• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · Oct 10, 2019 · IPR2019-00989 · APJ Jennifer S Bisk · IPR · Institution

  Institution was denied on claims 1, 4, 7-9, 18, 21, 24-26, 36, 38, 39, 42, 45, and 48 because Kobata did not teach the required identifier placement.

  RulingsInstitution decision

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

    “instituted unless the information presented in the Petition and Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the parties’ arguments, we conclude that the information presented does not establish a reasonable likelihood that Microsoft will prevail in challenging the patentability of claims 1, 4, 7–9, 18, 21, 24–26, 36, 38, 39, 42, 45, and 48 of the ’636 patent. We, therefore, decline to institute an inter partes review.” slip op. at 2

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

    “Each of the independent claims of the ’636 patent recites “a second instance of the digital asset” with a “second unique identifier” and requires “the second instance of the digital asset include[s] the digital content and at least one other portion that does not include the digital content.” Ex. 1001, 1 On October 11, 2018, the USPTO revised its rules to harmonize the Board’s claim construction standard with that used in federal district court. Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). This rule change applies to petitions filed on or after November 13, 2018. Id. 20:60–65 (claim 1), 22:34–39 (claim 18), 24:11–16. Further, the claims recite “the second instance of the digital asset include[s] the second unique identifier embedded in the at least one other portion of the second instance of the digital asset.” Id. at 20:67–21:3, 22:41–44, 24:17–20. We agree with Uniloc that “the at least one other portion of the second instance of the digital asset” refers to “the at least one other portion that does not include the digital content.” See Prelim. Resp. 5. Thus, we agree with Uniloc that the plain language of the claims requires “the second unique identifier” be “embedded” in a portion of the asset that “does not include the digital content” and is not, itself, embedded in the digital content. In fact, we see no other reasonable way to interpret this language. Further, we see nothing in the Specification that indicates the patentee intended an alternate meaning for any of the words at issue. For example, the Specification describes creating a first instantiation of the digital asset with “an original offset and serial number embedded within the digital content,” but does not specifically describe where the serial number resides in the second instantiation of the digital asset, noting only that “instead of merely copying the digital content as part of the transfer, the present invention creates a separate instantiation to facilitate tracking of each transfer (or transaction) within the system 100.” Ex. 1001, 14:22–33; see also id. at 15:25–30 (“At step 326 Customer Client Server module 124 marks the digital asset file with the new serial number and offset preferably using the same steganographic technique . . . and then stores the digital asset in a form suitable for later retrieval and play on the user’s system.”). Thus, we see nothing in the Specification demonstrating that the claims are meant to cover anything other than the plain meaning—the second unique identifier is embedded in a portion of the asset that does not include the digital content.” slip op. at 6

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

    “Nowhere, however, does Microsoft explain how “ID portion 418” is embedded in a portion of the asset that does not include the digital content. To the contrary, Figure 4 of Kobata shows 418 to be embedded within Digital Content Data 410. Indeed, this fact is emphasized by Microsoft’s annotations of the Figure. See Pet. 33 (showing ID Portion 418 in purple completely surrounded by Digital Content Data 410 in yellow). Based on this flaw in the Petition, we cannot conclude that Microsoft has established a reasonable likelihood that a skilled artisan would understand Kobata to teach or suggest the second unique identifier is embedded in a portion of the asset that does not include the digital content. Therefore, Microsoft has not shown that Kobata teaches or suggests “the second instance of the digital asset including the second unique identifier embedded in the at least one other portion of the second instance of the digital asset” as recited in the claim.” slip op. at 11

  Claim construction§ 103 obviousness
  Patents in suitUS 8,706,636
• Facebook, Inc. / Whatsapp, Inc. et al. v. Uniloc 2017 LLCRehearing denied
  PTAB · Jan 17, 2019 · IPR2017-01428 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact the determination that claims 9–12, 14–17, 25, and 26 are unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 3

  Claim construction
  Patents in suitUS 8,995,433
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 16, 2019 · IPR2017-01667 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 3, 6–8, 10–35, 38, and 39 are unpatentable; claims 4 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeOther

    “Response in each case. IPR2017-01667, Paper 17 (“1667 PO Resp.”); IPR2017-01668, Paper 16 (“1668 PO Resp.”). Petitioner4 then filed Replies. IPR2017-01667, Paper 24 (“1667 Reply”); IPR2017-01668, Paper 22 (“1668 Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in each case (“Mot. Excl.”), and Petitioner filed an Opposition as Paper 24 in each case (“Opp’n”). We held a consolidated oral argument in both proceedings, as well as in related proceeding IPR2017-01428, on August 30, 2018. A transcript of the oral hearing (“Tr.”) has been entered into the record of IPR2017-01667 as Paper 31 and into the record of IPR2017-01668 as Paper 29.” slip op. at 3

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

    “01668, Paper 6 (“1668 Prelim. Resp.”). We instituted inter partes review pursuant to 35 U.S.C. § 314 as to all challenged claims. IPR2017-01667, Paper 8 (“1667 Dec. on Inst.”); IPR2017-01668, Paper 8 (“1668 Dec. on Inst.”). During the pendency of the proceedings, Huawei Device Co., Ltd. and LG Electronics, Inc. filed a petition and motion for joinder requesting to join IPR2017-01667, which we granted. IPR2017-01667, Paper 12. Similarly, Apple Inc. filed petitions and motions for joinder requesting to join IPR2017-01667 and IPR2017-01668, which we also granted. IPR2017- 01667, Paper 29; IPR2017-01668, Paper 27.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “1. Instant Voice Message Independent challenged claims 3, 27, and 38 recite the term “instant voice message.” In particular, claim 3 recites a messaging system that “receives an instant voice message” from one of a plurality of instant voice the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). message client systems, “wherein the instant voice message includes an object field including a digitized audio file.” Claims 27 and 38 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claim 27 further requires an “instant voice messaging application” that “includes a document handler system for attaching one or more files to the instant voice message.” Certain of the challenged dependent claims recite additional limitations concerning, for example, additional fields included in the instant voice message (claims 4–8), storage, deletion, or retrieval of instant voice messages (claims 10, 14, 17, 28, 31), the generation of the instant voice messages (claims 13, 18, 32), encryption/decryption of instant voice messages (claims 19, 33), compression/decompression of instant voice messages (claims 20, 34), effects indicating receipt of instant voice messages (claims 23, 35), and display of instant voice messages (claim 30). Our Institution Decision in IPR2017-01667 noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1667 Dec. on Inst. 18, 22–23. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. at 19, 23. The parties were invited to brief the claim construction during trial. Id. at 19–20, 23. In its Response in IPR2017-01667, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1667 PO Resp. 11–13, 15. In particular, Patent Owner relied on the specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message”” slip op. at 12

  Patent outcomesUS 8,724,622 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 8,724,622
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Jan 10, 2019 · IPR2017-02087 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–12, 14–17, 25, and 26 are unpatentable over the asserted prior-art grounds, including combinations involving Zydney, Appelman, Clark, Greenlaw, and Newton.

  RulingsFinal written decision

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

    “1. Instant Voice Message All the independent challenged claims recite the term “instant voice message.” In particular, claims 1 and 6 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claims 1 and 6 further require storing the “instant voice message” and, depending on the claim, performing certain actions, such as retrieving, deleting, compressing, and decompressing the “instant voice message.” Claim 9 also recites generating and transmitting the “instant voice message,” but adds that “the instant voice message application attaches one or more files to the instant voice message.” The Decision on Institution in the 1428 case noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1428 Dec. on Inst. 11. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. The parties were invited to brief the claim construction during trial. Id. at 1112. Because the arguments were particularly directed to whether the prior art attaches a file to the “instant voice message,” a requirement of claim 9, the parties presented their claim construction arguments in the trial briefs in the IPR2017-01428 case. For completeness, we summarize below the arguments presented in the Patent Owner Response and Petitioner’s Reply filed in the 1428 case. In its Response, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1428 PO Resp. 67. In particular, Patent Owner relied on the Specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message” to audio file 210. Id. at 7 (citing various portions of the Specification that state “the digitized audio file 210 (i.e., instant voice message)”). Petitioner, on the other hand, argued in Reply that the “instant voice message” is not synonymous with an audio file recording voice data because a related patent (having the same Specification as the ’433 patent) has a claim that recites “recording the instant voice message in an audio file.” 1428 Reply 3 (citing U.S. Patent No. 8,199,747, claim 1). According to Petitioner, if an “instant voice message” is an “audio file” then the language of that claim requiring the recording of the instant voice message in an audio file would be superfluous. Id. More importantly, Petitioner also argued that the “audio file” is one of two disclosed embodiments of the “instant voice message.” Id. at 45. Specifically, the ’433 patent describes that instead of taking the form of an audio file, the instant voice message is generated in real time by buffering successive portions of the instant voice message. Ex. 1001, 11:3560. If we were to adopt Patent Owner’s proposed construction of an audio file, according to Petitioner, we would exclude a preferred embodiment where the instant voice message is described as buffered successive portions. 1428 Reply 5 (citing Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014)). After persuasively arguing against Patent Owner’s proposed construction, Petitioner proposed no alternative construction, arguing instead that “instant” slip op. at 12

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

    “because they imply that Zydney precludes permanent storage of the sent and received voice containers. The fact that Zydney uses temporary storage does not preclude the use of permanent storage. And Patent Owner does not argue any teaching in Zydney that would be contrary to the applicability of organized permanent storage in Zydney’s system, in addition to the use of temporary storage. Accordingly, we are not persuaded by Patent Owner’s arguments that a person of ordinary skill in the art would not combine the teachings of Zydney and Clark as asserted by Petitioner.” slip op. at 57

  • BurdenUnpatentable

    “review claims 112, 1417, 25, and 26 of U.S. Patent No. 8,995,433 B2 (“the ’433 patent”), owned by Uniloc 2017 LLC. We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioners have shown by a preponderance of the evidence that claims 112, 1417, 25, and 26 of the ’433 patent are unpatentable.” slip op. at 2

  Patent outcomesUS 8,995,433 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,995,433
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.All claims unpatentable
  PTAB · Oct 23, 2018 · IPR2017-01275 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 3–10, and 12–17 are unpatentable as obvious over the Admitted Prior Art and Betts; Petitioner obtained partial adverse judgment on Ground 2.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “Ground 2 based on the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), Petitioner filed a Request for Partial Adverse Judgment against itself with respect to Ground 2, pursuant to 37 C.F.R. § 42.73(b). See Paper 30 (modifying institution decision to institute on all challenged grounds presented in Petition); Paper 33 (Petitioner’s Request for 1 Patent Owner filed two versions of the Preliminary Response: Paper 6, to which access is restricted to the parties and the Board; and Paper 7, a publicly available, redacted version of Paper 6. 2 Patent Owner filed two versions of the Patent Owner Response: Paper 20, to which access is restricted to the parties and the Board; and Paper 21, a publicly available, redacted version of Paper 20. Partial Adverse Judgment as to Ground 2). We granted Petitioner’s Request for Partial Adverse Judgment on July 5, 2018. Paper 36 (granting adverse judgment as to Ground 2).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; 4 Petitioner defines “Admitted Prior Art” as certain portions of the ’641 patent, including Figure 1. Pet. 11–12 (citing Ex. 1001, 1:21–22, Fig. 1; Ex. 1004 ¶ 86). 5 U.S. Patent No. 3,738,497, issued June 12, 1973 (Ex. 1005) (“Betts”). 6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took effect on March 18, 2013. Because the application from which the ’641 patent issued was filed before that date, any citations to 35 U.S.C. §§ 102 and 103 are to their pre-AIA version. prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the testimony of Alan Anderson, who testifies that a person with ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, industrial design, or a similar discipline, or the equivalent experience, with at least two years of experience in the field of aircraft interior design.” Pet. 29 (citing Ex. 1004 ¶¶ 27–29). Patent Owner does not address Petitioner’s proposal, or offer a competing proposal for a person of ordinary skill in the art. Based on our review of the record, we adopt Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 8

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear.7 37 C.F.R. § 42.100(b). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

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

    “Based on our review of the evidence and arguments, we find that one of ordinary skill in the art would have been motivated to modify the Admitted Prior Art lavatory by replacing the flat forward wall with the contoured forward wall of Betts. Petitioner submits convincing argument based on the testimony of Mr. Anderson, that designers of airplane interiors were concerned about adding space to the cabin and that the Betts contoured wall increased interior space. Pet. 22–25 (citing Ex. 1004 ¶¶ 57–59). Betts itself backs up this testimony by stating that one of the goals of its design is “to provide more passenger room.” Ex. 1005, Abstract. We also agree with Petitioner’s assertion that Figure 1 of Betts depicts a passenger seat further aft in the cabin than it could have been if the wall were flat with no recess, and merely extended up from the bottom portion of the wall. See Betts Fig. 1; Pet. 23–24. Betts therefore depicts how the contoured wall and recess provide more passenger space when compared to a flat, vertical wall, and Betts discusses the ability of its design to save space. As such, Betts adequately supports the proposed modification of the prior art flat forward wall as shown in the Admitted Prior Art. Patent Owner’s argument that flat forward lavatory walls co-existed with the Betts design for years without modification, even if accurate, does not outweigh the more convincing evidence and argument supporting Petitioner’s position based on Betts and the Anderson Declaration. In addition, Patent Owner’s argument that one would need to “totally deconstruct” Betts in order to add a lavatory to Betts misapprehends Petitioner’s proposed modification. Petitioner proposes to replace a lavatory flat forward wall as shown in the Admitted Prior Art with the Betts contoured wall, not add a lavatory behind the Betts contoured wall. See Pet. 22, 24; Reply 4–5. Although we do not apply collateral estoppel for the reasons provided above, we note that our findings regarding the proposed combination and modification are consistent with the Federal Circuit’s decision in the related case. See B/E Aerospace, 709 F. App’x at 694 (rejecting Patent Owner’s argument that Petitioner’s combination required adding lavatory to Betts). Based on the foregoing, we find that one of ordinary skill in the art at the time of the invention would have been motivated to modify the lavatory flat forward wall in the Admitted Prior Art by replacing it with the contoured forward wall of Betts.” slip op. at 14

  Patent outcomesUS 9,073,641 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,073,641
• Panduit Corp. v. CCS Technology, Inc.All claims unpatentable
  PTAB · Oct 4, 2018 · IPR2017-01323 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 3 and 4 are unpatentable as obvious over the combined teachings of Eichenberger and Bennett under § 103(a).

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Although there are differences between the proposed levels of ordinary skill in the art, the parties and their declarants agree that an ordinarily skilled artisan would have had a four-year technical degree and some amount of professional experience with fiber optic equipment. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a four year technical degree with a minimum of two years of professional technical experience in fiber optic equipment design. We apply this level of ordinary skill in the art in our analysis below. However, we note that our analysis would be the same if we adopted either party’s proposed level of ordinary skill.” slip op. at 5

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

    “Based on the evidence of record, we maintain our determination that an optical interconnection module requires an optical connection within the module. See Dec. on Inst. 10. This is consistent with the intrinsic record, particularly the ’600 patent’s disclosure that “the optical paths of connector 40 and the optical connectors at stations 51–56 are optically interconnected by optical fibers disposed in cavity 62 of the module 60, the fiber pairs being formed by the optical fibers.” Ex. 1001, 3:20–24, Fig. 2. As discussed above, the module itself does not require fibers to be plugged into it. Rather, an “optical assembly,” such as that recited in claim 3, is formed by connecting modules via fibers. We further clarify that, because it is an “optical interconnection module,” it must be a module that forms an optical interconnection. This is consistent with the ’600 patent’s disclosure that “[m]odule 60 also includes an optical interconnection section having an optical connector. The preferred connector is an MTP or MPO connector 40.” Ex. 1001, 2:49–51 (emphasis added). In Figure 2, the optical interconnection section optically interconnects with fibers in ribbon 20. The ’600 patent describes that the optical paths of the connector in the optical interconnection section are “immediately adjacent to at least one other optical path for optical alignment with the optical fibers in an optical fiber ribbon.” Ex. 1001, 2:57–60.” slip op. at 10

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

    “We are persuaded by these contentions. Eichenberger discloses that “the connectors 64 have key tabs 69 which limit the orientation of the connector when inserted in connector receptacle 56, in that the connector can only be mated to the receptacle with the key tab point upwards in FIG. 1.” Ex. 1004, 7:52–56. We find Eichenberger’s disclosure of a key on the connector for proper mating with the adapter teaches an adapter having a key. See Ex. 1003 ¶ 53. We further credit Dr. DeCusatis’s testimony that “[a] key 69 would provide no orientation limitation without a compatible, keyed adapter 56 configured to receive the key 69.” Ex. 1003 ¶ 54. We further find a person of ordinary skill in the art would have been motivated to include a key on adapter 56 to properly mate the keyed connector with the adapter, to the extent this is not taught, as we find it is. See Ex. 1003 ¶ 54; Ex. 1004, 7:52–56.” slip op. at 24

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

    “c. Conclusion as to Claim 3 In summary, we find that the combination of Eichenberger and Bennett teaches all of the limitations of claim 3, and we find that a person of ordinary skill in the art would have had reason to, and would have been motivated to, combine the teachings of Eichenberger and Bennett in the manner asserted. Patent Owner does not present any objective evidence of nonobviousness as to any of the challenged claims. Having considered the full record developed during trial, we conclude that Petitioner has shown, by a preponderance of the evidence, that claim 3 would have been obvious based on Eichenberger and Bennett under 35 U.S.C. § 103(a). 4. Dependent Claim 4 Claim 4 depends from claim 3 and recites that “all of said optical paths remain with their respective color from one module to another.” Petitioner argues that “[t]he straight ribbon illustrated in modified Fig. 3 shows that all colors are connected to the same colors.” Pet. 35 (citing Ex. 1003 ¶ 79). Although Patent Owner does not provide specific arguments regarding claim 4, the burden remains on Petitioner to demonstrate unpatentability, as discussed above. We agree with Petitioner that all of the optical paths stay with their respective colors from one module to another in Petitioner’s proposed configuration because, as discussed above with respect to claim 3, the optical paths stay with their respective colors between the modules. Therefore, having considered the full record developed during trial, we conclude that Petitioner has shown, by a preponderance of the evidence, that claim 4 would have been obvious based on Eichenberger and Bennett under 35 U.S.C. § 103(a).” slip op. at 28

  Patent outcomesUS 6,758,600 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,758,600
• Panduit Corp. v. CCS Technology, Inc.All claims unpatentable
  PTAB · Oct 4, 2018 · IPR2017-01375 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 6, 7, and 11 are unpatentable under § 103: claim 6 over Toyooka, Eichenberger, and Giebel; claim 7 over Toyooka and Eichenberger; and claim 11 over Toyooka and Giebel.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Although there are differences between the proposed levels of ordinary skill in the art, the parties and their declarants agree that an ordinarily skilled artisan would have had a four-year technical degree and some amount of professional experience with fiber optic equipment. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a four year technical degree with a minimum of two years of professional technical experience in fiber optic equipment design. We apply this level of ordinary skill in the art in our analysis below. However, we note that our analysis would be the same if we adopted either party’s proposed level of ordinary skill.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “We see nothing the record before us indicating that we should deviate from our construction of the term “optical ribbon” in the Final Written Decision in IPR2016-01648. See IPR2016-01648, Paper 27, 10–19. We, therefore, adopt the construction in that case—that the broadest reasonable interpretation of the term “optical ribbon” in view of the specification of the ’227 patent “encompasses optical fibers that are bonded together in a generally planar array or optical fibers that are grouped and aligned in a generally planar array.” IPR2016-01648, Paper 27, 18–19. We apply this construction below in our analysis of the grounds of unpatentability.” slip op. at 12

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

    “2. Remaining Terms In our Decision on Institution, we determined that the remaining terms of the challenged claims did not require express constructions at that time. Dec. on Inst. 19. Based on the record developed during trial, we maintain our initial determination that the remaining terms of the challenged claims do not require express constructions.” slip op. at 12

  • Expert testimonyPetitioner expert creditedOther

  Patent outcomesUS 6,869,227 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,869,227
• Apple Inc. / Facebook, Inc. et al. v. Uniloc Luxembourg S.A.Rehearing denied
  PTAB · Sep 6, 2018 · IPR2017-00222 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its determination that claims 1 and 2 are unpatentable over Vuori and Malik.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Patent Owner to show we misapprehended or overlooked the matters it requests that we review.” slip op. at 2

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

    “allegedly had no opportunity to brief. However, Patent Owner was given notice in our Decision on Institution that its arguments concerning the recited “list” were arguments concerning claim scope and that Patent Owner” slip op. at 2

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Vuori did not teach transmitting a “list.” Final. Dec. 32 (noting that Patent Owner relies on language in the Specification describing Figure 8); Prelim. Resp. 13−14. Then, we made two factual determinations based on the evidence of record, in light of Figure 8, which Patent Owner raised, and in light of the description of Figure 10, which Petitioner relied on as disclosing the “list.” See, e.g., Final Dec. 31 (noting arguments by Petitioner regarding Figure 10 and paragraph 47 of Vuori). Thus, we supported our determination based on evidence of record provided by Patent Owner and Petitioner. We discussed the testimony of Mr. Easttom and ultimately did not credit it in its entirety. Id. at 33 (explaining that Mr. Easttom’s testimony of “one value at a time” “at best, appears to focus only on the SVM fetcher, which requests the ‘current’ value of some SVM presentity’s information,” and finding that Vuori does not support the testimony or Patent Owner’s narrow view of Vuori in this regard).” slip op. at 4

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

    “have not followed the holding in In re Magnum Oil Tools Int’l, 829 F.3d 1364 (Fed. Cir. 2016). Req. Reh’g. 3−4. With regard to claim construction, it was Patent Owner, not Petitioner, who attempted to paint Vuori as teaching transmission of “one value at a time.” Final Dec. 31 (“Patent Owner urges that we focus on Vuori’s explanation of distributing presence information . . . ‘one value at a time’.”). We analyzed Figure 8 of Vuori because Patent Owner relied on that figure as support for its contention that Vuori did not teach transmitting a “list.” Final. Dec. 32 (noting that Patent Owner relies on language in the Specification describing Figure 8); Prelim. Resp. 13−14. Then, we made two factual determinations based on the evidence of record, in light of Figure 8, which Patent Owner raised, and in light of the description of Figure 10, which Petitioner relied on as disclosing the “list.” See, e.g., Final Dec. 31 (noting arguments by Petitioner regarding Figure 10 and paragraph 47 of Vuori). Thus, we supported our determination based on evidence of record provided by Patent Owner and Petitioner. We discussed the testimony of Mr. Easttom and ultimately did not credit it in its entirety. Id. at 33 (explaining that Mr. Easttom’s testimony of “one value at a time” “at best, appears to focus only on the SVM fetcher, which requests the ‘current’ value of some SVM presentity’s information,” and finding that Vuori does not support the testimony or Patent Owner’s narrow view of Vuori in this regard).” slip op. at 3

  Claim construction§ 103 obviousness
  Patents in suitUS 8,243,723
• Apple Inc. / Snap Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Rehearing denied
  PTAB · Sep 6, 2018 · IPR2017-00221 · APJ Jennifer S Bisk · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, maintaining its construction of “local network” and “external network”; it did not revisit whether Malik disclosed those limitations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2

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

    “cannot be the differentiator between ‘local’ and ‘external’ networks” as alleged by Patent Owner.” Reh’g Req. 3. As we explained in our Final Written Decision, we construed the two terms to be relative. Final Dec. 10– 15. In other words, whether a network is “local” or “external” depends on the perspective of a particular device. We are not persuaded that Figure 5 indicates otherwise. In Figure 5, two networks are labeled “local” (i.e., network 204 and network 504), and one network (network 102) is labeled “Internet.” Ex. 1001, Fig. 5. From the perspective of IVM client 508, network 504 is local; however, from the perspective of IVM client 208, network 504 is external. This is consistent with the description of Figure 5, which states that IVM client 508 “may be located in a user’s residence and be connected to a local IP network 504,” which “can be a WiFi network or a local area network (i.e., LAN), which is also within the user’s residence.” Ex. 1001, 19:66–20:4. At the same time, the ’890 patent describes IVM client 508 as a “global IVM client.” Id. at 20:10–14. Therefore, we do not agree that our construction “yields a non-sensical understanding” of these terms. See Reh’g Req. 4.” slip op. at 4

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Owner’s proposed construction. Although Dr. Forys may have used the term “types” loosely to distinguish between local and external networks, we are not persuaded that he used that word in the same way Patent Owner is using it. See Reh’g Req. 6 (citing Ex. 1003 ¶ 56 (Dr. Forys stating that “[t]he variations among the independent claims are mostly related to different types of networks.”)). The word “type” is often used to distinguish things with different characteristics, and Patent Owner does not persuade us that, in the context of this case, the word references any particular characteristic of a network. Instead, we read Dr. Forys’s testimony as using the word “type” to distinguish between networks that differ solely based on the relative locations of the different networks. This is consistent with the rest of his testimony. See, e.g., Ex. 1003 ¶¶ 64–70 (Dr. Forys explaining his understanding of the difference between “external network” and “local network” to be solely based on the relative location of the networks). Fourth, as explained in our Final Written Decision, we give “little weight to” the quoted testimony of Mr. Easttom, in which he states that the terms are “analogous to the terms ‘private network’ and ‘public network’” because this testimony “is not explained or supported in any way.” Final Dec. 14 (quoting Ex. 2001 ¶ 24). We are not persuaded otherwise by Patent Owner’s quotation from the next paragraph of testimony in which Mr. Easttom discusses claim differentiation. Reh’g. Req. 6–7 (quoting Ex. 2001 ¶ 25 (“A POSA would understand from this explicit claim differentiation the” slip op. at 6

  Claim construction
  Patents in suitUS 7,535,890
• Apple Inc. / Snap Inc. et al. v. Uniloc Luxembourg S.A.No claims unpatentable
  PTAB · May 23, 2018 · IPR2017-00225 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–6 and 8 were not shown unpatentable because the Petition did not establish a persuasive reason to add a client-side message database to the asserted prior-art combinations.

  RulingsFinal written decision

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

    “We do not agree with Petitioner. Although the ’433 patent Specification provides for a message database at the transport server, that database is for storing the messages of the one or more recipients that are not available, and, therefore, cannot receive instant voice messages. Ex. 1001, 22:5363. When a user becomes available, database (storage) manager 710 retrieves the undelivered instant voice messages from the database, and client manager 706 delivers the messages to the designated, now available, recipients. Id. Thus, message database 710 at the transport server stores and retrieves instant voice messages upon command from the client manager 706, whereas message database 310, of Figure 3, stores and retrieves instant voice messages upon command of file manager 308. This distinction is significant because claims 1 and 6 directly link the recited “message database” to the “file manager,” and no other component of the disclosed system. Further, the recited “file manager” performs the “storing,” for example, “in response to a user request,” according to the claim language of claims 1 and 6. The ’433 patent Specification lacks any description of the transport server’s message database or database manager storing instant voice messages in response to a user request. Indeed, the transport server does not store instant voice messages in the database in response to a user’s request, because it only stores messages in the database when the recipient is unavailable. In fact, the message database of the transport server stores messages at the request of client manager 706, and on condition that a recipient is not available. Ex. 1001, 22:5363; see also id. at 8:3843 (describing the local server in a similar manner, delivering messages to the available recipients and temporarily storing the instant voice messages for unavailable recipients). Further, the Specification contains no disclosure of “distributed” applications or programs or any other indication that the “instant voice messaging application” is a “distributed” application with components placed throughout the system (at clients and servers). Petitioner’s reliance on Figure 7 as supporting the contention of a “distributed” application, as discussed above, is unavailing. Other than having the same name, the message database of the transport servers (Figure 7) is a different message database from the one recited in claims 1 and 6 and described in Figure 3.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proffered level of ordinary skill in the art focuses too generally on experience in “communications technology.” The enunciation of such experience is too generic to be useful in determining the level of ordinary skill in the art under any of the GPAC factors. For instance, experience with “communications technology” is untethered to addressing problems and solutions in facilitating short messaging services, such as in Vuori, or to whether active workers in the appropriate field would manifest such a general experience in “communications technology.” Vuori, for instance, focuses on facilitating short messaging service in the context of a wireless telecommunication network. See Ex. 1005 ¶¶ 57. Therefore, we cannot ignore that the field of work would be more narrow than generally “communications technology.” We find that Petitioner’s assessment is proper and consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1009) is directed to an instant messaging system in the context of telecommunication and computer networks, such as a Global System for Mobile Communications (“GSM”), General Packet Radio Service (“GPRS”), Universal Mobile Telecommunication Systems (“UMTS”), and the Internet. Ex. 1005 ¶¶ 3539, Figs. 3, 6; see also Ex. 1005 ¶¶ 14 (addressing messaging systems that use the Internet as a telecommunication and/or computer network). Thus, it is evident from the prior art that Petitioner’s assessment is appropriate because, in addition to a certain degree, a person of ordinary skill in the art would have experience in communications systems, particularly in messaging systems, data networks including VoIP and mobile telephony, or comparable industry experience. Consequently, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 23

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We find Petitioner’s rationale wanting. Petitioner proffers expert testimony of a reason to combine: “to improve the organization and retrieval of audio messages stored on a user’s device.” Ex. 1003 ¶ 109. Dr. Forys also states that “it would have been obvious to incorporate Holtzberg’s database structure into Abburi because such incorporation amounts to nothing more than applying a known technique (e.g., storing voice messages in a database) to a known device (e.g. the message recipient’s device in Abburi) ready for improvement to yield predictable results (a user device storing audio messages in a database).” Id. None of the proffered testimony is persuasive, and because it is not supported by either explanation or supporting facts, we give it little to no weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). First, there is no explanation as to why a person of ordinary skill in the art would either de-centralize Abburi or relocate the database in Holtzberg to achieve the “user device storing audio messages in a database.” Dr. Forys’s conclusion that the claimed message database would have been obvious is unexplained and belies the specific teachings in both Abburi and Holtzberg that rely on the architecture of their systems as having centralized storage. Without “a reasoned explanation that avoids conclusory generalizations,” Dr. Forys’s testimony is not sufficient. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)).” slip op. at 34

  • Strike new argumentNew argument disregardedDecided for patent owner

    “provides “specifics of how and why” Holtzberg is integrated into the system of Abburi. Reply 15. The argument and citations are not persuasive. The Reply Forys Declaration (Ex. 1019 ¶¶ 1214) provides new reasons for a motivation to combine (for example, motivation to provide storage at both the client and server for sent and received messages). This testimony does not just explain the rationale provided in the Petition (focused on incorporation of Holtzberg’s database at the user device of Abburi). Rather, Dr. Forys’s reply explanation provides an expanded rationale that is different from the rationale stated in the Petition. For example, Dr. Forys opines that a person of ordinary skill in the art “would understand that the communication link between the user device and the server system may be down or disrupted from time to time, and the recorded audio messages to be sent to the system must be stored until communication is reestablished.” Ex. 1019 ¶ 13. Dr. Forys’s opinion does not respond appropriately to the argument by Patent Owner that the teachings of Abburi and Holtzberg would have led away from incorporating a database at the client device. Rather, the reply opinion testimony diverges from the Petition’s rationale of improving organization and retrieval of audio at the client device. Put another way, the reasoning of redundancy of storage to account for communication failures between the server and the client is another rationale—different and distinct from the rationale asserted in the Petition.3 The Reply is not responsive to the teaching away argument, and it has come too late in the proceeding. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition or patent owner response”); Office Trial Practice 3 We find the further reasons in the Reply Forys Declaration similarly problematic. For instance, Dr. Forys opines that it would be convenient to playback older messages to recall their content, and would enable the user to track messages and avoid repeated queries to the audio message store. Ex. 1019 ¶ 13. Again, the Petition and the First Forys Declaration neither state nor explain a rationale based on convenience of local storage or of conservation of server resources. Indeed, the only reason or explanation timely provided addresses the generic benefit of organization and retrieval of data. Pet. 29. Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.”). Accordingly, we will not consider the new theories of obviousness in the Reply and Reply Forys Declaration. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367–68 (Fed. Cir. 2015) (finding reasonable the Board’s judgment about when a Reply contention crosses the line from the responsive to the new); see also Tr. 89:590:5 (counsel for Petitioner offering argument regarding whether Reply falls outside the permissible scope and responding that “you could eliminate our petitioner reply entirely and we still think that there is a complete showing that all claim elements are rendered obvious under all five grounds, both combinations”).” slip op. at 37

  Patent outcomesUS 8,995,433 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,995,433

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.