- PTAB · Oct 11, 2023 · IPR2023-00621 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. at 6. The Director has issued additional guidance on the application of in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”). Additionally, we are guided by the precedential decisions of the Director in OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102, 49–50 (Oct. 4, 2022) (precedential), and CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (Feb. 27, 2023) (precedential) (“CommScope”). We are instructed to consider compelling merits under Fintiv factor six only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Thus, we begin by considering the first five Fintiv factors.2” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner states: In the Lenovo ’083 IPR, the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Prelim. Resp. 12–13 (citing Ex. 1012,4 8). Patent Owner agrees with this standard and argues that it is the same as the standard Petitioner proposes. Id. at 13. We agree that there appear to be no significant differences. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same preliminary determinations under Petitioner’s formulation of the level of skill.” slip op. at 17
- BurdenDecided for petitioner
“It is undisputed that the Petition states that “[a]ll claim terms should be construed according to the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.100.” Pet. 2. Standing alone, there is no dispute that the Petition uses the correct claim construction standard in the analysis. It only becomes a question because Petitioner’s declarant (Dr. Schmidt) employs the phrase “broadest reasonable construction in light of the specification of the patent in which it appears” in describing his “understand[ing]” of the claim construction standard. Ex. 1003 ¶ 26. If Dr. Schmidt’s “understand[ing]” of the claim construction standard was that BRI should be used, then it was incorrect. The claim construction standard for claims of challenged unexpired patents in this forum was changed from BRI to the Phillips standard in 2018, long before Dr. Schmidt signed the Declaration (Feb. 22, 2023). See “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,” 83 Fed. Reg. 51340, 51340–51359, 51343 (October 11, 2018) (“This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips and its progeny.”); 37 C.F.R. § 42.100(b). But the Petition articulates, unequivocally, the correct claim construction standard and goes into some detail in explaining what the Phillips standard entails. Pet. 2–5 (citing Ex. 1003 ¶¶ 28–29). Although” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those terms that are in controversy need be construed, and only 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,020,083 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1, 2, and 6–8 were not shown unpatentable because the prior art combinations did not establish the claimed messaging through the server system.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Tr. 78:6–10. Patent Owner responded “I don’t think it makes any difference for this panel’s determination.” Tr. 78:13–14. We agree and determine that the differences in the level of skill offered by the parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” See Inst. Dec. 10. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. media player Patent Owner contends that, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’289 patent refers to application software and does not encompass hardware devices.” PO Resp. 14 (citing Ex. 2022 ¶¶ 92–93). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player.’” Pet. Reply 1. Rather, Petitioner states the media players relied upon in the Petition are all application software. Pet. Reply 1–2. Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 24–27)—are application software. The third ‘media player’ is likewise not a hardware device.” Pet. Reply 2 (alteration in original). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Muthukumarasamy “controls delivery of selected media content and selects and controls the media devices that deliver the selected media content according to a media type of the selected media content.” Because Muthukumarasamy teaches that the media device displays media content from various disparate sources depending on the media type and media source, a [person of ordinary skill in the art] would have understood the media device loads an appropriate media player depending on the media type and source. Pet. 23–24 (citing Ex. 1008 ¶ 47; Ex. 1005 ¶¶ 66–67). Petitioner, however, proffers insufficient evidence or argument that the content choices described in paragraph 47 of Muthukumarasamy would have led an ordinarily skilled artisan to understand a media player is obtained and loaded in the content presentation device. Rather, Dr. Bederson makes conclusory statements without providing evidence to support the assertions (Ex. 1005 ¶¶ 66–67).” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Muthukumarasamy discussed above. In particular, Petitioner has not explained how Hayward teaches receiving the one or more messages in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing content from the file,” and “identify a location of the particular media player.” Pet. 41–45. More specifically, Petitioner contends that a person of ordinary skill in the art “would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate control of internet content presented at the content presentation device using any number of media players through embedded media player pages, as described in Hayward.” Pet. 65. However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the content presentation device” (Pet. Reply 22), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required messages being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above. Accordingly, Petitioner has not shown that the combination of Muthukumarasamy and Hayward teaches “receiving, in a server system, one or more messages from a personal computing device . . . wherein the one or more messages, . . . identify a particular media player for playing content from the file wherein the media player is a computer application operable to present content and control presentation of the content,” as recited in claim 1 and commensurately recited in independent claim 6. Additionally, because claim 2 depends from claim 1 and claims 7 and 8 depend from claim 6, we conclude that Petitioner has not established by a preponderance of evidence that the subject matter of claims 2, 7, and 8 would have been obvious over the combination of Muthukumarasamy and Hayward.” slip op. at 37
Patent outcomesUS 8,904,289 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,904,289 - Apple Inc. v. CPC Patent Technologies Pty, Ltd.All claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00602 · APJ Barry L Grossman · IPR · Final written decision
Claims 1, 4, 6, 10–12, and 14–17 are unpatentable as obvious over Mathiassen, McKeeth, and Anderson.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We concluded that Petitioner satisfied the burden, under 35 U.S.C. § 314(a), to show that there was a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), and in accordance with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018), we instituted an inter partes review of all the challenged claims, on all the asserted grounds. Paper 11 (“Dec. Inst.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states it “does not dispute [Petitioner’s] characterization” of the level of ordinary skill in the art See PO Resp. 5–6. Based on the prior art, the sophistication of the technology at issue, and Dr. Sears’ Declaration testimony, we adopt, with minor modification, Petitioner’s undisputed definition of the level of ordinary skill. We determine that in this proceeding a person of ordinary skill would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with one year of experience in the field of human-machine interfaces and device access security, or an equivalent balance of education and work experience. We have eliminated the open-ended phrase of “at least” in describing the education and experience of a person of ordinary skill. This open-ended description fails to provide the specificity necessary to define the level of ordinary skill.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“the analysis above, we determine that an “accessibility attribute,” as used in the challenged independent claims means that a user with a biometric signature in the database is given access to the controlled item. As used in the independent claims, there are no other conditions imposed. Thus, based on the claim language, an “accessibility attribute” is an attribute that establishes whether and under which conditions, if any, access to the controlled item should be granted.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“Patent Owner also argues that there is no motivation to combine Mathiassen and McKeeth because there were simpler alternative solutions available, the existence of which undermines the motivation to combine. PO Resp. 19–23; Sur-reply 4–8. This argument is inconsistent with controlling caselaw that makes clear “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (emphasis in original)); see also Netflix, Inc. v. DivX, LLC, No. 2022-1083, 2023 WL 2298768, at *5 (Fed. Cir. Mar. 1, 2023) (citing In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) and In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). The motivation-to-combine analysis is a flexible one. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 420 (emphasis added). And “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Thus, “in many cases[,] a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. The motivation-to-combine analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court [or this Board] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418.” slip op. at 46
Patent outcomesUS 9,665,705 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,665,705 - Apple Inc. v. CPC Patent Technologies Pty, Ltd.All claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00601 · APJ Barry L Grossman · IPR · Final written decision
Claims 1, 3–7, 9–11, and 13 are unpatentable as obvious over Mathiassen, McKeeth, and Anderson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states it “does not dispute [Petitioner’s] characterization” of the level of ordinary skill in the art See PO Resp. 5–6. Based on the prior art, the sophistication of the technology at issue, and Dr. Sears’ Declaration testimony, we adopt, with minor modification, Petitioner’s undisputed definition of the level of ordinary skill. We determine that in this proceeding a person of ordinary skill would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with one year of experience in the field of human-machine interfaces and device access security, or an equivalent balance of education and work experience. We have eliminated the open-ended phrase of “at least” in describing the education and experience of a person of ordinary skill. This open-ended description fails to provide the specificity necessary to define the level of ordinary skill.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“As we explain in our analysis below, to avoid any confusion of the meaning of “accessibility attribute,” we clarify the construction to add the phrase “if any” to modify the “conditions” that may, or may not, be imposed to allow access. Thus, we determine that an “accessibility attribute” is “an attribute that establishes whether and under which conditions, if any, access to the controlled item should be granted.” Based on the language of the claims and Specification, the “accessibility attribute” may include only an “access attribute,” which is “unconditional.” See Ex, 1001, 8:19–25 (stating “the accessibility attribute may comprise one or more of an access attribute (granting unconditional access) . . . ), 16:13–23 (claim 3 requiring “at least one of” an access attribute, a duress attribute, and an alert attribute).14” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“The motivation-to-combine analysis is a flexible one. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 420 (emphasis added). And “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Thus, “in many cases[,] a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. The motivation-to-combine analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court [or this Board] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418.” slip op. at 51
- Expert testimonyPatent owner expert discountedOther
“generate biometric signals because they are captured “as the pressure code is entered,” and are therefore not part of the pressure code itself. See PO Resp. 25. Patent Owner also explains that “combining Mathiassen’s fingerprint sensor with Anderson’s pressure code does not produce the claimed invention, as any duration would apply to a nonbiometric signal.” Id. (citing Ex. 2011 ¶¶ 69-71). Dr. Easttom testifies that Anderson does not capture a biometric signal. Ex. 2011 ¶¶ 69–71. Petitioner, however, relies on Mathiassen and McKeeth for the biometric sensing, but relies on Anderson, which suggests the benefits and options of using a number and duration of pulses as inputs. E.g., Pet.32–36 Because Mathiassen, like the ’208 patent, uses a biometric sensor as the input device, it will detect the biometric part of the input signal, while also sensing the number and duration of inputs. Patent Owner also asserts that a “simpler combination” was available. PO Resp. 28. According to Patent Owner, “a simpler solution would have been to add Anderson’s pushbutton to Mathiassen’s key fob.” Id. at 29 (citing Ex. 2011 ¶ 80). As explained above, “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Intel Corp., 61 F.4th at 1380 (citations omitted). Based on the Petitioner’s arguments and evidence summarized above, we determine Petitioner has sufficiently shown that the cited references, as combined by Petitioner, disclose or suggest limitation 1(d1).” slip op. at 58
Patent outcomesUS 9,269,208 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00795 · APJ Debra K Stephens · IPR · Final written decision
Claims 1, 2, and 5–9 were not shown unpatentable over Muthukumarasamy alone or with Hayward because the claimed signals identifying a media player were not shown to pass through the asserted server system.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. Media player Patent Owner contends, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’251 Patent refers to application software and does not encompass hardware devices” (PO Resp. 13 (citing Ex. 2022 ¶¶ 81–92, 95)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 23–26)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We determine that Hayward does not cure the deficiencies of Muthukumarasamy discussed supra. In particular, Petitioner has not explained how Hayward teaches receiving the one or more signals in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing the video content” (Pet. 38–41). More specifically, Petitioner contends “a [person of ordinary skill in the art] would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device using any number of media players through embedded media player pages, as described in Hayward” (Pet. 15, 40 (citing Ex. 1005 ¶¶ 60, 102)). However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device . . .” (Pet. Reply 22 (emphasis omitted)), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required signals being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above.” slip op. at 39
Patent outcomesUS 8,356,251 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,356,251 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00793 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–5, 8, 11, 12, 14, 15, 27, and 28 were not shown unpatentable as obvious over Muthukumarasamy alone or with Hayward.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“‘media player’ in the ’528 patent refers to application software and does not encompass hardware devices” (PO Resp. 16 (citing Ex. 2022 ¶¶ 83–91, 94)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all application software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 21–24)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded. Even if the zHub and the zNode would be used to control the volume on the TV on which the streamed content is displayed, this device cooperation does not show the particular messaging recited in the claim. More specifically, even under Petitioner’s scenario that the “Volume Up” command flows from the IED (“personal computing device”) through the zHub/zNode (“server system”) to the TV (“content presentation device”), this command does not “identify a particular media player for playing content from the file.” Petitioner has not shown any messages in Muthukumarasamy that “identify a particular media player for playing content from the file” and flow from the IED through the zHub/zNode to the content presentation device. Thus, Petitioner’s assertions about devices working together fall short of proving by preponderant evidence that Muthukumarasamy discloses the particular messaging contents and path recited in claim 1.” slip op. at 30
Patent outcomesUS 8,782,528 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,782,528 - PTAB · Jul 25, 2023 · IPR2023-00504 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–22 on all asserted grounds, finding a reasonable likelihood that Geotab would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).2 In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” If the Board institutes trial, it “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’278 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–22) of the ’278 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, we adopt Petitioner’s articulation of the level of ordinarily skill in the art (i.e., “a Bachelor’s degree in electrical engineering, computer engineering, computer science, automotive engineering, or a related discipline, and at least two years of experience in networking or automotive engineering”), which appears to be consistent with the ’278 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). To the extent Patent Owner maintains during trial that Petitioner’s characterization of the level of ordinary skill is excessively high, the parties are encouraged to address whether a person of ordinary skill in the art “would have understood networking electronics, been familiar with vehicle data buses, regulations and industry standards involving on-board diagnostics (‘OBD-II’), and at least one underlying network protocol used by OBD-II,” as Petitioner contends. Pet. 9. We note that Patent Owner’s preferred characterization of the level of ordinarily skill includes an artisan having “several years’ experience in designing, manufacturing, installing and/or working on vehicle telematics systems.” Prelim. Resp. 9–10 (quoting Ex. 2007, 9). It is not clear to us on this record why such an artisan would not have also met Petitioner’s further characterization. The parties are encouraged to develop the record further on this issue, and are reminded that the level of ordinary skill may also affect the admissibility of expert testimony. See Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm'n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022).” slip op. at 23
- Prior constructionPrior construction adoptedDecided for petitioner
“the ’278 patent. Phillips, 415 F.3d at 1315 (the specification is the single best guide to the meaning of a disputed term). The ’278 patent describes “enabling data” as data that “may be the vehicle device code or codes, an instruction to select a code or codes from among those already stored, or the data or sequence to allow the controller 111 to generate the vehicle device code or codes, for example.” Ex. 1001, 24:8–13. In Omega Patents I, the Board construed “enabling data” as data that “enables the recited controller to use a particular vehicle device code from among plural such codes for different vehicles by providing either (1) the code itself to the controller, or (2) data that otherwise enables the controller to select or generate the code.” Omega Patents I, 12–13 (citing Ex. 1001, 24:5–25:28, Figs. 10–13). We see no reason to depart from the Board’s previous construction of this term at this stage of the proceeding. Specifically, we are not persuaded on this record that “enabling data” constitutes non-limiting printed matter. The U.S. Court of Appeals for the Federal Circuit has cautioned that the printed matter doctrine should be “limited . . . to matter claimed for its communicative content.” DiStefano, 808 F.3d at 849. And here, we do not agree with Petitioner that the “enabling data” described and claimed in the ’278 patent is simply communicative content. Petitioner cites to the Court’s decisions in DiStefano and Praxair Distribution, 6 but we think the Court’s decision in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), is more apt. In Lowry, the Court held that the claim limitation “attribute data objects” (ADOs) stored in a computer memory did not constitute printed matter because the ADOs “contain both information used by the application programs and information regarding their physical interrelationships within a memory” and the claims at issue “dictate how application programs manage information.” 32 F.3d at 1583. The “enabling data” in this case is similarly used—as the Board previously explained—to “enable[] the recited controller to use a particular vehicle device code from among plural such codes for different vehicles.” Omega Patents I, 12–13.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,032,278 - PTAB · Jul 19, 2023 · IPR2023-00450 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–11 and all petition grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“’706 patent purportedly to correct its priority information; and (2) pending the present IPR. Ex. 2003, 1–2. In particular, the parties agreed to stay the Underlying Litigations until at least issuance of a decision on the institution of the present IPR. Id. at 2. Meanwhile, as Patent Owner acknowledges, these cases do not have a trial date. Prelim. Resp. 15–16. In light of this development, it is not necessary to analyze the Fintiv factors in detail because the Underlying Litigations are not currently proceeding in parallel with this case. Although Patent Owner characterizes the stay of the Underlying Litigations as “neutral,” representing that the stay is “based on alleged concerns about the reissue proceeding” (Prelim. Resp. 16), we disagree. First, the stipulated stay is not merely in view of the reissue proceeding, but also in view of the present IPR. See Ex. 2003, 1–2. Second, our precedent in Fintiv recognizes that a stay of parallel litigation is not merely neutral, but weighs strongly against exercising discretion to deny institution. See, e.g., Fintiv Order, Paper 11 at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts. This fact has strongly weighed against exercising the authority to deny institution under NHK.”); see also Precision Planting, LLC v. Deere & Co., IPR2019-01052, Paper 19 at 10 (PTAB Jan. 7, 2020) (finding that the stay of the parallel district court case rendered moot the patent owner’s argument for discretionary denial of the petition). Therefore, we decline to exercise our discretion to deny institution on the basis of the Underlying Litigations.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the 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.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’706 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Galitsky, Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science or computer engineering and at least 2 years of experience with speech-recognition and natural-language-processing technology.” Pet. 5 (citing Ex. 1002 ¶ 94). Petitioner also asserts that the ordinarily skilled artisan “would also have a general knowledge of fast-food ordering processes.” Id. At this stage, Patent Owner does not propose an alternative assessment. Based on the present record including the disclosure in the ʼ706 patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 5) with the exception of the open-ended phrases “at least,” which expand the ranges of education and experience indefinitely without an upper bound. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ706 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,592,706 - PTAB · May 24, 2023 · IPR2023-00120 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4. Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims 1 through 24 of the ’092 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, “Patent Owner agrees to Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’092 Patent as well as the asserted prior art.” See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’092 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Franzon (see Ex. 1004 ¶¶ 34–36), as well as a declaration from Patent Owner’s declarant, Dr. Hassan Zeino, Ph.D. See Ex. 2001 ¶ 24 (“Zeino Declaration”).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“above that Heil’s configuration does not meet the limitation “dedicated I/O channel” because of other types of data purportedly being communicated over the channel, we infer from Patent Owner’s assertion and Dr. Zeino’s statement that the second claim construction issue articulated above is relevant, i.e., whether a “dedicated I/O channel” should be interpreted as a channel that is used exclusively for a certain type of data, i.e., I/O requests. We find that, in contrast to Patent Owner’s and Dr. Zeino’s assertions, the ʼ092 patent provides a somewhat broader description of elements 121 and 122, to wit: “The PC data storage system 131 services a plurality of channel attached host processors 111, 112 using channels 121, 122, and a plurality of network attached host processors 106, 107. . . .” Ex. 1001, 5:10–13 (omitting Dr. Zeino’s proffered words “dedicated I/O” (Ex. 2001 ¶ 27 (emphasis added)). The ʼ092 patent goes on to later describe channels 121 and 122 as “I/O channels.” Ex. 1001, 5:51. We have reviewed the ʼ092 patent and prosecution history, and find no further intrinsic evidence of record, i.e., original disclosure or arguments presented during prosecution, that would provide additional context for the “dedicated I/O channel” limitation. Nonetheless, for purposes of this Decision, we need not determine whether a “dedicated I/O channel” can transmit data other than I/O requests because, as discussed in Section III.E.1 below, Petitioner shows sufficiently that Heil discloses a “dedicated I/O channel” even under the claim construction inferred from Patent Owner’s argument. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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’” (Fed. Cir. 1999))). Thus, based on the current record and purposes of this Decision, we preliminarily construe a “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Under our preliminary claim construction of the phrase “dedicated I/O channel” adopted above, i.e., we interpret “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests. See § III.C, supra. Patent Owner’s declarant states that Petitioner “maps path 115 to 116.5 to 102 as the dedicated I/O channel of element [1.a]” (Ex. 2001 ¶ 17), and opines “[t]his mapping [cannot be made . . . because] Heil specifically notes that the indicated path (i.e., the path including elements 115, 116.5 and 102) is not dedicated” because Figure 1 of Heil shows “one HBA services the I/O requests from CPU1 and CPU2 100” (id.), thus providing “the load sharing benefits of allowing a plurality of HBAs to service the local and remote I/O requests of CPU 1 and CPU 2 100.” Prelim. Resp. at 14. Relying on the Declaration of Dr. Zeino, Patent Owner states “[t]he channel used by the PCI bus bridge 115 and PCI bus 116.5 is used for other communications besides I/O requests, for example arbitrary communications among peer CPUs (Heil, Col. 8, lines 8–18) and thus the PCI bus bridge 115 and PCI bus 116.5 simply cannot be and cannot serve as a dedicated I/O channel.” Prelim. Resp. 15. “[T]he the only path to the Fibre Channel backbone 121 from the host system CPUs 100 and remote system CPUs 135 is over PCI bus bridge 115 and PCI bus 116.5, so PCI bus bridge 115 and PCI bus 116.5 are also used to allow a channel or path for each CPU to be connected to peer CPU’s.” Id. at 16. cited by Patent Owner, below: In the present invention, each CPU within Node 150, Nodes 152, and Node N 151 does [sic] not have direct connectivity to a peer CPU within another node. For example, CPU 1 100 does not communicate directly with CPU N+1 135 in Node N 151. Instead, Node 150, Nodes 152, and Node N 151 are connected via a network communications medium. In the preferred embodiment, a Fibre Channel backbone 121 allows each CPU to be connected to peer CPU’s. One skilled in the art will recognize all node-to-node inter-processor communication can occur on this Fibre Channel backbone 121. Alternatively, the Fibre Channel backbone 121 can be used exclusively for storage communications and inter-processor communications can occur over a separate network.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,154,092 - Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution deniedPTAB · May 4, 2023 · IPR2023-00137 · APJ Ken B Barrett · IPR · Institution
The Board denied institution of IPR challenging claims 1–4, 6–11, and 13–14, exercising § 314(a) discretion under Fintiv after finding the parallel litigation advanced and the merits not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherInstitution denied
“F. Summary Regarding Fintiv Factors 1–5 In summary, factors 1–3 and 5 weigh in favor of exercising our discretion to deny institution and factor 4 weighs somewhat against exercising our discretion to deny institution. Considering these factors as a whole, we determine that these factors weigh in favor of exercising our discretion to deny institution.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ submissions, and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent Owner’s arguments, even if they would eventually prove to be unpersuasive, raise substantial concerns about the strength of Petitioner’s case. Much of Petitioner’s case for the presence of claim limitations in the prior art is not derived directly from Kobayashi but rather requires extensive modifications to Kobayashi’s apparatus, and the Petition relies heavily on the testimony of Dr. Valenti to supply the bases for those modifications. We acknowledge Petitioner’s argument that Patent Owner admitted that the use of memory locations and the use of indices were well known in encoding apparatuses. See, e.g., Pet. 14–15, 21; Pet. Reply 3. However, that such things were well known is not dispositive as to whether a permutation module configured to utilize those things in the specifically recited way, along with the remainder of the overall claimed subject matter, would have been obvious. Thus, even if we were to find that Petitioner’s contentions support a reasonable likelihood of unpatentability, we would have significant open questions for resolution at trial. Under these circumstances, and based on the present record, we do not find “compelling merits” because Petitioner’s challenge does not plainly lead to a conclusion that one or more claims are unpatentable as being obvious over Kobayashi.” slip op. at 27
- Skill levelSkill level petitioner adoptedOther
“Pet. 4–5 (citing Ex. 1002 ¶¶ 21–22). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. We determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’833 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we adopt Petitioner’s description of the person of ordinary skill in the art.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,284,833
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.