• Netflix, Inc. v. Videolabs, Inc.All claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00628 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1–4 and 8–11 as anticipated by Mehta, and claims 1–14 as obvious over Mehta and Schläpfer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9

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

    “We construe only those claim terms that require analysis to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner agree that no claim terms require specific construction to resolve the unpatentability issues presented in the Petition. Pet. 23; PO Resp. 10–11. We agree and do not construe any terms.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Analysis We agree with Petitioner. Mehta discloses storing “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Ex. 1003 ¶ 98. Mr. Wechselberger testifies that this disclosure shows that Mehta’s “MAS receives, stores and supports functionally equivalent programs capable of running on multiple devices because each program corresponds to a different device having different device capabilities (e.g., written using different languages).” Ex. 1002 ¶ 66. This testimony is consistent with that of Dr. Goodrich, who testifies that “each application has a single version made for a particular device type.” Ex. 2020 ¶ 66. Dr. Goodrich later testifies that paragraph 98 of Mehta describes that there could be two functionally equivalent programs with the same name that are compatible with a single user’s computer. Id. at ¶ 88; see PO Resp. 31–32 (citing Ex. 2020 ¶¶ 87–88). We do not credit this later testimony, because it is inconsistent with Dr. Goodrich’s earlier testimony that “each application,” or program of Mehta, is “made for a particular device type.” Ex. 2020 ¶ 66. We agree with Mr. Wechselberger and find that a person of ordinary skill in the art at the time of invention would have understood that Mehta’s disclosure of functionally equivalent programs having the same name that are capable of running on multiple kinds of devices means that each program corresponds to a different device having different capabilities. Further, Mehta discloses that “the MAS only lists those applications that are supported by the subscriber’s device. This allows the subscriber to avoid the problem of having to explicitly select a compatible application.” Ex. 1003 ¶ 117; see Pet. 36–37 (citing Ex. 1002 ¶¶ 75, 77). Mr. Wechselberger testifies that a person of ordinary skill in the art at the time of invention would have understood this disclosure to mean that the MAS provides the subscriber with only a single subscriber-appropriate version that will work for the subscriber. Ex. 1002 ¶ 77. Although Patent Owner contends that Mehta is silent on whether only a single description would be provided if there were multiple implementations (PO Sur-Reply 10–11), we agree with Mr. Wechselberger and find that when multiple implementations have the same name, each implementation corresponds to a different device, and therefore, the MAS would only present to the subscriber the one implementation that works with the subscriber’s device. Ex. 1002 ¶¶ 66, 75, 77.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “piece of content, while the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich, in his deposition, when asked if “one of ordinary skill in the art at the time of the ’790 patent would also understand that Microsoft Word for Windows and Microsoft Word for Mac are also functionally equivalent, correct?” answered “Yes . . . . But they would be even stronger than simply functionally equivalent. They would be different implementations of the same product.” Ex. 1029, 43:14–24. However, later in his deposition, Dr. Goodrich testifies that Microsoft Word for Windows and Microsoft Word for Apple Mac are separate applications, not different implementations of the same application. Ex. 1029, 48:1–20. We disagree with this later testimony. Neither Dr. Goodrich nor Patent Owner persuasively explains why Dr. Goodrich changed his unambiguous position from both his declaration and his earlier deposition testimony. For example, Dr. Goodrich testifies in his deposition that “for the Lion King example, a .MP3 and a .MOV are different implementations of the same product. They’re also functionally equivalent, but functionally equivalent is broader.” Ex. 1029, 45:7–11. Dr. Goodrich continues, “when Mehta is disclosing functionally equivalent, it is not referring to it as different implementations of the same product. Instead, it’s [describing] how to disambiguate [applications] not clustered in terms of implementations . . . based on other metadata.” Id. at 45:14–21. This explanation is unpersuasive because it is inconsistent with Dr. Goodrich’s declaration testimony, in which Dr. Goodrich explicitly testifies that the different versions of Lion King, as well as the different versions of Microsoft Word, are different implementations of the same product. Ex. 2020 ¶ 39. Specifically, in his declaration, Dr. Goodrich testifies that the “various versions of Lion King (such as an .mp3 file or an .mov file) are the implementations of the Lion King. For another example, . . . the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich testifies again that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Ex. 2020 ¶ 70. Further, the reason given in the explanation in his deposition, that Mehta needs to disambiguate applications that are not clustered in terms of implementations based on other metadata, would also apply to the different versions of Lion King, yet Dr. Goodrich consistently testifies that these different versions are different implementations, both in his declaration and in his deposition. Id.; Ex. 1029, 45:7–10. Petitioner contends, and we agree, that the inconsistent testimony of Dr. Goodrich appears to be an attempt to cure Patent Owner’s and Dr. Goodrich’s incomplete analysis of Mehta’s disclosure. See Reply 7–8. In particular, the Petition quotes Mehta’s disclosure that the MAS stores “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Pet. 28 (quoting Ex. 1003 ¶ 98). Dr. Goodrich addresses this disclosure by explaining that two applications, such as Microsoft Word and Apple Pages, are functionally equivalent but are two different applications, not multiple implementations of a single application. Ex. 2020 ¶ 70. In this analysis, Dr. Goodrich does not address the full disclosure of Mehta, which describes that the “functionally equivalent programs hav[e] the same name” (Ex. 1003 ¶ 98), such as Dr. Goodrich’s example of Microsoft Word for Windows and Microsoft Word for Apple Macs. See id. Thus, although Dr. Goodrich is correct in testifying that some functionally equivalent programs, such as Microsoft Word and Apple Pages, are not different implementations of an item of digital content, he is also correct in testifying that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Id. Yet Dr. Goodrich does not identify any difference between the multiple implementations of Microsoft Word and the functionally equivalent programs having the same name as described by Mehta.” slip op. at 18

  Patent outcomesUS 7,233,790 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,233,790
• Netflix, Inc. v. VL Collective IP LLCAll claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00630 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 4, 7, 8, 10, 13, 14, 16, 19, 20, and 22 are anticipated by Cassin; all claims are also obvious over Cassin and Huston and over Huston.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 7

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

    “We construe only those claim terms that require analysis to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner contends that “no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Pet. 15–16. Similarly, Patent Owner contends that “no express construction of any term is required.” PO Resp. 18. For purposes of this decision, we do not construe any claim terms.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “is included in the indication. See PO Resp. 40. However, the ’559 patent does not describe what is included in the claimed “listing.” Rather, throughout the disclosure of the ’559 patent, the phrase “the listing of one or more pieces of content stored in memory” or a variation thereof is repeated without any further elaboration. Ex. 1001, 3:13–15, 3:26–36, 12:22–26, 12:50–52, 13:29–30. For example, the Specification does not disclose that the listing of one piece of content includes the title of the piece of content, nor an identification number of the piece of content, nor any other information about the piece of content. The disclosed listing is no more than an item of information that indicates that a specific piece of content is stored in the memory of the terminal. Therefore, the plain and ordinary meaning of the claim term “a listing of one . . . piece[] of content stored in the memory,” read in light of the Specification of the ’559 patent, encompasses an item of information that indicates that a specific piece of content is stored in the memory of the terminal. We agree with Petitioner and find that Cassin’s indication that the client currently has the media content item describes an item of information that indicates that a piece of content is stored in the memory of the terminal. Therefore, Cassin’s indication that the client currently has the media item describes “a listing of one . . . piece[] of content stored in the memory” as claimed.” slip op. at 33

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Analysis We agree with Petitioner and find that Cassin’s offer to download an item describes “a response . . . that instructs the terminal to perform one or more actions” as claimed. Reply 11 (citing Pet. 25–26), 13–14. Cassin discloses that the server uses the user information received from the client to query a database in the server for a list of content to which the user is entitled. Ex. 1004 ¶¶ 162, 164. Cassin discloses that the server offers an item from the list to the client for downloading. Id. ¶ 163 (The server offers every item on the list), ¶ 164 (The server attempts to send an item on the list). Cassin discloses that the client checks to see if it already has the item. Id. ¶¶ 163, 164. If the client has the item, the client refuses the download offer. Id. If the client does not have the item, the client accepts the download of the item and stores the item in its content repository. Id. Thus, the client responds to the offer to download an item from the server by (a) checking to see if it has the offered item, and (b) either refusing the download if the client has the item or accepting the download if the client does not have the item. Therefore, we agree with Petitioner and find that “when the server offers a media item for the client to download, the server is ‘instructing the terminal to perform one or more actions to thereby control the flow of content.’” Reply 11 (citing Pet. 25–26). We agree with Petitioner that in response to the server’s offer, “the client will either ‘refuse the download’ (if it has the content) or ‘accepts the download of the media content item from the server and stores the media content in the local content repository’ (if the client does not have the content).” Id. (citing Ex. 1004 ¶ 163). We agree with Petitioner and find that by checking to see if it has the item, and “by refusing or accepting the download offer, the client is doing ‘something to control the flow of content’ in response to the server’s instruction.” Id. (quoting PO Resp. 23). We disagree with Patent Owner’s contentions to the contrary. In particular, we disagree with Patent Owner’s contention that the server’s offer “has not instructed the client to do anything—the client takes action based on other factors (whether or not it already has the media content item).” PO Sur-Reply 3; see PO Resp. 31–32; Ex. 2002 ¶¶ 91–93. We find that the client performs the actions of checking to see if it already has the item and, depending on whether it has the item, either accepting or refusing the offer, in response to receiving the offer from the server. Ex. 1004 ¶¶ 163, 164; Ex. 1003 ¶¶ 72–75. Thus, we agree with Petitioner that the server’s offer instructs the client to (a) determine whether the client has the item and (b) depending on whether the client has the item, either accept or refuse the offer, which describes “instructing the terminal to perform one or more actions to thereby control the flow of content” as claimed. We further find that, because the offered item is from the server’s list which was determined using information from the user and information from the server’s database, the offer to download the item describes “a response to the content status . . . based upon the terminal status information and the server status information” as recited in claim 1.” slip op. at 26

  Patent outcomesUS 7,440,559 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,440,559
• Cisco Systems, Inc. v. Netsocket, Inc.All claims unpatentable
  PTAB · Sep 13, 2024 · IPR2023-00607 · APJ Richard M Lebovitz · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1–5, 7, and 8 as obvious over Xiao, Schelen-1, and Gibson; claims 4–8 as obvious over those references and Schelen-2.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner utilizes Petitioner’s proposed level of skill in the art. PO Resp. 4–5. For purpose of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, which is also consistent with the level of skill reflected in the Specification of the ’698 patent and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner states that “the Board would benefit from expressly construing the preamble of Claim 1 as limiting to make clear Claim 1’s bounds in the context of Petitioner’s arguments.” PO Resp. 5. Patent Owner’s main point, as we understand it, is that the preamble’s recitation of “wherein the bandwidth broker (BB) is associated to each network domain” is limiting because subsequent limitations in the claim, and dependent claims 2 and 3, “refer[] to the preamble’s statement that there is a bandwidth broker associated with each of the network domains involved in the path from source to destination networks.” Id. at 6–7. Petitioner responds that “[r]egardless of whether the preamble is limiting, the prior art renders obvious the preamble.” Pet. Reply 7. We agree with Patent Owner that the preamble to the claim is limiting, and treat it as such in this Decision.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Patent Owner’s arguments are not supported by persuasive evidence. While Xiao indicates that a bandwidth broker “may not be needed in MPLS-based ISP networks,” Xiao does not disparage or discredit its presence in such a network. “[T]he fact that there may be reasons a skilled artisan would prefer one over the other does not amount to a teaching away from the lesser preferred but still workable option.” Bayer Pharma AG v. Watson Labs, Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017); see also Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Here, Patent Owner has not provided evidence that Xiao “criticize[s], discredit[s], or otherwise discourage[s]” the use of a bandwidth broker in an MPLS network. Patent Owner has also not established that a bandwidth broker would be inoperable when used in an MPLS-based network. “[A] reference may teach away from a use when that use would render the result inoperable.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007). To the contrary, the evidence of record points to the opposite. First, Xiao’s statement that bandwidth brokers might not be needed in an MPLS network, is also an indication that, on the other hand, they may be included in an MPLS network and therefore would be expected to be operable when combined. Indeed, the ’698 patent discloses that RATES in the MPLS domain performs admission control for a flat link state-domain, a characteristic of a bandwidth broker. Ex. 1001, 4:11–21.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We do not agree that this is a new argument. In the Decision, we preliminarily adopted Petitioner’s proposal that Gibson’s admission manager is a bandwidth broker. Institution Dec. 39 (citing Pet. 54 (citing Ex. 1006, 6:14–16; Ex. 1003 ¶¶ 254–255)). The Decision also preliminarily adopted Petitioner’s proposal that Gibson’s administrative server and connection manager correspond to the claimed intra-domain broker. Institution Dec. 39 (citing Pet. 57–58). The Decision to Institute, summarizing Petitioner’s argument, explained that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker), and that the administrative server works with the connection manager to register paths. Decision to Institute 40–41. See Ex. 1003 ¶¶ 274 (“Gibson discloses that the admission manager (‘bandwidth broker’) passes various resource requests to the administrative server and the connection manager (‘at least one intra-domain (1DB)’), which renders obvious ‘passing resource requests from the Bandwidth Broker (BB).’”); 277 (“As shown below at Gibson’s Figure 2, a ‘Request’ for a new LSP is passed from the admission manager (‘bandwidth broker’) to both the administrative server and also to the connection manager (collectively ‘at least one intra-domain (1DB)’).”). The statement by Dr. Houh in his second declaration “that Gibson’s coordination among the admission manager [BB] and the administrative server [IDB] is consistent with the claimed approach to LSP setup” reflects the original argument in the Petition that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker). Institution Dec. 40–41. The argument has not changed and, in light of the complete record, we come to the same determination that we made in the Decision to Institute. The admission manager was described by Dr. Houh as requesting paths from the administrative server and the server working with the connection manager. Ex. 1003 ¶¶ 274–277. Thus, there is “coordination” between the admission manager, and administrative server” slip op. at 66

  Patent outcomesUS 7,190,698 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,190,698
• Roofr Inc. v. Pictometry International Corp.All claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00436 · APJ Garth D Baer · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Pershing-789 and Bailey, with Abhyanker added for claims 6, 7, and 14–18; the alternative Kennedy grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends one skilled in the art “would have had a Bachelor’s degree in an academic area emphasizing construction, architecture, and/or engineering, or similar discipline, and at least two years of experience with roofing measurement and estimation, aerial imagery use in roofing estimation, and roofing measurement software.” PO Resp. 4. Patent Owner’s definition is substantively similar to Petitioner’s. See Pet. 2 (“a person of ordinary skill in the art at the time of the alleged invention would have bachelor’s degree in architecture or an equivalent with at least five years of experience performing roof estimation”). We agree with and adopt Patent Owner’s definition with the added provision that, as we noted in our Institution Decision, “experience may compensate for formal education, and vice versa.” Paper 14, 7.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Cummings, qualifies as a skilled artisan. See PO Resp. 39–47. Instead, Patent Owner contends we “should give significantly more weight” to its expert’s testimony than to Petitioner’s because its expert “has much more relevant experience” and Mr. Cunningham’s opinions “are conclusory and merely repeat verbatim the arguments presented in the Petition.” PO Resp. 39. We disagree. We do not find that Patent Owner’s expert’s opinions are entitled to significantly more weight than Petitioner’s simply based on the experts’ relative experience. Instead, in our analysis below, where necessary, we have evaluated both experts’ opinions and we base our conclusions on the opinions’ persuasiveness. In addition, we do not find it problematic that the Petition repeats certain portions of Petitioner’s expert’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 43–47.” slip op. at 5

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

    “Neither party proposes an express construction for any claim terms. Pet. 2; see generally PO. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 4

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

    “In light of Petitioner’s analysis as outlined above, we agree with Petitioner that together, Pershing-789 and Bailey teach “determin[ing] a footprint and predominant pitch of the roof by analyzing one or more image showing the roof; [and] determin[ing] an estimated roofing area of the roof based on the predominant pitch and the footprint of the roof,” as claimed. Further, given Petitioner’s rationale as outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that it would have been obvious to combine Bailey’s predominantslope teaching with Pershing-789’s area calculation. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 419 (2007).” slip op. at 10

  Patent outcomesUS 9,183,538 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,183,538
• Unified Patents, LLC v. Peter Henrik PedersenAll claims unpatentable
  PTAB · May 10, 2024 · IPR2023-00029 · APJ Stacey G White · IPR · Final written decision

  Claims 1 and 14–17 are unpatentable as obvious over Funk and Law and over Funk and Kamakura.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded that Petitioner’s description is consistent with the prior art and patent specification before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, we adopt Petitioner’s description.” slip op. at 12

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

    “the Challenged Claims, identified below, invoke §112 ¶6, Petitioner identifies their function and corresponding structure in compliance with 37 C.F.R. § 42.104(b)(3).” Id. at 11–21. We are not persuaded that any terms from the ’920 patent should be construed as means plus function terms.” slip op. at 13

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

    “[a] high volume e-mail ‘newspaper’ delivery system.” Ex. 1006, code (57). Funk’s newspaper is created by “manipulat[ing] publicly available information (AP wire service, Reuters, Business Wire, etc.)” and matching that information to a user profile. Id. at 1:49–50. These various inputs (information sources 100) all feed into service processing system 104. Id. at 5:43–44, Fig. 1. In addition, as we discussed above, Funk also discloses third parties that may send information to the customers. See Reply 9. Law’s “information delivery system includes a web server in operative communication with a plurality of recipients and a plurality of senders.” Ex. 1007, code (57). Thus, Law’s web server and Funk’s service processing system both connect multiple information sources to the email system. Law sets out to “improv[e] the collection and dissemination of recipient preferences for messages . . . by collecting recipient preference data and making it available to a plurality of senders for their use in preparing messages intended for a selected recipient.” Id. at 2:26–30. According to Petitioner, “[i]n the Funk-Law combination, Funk’s system would maintain profiles for senders in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles.” Reply 9–10 (citing Pet. 64, Ex. 1003 ¶ 130, Ex. 1006, 11:29–33). Dr. Houh opines on behalf of Petitioner that one of ordinary skill in the art would have been motivated to “enhance Funk such that the Funk combined processors . . . (1) include[] a software application used to receive sender information including sender identification information from senders via the Internet to establish and update sender profiles, and (2) store[] such sender information in the Funk combination database.” Ex. 1003 ¶ 129. According to Dr. Houh, this would have required the application of a known technique, Funk’s sending messages from parties to customers, by incorporating Law’s sender profiles to help keep track of, organize, and identify senders in Funk. Id. ¶ 130. “Funk contemplates a ‘high volume e-mail ‘newspaper’ delivery system’ that parties can use to send emails to customers, but does not provide explicit disclosure on how various parties sending messages would maintain profiles with Funk’s system.” Ex. 1003 ¶ 130. Dr. Houh further opines that “in the combination of Funk and Law, Funk’s system would maintain profiles for sending parties in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles that the users may update in Funk’s system.” Id. As such, we are persuaded that this modification would have been obvious in light of Law’s teachings. Patent Owner contends that “[t]here is no need in Funk for multiple sender profiles since it uses a single sender, and there is no motivation in Funk or Law to combine Law’s multiple sender profiles application with Funk’s system that only uses a single sender.” PO Resp. 36. We must, however, be mindful of the Supreme Court’s statement that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Petitioner’s asserted modification would allow the existing information sources in Funk to target the impact of their information in a manner similar to the screening provided to users of Funk’s system. Petitioner provides a sufficient rationale to support its assertions that one of ordinary skill in the art would have been motivated to add this functionality to Funk’s system. We are persuaded that Petitioner is correct in asserting that the asserted modification would only require the application of a known method to achieve a predictable result. Pet. 63–65. slip op. at 37

  Patent outcomesUS 6,965,920 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,965,920
• Infineon Technologies AG v. Amatech Group LimitedSome claims unpatentable
  PTAB · Dec 1, 2023 · IPR2022-00951 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 4–6, and 8–10 are unpatentable as obvious; claims 3 and 11 were not shown unpatentable, and claim 7 was not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8. In addition, we note that we agree with Patent Owner’s statement that the distinction between the parties’ proposals is not material to any dispute before us and we find that our determinations would be the same under either definition of the person of ordinary skill in the art.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that Dr. van der Weide’s cited testimony is of a nature that should lead us to give his testimony no weight. We note that Patent Owner did not move to strike or exclude Dr. van der Weide’s testimony. When considering credibility and weight of evidence below, we consider Dr. van der Weide’s testimony as a whole as well as all other evidence of record and accord it the appropriate weight.” slip op. at 7

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

    “provide an express construction of the full breadth of a claim term. “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). As such, we proceed in line with Federal Circuit case law, which “prescribes—deciding only the issues necessary to resolve the dispute before it.” Nichia Corp. v. DSS, Inc., No. 2022-1704, 2023 WL 7211097, at *3 (Fed. Cir. Nov. 2, 2023) (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). The Federal Circuit has long recognized that “[c]laim construction is a matter of resolution of disputed meanings and technical scope” and that claim construction may be required in an obviousness context “when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution in order to determine obviousness.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). In order to determine whether Petitioner’s obviousness grounds meet their required burden of proof, we need not expressly state the full scope of this claim term. Thus, we are within our authority to proffer a construction that determines the scope of a claim term in a manner sufficient to determine whether the asserted art teaches the claim. In other words, there may be other ways to meet the disputed limitation, but for the purposes of our Decision, it is proper to expressly determine a claim term’s scope only as much as is required to resolve the disputed issues before us.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “the invention(s), but rather as examples of some of the embodiments.” Id. at 25:65–26:1; see also id. at 6:18–20 (embodiments “should be construed as illustrative rather than limiting”), 5:22–24 (“non-limiting example”). The Federal Circuit has noted that “[e]mbodiments in the specification—even if there is only one embodiment—cannot limit the scope of the claims absent the patentee’s ‘words or expressions of manifest exclusion or restriction.’” Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (citing Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014)). After reviewing the complete record, we see no such manifest exclusion or restriction in the ’240 patent specification. We decline Patent Owner’s request to limit the claims to the described single-frequency embodiments. See Phillips, 415 F.3d at 1323. We need not provide further express construction of this claim language for purposes of this Decision.” slip op. at 23

  Patent outcomesUS 9,165,240 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,165,240
• Google LLC v. Mira Advanced Technology Systems, Inc.All claims unpatentable
  PTAB · Oct 20, 2023 · IPR2022-00742 · APJ Stacey G White · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious under § 103(a) over Dunton, Barchi, and Bedingfield.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner asserts that a person having ordinary skill in the art “in the technology field of the ’854 Patent had a bachelor’s degree in Computer Science, Computer Engineering, or Electrical Engineering, or an equivalent course of study, as well as 2 or more years of academic or industry experience in the field of wireless communication devices and location-based services.” Pet. 12 (citing Ex. 1003 ¶ 65). Patent Owner “generally agrees with Petitioner” as to the level of ordinary skill in the art and does not propose any changes to Petitioner’s definition. PO Resp. 8. Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s description.” slip op. at 11

  • 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 shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Petitioner “interpret[s] all claim terms in accordance with their ordinary and customary meaning.” Pet. 12. Patent Owner has not put forth any arguments in its papers related to claim construction.13 See PO Resp. 2. We determine that no claim terms require express construction for purposes of this Decision. 13 At the oral hearing, Patent Owner’s counsel indicated that a formal claim construction would be useful, but he also stated that “it’s too late to do anything like claim construction.” Tr. 43:1–6, 34:8–12. Notwithstanding Patent Owner’s comments at the oral hearing, we find that the issues in the case are amenable to resolution without an express claim construction.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We do not agree with Patent Owner’s assertions. We find Petitioner’s rationale for the combination to be well supported. Petitioner points out that “Dunton itself states that ‘[t]echniques to improve management of [] tasks may result in more productivity and better time management’ and that ‘[a]ccordingly, there may be a need for such techniques in a device or network.’” Reply 17 (citing Ex. 1006 ¶ 1; Ex. 1003 ¶ 133) (alternations in original). Mr. Schmandt supports Petitioner’s arguments by opining that “[a person of ordinary skill in the art] looking to obtain additional information regarding where and when to perform tasks to improve management of tasks (as discussed in Dunton) would be motivated to look to references like Barchi that teach methods to obtain additional contact information using techniques like the reverse phone number lookup or use of other databases.” Ex. 1003 ¶ 135. Thus, we agree with Petitioner and find that Dunton provides a rationale for looking to the other cited references to provide techniques to improve task management. As such, we find Petitioner’s rationale for the combination to be persuasive and well supported.” slip op. at 33

  Patent outcomesUS 10,594,854 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,594,854
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Sep 1, 2023 · IPR2022-00650 · APJ Brian D Range · IPR · Final written decision

  Claims 1–3, 5–8, 11–14, and 16 are unpatentable over the asserted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Additional discoveryAdditional discovery, deniedDenied

    “To succeed, a motion to submit supplemental information pursuant to 37 C.F.R. § 42.123(b) must meet two requirements. First, the motion must show why the supplemental information reasonably could not have been obtained earlier. 37 C.F.R. § 42.123(b). Second, the motion must show that consideration of the supplemental information would be in the interest of justice. Id. As we explain below, Patent Owner’s motion fails to meet either requirement.” slip op. at 10

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “B. Patent Owner’s Objections to Petitioner’s Demonstrative Slides Patent Owner objects to a number of Petitioner’s demonstratives for oral argument because, for example, the demonstratives constitute evidence that Petitioner did not reference or discuss in a prior paper. See, e.g., Paper 29 passim. We have considered the objections. Demonstratives for oral argument, however, are not evidence. Paper 24, 2 (Order Setting Oral Argument); see also Consolidated Trial Practice Guide 84, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). We do not rely on demonstratives as evidence in our decision making; instead, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record. Because demonstratives do not affect our decision making, Patent Owner’s objections to the demonstratives likewise do not affect our decision making. We dismiss Patent Owner’s objections as moot.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennas used in RFID devices versus developing antennas used in RFID devices for inductive coupling). The specification of the ’304 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be used by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Id. Thus, we are not persuaded that the level of ordinary skill should be confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.9” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “F. Dr. van der Weide’s Testimony Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. PO Resp. 45–51. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. Id. at 45–46 (citing Ex. 2003 ¶ 96). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 45. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 25–27 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 19

  Patent outcomesUS 9,633,304 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,633,304
• Google LLC v. Parus Holdings, Inc.All claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-00358 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–15 are unpatentable under § 103 over Wise and Shaffer, with Burrows added for claims 3–15; the Board did not reach the Kovatch-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 4–5. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and neither Patent Owner nor Mr. Winters proposes any different articulation. See Ex. 1002 ¶ 74; Ex. 2063 ¶ 41 (Mr. Winters stating factors considered in defining a person of ordinary skill in the art, without stating the education or experience held by such a person). Because we find Petitioner’s proposal reasonable, uncontroverted, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express construction of any term. Pet. 5 (“Petitioner does not believe that any express constructions are necessary to resolve the invalidity issues presented in this petition”); PO Resp. 1 (“Patent Owner believes that claim construction is unnecessary and all terms of the Challenged Claims should be given their plain and ordinary meanings.”). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. 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) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Ex. 1001, 19:64–20:5. For this “sequential access” limitation, Petitioner relies on Shaffer’s disclosure of sequentially accessing websites according to a list, until a user is satisfied with what has been returned or the list is exhausted. Pet. 55–56. Supported by Mr. Lipoff’s testimony, Petitioner reasons that a person of ordinary skill in the art would combine Shaffer’s sequential access technique with Wise’s system “because it would have been beneficial to maximize the likelihood of finding the desired information more quickly and efficiently use computing resources, by searching in the most likely sources first, and proceeding through Wise’s index list until the user is satisfied or the list is exhausted.” Id. at 56 (citing Ex. 1002 ¶ 243). Patent Owner does not specifically dispute Petitioner’s reasons for effecting the combination of teachings from Wise and Shaffer, which we find sufficiently articulated and supported; instead, Patent Owner contends that the combination does not meet the sequential access limitation. See PO Resp. 78 (“Assuming, arguendo, this is a combination a [person of ordinary skill in the art] would consider, this combination does not disclose this claim limitation.”). Patent Owner makes two points in this respect. First, Patent Owner reiterates its contention, addressed above, that “Mr. Lipoff expressly does not rely on the Wise search index (option 1) for his opinion of the Wise disclosure of a plurality of websites.” PO Resp. 78. For the reasons we discuss in the preceding subsection, we agree with Petitioner that Patent Owner’s argument relies on “a misinterpretation of out-of-context deposition testimony.” Reply 6. As Petitioner adds, Wise discloses that an “index may be stored as one or more documents preferably in a hierarchical order” and “[t]he user may use the navigation commands to traverse the index and invoke a link to a source document.” Id. at 8; Ex. 1007, 10:7–10. Second, Patent Owner takes the position that the claim language precludes user interaction or instructions during the process of the sequential search. See PO Resp. 80. But Patent Owner provides insufficient evidentiary support for that position, and we agree with Petitioner that Patent Owner’s interpretation invokes a negative limitation that is unsupported by the plain and ordinary meaning of the claim language. See Reply 8. “While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). In this instance, both parties and both experts agree that the specification of the ’941 patent is silent with respect to user participation during sequential access. PO Resp. 81 (Patent Owner asserting that “[t]he ’941 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Based on these facts, we find insufficient reason to exclude user interaction from the plain and ordinary meaning of the sequential access limitation. We thus determine that Shaffer—which clearly involves user interaction, see Ex. 1011, 6:3–29—meets the limitation. We also determine that Petitioner articulates sufficient reason, supported by rational underpinning, to achieve the combination of teachings it proposes. We accordingly determine that Petitioner makes a sufficient showing for the sequential access limitation. 5 In its Sur-reply, Patent Owner asserts that “[a]s discussed in the [Patent Owner Response], the ’941 specification teaches against the notion of user interaction in the claim limitations involving sequentially accessing.” Sur-Reply 6 (citing PO Resp. 80–81). We disagree with this characterization of the Patent Owner Response, and treat this assertion as a new argument impermissibly raised for the first time in the Sur-reply. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply”). Regardless, even if we considered this argument, we would find it unpersuasive. Based on our independent review of the specification of the ’941 patent, in agreement with both experts, and in agreement with other statements of both parties, we find the specification to be “silent” on user interaction. See also Tr. 48:25–49:23 (Patent Owner conceding at oral hearing that the specification “is silent” on this issue).” slip op. at 27

  Patent outcomesUS 7,881,941 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,881,941
• Google LLC v. Parus Holdings, Inc.All claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-00523 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1–2 as obvious over Wise and Shaffer, and claims 3–15 as obvious over Wise, Shaffer, and Burrows.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Mr. Lipoff, contends that a POSITA “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” wherein “[m]ore education could substitute for less experience, and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 40, 61–74). Patent Owner does not contest Petitioner’s proposal or offer an alternative. See generally PO Resp. 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’402 patent was filed before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. claimed invention because, based on the record, this proposal is consistent with the ’402 patent, the asserted prior art, and is supported by the testimony of Mr. Lipoff.” slip op. at 9

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

    “Neither Petitioner nor Patent Owner proposes any claim construction. See Pet. 5; See generally PO Resp. We do not perceive a need to construe any claim terms of the ’402 patent to resolve the disputed issues before us. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10

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

    “While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). Here, Patent Owner does not provide sufficient evidentiary support that conveys an intended exclusion of user interaction during sequential access. Instead, both parties and both experts merely point out that the specification of the ’402 patent is silent with respect to user participation during sequential access. PO Resp. 73 (Patent Owner asserting that “the ’402 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶ 289 (Mr. Winters testifying that “there is no disclosure in the specification of the ’402 patent related to user interaction in the sequential search process”); Pet. Reply 5 (Petitioner asserting that Patent Owner is “[i]mporting a requirement that user interaction is precluded by the claims—a negative limitation, when the specification is wholly silent on it”); Ex. 2061, 107:15–22 (Mr. Lipoff agreeing that “there’s no specific mention of the user interacting” in the portion of the specification related to “the sequential search”). As the Federal Circuit explained in Novartis, silence is not sufficient support for a negative limitation. See Novartis, 38 F.4th at 1017. interaction from the plain and ordinary meaning of the sequential access limitation. Instead, we are persuaded by Petitioner’s reliance on Shaffer for disclosing the sequential access limitation as recited. See Ex. 1011, 6:3–29. In particular, Shaffer discloses determining whether a system is at the end of a list of sites to visit, and sequentially visiting the sites until the user is satisfied. Ex. 1011, 6:3–29. Furthermore, Wise’s system accesses web pages relating to a subject phrase to retrieve user-requested information. Ex. 1007, 6:31–49. We credit the supporting testimony of Mr. Lipoff, which is consistent with the teachings of Wise and Shaffer, in which he testified that a POSITA would have been motivated to modify Wise’s system that accesses websites to retrieve user-requested information based on Shaffer, resulting in a system that accesses websites sequentially/subsequently until information is found. See Ex. 1002 ¶ 200. We disagree with Patent Owner that the ’402 patent’s specification “teaches against the notion of user interaction in the claimed ‘sequentially accessing’ operation,” which “is time consuming and inefficient.” PO Resp. 73–75. A given course of action often has simultaneous advantages and disadvantages, which “does not necessarily obviate motivation to combine.” Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Here, Petitioner has articulated sufficient reason, supported by rational underpinning, to effect the combination of teachings it proposes. We credit Petitioner’s contention, which is supported by Mr. Lipoff’s testimony, that a POSITA would have been motivated “to apply Shaffer’s sequential search technique when retrieving information from websites in Wise’s ranked index” in order to “maximize the likelihood of finding the desired information and efficiently use computing resources by searching in slip op. at 24

  Patent outcomesUS 8,185,402 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,185,402

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.