- Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00793 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–5, 8, 11, 12, 14, 15, 27, and 28 were not shown unpatentable as obvious over Muthukumarasamy alone or with Hayward.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“‘media player’ in the ’528 patent refers to application software and does not encompass hardware devices” (PO Resp. 16 (citing Ex. 2022 ¶¶ 83–91, 94)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all application software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 21–24)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded. Even if the zHub and the zNode would be used to control the volume on the TV on which the streamed content is displayed, this device cooperation does not show the particular messaging recited in the claim. More specifically, even under Petitioner’s scenario that the “Volume Up” command flows from the IED (“personal computing device”) through the zHub/zNode (“server system”) to the TV (“content presentation device”), this command does not “identify a particular media player for playing content from the file.” Petitioner has not shown any messages in Muthukumarasamy that “identify a particular media player for playing content from the file” and flow from the IED through the zHub/zNode to the content presentation device. Thus, Petitioner’s assertions about devices working together fall short of proving by preponderant evidence that Muthukumarasamy discloses the particular messaging contents and path recited in claim 1.” slip op. at 30
Patent outcomesUS 8,782,528 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,782,528 - PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- 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 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,858,215 - PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“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, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. 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 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - PTAB · Jul 25, 2023 · IPR2023-00294 · APJ Christa P Zado · IPR · Institution
The Board instituted inter partes review of claims 1–6 on all asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine that factors 1–5 do not favor discretionary denial. As discussed above, factors 1–4 weigh against exercising our discretion to deny institution. Although factor 5 weighs in favor of denial due to similarity of parties, when balanced with factors 1–4, there is no indication of inefficiencies or duplication of efforts between the PTAB and the district court, as discussed above, and factors 1–5 taken together weigh against discretionary denial. Therefore, consistent with Commscope, because Fintiv factors 1–5 do not favor discretionary denial, we decline to discretionarily deny institution under Fintiv, without reaching the compelling merits analysis.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons expressed above, we determine that Petitioner has demonstrated a reasonable likelihood of showing that at least one claim of the ’498 patent is unpatentable. As set forth in the Order below, we institute a trial on all challenged claims and all asserted grounds of unpatentability. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Our factual findings and determinations at this stage of the proceeding are preliminary and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. IV. ORDER Accordingly, it is ORDERED that an inter partes review is instituted as to all challenged claims on all the grounds raised in the Petition; and FURTHER ORDERED that inter partes review is instituted” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends “[t]he level of ordinary skill encompassed a person having a Bachelor’s Degree in electrical engineering or a related field and three years of experience relating to audio technology or signal processing, where a higher level of education may substitute for experience.” Pet. 32–33 (citing Ex. 1002 ¶ 69). At this stage in the proceeding, Patent Owner does not provide a contention as to the level of ordinary skill in the art. Based on the record presented, including our review of the ’498 patent and the types of problems and solutions described in the patent and the cited prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision. To the extent the parties disagree as to the level of ordinary skill in the art, the parties may address the issue in their papers during trial and explain, for example, how a different definition would impact the obviousness analysis of the challenged claims.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes a construction for the term “turntable.” Pet. 20– 21. Patent Owner is silent on the issue of claim construction and does not raise any arguments that necessitate a construction of “turntable.” For purposes of this Decision, we determine that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,567,498 - 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 · Jul 19, 2023 · IPR2023-00422 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Foss.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering Petitioner’s arguments and evidence, and for the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’301 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 12 (citing Ex. 1003 ¶¶ 159–161). We are persuaded, on the present record, that Petitioner’s proposal is generally consistent with the problems and solutions in the ’301 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner does not propose any claim constructions. See Pet. 12. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims.” slip op. at 5
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 8,905,301 - PTAB · Jul 19, 2023 · IPR2023-00421 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–17 under all asserted grounds: anticipation by Gopinathan and obviousness over Gopinathan and Hirka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering Petitioner’s arguments and evidence, and for the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’100 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 11–12 (citing Ex. 1003 ¶¶ 159–161). We are persuaded, on the present record, that Petitioner’s proposal is generally consistent with the problems and solutions in the ’100 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not propose any claim constructions. See Pet. 11. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The anticipation inquiry takes into account the literal teachings of the prior art reference and inferences the ordinarily skilled person would draw from it. Eli Lilly and Co. v. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,837,100 - PTAB · Jun 7, 2023 · IPR2023-00203 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of claim 16 on the petition’s challenges and joined Micron as a petitioner in IPR2022-00615 after finding a reasonable likelihood of success over Ellsberry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination. As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 615 IPR.” slip op. at 13
- BurdenNot reached
“As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“described with reference to Table 1 refer to transmitting a command signal to one of the multiple memory devices in the selected rank.” Prelim. Resp. 8. On this record, we disagree with Patent Owner’s interpretation of this passage. The ’912 patent states that Table 1 is a logic table “for the selection among ranks of memory devices 30 using chip-select signals.” Ex. 1001, 7:56–58. We see nothing in Table 1 that indicates a further selection of memory devices within each rank. On this record, and for purposes of institution, we agree with Petitioner that the ’912 patent’s description of sending the command signal “to only one memory device or the other memory device” by reference to logic showing the selection of one rank or another tends to show that a rank may have one memory device. See Pet. 12–13. At least for this preliminary decision, we determine that “rank” refers to “one or more memory devices.” We do not construe the term further at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties are not precluded from arguing the proposed construction of “rank” in subsequent briefing at trial. Our final claim construction, if any, will be determined on the full record at trial.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,619,912 - Lyft, Inc. v. Agis Software Development LLCAll claims unpatentablePTAB · May 25, 2023 · IPR2022-00513 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–26 are unpatentable as obvious: claims 1–12 and 14–25 over Makoto, Konishi, Hamynen, and Scaer; claims 13 and 26 with the additional reference Van Bosch.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that the level of ordinary skill proposed by Dr. Terveen is not significantly different from that proposed by Petitioner and that Petitioner’s proposed level of ordinary skill is consistent with the ’838 patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We accept Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education and experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art. We otherwise adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no express constructions are necessary. Pet. 7 (citing Ex. 1002 ¶ 35). Patent Owner does not address claim construction. See PO Resp. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“ordinary skill in the art would have had reason to combine the teachings of Makoto and Scaer because it would have allowed users to specify areas of interest using symbols on Makoto’s map and share those areas of interests with others, providing users with real-time information about traffic conditions or other places of interests such as meeting and dining facilities. Id. at 41–43 (citing Ex. 1005 ¶¶ 126–129; Ex. 1007 ¶ 55; Ex. 1010 ¶¶ 3, 40–41, Fig. 9; Ex. 1002 ¶¶ 152–156). Petitioner further argues that a person of ordinary skill in the art would have found it obvious to allow for participant selections to be provided via a touch screen, as taught by Hamynen. Id. at 42 (citing Pet. § VIII.A.1(m)). According to Petitioner, a person of ordinary skill in the art would have had a reasonable expectation of success combining the teachings of Makoto and Scaer because it would have involved the use of well-known computer programming principles to implement a straightforward extension of Makoto’s teachings. Pet. 43 (citing Ex. 1002 ¶ 156). For limitation 1[p], Petitioner relies on a combination of teachings from Makoto, Hamynen, and Scaer. Pet. 44–46. Petitioner argues that Makoto, as modified by Hamynen’s touch screen teachings (see limitation 1[m] above) and by Scaer’s area of interest teachings (see limitation 1[o] above), teaches user interaction on a mobile device to select a position on the map shown on the device’s display, which is then converted into location coordinates. Id. at 44–45 (citing Ex. 1007 ¶¶ 38, 55, Fig. 4; Ex. 1002 ¶¶ 159–161). Petitioner also argues that a person of ordinary skill in the art would have had reason to combine the teachings of Makoto, Scaer, and Hamynen because the combination would have allowed users to specify areas of interest by selecting them on a displayed map, improving the overall such an implementation would have involved combining well-known techniques. Id. at 45–46 (citing Ex. 1002 ¶¶ 162–163). Petitioner contends Makoto in view of Scaer also teaches displaying a symbol representing the location of the selected position or area of interest on a map as well as transmitting the GPS information of that area of interest to the location information service providing device 305. Id. at 46 (citing Pet. § VIII.A.1(o); Ex. 1002 ¶¶ 164–164). In its Patent Owner Response, Patent Owner does not present any argument as to limitations 1[o] and 1[p]. See PO Resp. In its Sur-reply, Patent Owner argues that “Petitioner’s combination fails because it fails to disclose each and every element of the claimed invention, specifically the requirement that a second mobile device is configured to identify participant interaction with a display of the second mobile device, the participant interaction indicating selection of a position on the participant map and entry of the new entity of interest at the selected position.” PO Sur-reply 13–14. According to Patent Owner, Hamynen’s disclosure is about selecting the user’s own approximate position and “has nothing to do with entering a new entity of interest at the selected approximate position,” and Scaer “merely uses a form to enter the event information and the form requires the manual entry of specific coordinates.” Id. at 14 (citing Ex. 1007 ¶ 55; Ex. 1010 ¶¶ 40–41, Fig. 9). Patent Owner further argues that “[t]here is no motivation to combine the references to further modify the combination of Makoto’s static map as modified with Hamynen’s pointer-device map with the additional features of Scaer because Scaer’s form requires manually entering coordinates to generate a map with a new event.” Id. Patent Owner also argues that there is no motivation to add pointer-device capabilities to enter coordinates to a form when Hamynen’s map already purportedly converts input received from a pointing device into coordinates.” Id. (citing Ex. 1005 ¶ 56; Ex. 1007 ¶ 37). According to Patent Owner, there “would have been no motivation to modify the Makoto-Scaer combination, which already purportedly received coordinates inputted by users, to add the feature of obtaining coordinates which were already obtained using Scaer’s form.” Id. at 14–15. We consider Patent Owner’s new argument raised in Patent Owner’s” slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). On balance, considering the record before us, Petitioner has shown, by a preponderance of the evidence, that the combination of Makoto, Konishi, Hamynen, and Scaer would have rendered the subject matter of claims 1–12 and 14–25 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 46
Patent outcomesUS 10,341,838 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,341,838 - Lyft, Inc. v. Agis Software Development LLCAll claims unpatentablePTAB · May 25, 2023 · IPR2022-00514 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–31 are unpatentable under §103: claims 1–12, 16–19, 23–29 over Makoto, Konishi, Paul, and Hamynen; claims 13–15, 30–31 with Agrawal; and claims 20–22 with Scaer.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and arguments raised during the trial in this inter partes review. For the reasons discussed below, we determine that Petitioner has proven by a preponderance of the evidence that claims 1–31 of the ’100 patent are unpatentable. See 35 U.S.C. § 316(e) (2018) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, software engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems.” Pet. 5–6 (citing Ex. 1002 ¶¶ 18–20); 515 Pet. 9–10. Petitioner further argues that “[m]ore education can substitute for practical experience and vice versa.” Pet. 6; 515 Pet. 10. Patent Owner does not dispute this assessment or offer its own assessment. See PO Resp. In his declaration, Dr. Terveen testifies that “a person of ordinary skill in the art would have a bachelor’s degree in computer science or computer engineering with one to two years of experience in the field of computer programming for communications system, or the equivalent education and work experience.” Ex. 2004 ¶ 27. We determine that the level of ordinary skill proposed by Dr. Terveen is not significantly different from that proposed by Petitioner and that Petitioner’s proposed level of ordinary skill is consistent with the ’100 patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We accept Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education and experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art. We otherwise adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express constructions for any claim term. See Pet.; 515 Pet.; PO Resp. We do not need to construe expressly any claim terms to resolve the patentability issues before us. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“re-generated each time a request is made, with Konishi’s feature of sending positions because Makoto already purportedly discloses obtaining map information.” PO Sur-reply 3. This conclusory argument is untimely and also does not address Petitioner’s reasoning that downloading a map would overcome the problems of having to store large amounts of data locally, as might be required “depending on the size and resolution of the digital map.” Pet. 22–23 (citing Ex. 1002 ¶¶ 29–33, 71–72, 217; Ex. 1007 ¶ 54; Ex. 1014, 6:14–20, 14:59–15:3). There may be some situations in which it is desirable to download a map and others in which it is not necessary. Konishi’s disclosure of transmitting a map to a mobile device would certainly provide a benefit when the device does not already include the map. Having considered the full trial record, based on Petitioner’s persuasive argument and evidence, we find that the combination of Makoto and Konishi teaches “receiving, from a server, mapping data including a map and coordinate translation data correlating coordinates of positions on the map with corresponding coordinates of geographical locations” and that a person of ordinary skill in the art would have combined the teachings of Makoto and Konishi with a reasonable expectation of success, as asserted by Petitioner.” slip op. at 25
Patent outcomesUS 10,299,100 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,299,100
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.