- Zillow Group, Inc. / Zillow, Inc. et al. v. International Business Machines Corp.Some claims unpatentablePTAB · Mar 3, 2022 · IPR2020-01655 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–3 are unpatentable as anticipated by Linden; Petitioner did not show claims 4–7, 9–17, 19, and 20 unpatentable on the asserted anticipation grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Chewy, Inc. filed a Petition seeking review of the same claims challenged in Zillow’s Petition and also a Motion for Joinder with this proceeding. Paper 25, 2. We granted Chewy Inc.’s Petition and Motion for Joinder. Id. at 25.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 10 We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’443 patent and the prior art of record.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner adopts our “application of the plain and ordinary meaning to the claim terms.” PO Resp. 10. Because there is no dispute that the claims should be analyzed using the plain and ordinary meaning thereof, we apply the plain and ordinary meaning. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1015 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“disclose this limitation, i.e., Linden does not perform word matching, is likewise unavailing because it is premised on an ipsissimis verbis test. We turn to Linden’s disclosure relied on by Petitioner. Linden discloses that “[t]he similar items table 60 could also reflect non-collaborative type item similarities including content-based similarities derived by comparing item contents or descriptions.” Ex. 1003, 9:12–15 (emphasis added). Linden also discloses “if the user is currently searching for books on a particular topic and has added several such books to the shopping cart, this method will more likely produce other books that involve the same or similar topics.” Id. at 3:52–55 (emphasis added). Linden also discloses “the current and/or past contents of a shopping cart can be used to generate recommendations in a system in which mappings of items to lists of similar items are generated from a computer-based comparison of item contents.” Id. at 16:52–56. Linden, thus, explicitly discloses generating recommendations by comparing item contents or descriptions and provides a specific example of matching books involving the same or similar topics. We find this disclosure corresponds to the requirement of step 1[c] of “identifying . . . at least one advertisement . . . having at least one word that matches said . . . search result item.” After considering the evidence cited by Petitioner in light of Patent Owner’s contentions, we find Petitioner establishes that Linden discloses this limitation.” slip op. at 17
Patent outcomesUS 7,076,443 mixedClaim construction§ 102 anticipationPatents in suitUS 7,076,443 - Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentablePTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision
Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54
- Skill levelNot reached
- Expert testimonyPatent owner expert discountedDecided for patent owner
“data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14
Patent outcomesUS 6,693,557 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,693,557 - Micron Technology, Inc. v. Innovative Memory Systems, Inc.Rehearing grantedPTAB · Jul 1, 2016 · IPR2016-00326 · APJ Kevin W Cherry · IPR · Rehearing
On rehearing, the Board instituted IPR on claims 1, 2, and 13 based on anticipation by Anderl and obviousness over Anderl or Anderl and Hendry.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On June 17, 2016, Patent Owner filed a Request for Rehearing (Paper 13, “Request” or “Reh’g Req.”) of our Decision to Institute (Paper 10, “Decision”) an inter partes review in this case. We have reviewed Patent Owner’s Request, and we agree that we overlooked the matters identified in the Request. See Reh’g Req. 2–4. Thus, for the reasons stated in the Request, we grant Patent Owner’s Request for Rehearing. On rehearing, we withdraw our previous Decision and reconsider our Decision in light of the full record, as Patent Owner requests. Id. at 4. Pursuant to this reconsideration, we issue the instant Amended Decision to Institute.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1, 2, and 13 (“the challenged claims”) of the ’537 patent.” slip op. at 2
- BurdenOther
“limitation, we are persuaded that Petitioner has shown adequately that Anderl discloses “said appended information featuring said at least one associated type of permission for accessing the stored data,” as recited in claim 1. Patent Owner focuses narrowly on the value of the data included in protection bytes 43 to 45 of Anderl. See Prelim. Resp. 13–15. Yet the claim does not focus only on the data alone, but instead recites “appended information.” As the Petition explains, Anderl discloses that the information is appended based on location in file as the value at the particular location. See Pet. 23–24. In particular, Anderl discloses that each file includes prefix section 41 that is located in the first record of each file and contains file identification number 42 and protection bytes 43, 44, and 45. Ex. 1005, 6:57–60. Anderl states that “[t]he protection bytes 43 through 45 specify the file permissions.” Id. at 6:65–66 (emphasis added). As Anderl discloses,” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“not persuaded that “type of permission” is limited to only the type of action that can be performed, e.g., reading or writing, with respect to the data. Instead, the Specification repeatedly refers to the “types of permissions” as “for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.” See, e.g., Ex. 1001, Abstract (“The device, method and system enable various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 2:32–36 (“The present invention enables various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 3:4:26–30 (same). Given this broader usage in the Specification, for purposes of this decision, the “type of permission” is for determining access to the stored data, such that if an attempt is made to access particular data that does not have a suitable permission type, access is denied. The access, if not denied, may include reading from or writing to the stored data. As for “featuring,” we are not persuaded that “featuring,” as used in claim 1 of the ’537 patent is synonymous with “represent,” as Patent Owner contends. A relevant meaning of “featuring” is “to be an important part or aspect of something.” See Ex. 3001. This meaning only requires that the thing that is featured be an important part or aspect, not that it correspond to or represent the thing. Patent Owner does not point us to any disclaimer or definition that would limit this meaning. See Prelim. Resp. 13–15. Instead, the Specification appears to use the related term “feature” in this ordinary sense. See, e.g., Ex. 1001, 4:54–56 (“As another option, the device may feature a single chip with a microprocessor and firmware for operating the data access features ….”); 5:25– 27 (“A system 10 features a CPU 12 for executing instructions….”); 8:15–19 (“For example, an access control code could be implemented with a combination of different types of data, each of which could again feature a separately selected and assigned data access permission, which optionally and preferably is different for each portion of the data.”). Moreover, the portion of Specification cited by Patent Owner (Prelim. Resp. 12–13 (citing Ex. 1001, 6:34–61)) makes clear that it only refers to a preferred embodiment and the permissions do not need to be stored as a “code,” i.e., specific information or data representing the permission. See id. at 6:35–36 (“According to preferred embodiments…”), 6:43–47 (“If such a permission is to be stored in an abbreviated code, the code for this particular type of permission could be given as ‘R/W/WP’, for example. Such a code could optionally be stored in the non-volatile 16, for example.” (emphases added)). Such optional language is not sufficient to limit the claimed “appended information” to only something that “represents” the permission, such as a code. See Prolitec Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015) (“[T]he use of ‘may’ signifies that the inventors did not intend to limit [the claim]. . . .”); Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (noting that non-limiting examples are not sufficient to redefine a term).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,324,537 - Google Inc. / Motorola Mobility LLC et al. v. Arendi S.A.R.L.All claims unpatentablePTAB · Aug 18, 2015 · IPR2014-00452 · APJ Neil T Powell · IPR · Final written decision
Claims 1–79 are unpatentable as obvious: claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75, 77, and 79 over Goodhand; the remaining challenged claims over Goodhand and Padwick.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Samsung Electronics Co., Ltd. (“Samsung”) filed a second Petition for inter partes review of claims 1–79 of the ’853 patent. IPR2014-01518, Paper 1. The second Petition challenged claims 1–79 on the same grounds as those for which we instituted trial in IPR2014-00452. Concurrent with the second Petition, Samsung filed a motion to join IPR2014-01518 with IPR2014-00452. IPR2014-01518, Paper 3. On March 18, 2015, we instituted an inter partes review with respect to all challenges raised in the second Petition, joined IPR2014-01518 with IPR2014-00452, and terminated IPR2014-01518. IPR2014-01518, Paper 10; IPR2014-00452, Paper 26.2” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Patent Owner insofar as the disputed claim language requires that the recited “analyzing” ensues when “a single entry of the execute command” occurs. This follows from the plain meaning of the claim language, and no evidence to the contrary has been cited. We do not agree, however, with Patent Owner’s argument that claim 1 “rule[s] out action by the user, such as selection of text in the document to be analyzed, as a condition for the analyzing to take place.” PO Resp. 17 (citing Ex. 2008 ¶ 25). According to the plain meaning of “upon a single entry of the execute command . . . analyzing the document,” the word “single” does modify entry, thereby excluding multiple entries of the execute command. Additionally, claim 1’s use of the transitional term “comprising” indicates that the method may include other actions prior to the recited “single entry of the execute command.” Furthermore, contrary to Patent Owner’s assertion, the claim language “an execute command which initiates a record retrieval from an information source,” by itself, does not convey clearly that the record retrieval necessarily occurs because of one entry of the execute command. Moreover, the portion of Dr. Levy’s deposition testimony cited by Petitioners persuades us that the system disclosed by the ’853 patent would require user actions prior to entering the execute command to trigger the analyzing process. See Ex. 1016, 75, l. 21–79, l. 18; Pet. Reply 11–12. Additionally, as noted by Petitioners, Patent Owner’s argument is contradicted by the Specification’s disclosure that:” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“Reply, the Federal Circuit has admonished that “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Accordingly, we consider the cited portions of the prosecution history and the parties’ arguments about them. Patent Owner cites a number of documents from the prosecution history of U.S. Patent Application No. 09/189,626 (“the ’626 application”), which issued as the ’853 patent. Patent Owner cites an Office Action (Ex. 2001) in which the pending claims of the ’626 application were rejected based on U.S. Patent No. 6,085,201 to Tso (Ex. 2003, “Tso”). PO Resp. 36. Patent Owner also cites a subsequent Interview Summary (Ex. 2002), Amendment (Ex. 2004), and Notice of Allowance (Ex. 2005). Id. at 37–39. We have considered all of these documents, as well as Patent Owner’s arguments regarding them. We find that the cited prosecution history does not demonstrate a clear disavowal of text selection. The Remarks section of the Amendment addresses a number of different subjects. See Ex. 2004, 2–4. The first four paragraphs of the Remarks section present background information, including a request for reconsideration, a summary of the status of the claims, a summary of the Office Action, and a summary of an interview between the applicant and examiner (“the examiner interview”). Id. at 2–3. The paragraph summarizing the examiner interview bridges pages 2 and 3. Id. This paragraph describes an exploratory discussion between the applicant and the examiner about distinguishing Tso, a discussion in which “[n]o agreement was reached.” Id. at 3. In the following paragraph, the Amendment addresses the scope of the claims, explaining that: Claim 8 has been amended to clarify that according to Applicants’ invention, upon a single entry of an execute command by means of an input device, a document is analyzed to determine if first information is contained therein, and if the first information is contained in the document, an information source is searched for second information associated with the first information using a record retrieval program. Id. (emphasis added). We find that this latter paragraph contains the only clear statement from the applicant regarding the scope of the claims, and, in our view, it says nothing about whether the claims preclude or encompass text selection. See id.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We are persuaded by Petitioners that a person of ordinary skill in the art would have understood from Goodhand that its system performs analysis to determine if address field 600 contains any information, and its system is capable of breaking down the information contained in address field 600 to isolate display names, which constitute first information. Mr. Allison provides credible, persuasive testimony supporting Petitioners’ arguments. See, e.g., Ex. 1002 ¶¶ 101–103, 122. Mr. Allison correctly asserts that Goodhand’s system resolves individual display names and can search for each display name individually. Id. at ¶ 103 (citing Ex. 1003, col. 19, ll. 40– 42); see also Ex. 1003, col. 17, ll. 33–36 (“Thus, in this example, the e-mail program will attempt to match ‘billb,’ ‘sm henry,” and ‘patterson’ with specific address book entries belonging to registered users.”). Given this and Goodhand’s disclosure that a user may enter multiple display names and other information (e.g., punctuation) (see e.g., Ex. 1003, col. 17, ll. 12–20; Fig. 6a), we find credible and persuasive Mr. Allison’s testimony that Goodhand’s system “must first check to determine whether there is any text at all in the relevant address field,” and “must then separate and identify display names that it will use in follow-on searches” (Ex. 1002 ¶ 122; see Ex. 1016, 109, l. 22–110, l. 9). Because we are persuaded that Goodhand’s system must determine if” slip op. at 25
Patent outcomesUS 6,323,853 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,323,853
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.