- PTAB · Nov 21, 2024 · IPR2024-00919 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted grounds, finding a reasonable likelihood that claims 1–21 would have been obvious over Leaning.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“The Board’s application of these factors “is not limited solely to instances when multiple petitions are filed by the same petitioner.” Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 at 2, 9 (PTAB Apr. 2, 2019) (precedential). “Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors,” and if the second petitioner and the first petitioner have a “significant relationship with respect to . . . [the challenged patent],” then the Board will consider the first petition in its General Plastic analysis. Id. at 9–10.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“2. Discussion a. Advanced Bionics Part One We are persuaded that the Petition presents substantially the same art as was previously presented to the Office, such that part one of the Advanced Bionics framework is satisfied. Leaning was not previously presented to the Office, but another reference by the same inventors—U.S. Patent Application Publication No. 2004/0030547 A1 (Ex. 2001, “Leaning US”)—was cited during Resp. 14, 16–17) that Leaning is cumulative of the disclosures in Leaning US. See Ex. 2002 (redline of differences between Leaning and Leaning US). Moreover, we find that these similarities pertain directly to Petitioner’s unpatentability analysis in this case. For example, all of Petitioner’s citations to the written description of Leaning for limitation 1[A][2] (see Pet. 19–21) are disclosed in substantially identical language in Leaning US. Compare Ex. 1004, Abstr., 3:1–22, 5:4–6:8, 6:13–7:7, 9:3–7, 12:8–34, 13:23–14:19, 16:6–12, with Ex. 2001 ¶¶ 19–27, 36–43, 45–50, 57, 63–64, 72–80, 90–91. Accordingly, we are persuaded that Leaning is substantially the same as Leaning US, which was previously presented to the Office. b. Advanced Bionics Part Two To determine whether Petitioner has shown material error, we consider Becton, Dickinson factors (c), (e), and (f). Advanced Bionics, Paper 6 at 10. “Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments,” and if that record “is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f).” Id. As Petitioner notes (see Pet. 69), the record regarding the Office’s” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On this record, we are preliminarily persuaded that Leaning teaches that each copy of the video is divided into sub-files that correspond to different temporal portions of the video. See, e.g., Ex. 1004, Abstr., 1:20– 28, 3:5–18, p.7 (table). We are also preliminarily persuaded Leaning teaches that each sub-file represents the same fixed time period (e.g., four seconds), and that each of Leaning’s sub-files has a corresponding sub-file in the other copies. See, e.g., Ex. 1004, Abstr., 6:21–7:2 (including table), 12:8–20. Moreover, we are preliminarily persuaded that Leaning’s sub-files each have a time index because the sub-file names are sequentially numbered. See, e.g., Ex. 1007, 7:1–2, 12:16–20, p. 7 (table); Ex. 1003 ¶¶ 71, 73. Accordingly, Petitioner has sufficiently shown that Leaning teaches elements 1[A][3], 1[A][4], and 1[A][5].8 1[B]: “requesting by the media player a plurality of sequential ones of the files of one of the copies from the set of servers over a plurality of Transmission Control Protocol (TCP) connections based on the time indexes;” Petitioner contends that Leaning teaches and/or renders obvious element 1[B]. Pet. 29–35. According to Petitioner, Leaning teaches that terminal 3 requests a plurality of sequential sub-files of one of the copies from server 1. Id. at 29–31 (citing Ex. 1004, Abstr., 1:12–19, 2:15–18, 5:4– 6:2, 6:27–7:2, 8:6–16, 23:3–10 (claim 1), 24:28–35 (claim 11), 25:17–20 (claim 16); Ex. 1003 ¶ 79; Pet. 21–29). Petitioner also asserts that an 8 Although we do not reach Petitioner’s alternative contention that element 1[A][5] would have been obvious over Leaning, we will evaluate that contention in our final written decision if appropriate.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,868,772 - PTAB · Nov 21, 2024 · IPR2024-00918 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted grounds, finding a reasonable likelihood that claims 1–10 and 12–16 would have been obvious over Leaning.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“when there is an earlier petition challenging the same patent. See General Plastic, Paper 19 at 15–16. To determine whether to deny the subsequent petition, the Board considers the following non-exclusive factors (the “General Plastic factors”): 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Id. at 16.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“when a petition presents “the same or substantially the same prior art or arguments [that] previously were presented to the Office.” 35 U.S.C. § 325(d); see 37 C.F.R. § 42.4(a). To evaluate whether such a denial is appropriate, the Board determines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including: 13 Like the parties, we focus our analysis on Leaning. See Pet. 67–69; Prelim. Resp. 14–22; Prelim. Reply 1–4; Prelim. Sur-reply 1–4. We are persuaded that Petitioner’s Leaning-only ground meets the standard for institution, and we do not reach Petitioner’s alternative ground based on Leaning and Gamble. See supra §§ II.E–F. Moreover, the statutory purpose of Section 325(d) would not be undermined by instituting on both challenges given Gamble’s limited role in Petitioner’s ground (see Pet. 58–60) and during prosecution (see, e.g., Ex. 1002, 208). art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). Factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office), and factors (c), (e), and (f) relate to the second part (i.e., “whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments). Advanced Bionics, Paper 6 at 10. “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. Discussion a. Advanced Bionics Part One We are persuaded that the Petition presents substantially the same art as was previously presented to the Office, such that part one of the Advanced Bionics framework is satisfied. Leaning was not previously presented to the Office, but another reference by the same inventors—U.S. Patent Application Publication No. 2004/0030547 A1 (Ex. 2001, “Leaning US”)—was cited during prosecution. See Pet. 67–68. We agree with Patent Owner (see Prelim. Resp. 14–17) that Leaning is cumulative of the disclosures in Leaning US. See Ex. 2002 (redline of differences between Leaning and Leaning US). Moreover, we find that these similarities pertain directly to Petitioner’s unpatentability analysis in this case. For example, all of Petitioner’s citations to the written description of Leaning for limitation 1[A][3] (see Pet. 20–22) are disclosed in substantially identical language in Leaning US. Compare Ex. 1004, Abstr., 3:1–22, 5:4–6:8, 6:13–7:7, 9:3–7, 12:8–34, 13:23–14:19, 16:6–12, with Ex. 2001 ¶¶ 19–27, 36–43, 45–50, 57, 63–64, 72–80, 90–91. Accordingly, we are persuaded that Leaning is substantially the same as Leaning US, which was previously presented to the Office. b. Advanced Bionics Part Two To determine whether Petitioner has shown material error, we consider Becton, Dickinson factors (c), (e), and (f). Advanced Bionics, Paper 6 at 10. “Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments,” and if that record “is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f).” Id. consideration of Leaning US is nearly silent. Neither the applicants nor the examiner discussed Leaning US, and the examiner did not use it as a basis of any rejection. Rather, Leaning US was only cited on a twenty-five page Information Disclosure Statement (IDS) along with 237 other references. See Ex. 1002, 7–31. Given the volume of the applicants’ disclosure, it would not be surprising if the examiner overlooked material information in it. Because the Office’s evaluation of Leaning US was minimal, we find that factor (c) weighs against exercising discretion to deny institution. As for factors (e) and (f), Petitioner has shown that the Office erred by” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“The legal question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,407,564 - PTAB · Nov 21, 2024 · IPR2024-00917 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR of claims 1–18 on both asserted obviousness grounds, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“when there is an earlier petition challenging the same patent. See General Plastic, Paper 19 at 15–16. To determine whether to deny the subsequent petition, the Board considers the following non-exclusive factors (the “General Plastic factors”): 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Id. at 16.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“when a petition presents “the same or substantially the same prior art or arguments [that] previously were presented to the Office.” 35 U.S.C. § 325(d); see 37 C.F.R. § 42.4(a). To evaluate whether such a denial is appropriate, the Board determines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 14 Like the parties, we focus our analysis on Leaning. See Pet. 59–61; Prelim. Resp. 14–23; Prelim. Reply 1–4; Prelim. Sur-reply 1–4. We are persuaded that Petitioner’s Leaning-only ground meets the standard for institution, and we do not reach Petitioner’s alternative ground based on Leaning and Ala-Honkola. See supra §§ II.E–F. Moreover, the statutory purpose of Section 325(d) would not be undermined by instituting on both challenges given Ala-Honkola’s limited role in Petitioner’s ground (see Pet. 50–52) and during prosecution (see, e.g., Ex. 1002, 81–82). and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). Factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office), and factors (c), (e), and (f) relate to the second part (i.e., “whether the petitioner has demonstrated a material error by the Bionics, Paper 6 at 10. “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. 2. Discussion a. Advanced Bionics Part One We are persuaded that the Petition presents substantially the same art as was previously presented to the Office, such that part one of the Advanced Bionics framework is satisfied. Leaning was not previously presented to the Office, but another reference by the same inventors—U.S. Patent Application Publication No. 2004/0030547 A1 (Ex. 2001, “Leaning US”)—was cited during prosecution of related, ancestor applications. See Pet. 60. We agree with Patent Owner (see Prelim. Resp. 14–15, 17–18) that Leaning is cumulative of the disclosures in Leaning US. See Ex. 2002 (redline of differences between Leaning and Leaning US). Moreover, we find that these similarities pertain directly to Petitioner’s unpatentability analysis in this case. For example, all of Petitioner’s citations to the written description of Leaning for limitation 1[A][3] (see Pet. 20–22) are disclosed in substantially identical language in Leaning US. Compare Ex. 1004, Abstr., 3:1–22, 5:4– 6:8, 6:13–7:7, 9:3–7, 12:8–34, 13:23–14:19, 16:6–12, with Ex. 2001 ¶¶ 19– 27, 36–43, 45–50, 57, 63–64, 72–80, 90–91. Accordingly, we are persuaded” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“On this record, the findings from the ITC Investigation regarding objective indicia do not undermine the sufficiency of Petitioner’s obviousness showing for purposes of institution. Our preliminary record includes no evidence of long-felt need, failure of others, unexpected results, commercial success, or industry praise. In addition, Patent Owner has not yet shown a nexus between any such evidence and the claimed invention. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“In order to accord substantial weight to secondary considerations in an obviousness analysis, the evidence of secondary considerations must have a nexus to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention.”); see also id. (“The patentee bears the burden of showing that a nexus exists.”); ZUP, LLC patentee “bears the burden of production with respect to evidence of secondary considerations of nonobviousness”). Patent Owner will have the opportunity during the trial to present and develop arguments that objective indicia show that the challenged claims would not have been obvious, and our final written decision will be based on the full trial record.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,757,156 - PTAB · Nov 21, 2024 · IPR2024-00940 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’234 patent on all grounds of unpatentability presented.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying this two-part Advanced Bionics framework, we evaluate several non-exclusive factors, including:” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 5. Notwithstanding, Patent Owner asserts that “resolution of such dispute is not necessary for the Board to make a determination regarding institution.” Id. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,991,234 - PTAB · Oct 22, 2024 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 10–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 10–20 of the ’268 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’268 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Nonetheless, Petitioner’s stipulation mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Thus, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 48
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“recognizing the heterogeneity of vehicles, one would have been motivated to determine applicable settings (e.g., command codes) that are compatible with settings that are settable in the selected vehicle but would avoid determining applicable settings that are incompatible with settings that are settable in the selected vehicle, ensuring that Xiao’s server 118 does not attempt to command vehicles to do things they cannot do, potentially resulting in unexpected and/or undesired vehicle configurations or errors. Pet. 49; Ex. 1009 ¶ 191. Petitioner adds that “[a]voiding such undesirable effects would be a predictable result of implementing Hayashi’s known method of determining compatibility.” Id. For the purposes of institution, Petitioner’s arguments and Dr. Almeroth’s testimony are better supported by the Xiao and Hayashi. Nevertheless, the parties are encouraged to further develop the record on this issue after institution. After review of the arguments and evidence currently of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that Xiao in combination with Hayashi renders independent claim 10 obvious.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,171,268 - PTAB · Sep 5, 2024 · IPR2024-00695 · APJ Norman H Beamer · IPR · Institution
The Board instituted review of claims 1–13 on all grounds, finding compelling evidence of obviousness over Perlman for claims 1 and 12 and a reasonable likelihood of success on the remaining claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The second Fintiv factor strongly favors denial, the third Fintiv factor somewhat favors denial, the first and fifth factors are neutral, and the fourth factor somewhat weighs against denial. Accordingly, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). We note that the compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our analysis of Petitioner’s unpatentability challenges, that the Petition presents a compelling challenge based on a single close reference at least for independent claims 1 and 12. Perlman’s disclosure provides clear and robust teachings for the limitations of those claims. Patent Owner’s only arguments on the merits, directed to two limitations common to both independent claims, are premised on an interpretation of “transmitting . . . data streams independently over a network” that has no basis in the record. “A challenge can only ‘plainly lead to a conclusion that one or more claims are unpatentable’ [Guidance Memo 5] if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR202101064, Paper 102, 49–50 (PTAB Oct. 4, 2022) (precedential). We have so determined in regard to at least independent claims 1 and 12, and therefore decline to deny institution based on the Fintiv factors.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our analysis of Petitioner’s unpatentability challenges, that the Petition presents a compelling challenge based on a single close reference at least for independent claims 1 and 12. Perlman’s disclosure provides clear and robust teachings for the limitations of those claims. Patent Owner’s only arguments on the merits, directed to two limitations common to both independent claims, are premised on an interpretation of “transmitting . . . data streams independently over a network” that has no basis in the record.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 16 (citing Freedman Decl. ¶¶ 20–22). Patent Owner does not dispute Petitioner’s definition for purposes of its preliminary response. Prelim. Resp. 15. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Based on this record, we determine that the claim requirement at issue requires the parallel encoded data streams to be transmitted such that the encoded tiles arrive at the destination for separate decoding and recombination to reproduce the image. The embodiments described in the ’426 specification describe nothing more. The portions of Perlman on which Petitioner relies amply demonstrate the same behavior. It is not necessary to determine the precise method by which the separately encoded data tiles are transmitted, as long as they are separately received, decoded, and recombined at their destination. Patent Owner’s example illustrates this: whether four people travel from Dallas to Washington, D.C. in one, two, three or four cars does not change the fact that each person retains their individual identity during the journey, just like the encoded tiles of Perlman during transmission. Whatever additional, unexplained requirements Patent Owner would attach to the term “independently” in this context has no reasonable basis.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,649,426 - PTAB · Jul 22, 2024 · IPR2024-00425 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 9, and 10 on all asserted grounds after finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response, and informed by the pre-institution record, shows “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 explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. Petitioner’s challenge over the combination of Beck, Heller, and Lovejoy counsels us not to discretionarily deny institution. Patent Owner does not dispute that Beck and Heller were not before the Office. See Prelim. Resp. 42–43; Prelim. Sur-reply 3. Although Patent Owner characterizes that as “irrelevant” (Prelim. Sur-reply 3), Petitioner asserts it relies on Beck to teach the limitation leading to allowance (Prelim. Reply 3). In fact, the Petition largely relies on Beck, or the combination of Beck and Heller, in its obviousness challenge and only relies on Lovejoy for a sliver of 11 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. first part of Advanced Bionics is not satisfied and do not exercise our discretion to deny institution for this reason. Even if we were to reach the second part of Advanced Bionics, we agree with Petitioner the Office erred in a manner material to the patentability of challenged claims by not applying the combination of Beck, Heller, and Lovejoy during prosecution, as evidenced by Petitioner’s reliance on that combination in its unpatentability challenges. Prelim. Reply 3; see Pet. 69–70. Petitioner specifically points out the Office erred by overlooking Beck’s “disclosure of the limitation that allegedly was missing from the prior art and led to allowance,” i.e., “wherein the remote server authenticates said unique sensor ID . . . and communicates to said wireless device . . . software related to the unique sensor ID.” Prelim. Reply 3. Patent Owner, at most, suggests Petitioner fails to demonstrate the Office erred in a manner material to the patentability of challenged claims because Petitioner’s combination does not show unpatentability. See Prelim. Resp. 43. However, as detailed in our analysis above, Petitioner adequately shows that the claims would have been obvious over the combination of Beck, Heller, and Lovejoy. Accordingly, we do not exercise our discretion to deny institution under § 325(d) over Petitioner’s challenge based on Beck, Heller, and Lovejoy. We need not address whether Patent Owner’s argument that Petitioner’s challenge based on Bandy warrants discretionary denial. Prelim. Resp. 40–42.” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, we determine the plain language and structure of the limitation does not support a construction requiring authentication using both the unique sensor ID and the unique wireless ID, as asserted by Patent Owner. The claim recites “the remote server authenticates said unique sensor ID associated with said unique wireless device ID,” but Patent Owner’s construction appears to read out the phrase “associated with” and adds an unrecited requirement to the claim such that the remote server authenticates said unique sensor ID and said unique wireless device ID. Ex. 1001, 19:51–52 (emphasis added). The language and structure of the limitation reads that the unique wireless ID is “associated with” the unique sensor ID. As such, the last portion of the limitation reciting “associated with said unique wireless device ID” serves to further describe the unique sensor ID, specifically, that the unique sensor ID is associated with the unique wireless device ID. 8 In Petitioner’s Reply and Patent Owner’s Sur-reply, the parties dispute the construction of this phrase. See Prelim. Reply 2; Prelim. Sur-reply 1–3. Those arguments go beyond the scope of the briefing we authorized on discretionary denial and inventorship (see Ex. 3001), so we do not consider them here. using both the unique sensor ID and a unique wireless device ID. The Specification does not use, let alone define, the terms “server” or “authentication.” See generally Ex. 1001. To the extent the Specification provides examples of access to a remote computer, those examples describe access on the basis of a sensor ID—but not a wireless device ID. In one example, a wireless device obtains software for a RFID sensor tag from “a centralized database for RFID tags or a diagnostics database that is accessed only by paying an access fee. Subsequently, the ID of the RFID sensor is matched to a given class of sensor (e.g. a glucose sensor) and the software and/or instructions for the analyses are downloaded” to the wireless device. Ex. 1001, 18:16–23 (emphasis added). Another example similarly provides access solely on the basis of a sensor ID: “a patient can . . . upload into the cell phone the necessary information to conduct any given test by matching the ID of the RFID sensor with given software and data tables stored remotely on computer 400.” Id. at 16:50–56 (emphasis added). Accordingly, for institution purposes, we construe “wherein the remote server authenticates said unique sensor ID associated with said unique wireless device ID” such that the remote server’s authentication requires use of a unique sensor ID; but the remote server’s authentication does not require use of the unique wireless device ID.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner
“On this record, we agree with Petitioner that the identified limitations—which each recite a “means” or “means for” performing a particular function—are means-plus-function limitations that should be interpreted under pre-AIA 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We are also preliminarily persuaded that Petitioner correctly identifies the recited functions and corresponding structure for these limitations. See Pet. 11–15 (citing Ex. 1001, 2:20–21, 2:24–28, 3:33–36, 17:18–30); see Pet. 13–15 (citing Ex. 1009, 9:4–6, 9:19–20, 9:57–65, 10:10–11) (explaining that Lovejoy is incorporated by reference into the ’307 Patent). For purposes of this Decision, we apply the constructions identified by Petitioner. These are shown in the table below:” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,969,307 - PTAB · Apr 25, 2024 · IPR2024-00146 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–11, 13–20, and 22–27 on all grounds, finding a reasonable likelihood of success on the obviousness grounds.
RulingsInstitution decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’555 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’555 patent. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 68–70. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 70; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 68, 70; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 20–22) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Based on the present record, we find that the secondary considerations findings from the ITC Investigation do not undermine the sufficiency of Petitioner’s obviousness showing at this stage.5 We note that Patent Owner “bears the burden of production with respect to evidence of secondary considerations of nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018). At this stage, Patent Owner merely references the findings of the ITC rather than adducing evidence of objective indica of nonobviousness in the first instance and attempting to establish a nexus to the invention of the ’555 patent. Further, Petitioner has adduced at least some evidence that the allegedly unique features of the Move Media Player were known in Ogdon, which tends to undermine the ITC’s nexus analysis. See, e.g., Ex. 1004, 14:46–49, 22:48–63. We also disagree with Patent 5 Patent Owner also argues that Dr. Houh’s testimony is unreliable because he failed to consider evidence of secondary considerations from the ITC Investigation. Prelim. Resp. 42–43. We decline to discount Dr. Houh’s testimony on this basis. Regardless of whether Dr. Houh addressed secondary considerations, we find his testimony relevant at this stage to our consideration of (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; and (3) the level of skill in the art. See Graham, 383 U.S. at 17–18. Owner (Prelim. Resp. 41–42) that Ogdon does not disclose streaming video for the same reasons mentioned above. See supra §§ II.D.1, II.D.3.a. For these reasons, we find that the evidence of secondary considerations in the present record does not undermine Petitioner’s showing for purposes of institution. We also decline to exercise our discretion to deny institution based on Petitioner’s alleged failure to address secondary considerations. Patent Owner will have the opportunity at trial to produce evidence related to secondary considerations of nonobviousness.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Claim 18 recites, inter alia, “at least one storage device configured to store live event video, the live event video encoded at a plurality of different bit rates creating a plurality of streams including at least a low quality stream and a high quality stream.” Ex. 1001, 20:45–49. Claim 18 additionally recites that “the low quality stream and the high quality stream each encod[e] the same portion of the live event video.” Id. at 20:50–53. Petitioner cites Ogdon’s discussion of storing different versions of a presentation. See Pet. 17–19. Patent Owner argues that Ogdon fails to teach multiple copies of the same video encoded at different bitrates, as required by the claim. Prelim. Resp. 16 (citing Ex. 2001 ¶ 60). Having reviewed the parties’ arguments and the evidence of record, we determine that Petitioner has not sufficiently shown that Ogdon alone discloses storing the same portion of live event video as a low quality stream and a high quality stream. Although we preliminarily agree that Ogdon teaches the use of video as a version of a presentation, we do not agree that Ogdon alone discloses storing multiple copies of the same video. Specifically, Ogdon describes storing different versions of a presentation, rather than multiple copies of the same video.9 See Ex. 1004, code (57), 2:30–66, 13:47–49, 22:44–47, 24:55, claim 9. For these reasons, Petitioner does not show that there is a reasonable likelihood that it would prevail in establishing that Ogdon discloses claim 18. Petitioner’s analysis for claim 19, which depends from claim 18, is likewise deficient.” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,469,555 - PTAB · Apr 16, 2024 · IPR2024-00043 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–9, 11–19, and 21–24 on all three § 103 grounds, finding a reasonable likelihood of unpatentability over the specified reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Because there are material differences between Ogdon and Carmel, we determine that Ogdon is not substantially the same as Carmel. See Nokia of Am. Corp. v. Soto, IPR2023-00680, Paper 18 at 6 (Vidal Mar. 28, 2024) (“[P]rior art references are not ‘substantially the same’ when there are differences between them that are material to the Office’s prior consideration of the art.” (citing Wolfspeed, Inc. v. Trustees of Purdue University, IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023)). As Patent Owner points out, the Examiner distinguished Carmel during prosecution of the ’138 patent because it did not teach streamlets of the same duration. Prelim. Resp. 40 (citing Ex. 2002, 1329–31). In contrast, Petitioner cites Ogdon in the Petition for teaching, inter alia, segments that have “approximately the same presentation duration.” See, e.g., Pet. 21–22 (quoting Ex. 1004, 2:49–55). Based on the present record, we disagree with Patent Owner that Ogdon fails to disclose what the Office “has already found Carmel lacked,” i.e., “streamlets of the same length. Prelim. Resp. 40. That is, we find that Petitioner applies Ogdon in a manner that is distinguishable from the way Carmel was understood by the Examiner during prosecution of the ’138 patent. Thus, we find that the same or substantially the same art or arguments were not previously presented, so we need not proceed past the first stage of the Advanced Bionics framework with respect to Ogdon. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this time, we determine that no terms of the challenged claims require explicit construction. 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))).” slip op. at 14
- BurdenInstitutedInstituted
“the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that the limitations of independent claim 1 would have been obvious over Ogdon and Allen.” slip op. at 40
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We agree with Patent Owner that the ’798 patent is in the field of video streaming over the Internet with adaptive-rate shifting of presentation content based on network conditions. See Ex. 1001, 1:31–34. However, Ogdon similarly discloses switching transmission rate of presentation content that is transmitted over the Internet based on network conditions. See, e.g., Ex. 1004, 3:38–41. Further, Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66. We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art to the ’798 patent because it is in the same field of endeavor as the ’798 patent.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,677,798 - PTAB · Apr 16, 2024 · IPR2024-00045 · APJ John A Hudalla · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 8, 10–14, 16–20, 22–28, and 30 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–5, 7, 8, 10–14, 16–20, 22– 28, and 30 of the ’554 patent on all grounds of unpatentability presented.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’554 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’554 patent. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we are persuaded that Petitioner has a reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 62–64. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 64; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 62, 64; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 20–22) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Based on the present record, we find that the secondary considerations findings from the ITC Investigation do not undermine the sufficiency of Petitioner’s obviousness showing at this stage.6 We note that Patent Owner “bears the burden of production with respect to evidence of secondary considerations of nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018). At this stage, Patent Owner merely references the findings of the ITC rather than adducing evidence of objective indica of nonobviousness in the first instance and attempting to establish a nexus to the invention of the ’554 patent. Further, Petitioner has adduced at least some evidence that the allegedly unique features of the Move Media Player were known in Ogdon, which tends to undermine the ITC’s nexus analysis. See, e.g., Ex. 1004, 14:46–49, 22:48–63. We also disagree with Patent Owner (Prelim. Resp. 41–42) that Ogdon does not disclose streaming video for the same reasons mentioned above. See supra §§ II.D.1, II.D.3.a. For these reasons, we find that the evidence of secondary considerations in the present record does not undermine Petitioner’s showing for purposes of institution. We also decline to exercise our discretion to deny institution based on Petitioner’s alleged failure to address secondary considerations. Patent Owner will have the opportunity at trial to produce evidence related to secondary considerations of nonobviousness. 6 Patent Owner also argues that Dr. Houh’s testimony is unreliable because he failed to consider evidence of secondary considerations from the ITC Investigation. Prelim. Resp. 42–43. We decline to discount Dr. Houh’s testimony on this basis. Regardless of whether Dr. Houh addressed secondary considerations, we find his testimony relevant at this stage to our consideration of (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; and (3) the level of skill in the art. See Graham, 383 U.S. at 17–18.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,469,554
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.