- Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 22, 2024 · IPR2024-00145 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We determine that Patent Owner has not shown that it is entitled to the presumption of nexus. That is, Patent Owner has not shown that product “is the invention disclosed and claimed.” Fox Factory, 944 F.3d at 1374 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Petitioner is correct that Patent Owner did not discuss in its Patent Owner Response whether the claims of the ’407 patent are coextensive with the DoDots patent. We examine Patent Owner’s contentions in its Sur-reply of coextensiveness, including Patent Owner’s contention that “[t]he ‘gist’ of the inventions centered around the NIM template” (PO Sur-reply 23), to determine if the DoDots product was coextensive or, even if not, if “the unclaimed features amount to nothing more than additional insignificant features,” in which case the presumption of nexus may still be appropriate. See Fox Factory, 944 F.3d at 1373 (“Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.”); Teva Pharms., 8 F.4th at 1361–63 (discussing the “spectrum” of coextensiveness, from one in which unclaimed features are insignificant, which might not disturb the presumption, to one in which a critical feature is unclaimed, which would not show coextensiveness). We determine that the record evidence shows that at least the feature of the “developer ecosystem” was significant and not coextensive with the claims. John Kembel’s testimony describes “a whole developer ecosystem” including a “dev Dot” that allows “web developers to become Dot developers.” Ex. 1031, 59:2–17. Patent Owner contends that NIMs and NIM templates, as claimed, are the only critical features of the DoDots products, but the testimony of John Kembel confirms the criticality of the developer ecosystem: “[Y]ou could collect Dots, you could share Dots, you could organize them into packs based on your different work products, but the gist and the magic of the invention really comes down to the concept of a Dot, the Dot definition, and the server infrastructure that enabled those to be defined, collected, developed, and distributed.” Id. at 19:16–22 (emphasis added); see Ex. 2021 ¶¶ 36–43; Ex. 2027, 6 (discussing the “DevDot”); Ex. 2029.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner
“art had a recognized need for a solution to the problem, and that others had tried and failed to find a solution to that problem. Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017). We have reviewed the cited evidence presented by Patent Owner, and find that it does not evince strong evidence of a long-felt but unsolved need that Patent Owner contends was addressed by the DoDots products.” slip op. at 34
Patent outcomesUS 8,510,407 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,510,407 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00701 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01279 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience. PO Resp. 9 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As noted above, our construction requires “a fully configurable frame, with one or more controls, through which content is presented to the user.” We decline to adopt the construction Patent Owner urges—that the content presented to the user must itself be fully configurable. See PO Resp. 38–39. Rather, our construction derives from language in the specification, which is immediately followed by language describing the advantage of a fully configurable frame: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:21–28; Ex. 1012, 9–10 (citing Ex. 1001, 5:21–24). Patent Owner itself quotes a portion of the specification that describes the “shortcomings” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and developers “have limited control over the user experience” (Ex. 1001, 2:3–29 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01279 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:24–28). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’407 patent specification’s disclosure that “[t]he developer has full control over all aspects of the appearance and functionality of NIM frame.” PO Resp. 38 (quoting Ex. 1001, 17:32–43). However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance and operation of the NIM frame, not the content. Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 106. We find persuasive, and credit, Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars, and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). This testimony is supported by the cited teachings and is consistent with our claim construction.” slip op. at 17
Patent outcomesUS 8,510,407 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,510,407 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 9, 2024 · IPR2024-00144 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–21 are unpatentable: claims 1–4, 6–10, and 13–15 as obvious over Brown and Wecker, and claims 5, 11, 12, and 16–21 as obvious over Brown, Wecker, and Beer.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -00988 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010) states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 9 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“C. Claim Construction 1. “networked information monitor” The term “networked information monitor” (“NIM”) appears in each of independent claims 1 and 16. In the -00988 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the the -00988 IPR we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Petitioner has shown by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to make the proposed combination of Brown and Wecker with a reasonable expectation of success.3 Brown and Wecker each describe the access and display of web content outside of the then-traditional browser model, with each describing subscribing to web content in a way which periodically new content is retrieved and updated. Ex. 1005, 13:4–8; Ex. 1006, 4:3–6, 4:53– 62. While Wecker provides extensive description relative to a mobile device and Brown does not focus on a mobile device, Petitioner is correct in its contentions that Wecker describes the use of a desktop computer for viewing its mobile channels and that Brown specifically discusses that, while the 3 With respect to Patent Owner’s contention that the Reply introduced new arguments and evidence with respect to this combination (PO Sur-reply 4), we note that we make this determination relying only on the evidence and argument in the Petition. device it describes is “preferably a general purpose personal computer,” the device may also be a hand-held device. Ex. 1005, 4:32–49; Pet. 12, 13 (citing Ex. 1005, 4:44–49; Ex. 1006, 3:63–66, 4:3–6; Ex. 1003 ¶¶ 37, 39); see Ex. 1006, 4:8–13 (describing providing a desktop user with content while requiring small amounts of bandwidth). While Patent Owner’s arguments focus on its assertions regarding complexity and impossibility in the combination of Brown and Wecker, Petitioner’s argued combination involves the application of Wecker’s subscription to a mobile channel which provides for periodic retrieval of updated mobile channel data, specifically including new and updated script files, separate from data files, for use in implementing Brown’s desktop components. Pet. 11–15, 25–26 (citing Ex. 1006, 3:8–20, 3:63–66, 4:3–6). With reference to the combination of these elements, after review of the record we do not agree with Patent Owner’s arguments that one of ordinary skill in the art would not have had a reasonable expectation of success in implementing Wecker’s independent channels in Brown’s composite desktop, even given Brown’s use of a single file that includes the HTTP instructions for more than one desktop component. See PO Resp. 17–21. We determine that Petitioner adequately shows Brown’s capacity to deal with individual desktop components while using one file, because Brown’s desktop shell allows the addition of additional desktop components to the composite desktop. Pet. 11, 51 (citing Ex. 1005, 7:21–23; Ex. 1003 ¶ 35). We agree that the mobile channel script files in Wecker are similar in objective to the HTML instructions in Brown. After considering the entirety of the record, we credit Dr. Schmidt’s testimony that one of ordinary skill in the art would have found the use of script files as in Wecker in the structure of Brown could be accomplished with a reasonably high expectation of success. Ex. 1003 ¶¶ 37, 38. Additionally, against the backdrop of the level of skill in the art (as determined above, Section II.B, and as exemplified by the subject patent and the prior art asserted), the record supports the conclusion that the use of the cache and the mobile channel script files from Wecker in Brown could have been accomplished with a reasonable expectation of success. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). On this record, Patent Owner’s argument that detail about the changes necessary to accommodate Wecker’s mobile channel files in Brown’s composite desktop is inconsistent with the “well-established” proposition “that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Our construction requires “a fully configurable frame” and we decline to make the determination that Patent Owner urges, that the construction requires that the content presented to the user must be fully configurable. See PO 36–37. Rather, the construction derives from the specification, immediately followed by the language: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 4:59–63); Ex. 1012, 9–10 (citing Ex. 2054, 5:40–43). Patent Owner itself quotes a portion of the specification of the ’083 patent that describes the “limiting factors” (PO Resp. 6) of prior art browsers, namely “controls associated with a browser are not fully configurable” and prior art browsers “provide very limited control to a user or content provide[r] to alter the frame and controls provided by the browser window” (Ex. 2054, 2:47, 2:57–59 (quoted at PO Resp. 6–7)). The Federal Circuit also quoted the ’545 patent’s disclosure contrasting the “fully configurable” NIM with thencurrent web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the - 00988 IPR. Ex. 1014, 3 (quoting Ex. 1001, 4:56–59). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’545 patent specification’s disclosure that “frame shape and content may be wholly defined by the Dot developer.” PO Resp. 36–37, citing Ex. 2054 10:55–57. However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance of the frame. In particular, we find the word “frame” in the phrase “frame shape and content” modifies both “shape” and “content” so that the phrase refers to both the shape and the content of the frame, , rather than to frame shape and, separately, the content presented within the frame. See Ex. 2054, 10:46–55 (“The frame . . . defines that area . . . in which data may be rendered [and] may contain rendered Internet data . . . . The appearance of the frame (if any) together with data that is displayed therein is the visible instantiation of the [NIM]. Any Internet data or media data may be contained within the frame.”). Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶¶ 105–114. We instead credit Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). Additionally, we also do not find compelling Patent Owner’s argument that our construction of “a fully configurable frame with one or more controls . . .” requires “configurable control(s)” and that the controls identified in Brown are not sufficiently configurable to meet this requirement. PO Resp. 38. Rather, we understand portions of the ’083 specification cited by Patent Owner to describe, again with reference to then-current browsers, the problem of configurability relating to the appearance of the frame and the restrictions on the controls of the frame – that the vendor of the browser brands the browser in which content appears and regulates the controls associated with the frame. See, e.g., Ex. 2054, 2:45–49 (quoted at PO Resp. 6–7); Ex. 1001, 1:65–67 (“There is a growing desire for content providers to . . . fully brand and control the frame in which the content appears.”). For the same reason, we do not agree with Patent Owner that all data related to a control must be present in the NIM template, rather than elsewhere, for a frame to be fully configurable. See PO Resp. 39–40. Thus, we determine that the availability of different controls to the developer of a NIM (e.g., horizontal and vertical scroll bars if desired, as in Brown, Fig. 6A), teaches or suggests “one or more controls” as required by our claim interpretation of a NIM. For similar reasons, we credit Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable because they can be positioned at any location and have specified controls. Ex. 1003 ¶ 51, as it is consistent with the descriptions in the specification, as noted above. In contrast, also in light of the descriptions in the specification, we give less credit to Dr. Selker’s testimony that “fully configurable” requires that the content presented to the user must be modifiable, that the controls must be developed by the NIM developer and implemented in the NIM template, and that setting position, size, or scrolling could not be a frame control. Ex. 2010 ¶¶ 106, 107, 109–112. In light of these determinations, we find that Brown teaches that its desktop components are floating frames that can be positioned anywhere on the screen. Ex. 1005, 7:24–26, 12:61–64. These frames have frame controls. Id. at Fig. 3A (elements 306, 308). The frames display a piece of web-based content to a user. Id. at 7:22–23, Fig. 3A. Accordingly, we find that Brown’s desktop components teach or” slip op. at 23
Patent outcomesUS 9,369,545 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,369,545 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 9, 2024 · IPR2023-00756 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–21 are unpatentable as obvious over Brown and Wecker, with Beer added for claims 5, 11, 12, and 16–21; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“of independent claims 1 and 16. In the -00988 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the the -00988 IPR we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Petitioner has shown by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to make the proposed combination of Brown and Wecker with a reasonable expectation of success.3 Brown and Wecker each describe the access and display of web content outside of the then-traditional browser model, with each describing subscribing to web content in a way which periodically new content is retrieved and updated. Ex. 1005, 13:4–8; Ex. 1006, 4:3–6, 4:53– 62. While Wecker provides extensive description relative to a mobile device and Brown does not focus on a mobile device, Petitioner is correct in its contentions that Wecker describes the use of a desktop computer for viewing its mobile channels and that Brown specifically discusses that, while the 3 With respect to Patent Owner’s contention that the Reply introduced new arguments and evidence with respect to this combination (PO Sur-reply 4), we note that we make this determination relying only on the evidence and argument in the Petition. device it describes is “preferably a general purpose personal computer,” the device may also be a hand-held device. Ex. 1005, 4:32–49; Pet. 12, 13 (citing Ex. 1005, 4:44–49; Ex. 1006, 3:63–66, 4:3–6; Ex. 1003 ¶¶ 37, 39); see Ex. 1006, 4:8–13 (describing providing a desktop user with content while requiring small amounts of bandwidth). While Patent Owner’s arguments focus on its assertions regarding complexity and impossibility in the combination of Brown and Wecker, Petitioner’s argued combination involves the application of Wecker’s subscription to a mobile channel which provides for periodic retrieval of updated mobile channel data, specifically including new and updated script files, separate from data files, for use in implementing Brown’s desktop components. Pet. 11–15, 25–26 (citing Ex. 1006, 3:8–20, 3:63–66, 4:3–6). With reference to the combination of these elements, after review of the record we do not agree with Patent Owner’s arguments that one of ordinary skill in the art would not have had a reasonable expectation of success in implementing Wecker’s independent channels in Brown’s composite desktop, even given Brown’s use of a single file that includes the HTTP instructions for more than one desktop component. See PO Resp. 17–21. We determine that Petitioner adequately shows Brown’s capacity to deal with individual desktop components while using one file, because Brown’s desktop shell allows the addition of additional desktop components to the composite desktop. Pet. 11, 51 (citing Ex. 1005, 7:21–23; Ex. 1003 ¶ 35). We agree that the mobile channel script files in Wecker are similar in objective to the HTML instructions in Brown. After considering the entirety of the record, we credit Dr. Schmidt’s testimony that one of ordinary skill in the art would have found the use of script files as in Wecker in the structure of Brown could be accomplished with a reasonably high expectation of success. Ex. 1003 ¶¶ 37, 38. Additionally, against the backdrop of the level of skill in the art (as determined above, Section II.B, and as exemplified by the subject patent and the prior art asserted), the record supports the conclusion that the use of the cache and the mobile channel script files from Wecker in Brown could have been accomplished with a reasonable expectation of success. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). On this record, Patent Owner’s argument that detail about the changes necessary to accommodate Wecker’s mobile channel files in Brown’s composite desktop is inconsistent with the “well-established” proposition “that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We determine that Patent Owner has not shown that it is entitled to the presumption of nexus. That is, Patent Owner has not shown that product “is the invention disclosed and claimed.” Fox Factory, 944 F.3d at 1373 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Petitioner is correct that Patent Owner did not discuss whether the claims of the ’545 patent are coextensive with the DoDots patent in its Patent Owner Response. We examine Patent Owner’s contentions in its Sur-reply of coextensiveness, including Patent Owner’s contention that “[t]he ‘gist’ of the inventions centered around the NIM template,” (PO Sur-reply 24–25) to determine if the DoDots product was coextensive or, even if not, if “the unclaimed features amount to nothing more than additional insignificant features,” in which case the presumption of nexus may still be appropriate. See Fox Factory, 944 F.3d at 1373 (“Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.”); Teva Pharms., 8 F.4th at 1362 (discussing the “spectrum” of coextensiveness, from one in which unclaimed features are insignificant, which might not disturb the presumption, to one in which a critical feature is unclaimed, which would not show coextensiveness). We determine that the record evidence shows that at least the feature of the “developer ecosystem” was significant and not coextensive with the claims. John Kembel’s testimony describes “a whole developer ecosystem” including a “dev Dot” that allows “web developers to become Dot developers.” Ex. 1031, 59:2–17. Patent Owner contends that NIMs and NIM templates, as claimed, are the only critical features of the DoDots products, but the testimony of John Kembel confirms the criticality of the developer ecosystem: “[Y]ou could collect Dots, you could share Dots, you could organize them into packs based on your different work products, but the gist and the magic of the invention really comes down to the concept of a Dot, the Dot definition, and the server infrastructure that enabled those to be defined, collected, developed, and distributed.” Ex. 1031, 19:16–22 (emphasis added); see Ex. 2021 ¶¶ 36–43; Ex. 2027, 6 (discussing the “DevDot”); Ex. 2029. Patent Owner acknowledges, in its description of DoDots technology, that “[t]he claimed inventions of the ’545 patent . . . disclosed an ecosystem for software developers to author and distribute . . . data structures which the inventors referred to as NIM templates,” and contends that this ecosystem “attracted hundreds of independent Dot developers.” PO Resp. 2–3, 6. But despite touting the importance of this development ecosystem, Patent Owner does not address how it is disclosed in the claims of the ’545 patent, and we do not discern that it is. We are instructed that, even if we do not determine that a presumption of nexus attaches, nexus may still be proven by a showing “that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, 944 F.3d at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)); Lectrosonics at 33. We turn to the provided evidence of secondary considerations with this in mind.” slip op. at 40
Patent outcomesUS 9,369,545 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,369,545 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 9, 2024 · IPR2024-00143 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–5 and 9–13 as obvious over Brown, and claims 6–8 and 14–16 as obvious over Brown and Wecker.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A person of ordinary skill (“POSITA”) relating to the subject matter of the ’083 Patent would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least three years of corresponding industry work experience. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01278 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 8 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 9–10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 8) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “execute the template” and “client device” Patent Owner requests construction of the terms “execute the template” and “client device.” PO Resp. 9–10. We do not construe these claim terms because their construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“networked information monitor” Our determination is that Petitioner has shown by a preponderance of the evidence that Brown’s desktop component teaches or suggests a NIM in accordance with our claim construction of that term. Our construction requires “a fully configurable frame” and we decline to make the determination that Patent Owner urges, that the construction requires that the content presented to the user must be fully configurable. See PO 36–37. Rather, the construction derives from the specification, immediately followed by the language: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:44–48 (using the term “Application Media Package,” which is synonymous with NIM (PO Resp. 4–5)); Ex. 1012, 9–10 (citing Ex. 1001, 5:40–43). Patent Owner itself quotes a portion of the specification that describes the “limiting factors” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and prior art browsers “provide very limited control to a user or content provide[r] to alter the frame and controls provided by the browser window” (Ex. 1001, 2:47, 2:57–59 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01278 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:44–48). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’083 patent specification’s disclosure that “frame shape and content may be wholly defined by the Dot developer.” PO Resp. 36–37, citing Ex. 1001 10:55–57. However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance of the frame. In particular, we find the word “frame” in the phrase “frame shape and content” modifies both “shape” and “content,” so that the phrase refers to both the shape and the content of the frame, rather than to frame shape and, separately, the content presented within the frame. See Ex. 1001, 10:46–55 (“The frame . . . defines that area . . . in which data may be rendered [and] may contain rendered Internet data . . . . The appearance of the frame (if any) together with data that is displayed therein is the visible instantiation of the [NIM]. Any Internet data or media data may be contained within the frame.”). Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 109. slip op. at 15
Patent outcomesUS 8,020,083 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,020,083 - Samsung Electronics Co., Ltd. / Apple Inc. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 9, 2024 · IPR2023-00621 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–5 and 9–13 as obvious over Brown, and claims 6–8 and 14–16 as obvious over Brown and Wecker.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A person of ordinary skill (“POSITA”) relating to the subject matter of the ’083 Patent would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least three years of corresponding industry work experience. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01278 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 8 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for patent owner
“of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 9–10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 8) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “execute the template” and “client device” Patent Owner requests construction of the terms “execute the template” and “client device.” PO Resp. 9–10. We do not construe these claim terms because their construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We instead credit Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). Additionally, we also do not find compelling Patent Owner’s argument that our construction of “a fully configurable frame with one or more controls . . .” requires “configurable control(s)” and that the controls identified in Brown are not sufficiently configurable to meet this requirement. PO Resp. 38. Rather, we understand portions of the ’083 specification cited by Patent Owner to describe, again with reference to then-current browsers, the problem of configurability relating to the appearance of the frame and the restrictions on the controls of the frame – that the vendor of the browser brands the browser in which content appears and regulates the controls associated with the frame. See, e.g., Ex. 1001, 2:45–49 (cited at PO Resp. 38; Ex. 2010 ¶ 111), 2:50–59 (“There is a growing desire for content providers to . . . fully brand and control the frame in which the content appears.”). For the same reason, we do not agree with Patent Owner that all data related to a control must be present in the NIM template, rather than elsewhere, for a frame to be fully configurable. See PO Resp. 39–40. Thus, we determine that the availability of different controls to the developer of a NIM (e.g., horizontal and vertical scroll bars if desired, as in Brown, Fig. 6A), teaches or suggests the “one or more controls” as required by our claim interpretation of a NIM. For similar reasons, we credit Dr. Schmidt’s testimony that a “fully configurable” frame is one in which the developer “can specify frame characteristics and controls,” Ex. 1003 ¶ 51 (emphasis added), as it is consistent with the descriptions in the specification, as noted above. In contrast, also in light of the descriptions in the specification, we give less credit to Dr. Selker’s testimony that “fully configurable” requires that the content presented to the user must be modifiable, that the controls must be developed by the NIM developer and implemented in the NIM template, and that setting position, size, or scrolling could not be a frame control. Ex. 2010 ¶¶ 109, 110, 113, 114.” slip op. at 17
Patent outcomesUS 8,020,083 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,020,083 - PTAB · Oct 9, 2024 · IPR2024-00728 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Taniguchi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “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.” 35 U.S.C. § 314 (2018). For the reasons below, we determine the information presented in the Petition shows a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one claim of the ’430 patent, and we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The ’430 patent describes its field of endeavor as inductor design in a VCO. Ex. 1001, 1:19–22. Patent Owner does not specifically state what Patent Owner considers the field of endeavor of the ’430 patent to be, but Patent Owner highlights portions of the ’430 patent specification that describe implementations on a single semiconductor chip. Prelim. Sur-reply 2 (citing Ex. 1001, 1:59–61). Even though portions of the ’430 patent refer to semiconductor die or chip applications (e.g., Ex. 1001, 1:27–61), neither the specification nor the claims are limited to such specific applications. Also, Patent Owner acknowledges a relatively broad field of endeavor with its proposed definition of a person of ordinary skill in the art, arguing that a person of ordinary skill would have had “two years of experience working in the wireless communications industry.” See Prelim. Resp. 15–16. Thus, on the present record, we preliminarily agree with Petitioner that the ’430 patent’s field of endeavor is inductor design. See Prelim. Reply 1–2. Similarly, although parts of Taniguchi describe an RFID system, on the current record, we are persuaded by Petitioner’s arguments that a person of ordinary skill would understand Taniguchi’s teachings to be applicable to the design of inductors generally. See Prelim. Reply 4–5. Among other things, on the present record, Petitioner sufficiently shows that the electromagnetic field created by a structure is not dependent upon it being labeled an antenna or an inductor. Prelim. Reply 2–3 (citing Ex. 1003 ¶¶ 85–93), 4–5 (citing Ex. 1003 ¶¶ 69–73, 138–166, 203). Further, on this record, we disagree with Patent Owner’s arguments that Taniguchi teaches away from the claimed invention; notwithstanding the reference’s discussion of specific applications in RFID systems, the structures depicted and described in Taniguchi are similar to those described and claimed in the ’430 patent, as discussed further below. Notably, the ’430 patent attributes many of the characteristics of the EM field to the symmetrical, 8-shaped inductor having current flowing in opposite directions in each of the inductor’s loops (Ex. 1001, 4:5–32), which is structurally similar to the structures depicted in Taniguchi, e.g. Figures 3, 7, and 8.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“¶¶ 85–93), 4–5 (citing Ex. 1003 ¶¶ 69–73, 138–166, 203). Further, on this record, we disagree with Patent Owner’s arguments that Taniguchi teaches away from the claimed invention; notwithstanding the reference’s discussion of specific applications in RFID systems, the structures depicted and described in Taniguchi are similar to those described and claimed in the ’430 patent, as discussed further below. Notably, the ’430 patent attributes many of the characteristics of the EM field to the symmetrical, 8-shaped inductor having current flowing in opposite directions in each of the inductor’s loops (Ex. 1001, 4:5–32), which is structurally similar to the structures depicted in Taniguchi, e.g. Figures 3, 7, and 8. Next, we disagree with Patent Owner’s arguments that Taniguchi does not teach or suggest a first inductor having a reduced far field. See Prelim. Resp. 23–26. As cited by Petitioner (Pet. 15–16), Taniguchi states that the “remote electromagnetic-field intensity” is suppressed with its two-loop 8- shaped antenna (e.g., Ex. 1005 ¶ 94). Similarly, we are currently persuaded that Taniguchi teaches or suggests that the magnetic field emanating from the second loop tends to cancel the magnetic field emanating from the first loop as a result of the current flowing through the loops in opposite directions. See Ex. 1003 ¶¶ 116, 122, 123; Ex. 1005 ¶¶ 55–57, 73–75. At this stage, Patent Owner’s arguments to the contrary (e.g., Prelim. Resp. 26– 27) do not substantively undermine Taniguchi’s teachings regarding suppression of the “remote” electromagnetic field. See Ex. 1001, 4:5–27 (describing characteristics of the EM field emanating from a symmetrical, single-turn, 8-shaped structure).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of ordinary skill would have had “a master’s degree in electrical engineering, physics, or similar discipline and at least two years’ experience in designing integrated circuits or inductors or a bachelor’s degree in electrical engineering, physics, or a similar discipline and at least four years’ experience in designing integrated circuits or inductors.” Pet. 2–3. Petitioner also states that additional education might compensate for less experience and vice versa. Pet. 3 (citing Ex. 1003 ¶ 58). Patent Owner disputes Petitioner’s description of the level of ordinary skill and states that a person of ordinary skill “would have had a bachelor’s 6 US 2005/0077992 A1; published Apr. 14, 2005. Ex. 1008. 7 US 2001/0030591 A1; published Oct. 18, 2001. Ex. 1009. 8 Brooks, Douglas, “Signal Integrity Issues and Printed Circuit Board Design,” Prentice Hall Modern Semiconductor Design Series (2003). Ex. 1010. degree in electrical engineering, physics, or a similar discipline, and either a master’s degree in one of these fields of study or a minimum of two years of experience working in the wireless communications industry.” Prelim. Resp. 15–16 (citing Ex. 2002 ¶ 24). On the current record, Patent Owner’s reference to “experience working in the wireless communications industry” (Prelim. Resp. 16; Ex. 2002 ¶ 24) appears potentially overbroad, as compared to Petitioner’s reference to “experience in designing integrated circuits or inductors” (Pet. 2–3), which appears to better reflect the subject of the ’430 patent and asserted prior art. At this stage, we apply Petitioner’s articulation of the level of ordinary skill in the art, but our Decision would not change under Patent Owner’s articulation. See Ex. 2002 ¶ 25 (Dr. Prucnal stating that his opinions would not change under Petitioner’s proposed articulation).” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,151,430 - PTAB · Sep 18, 2024 · IPR2024-00702 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–6 and 8–16 on all asserted grounds, finding a reasonable likelihood that the Nair and Forsberg combination renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board has authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’817 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, citing Dr. Bims’s declaration, asserts that, “[a] person of ordinary skill in the art (“POSITA”) in the subject matter of the ’817 patent would have had a master’s degree in electrical engineering, computer engineering, or computer science, or equivalent and at least three years of experience in the field of telecommunications or wireless systems,” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 10–11 (citing Ex. 1002 ¶ 22). Patent Owner asserts that one of ordinary skill would have had “a bachelor’s degree in electrical engineering, computer engineering, or computer science with (1) at least three years of experience in the field of telecommunications or wireless systems; and/or (2) an advanced degree in field of telecommunications or wireless systems.” Prelim. Resp. 16. We do not discern a meaningful difference between the two parties proposals. Petitioner’s proposal appears consistent with the problems and solutions in the ’817 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party makes a claim construction proposal or indicates that any claim requires construction. Pet. 11; see generally Prelim. Resp. We note that an argument was raised that presents an implicit construction question regarding whether a flag which “only identifies if encryption [is] ‘on’ or ‘off’” (Prelim. Resp. 24) teaches or suggests “an encryption scheme identifier that identifies an encryption scheme used by the UE to encrypt the subscription identifier in the SUCI” (as recited in limitation 1d of claim 1 and identically in claims 9, 10, and 15). We address that argument below, in Sections II.D.3.c.ii and iii of this Decision. With that exception, we do not discern that any claim terms require construction at this point in the proceeding for the purpose of institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“i. Nair Provisional’s Support for a Claim in Nair Patent Owner argues that the Petition is deficient because it does not show that the disclosure in the Nair Provisional supports at least one claim in Nair, even though Nair is subject to the AIA and Patent Owner concedes that the Board’s precedential opinion in Penumbra concludes we do not need to make such a determination regarding support for at least one claim to reach a prior art determination under the AIA. Prelim. Resp. 23–24 n.6; Penumbra, 2023) (precedential). Following that precedent, we decline to require a showing of support in the Nair Provisional for at least one claim in Nair and instead only require that the ministerial requirements for claiming priority were met. See Penumbra, Paper 34 at 32–33. Petitioner argues that the “ministerial requirements” described in Penumbra have been met. Pet. 4–5 (noting that Nair contains a priority claim to the Nair Provisional, was filed within 12 months of the Nair Provisional, and includes a common inventor). Patent Owner does not contest that these requirements have been met, and upon our examination, we agree that they appear to have been met. Ex. 1004, codes (22), (60), (72); Ex. 1008, 1, 4, 38. Thus, on the present record and for the purposes of institution, the disclosures of Nair are prior art, to the extent that the relied-upon disclosures are included in the Nair Provisional. ii. Nair Provisional’s Date for Cited Portions of Nair Patent Owner also argues that the Petition relies on material in Nair that was added after the filing of the Nair Provisional, and that this material cannot be properly relied on as prior art. Prelim. Resp. 19–23. We address these specific arguments regarding material Petitioner references from Nair (and the Nair Provisional) below, in our analysis with respect to the respective limitations of claim 1 these citations relate to.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,425,817 - PTAB · Sep 17, 2024 · IPR2024-00617 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 1–7, 9–14, 16–18, and 20 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’142 patent’s earliest claimed priority date “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 6 (citing Ex. 1012 ¶ 36). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bryan Bergeron. Ex. 1012 ¶ 36. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 2. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 7; Prelim. Resp. 10. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Douglas’s system includes Wager’s workforce management interface. Pet. 50–52 (citing Ex. 1012 ¶¶ 138–141). Petitioner presents evidence that doing so would have been obvious because “Douglas’s system is used to treat patients with a variety of needs,” and Wager’s interface “would have helped ensure that the assigned physician was equipped, in terms of skill set, to treat the patient.” Id. at 50–51 (citing Ex. 1002, 6:36–7:4; Ex. 1012 ¶¶ 138, 140). Petitioner also presents evidence that combining the cited teachings of Douglas and Wager “would have . . . helped ensure that the assigned physician had the capacity to effectively treat the patient.” Id. at 51 (citing Ex. 1012 ¶ 141). Patent Owner argues that Petitioner does not show sufficiently that it would have been obvious to combine the cited teachings of Douglas and Wager for several reasons. Prelim. Resp. 29–37. Specifically, Patent Owner argues that combining Douglas’s system with Wager’s interface is redundant because Douglas’s “patients are only subscribed to the system because they are already assigned to a physician.” Id. at 29–30. On this record, Patent Owner’s argument is unavailing. Even if a patient already saw a physician, the evidence of record indicates that Wager’s interface would have improved Douglas’s system by allowing the case administrator to assign a physician that has the appropriate skills and capacity to treat the patient. Ex. 1012 ¶¶ 140–141.” slip op. at 18
Claim construction§ 103 obviousnessPatents in suitUS 11,151,142 - Teladoc Health, Inc. v. Data Health Partners, Inc.Institution deniedPTAB · Sep 16, 2024 · IPR2024-00618 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted obviousness combinations teach compiling provider data without client input to generate a score.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 7 (citing Ex. 1012 ¶ 36). At this time, Patent Owner does not oppose Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 2. For the purposes of this Decision, we adopt Petitioner’s formulation for a person of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’812 patent.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We finally consider the disputed limitation “without input from the clients.” Petitioner argues that data inputted by a provider, and not the client, “is without input” from the client. See Pet. 51 (citing Ex. 1012 ¶ 141). Patent Owner distinguishes between entered data and compiled data. See Prelim. Resp. 19–20 (“[T]he element in claim 16 does not require data entry without input from the patients. Instead, . . . claim 16 recites that ‘instructions are executed by the processor to: . . . compile data’”). Patent Owner thus argues that the negative limitation “without” excludes client input from the compiled data to generate a score, not the entered data as a whole. See id. In other words, both providers and clients may input data, but the score is generated from data collected from the providers, not the clients. We agree with Patent Owner’s position—that the compiled data used to generate a score includes client data received from the providers and excludes (is without) input from the clients—as consistent with the plain and ordinary meaning of the claim limitation. This reading gives meaning to the express limitation “without input from the clients.” See Phillips, 415 F.3d at 1314 (“the use of a term within the claim [may provide] a firm basis for construing the term”). We next consider whether this interpretation is consistent with the intrinsic evidence.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). slip op. at 6
- BurdenNot shown unpatentable
“In sum, none of Petitioner’s citations to Douglas appear to address compiling data without input from the client to generate a score. Petitioner’s declarant, Dr. Bergeron, does not provide any further explanation of why one of ordinary skill in the art would compile data without input from the client to generate a score, nor a reason to modify Douglas to do so. See Ex. 1012 ¶¶ 141–142, 90–91. Instead, Dr. Bergeron merely provides the conclusion mirrored in the Petition. See Ex. 1012 ¶ 141. Finally, Petitioner does not rely on Klotsche, Virginia, or Wager for the disputed limitation “without input from the client.” See Pet. 32 (discussing Klotsche), 33 (discussing Virginia), and 58–59 (discussing Wager). Based on the record before us, Petitioner has not established that the asserted art teaches or suggests all of the claim elements and limitations of claim 16. Accordingly, Petitioner has not established a reasonable likelihood of prevailing on its assertion that claim 16, and dependent claim 17, would have been obvious over Douglas, Klotsche, and Virginia or Douglas, Klotsche, Virginia, and Wager.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,061,812
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.