- PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,373,449 - PTAB · Sep 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
Instituted IPR of claims 1–20 on all petition challenges because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Director reviewDirector review, grantedGranted
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Paper 12, 5–6. As noted above and explained in the patentability analysis below, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims. See supra § I; infra §§ III.E–III.H.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · May 9, 2024 · IPR2024-00099 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds and granted joinder to IPR2023-00673.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’436 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“compressed, or use security protocols, then the packets transit the packet engine. Pet. 41–42 (citing Ex. 1004 ¶¶ 49, 51, 53). Patent Owner argues that only the SA parameter association task in Pham may be offloaded. Prelim. Resp. 26–27 (citing Ex. 1004 ¶¶ 38, 51). Patent Owner’s argument here implies that the filtering function remains at the ingress processor and that some packets will be filtered and never reach the packet engine. See id. (citing, e.g., Ex. 1004 ¶ 38); Ex. 1004 ¶ 38 (“In the preferred embodiments of the present invention, the ingress processors 30, 34 are tasked with filtering and routing functions . . . .”). The statement Patent Owner relies on is not in the same section as the one Petitioner relies on. In other words, it does not appear on this record that we can limit the disclosure of paragraph 51 based on the statements in paragraph 38. On this record, we are not persuaded that only the SA parameter association task can be offloaded. As Pham notes, tasks can be moved between processors to perform load balancing. Ex. 1004 ¶ 54. We see no disclosure that prevents certain tasks from being load balanced or otherwise tasked to the security processor.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“find them persuasive on this record. Id. at 32–33. At a high level, Patent Owner’s arguments are that Petitioner’s modification to Pham would “increase[] complexity and resources.” Id. at 33. On this record, this argument is unpersuasive because even if the addition of Wu’s intrusion detection system was somehow more complex, the reason to combine it is to gain certain beneficial features. See, e.g., Pet. 30–31. Patent Owner’s arguments do not show that the alleged increase in complexity would somehow dissuade a person of ordinary skill in the art from including these beneficial features. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (alteration in original); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2023-00813 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds and dismissed the motion to exclude as moot.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“We decline to read in a requirement that the “program” of the preambles must be an “entire program.” In particular, we do not agree with Patent Owner that the limitation directed to “additional requests . . . during playing” or the mention in the specification of “additional data requests for the duration of playing” necessarily requires that the “playing” refers to an entire program. For example, the recited requests could relate to playing a portion of a program, a premise with which both declarants agree. Ex. 1103, 22:22–24:9; Ex. 1111 ¶¶ 13–16. Thus, we reject Patent Owner’s “entire program” interpretation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2022-01411 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We decline to construe limitations 1b(i)–1b(ii) other than to agree with both parties (PO Resp. 11, 28–29; Pet. Reply 5) that the recited “data rate” refers to the capability of the data connection. See, e.g., Ex. 1001, 4:40–43 (“The bandwidth requirement of audio or video media refers to the data rate in bits per second that must be transmitted and received in order to listen to or view the material uninterrupted.”); Ex. 1002 ¶ 126; Ex. 1103, 26:19–29:7; Ex. 1111 ¶ 24. This is sufficient to dispose of the instant case. See Realtime Data, 912 F.3d at 1375.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594
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.