textron does not address separately DJI’s arguments and supporting evidence as to how the teachings of Harding account for the additional limitations of dependent claims 2–5 and 12. See PO Resp. 10–32. As one example, claim 2 directly depends from independent claim 1, and further recites “maneuvering the rotary aircraft within the first envelope with a translational rate command, the translational rate command being adapted to control longitudinal flight of the rotary aircraft with movement of the longitudinal controller and lateral flight of the rotary aircraft with movement of the lateral controller.” Ex. 1001, 11:47–53. DJI contends that Harding teaches this limitation because it discloses a translational rate command where ground speed follows the cyclic stick, and that while in TRC, longitudinal movement of the cyclic stick controls longitudinal ground speed and lateral movement of the cyclic stick controls lateral ground speed. Pet. 28–30. DJI cites Harding’s Figure 6, reproduced below.” slip op. at 31

  Patent outcomesUS 9,162,752 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,162,752
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–9 and 15–17 were not shown unpatentable because the asserted combinations did not disclose the construed network-based portal residing on a server side of a network.

  RulingsFinal written decision

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

    “network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 11. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 19:63, 20:4, 20:6, 20:11, 20:15–16, 20:21–22, 20:29–30, 20:42–43, 20:46–47; see PO Resp. 19 (Patent Owner contending that, because of the repeated recitation of “network-based portal” throughout the body of independent claim 1, the “preamble therefore breath[e]s life and meaning into claim 1”). Contending that a “network-based portal” is “a web page or interface that connects multiple users to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 36. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. Because the deficiency in Petitioner’s showing applies to the claims that depend from claim 1 because they inherit the “network-based portal” limitations, we also conclude that Petitioner does not show that any of claims 2–5, 15, or 17 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 7–9 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; nor that” slip op. at 38

  Patent outcomesUS 10,708,727 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,708,727
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00202 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted obviousness grounds did not show a network-based portal residing on the server side of a network.

  RulingsFinal written decision

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

    “Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1038 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 24. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 70–75. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 20:3, 20:11, 20:20, 20:23, 20:29, 20:31, 20:48, 20:54; see PO Resp. 19 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 1). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 11 and 19. See Pet. 55–57 (Petitioner’s analysis of claim 11 relying substantially on analysis of claim 1), 59–60 (Petitioner’s analysis of claim 19 relying substantially on analysis of claim 1). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 1– 20 is unpatentable under 35 U.S.C. § 103(a) over Diacakis.” slip op. at 36

  Patent outcomesUS 10,142,810 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,142,810
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00295 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the asserted combinations did not establish the claimed server-side network-based portal.

  RulingsFinal written decision

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

    “The issue before us is therefore well-defined, namely whether a “network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 23–25. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if” slip op. at 14

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

    “Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 28 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Under our adopted construction, Petitioner does not show that the combination of Tanigawa and Hullfish meets the claim requirements of a “network-based portal.” That is, Petitioner’s reliance on a client-resident interface to meet the claim’s recitation of a “network-based portal” is incompatible with our construction of that phrase. We accordingly conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 64 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 65–67 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64– 66 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, Loveland, and Takahashi.” slip op. at 36

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 60–85. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1039 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

  Patent outcomesUS 10,492,038 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,038
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00294 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the petitioner did not establish that Diacakis disclosed the construed server-side network-based portal.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “entitled to no weight because it “repeats the [Patent Owner Response] nearly verbatim,” “appears to contain opinions he did not develop,” and “is contradicted by Dr. Rouskas’s own deposition testimony.” Reply 3–4. Although Petitioner makes multiple allegations of deficiencies in Dr. Rouskas’s direct testimony, none of these allegations is sufficiently developed with specific examples. First, we disagree that mere verbatim duplication between an expert declaration and an attorney brief defines “a classic example of a cursory expert declaration the Board disregards.” See id. at 3. The Board’s concern is rather whether expert testimony “cite[s] to any additional supporting evidence or provide[s] any technical reasoning to support [its] statement[s].” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also id. at 16 (“Dr. Jones offers only a verbatim restatement of the assertion being supported, without any supporting evidence or technical reasoning” (emphasis added)). As Patent Owner asserts, “Petitioner fail[s] to provide a single example of how Dr. Rouskas’s testimony is ‘cursory or unsupported.’” Sur-reply 1.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “5. Summary As we note above, we find certain of Patent Owner’s arguments adequately rebutted by Petitioner, such that we do not consider them in our assessment. Nevertheless, Patent Owner retains compelling arguments for its proposed construction, supported by expert testimonial evidence, including dictionary definitions and the ’038 patent specification’s reference to a “portal or a gateway.” We find such references more compellingly refer to “portal” and “gateway” as synonyms rather than alternatives. In addition, Patent Owner provides convincing evidence and argument that rebuts the concern raised by the Board at institution whether Patent Owner’s proposed construction would exclude preferred embodiments. Petitioner, who bears the overall burden, addresses that concern only with attorney argument, which we accord less weight. In light of these considerations, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network.” slip op. at 27

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

    “Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 21 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34–35. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 55–56 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 57–58 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64–66 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Diacakis, Loveland, and Takahashi.” slip op. at 34

  Patent outcomesUS 10,492,038 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,038
• T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentable
  PTAB · May 15, 2023 · IPR2022-00669 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–30 are unpatentable under § 103(a) over the six asserted combinations of Bruce and Hancock with Meadows, Knockeart, and/or Moles.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9

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

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “not a communications device is a mobile wireless communications device, the reference states that the system can be used with a “landline or a mobile cellular telephone subscriber.” Ex. 1006, 3:49; see also Ex. 1006, 5:58–60 (“[t]elephone calls are primarily originated from either traditional fixed location landline telephones or mobile wireless telephones”); Ex. 1006, 5:66–6:3 (“[t]o identify the geographical location of the caller . . . several 6 Patent Owner argues that Hancock does not teach this claim requirement, and we have previously found that Hancock does not so teach. PO Resp. 15 (citing Van Essen Decl. ¶ 56); Google LLC v. Traxcell Techs., LLC, IPR2021-01004, Paper 7 at 18 (PTAB Dec. 7, 2021). techniques can be used depending on the particular telephone (i.e., landline or mobile telephone) originating the call”). The same system is used in Bruce for both fixed and mobile devices, and the same telephone number (411) is used whether fixed or mobile. Reply 7 (citing Ex. 1006, Fig. 1, 3:63–66, 5:56–58, 5:63–67; Braasch Decl. ¶ 60). We are persuaded by Petitioner’s reliance on a patent to Karp, et al. as background art, to confirm that it was well known that the phone number of a caller is used to identify whether or not a call is on a mobile phone, and that the use of Automatic Number Identification (ANI) is not limited to fixed landlines. Pet. 24 (citing Ex. 1009, Fig. 11B, 12:20–22; Braasch Decl. ¶ 70); Reply 8–9 (citing Ex. 1009, 1:39–44, 12:24–27).7 The record further includes support for Petitioner’s contention in the form of declarant testimony that explains, “[a] POSITA would have recognized that to select an appropriate location system 17 for a communication received over a landline or wireless network, the switch 16 or the location system 17 would first identify whether a request was made from a landline or a wireless device.” Braasch Decl. ¶ 70 (cited in the Petition at page 24); see also id. ¶ 71 (explaining that the determination would be made even if the incoming call uses a landline or a modem). We are persuaded by this evidence and credit the Braasch testimony in this regard.” slip op. at 19

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

    “We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of Bruce and Hancock, and the preponderance of the evidence establishes that a person of ordinary skill would have been motivated to make that combination.” slip op. at 15

  Patent outcomesUS 9,918,196 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,918,196

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.