- Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01164 · APJ James P Calve · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–7 and 10–20 over Morris and Ray, and claims 8, 9, and 18 over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’375 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 27 n.8. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Patent Owner asserts that the claim term “exercise use data” needs to be construed to resolve the issues raised by Petitioner. PO Resp. 4. Patent Owner asserts that exercise use data is “data that would represent an amount of exercise of the user.” Id.; Ex. 2004 ¶ 32. Petitioner disagreed with this proposed construction in its briefing (Pet. Reply 1–5) but adopted it during the oral hearing (Tr. 14:12–15:17). The parties also agree that “exercise use data” includes time, distance, and calories of a user exercising on an exercise apparatus. PO Resp. 4–5, 14; Pet. Reply 3–4. For purposes of this proceeding, we apply Patent Owner’s proposed construction. For the reasons explained below, we determine that Petitioner has shown that the challenged claims are unpatentable even under Patent Owner’s narrower construction. As a result, we do not need to construe this claim term further.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner does not dispute Petitioner’s contentions. See PO Resp. We find that Petitioner has established that a skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and would have had a reasonable expectation of success. See Pet. 16–19, 27–28; Ex. 1002 ¶¶ 137–147, 161–163; Ex. 1004, 5:27–29, 7:11–22, 9:55–57; Paper 8 (Scheduling Order), 9 (cautioning Patent Owner that any arguments not raised in the response may be deemed waived).” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 45–52), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosures. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim as discussed above. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 29
Patent outcomesUS 10,796,375 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,796,375 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray; the Board did not reach the alternative Ray–AAPA and Yi grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’340 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but we agree with Petitioner that these differences are immaterial to this proceeding. See Pet. Reply 29 n.12. Moreover, our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4. According to Patent Owner, the Specification of the ’340 patent defines this term. Id. at 4–5 (citing Ex. 1001,6 1:43–46, 6:33–34, claims 4, 5, 17; Ex. 2004 ¶ 33). In its briefing, Petitioner disagrees with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 1–2; see id. at 1–5 (further contesting Patent Owner’s proposed construction). However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the Challenged Claims are unpatentable even under Patent Owner’s narrower construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit 8 By not challenging Petitioner’s contentions as to motivation to combine and reasonable expectation of success, we also find that Patent Owner has waived any argument contesting these contentions. See Paper 8 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed for the reasons explained by Petitioner, as set forth above.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“are contradictory and we also disagree with Patent Owner that Ray teaches away from “maintain[ing] communication between the exercise apparatus and the remote location while the user is determined by the controller not to be engaged with the operating member” as recited in claim 7. On the former point, we agree with Petitioner that Patent Owner “improperly equates generation and reporting of exercise use data with maintaining a connection with a remote location.” See Pet. Reply 20. Petitioner previously asserted that generation and reporting of the data would stop when Ray does not detect a user, but this does not mean that the connection would also be stopped. On the latter point, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner fails to point to anything in Ray that discourages or would otherwise lead one of ordinary skill in the art away from maintaining a connection with a remote location when exercise use data is not reported at that precise moment. Rather, Petitioner provides a reason with rational underpinning as to why one of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to maintain the connection—“to avoid delays in trying to re-establish the connection once the user had come back.” Pet. 39. That position is supported by the testimony of Mr. Rawls. Ex. 1002 ¶ 186.” slip op. at 53
Patent outcomesUS 11,227,340 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340 - Infineon Technologies AG v. Amatech Group LimitedSome claims unpatentablePTAB · 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 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,165,240 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,633,304 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.
RulingsFinal written decision- 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 antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 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 at use 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. Thus, we are not persuaded that the level of ordinary skill should be narrowly 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. 7.5” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. 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. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). 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. 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 22–23 (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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[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))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26
Patent outcomesUS 9,033,250 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,033,250 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jun 12, 2023 · IPR2022-00235 · APJ Stacey G White · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–7 over Takeda-322 under §§ 102 and 103, claims 1–6 over Murayama under § 102, and claim 7 over Murayama under §§ 102 and 103.
RulingsFinal written decision- Adverse judgmentDecided for patent owner
“Under the circumstances of this case, we do not agree that adverse judgment with respect to the disclaimed claims is appropriate. Our Rules, provide that a party may request judgment against itself. 37 C.F.R. § 42.73(b). Here, Patent Owner is not requesting adverse judgment against itself. While it is true that 37 C.F.R. § 42.73(b) provides that “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), we decline to construe Patent Owner’s statutory disclaimer as a request for adverse judgment in this proceeding because Patent Owner does not disclaim all challenged claims and the majority of the challenged claims remain in this trial.” slip op. at 4
- 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 antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). Petitioner points out that “the claims are not limited to a [Booster Antenna (BA)] operating at any particular frequency range.” Reply 25. In addition, Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use 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. Thus, we are not persuaded that the level of ordinary skill should be narrowly 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. 87.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, because he “he lacks relevant experience, his testimony runs counter to fundamental principles of the RFID technology disclosed in the ’932 patent, and his testimony evidences a lack of candor.” PO Resp. 46. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. 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 7 We further note that our final determination, on the merits, would be the same even under Patent Owner’s definition of the level of ordinary skill in the art. Owner’s articulation of the level of ordinary skill in the art. Reply 25–27. 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that “[n]o claim term requires an exact outer boundary construction, because the prior art relied upon herein meets the claim terms under any reasonable interpretation.” Pet. 9. Patent Owner proposes constructions for the claim terms “booster antenna,” “card antenna component,” “coupler coil component,” and “extension antenna component.” PO Resp. 25–45. According to Patent Owner, Petitioner also has proposed its own constructions for these terms, despite stating that no claim term requires construction. Id. at 25–26. We address “booster antenna” and “extension antenna” below.8 It is unnecessary to construe “card antenna component” or “coupler coil component” in this Decision 8 Patent Owner also argues that Petitioner belated construes “card body” in Petitioner’s Reply. Sur-Reply 16–18. We do not construe “card body” because this construction is not necessary to resolve this matter. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). because none of the parties’ disputes turn on the meaning of either term. See, e.g., Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 13
Patent outcomesUS 9,195,932 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,195,932 - Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00067 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–36 are unpatentable under § 103; the Board relied on Morford and Maes, with Lu, McGrew, or Barreto for dependent-claim grounds, and did not reach Allen-based grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“With respect to the claimed ABD, we determine that even under Patent Owner’s construction requiring a “processor optimized for audio and video compression,” Petitioner has shown that the independent claims would have been obvious over Morford and Maes.10 Therefore, we need not construe the term to resolve the obviousness contentions at issue.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–20) or system (for system claims 21–36). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1003, 38:34–36, 38:42–54. However, claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 38:31–33. Clearly, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. But the claim limits these two actions to the individual steps in which they appear. Only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six stated autonomous ABD actions are required to be performed “without modification or circumvention of the router.”” slip op. at 12
- Skill levelSkill level board ownOther
“For purposes of this Decision, we do not determine that the differences between the proffered levels of ordinary skill in the art would be dispositive. We adopt our determination in the Institution Decision, in which we adopt the parties’ asserted level having between two to four years of experience. Inst. Dec. 20.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“b) Analysis Having reviewed the entirety of the record and analyzed the evidence, we determine, with respect to the limitations not specifically contested by Patent Owner, that Petitioner’s assertions are supported by the record, in the manner discussed above. Regarding those limitations contested by Patent Owner, we address and analyze those limitations below. As discussed below, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 is unpatentable under § 103 as obvious over the combination of Morford and Maes.” slip op. at 27
Patent outcomesUS 10,154,317 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,154,317 - Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00066 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–30 are unpatentable under § 103; the Board relied on Allen and Maes for claims 1–17, 21–24, 26, and 30, and did not reach remaining grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“without modification or circumvention of the router” as follows. We begin with the language of the claims and the originally-filed disclosure. With respect to the originally-filed disclosure of the ’574 patent, no explicit discussion is presented to define or explain the terms “modification” or “circumvention.” With respect to the claims as a whole, the “without modification to or circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–11, 22–30) or system (for system claims 12–21). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1001, 26:32–60. Claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 26:35–37. However, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. So, the claim limits these two actions to the individual steps in which they appear. Therefore, only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six autonomous ABD actions recited in the claim are required to be performed “without modification or circumvention of the router.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“3. Additional Claim Terms Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). With respect to the terms “scheduling logic,” “streaming information,” “contemporaneously with the live event,” “transmitted [received] out of band,” and “dynamically scaling the server based on demand,” these terms are not in controversy. Thus, we need not construe those terms.” slip op. at 16
- Skill levelSkill level board ownOther
“Patent Owner does not specifically assert a level of skill in the art. Patent Owner’s declarant, Dr. Akl, does testify that a person of ordinary skill in the art of the ’574 patent: would have . . . a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience in the design or development of telecommunication and networked systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 2017 ¶ 35. Under either level of skill, a person having a bachelor’s degree in computer engineering or a related field, and a couple years’ experience in networked systems or the equivalent would qualify as a person having ordinary skill in the art. The primary difference between Petitioner’s assessment and Dr. Akl’s is whether “2–3 years” or “four years” of experience is appropriate, neither explains why their assessment is appropriate. See Ex. 1007 ¶ 30; Ex. 2001 ¶¶ 20, 21 (addressing without argument or comment the assessment of Petitioner’s declarant); Ex. 2017 ¶ 35. For our analysis, we do not determine this difference to be dispositive; rather, we determine that the appropriate level is between two and four years of experience.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“that Allen lacks an ABD behind a router. Rather, we credit the testimony of Dr. Easttom that a “network has to have a router,” and “a router must be present in Allen” given Allen’s use of WANs with the Internet being one example of a WAN. Ex. 1007 ¶¶ 226, 228; Ex. 2001 ¶ 85; see Ex. 2005, 125:19–126:25. Dr. Akl also characterizes WANs at the critical time as having a “single, unique, public outfacing address,” referred to as its “WAN IP,” and that the term “WAN IP was used in the reference materials for (“share one Wide Area Network (WAN) IP address for multiple computers on your Local Area Network”)). Dr. Akl further describes client devices in a Local Area Network as connecting to other devices on the Internet through a router. Id. ¶ 43. Second, we find that Allen discloses an ABD, even under Patent Owner’s construction, because Allen’s MCD (1) is a “dedicated (i.e., specific-purpose) device” and not merely a general-purpose computer, and (2) is “configured to capture, process, store and/or send real-time media signals (e.g., audio signal, video signal . . . )” and broadcast the audio/video content over a network. See Ex. 1008 ¶¶ 1015, 1021, 1076–1077, Figs. 6, 8; Ex. 1056 ¶¶ 46–47. Additionally, we credit the testimony of Dr. Akl, who testified that “if [a computer] is able to carry out the functionality, then it’s not a general-purpose computer.” Ex. 1064, 55:23–25.” slip op. at 31
Patent outcomesUS 9,686,574 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,686,574 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentablePTAB · Feb 15, 2023 · IPR2021-01293 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–5 and 7 are unpatentable under § 103: claims 1 and 2 over Patrick, claim 2 over Patrick and Barrett, claims 3–5 over Patrick and Gringeri, and claim 7 over Patrick and Mahdavi.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the field of art (“POSITA”) of the ’098 patent would have been a person with a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field with at least two years of experience in video transmission systems, or a person with a master’s degree in computer science, computer engineering, electrical engineering, or a similar field with a specialization in video transmission systems. Pet. 18 (citing Ex. 1003 ¶¶ 55–56). Petitioner further contends that “[a] person with less education but more relevant practical experience may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 55–56). Petitioner further asserts that a person of ordinary skill in the art in 2004 would have known and had the skills necessary to: (1) “Design or implement video transmission systems and applications in compliance with standards such as TCP/IP, UDP, RTP, ATM, DVB, and ATSC;” (2) “Understand video coding and processing in compliance with standards such as MPEG-1, MPEG-2, MPEG-4, and H.26x;” (3) “Implement known techniques for determining available bandwidths between transmitting and receiving systems of media content; and” (4) “Understand common techniques for organizing and” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Petitioner proposes claim constructions for “transmission rate” and “steady-state transmission rate.” See Pet. 19–21. Patent Owner does not agree with Petitioner’s proposed claim constructions. See PO Resp. 16 (citing Ex. 2014 ¶ 20). Patent Owner, however, does not offer alternative proposed claim constructions, but instead asserts these terms should be construed in accordance with their plain and ordinary meanings. See id. As demonstrated in the analysis below, we need not expressly construe “transmission rate” and “steady-state transmission rate.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7
- Strike new argumentNew argument consideredDecided for petitioner
“As an initial matter, we do not agree with Patent Owner’s contention that the following Reply argument constitutes an impermissible new argument: “[s]ince [Patent Owner] is unable to dispute paragraph 38 teaches limitations [1b] and [1d] . . . .” Pet. Reply 9; see PO Sur-reply 12–13. Contrary to Patent Owner’s suggestion, we do not understand Petitioner to argue for the first time on Reply that Patrick’s paragraph 38 by itself teaches limitations [1b] and [1d]. Rather, we understand the Reply argument to address the dispute raised by Patent Owner regarding the disclosure of Patrick’s paragraph 38 as applied to limitations [1b] and [1d] in the Petition. See Pet. Reply 9; PO Resp. 38–40, 38 n.7, 52–53 (citing Ex. 2014 ¶¶ 50–51, 63–64, 70); Pet. 30–31, 37. Likewise, we do not agree that the portion of the Reply addressing the second sentence of Patrick’s paragraph 38 is a new argument that attempts to buttress the lack of discussion of paragraph 38 in the Petition. See PO Sur-reply 16; Pet. Reply 11. Instead, we find that these Reply arguments constitute a permissible response to Patent Owner’s arguments addressing how a person of ordinary skill in the art would understand the disclosure of Patrick’s paragraph 38. See PO Resp. 38 n.7 (citing Ex. 2014 ¶ 50), 52–53 (citing Ex. 2014 ¶¶ 63–64, 70; PO Resp. 38 n.7); see also 37 C.F.R. § 42.23(b); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)8 73–74.” slip op. at 28
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“paragraph 38 uses terms consistent with the terms used in the first sentence of paragraph 38 and terms used in paragraphs 31 and 36 to address act 206 of Figure 3. See id. ¶¶ 31, 36, 38. Moreover, the first sentence of paragraph 38 is consistent with Patrick’s paragraph 37 disclosure that network congestion or other restrictions between the server and client (i.e., a reduction of bandwidth between the server and client) may limit the rate of accelerated streaming. See Ex. 1004 ¶ 37 (quoted in Pet. 30–31). We give weight to Dr. Brody’s testimony that a person of ordinary skill in the art “reading Patrick’s disclosure would have understood that [Patrick’s] later disclosure [in paragraphs 33 through 39] provides additional details and teachings relevant to the invention as a whole,” (Pet. Reply 7 (citing Ex. 1033 ¶ 8)) because it is supported by the aforementioned interrelated teachings of at least Patrick’s paragraphs 31 and 36 through 38. We give minimal weight to Dr. Hayes’s cited supporting testimony regarding the “structure” of Patrick because it is not supported by a sufficient factual basis, and like Patent Owner’s arguments, is inconsistent with Patrick’s disclosure. Accordingly, contrary to Patent Owner’s arguments, we find: (1) Patrick’s paragraph 38 provides additional detail regarding the disclosures of paragraphs 31 through 36 with respect to act 206 of Figure 3; (2) the disclosures of paragraphs 37 through 39 are not limited to describing the period of accelerated streaming of act 208 of Figure 3; and (3) the corresponding disclosure related to act 206 of Figure 3 is not limited to the description of Patrick’s paragraphs 31 through 36.” slip op. at 30
Patent outcomesUS 9,402,098 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,098 - Netflix, Inc. v. Ca, Inc.All claims unpatentablePTAB · Feb 8, 2023 · IPR2021-01319 · APJ Nathan A Engels · IPR · Final written decision
Claims 1, 3–9, and 11–17 are unpatentable: claims 1, 3–9, and 11–16 as obvious over Medin and Seltzer; claim 17 as obvious over Medin and Markatos.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner states that a POSITA would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 21 (citing Ex. 2018 ¶ 20). Patent Owner notes that Petitioner presents a “similar” description of a POSITA, but Patent Owner states that it “does not necessarily agree with all of the ‘knowledge’ required by Petitioner’s definition.” PO Resp. 21. Patent Owner states, though, that “any differences in the parties’ view of a POSITA are not material” to Patent Owner’s arguments. PO Resp. 21. Based on the complete record, we determine an appropriate definition of the level of ordinary skill is a person with a bachelor’s degree in electrical engineering, computer science, or a similar discipline with two years of experience with computer networks and data storage, which is consistent with the parties’ contentions.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. “receiving a set of network objects in response to a first request to a server from a client” Petitioner contends the claim language “receiving a set of network objects in response to a first request to a server from a client” would have been understood by a person of ordinary skill to be a step that must be performed at the cache engine. Pet. 25. Further, Petitioner states that the limitation should be construed to mean “receiving a set of network objects at the cache engine in response to a first request to a server from a client.” Pet. 25–26. According to Petitioner, claims 20, 28, 39, and 47 require a cache engine that performs an equivalent receiving step, and Petitioner additionally cites certain dependent claims and portions of the Specification as support for its argument. Pet. 26–27 (citing Ex. 1001, 1:26–35, 3:42–51, 5:61–67, claims 2–6, 10–14). Patent Owner disagrees with Petitioner’s proposed construction and contends this limitation does not require any construction. PO Resp. 21 (citing Ex. 2018 ¶ 21). Patent Owner also states that the construction of this limitation is immaterial to the patentability of the challenged claims. PO Resp. 21. We determine it is unnecessary to expressly interpret this limitation to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Those positions, though, are inconsistent with the plain language of the claim. The claimed “cache memory” cannot refer only to a cache with volatile memory because the claim states that the “cache memory includ[es] mass storage.” Further, Patent Owner seeks to rewrite this claim term, with Patent Owner arguing “the plain and ordinary meaning of this limitation requires the cache to have both (1) memory and (2) mass storage.” Sur- Reply 3 (emphasis added). Independent claims 1, 9, and 17 do not recite a “cache” or a “memory” separate from “a cache memory in a cache engine, . . . said cache memory including mass storage.” Ex. 1001, 17:8–11, 17:41– 44, 18:13–16. Moreover, the Specification’s use of the qualifier “such as” in “memory (such as RAM)” (Ex. 1001, code (57), 2:9) evidences that RAM is merely a non-limiting example of memory; nothing in the Specification limits “memory”—much less “cache memory”—to RAM or volatile memory. Finally, although not directly applicable to our understanding of “cache memory,” the file history refers to “memory” broadly. In the file history, the applicant stated “the term ‘memory’ in the claims is meant to broadly encompass both fixed memories such as DRAMs, SRAMs, hard disks, caches, etc., as well as removable memories such as floppy disks, CD- ROMs, data tapes, etc.” Ex. 1002, 482. Contrary to Patent Owner’s arguments, that statement from the prosecution history evidences that the applicant understood “memory” to be a broad term and that the applicant could have limited its claims to particular types of memory, but chose not to. In total, the evidence of record, including Patent Owner’s arguments premised on intrinsic evidence, extrinsic evidence, and witness testimony,5 does not support Patent Owner’s arguments that “a cache memory in a cache engine, . . . said cache memory including mass storage” requires volatile memory. In our analysis below, we apply the plain language of the claims, noting that we understand the plain language to require mass storage but to permissively allow other types of memory, including volatile memory such as RAM.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“After fully considering the cited supporting evidence and according it appropriate weight, we are persuaded that a person of ordinary skill would have been motivated to combine the teachings of Medin and Seltzer “so as to substantially minimizes a time required for retrieving said network objects from said mass storage.” In particular, as Petitioner argues, Medin and Seltzer “share the goal of improving the speed and efficiency” of systems for storing information. Pet. 27–28 (citing Ex. 1004, 1:8–13, 2:9–15, 2:18–25, code (57); Ex. 1005, 307; Ex. 1003 ¶ 114). Contrary to Patent Owner’s arguments that the references’ goals are too generic and applicable to any references (PO Resp. 44–45; Sur-Reply 22), the references’ teachings are specifically complimentary: Medin teaches storing copies of frequently accessed multimedia content on UNIX-based computers to cache information and read and write it to mass storage (Ex. 1003, 5:60–64, 6:1–4, 6:36–56, 7:46–51, 7:61–8:2, 8:63–9:32), and Seltzer teaches techniques to improve read and write operations on UNIX-based computers (Ex. 1005, 307). The fact that Markatos advocates a different solution that purportedly outperforms “traditional” file system caching does not undermine Petitioner’s proposed combination for a number of reasons. Petitioner’s proposed combination includes Medin’s teachings of a file system to cache network objects and Seltzer’s teachings of ways of improving the read and write operations of a file system. Even if Markatos’s system purportedly outperforms other systems, that does not change the fact that Seltzer suggests techniques to improve Medin’s teachings that a POSITA would have had reason to implement to substantially minimize the time for retrieving network objects from mass storage with a reasonable expectation of success. In other words, we disagree with Patent Owner’s implication that Markatos’s disclosure of a purported improvement to traditional file system caching would lead a POSITA to dismiss Seltzer’s teachings of optimization techniques applicable to file system caching.” slip op. at 19
Patent outcomesUS 7,103,794 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,103,794
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.