• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision

  Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16

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

    “Accordingly, we find that the record does not support construing” slip op. at 32

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

    “away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

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

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

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

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01195 · APJ Minn Chung · IPR · Final written decision

  Claims 13 and 14 are unpatentable as anticipated by Kim; claims 17, 18, and 20 were not shown unpatentable over Kim and Lee because the proposed combination was inadequately explained.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “’026 patent would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Pet. 16 (citing Ex. 1102 ¶ 49). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, preliminarily adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Inst. Dec. 15. Neither Patent Owner, in its Response, nor Dr. Annavaram, in his declaration, proposes a level of ordinary skill in the art. Instead, Patent Owner states that “Patent Owner applies Petitioner’s stated skill level for this response” (PO Resp. 26), and Dr. Annavaram similarly states that “[f]or the purpose of this declaration, I adopt Dr. Harris’ definition of a [person of ordinary skill in the art]” (Ex. 2009 ¶ 24). Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Based on the complete record, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Inst. Dec. 15; see Pet. 16 (citing Ex. 1102 ¶ 49).” slip op. at 10

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

    “To the extent Patent Owner argues that these particularized selection clauses recited in different claims must have the same or similar meaning because they all use the word “selecting” (see PO Resp. 28–29), we disagree with Patent Owner. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray. Claim language must be construed in the claim in which it appears.” (emphasis added)). The selection clauses recited in these claims are plainly different on the face of the claims when considering the material differences in the claim language set forth above. According the same meaning to the limitations that recite “select . . . based on” indicators, “select . . . when” certain conditions are met, and “select . . . out of a group” of values would be improper because it would blur the material differences in the claim language recited expressly in the claims. Instead, we interpret the selection clauses recited in the challenged claims “in the context of the particular claim in which the disputed term appears” and “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. In other words, we do not construe the single word “selecting” in isolation, but, rather, interpret the full selection clauses recited in the challenged claims in the context of the entire patent. Claim 13 recites “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator.” In our view, the plain meaning of this limitation is clear on the face of the claim—a value of a control signal is selected based on two indicators, the mode indicator and the leakage indicator.” slip op. at 14

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

    “Tr. 47:7–23. Because the output of Kim’s NAND gates will be different depending on the value of Kim’s memory cells C1–CN allowed to “pass through,” we agree with Petitioner that the value of Kim’s memory cells C1– CN (the claimed “leakage indicator”) “plays a role” in deciding what the output of Kim’s NAND gates (the claimed “value of the control signal”) will be. Moreover, Patent Owner acknowledged that the output of Kim’s NAND gate is determined based on the inputs to the NAND gates (i.e., the sleep signal input and the memory cell signal input). JUDGE CHUNG: But, knowing a little bit about how a NAND gate works, isn’t it the case that the input to the NAND gates, G1 through GN, with the input of the sleep signal and the C1 through CN signal, isn’t it the case that input to the NAND gate determines what the output is? MS. ZHONG: Okay. So any logic gate, the output will depend on the input. That’s for sure. Tr. 44:18–25; but see id. at 45:3–10 (stating that even if the “output is in control of the input, . . . that does not mean the selection is based on that input”). Thus, we find that Kim’s NAND gate (the claimed “control circuit”) operates to determine its output (the claimed “value of the control signal”) based on its input of the sleep signal (the claimed “mode indicator”) and the memory cell value input (the claimed “leakage indicator”). As discussed in Section III.B, the Specification indicates that “select[ing] the value of the control signal based on the mode indicator and on the leakage indicator” recited in claim 13 is synonymous to determining the value based on the recited indicators. See Ex. 1101, 4:4–11. Thus, the evidence of record shows that Kim teaches “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator,” as recited in claim 13.” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We are not persuaded by Petitioner’s argument and evidence. First, although Petitioner proposes “[s]ubstituting Lee’s inputs of leakage current and temperature for generating a power gate control signal” (i.e., Lee’s “control signal (BIAS)”) for “Kim’s inputs of leakage current and other ‘stimuli’ for generating a power gate control signal” (Pet. 64 (citing Ex. 1102 ¶ 115)), neither Petitioner nor Dr. Harris explains adequately how they are proposing to “substitute” Kim’s control signal with Lee’s “control signal (BIAS).” For example, Figure A reproduced above does not show how Petitioner or Dr. Harris proposes to use Lee’s “control signal (BIAS)” in the proposed combination. Petitioner asserts that “[a]lthough Lee’s control signal is analog and Kim’s control signal is digital, it was well known to apply teachings in an analog domain to a digital domain, and conversions between analog and digital domains were easy to implement.” Pet. 66 (emphases added) (citing Ex. 1102 ¶ 121; Ex. 1115). Dr. Harris similarly states that Figures A and B show examples of obvious ways to use in Kim’s system Lee’s teaching of setting conductance of the array based on temperature. A POSA would have found both of these ways obvious. That Lee uses an analog control signal and Kim uses a digital control signal would have presented no obstacle to a POSA. . . . That is, converting analog circuit elements and signals to digital was well known long before the ’026 patent. Ex. 1102 ¶ 121 (emphases added) (citing (Ex. 1115) (“Analog-to-digital converters (ADC’s) are ubiquitous, critical components of software radio and other signal processing systems.”)). But Dr. Harris does not explain adequately how “to use in Kim’s system” the digitized BIAS signal of Lee. See id. The only additional input signal shown in Figure A compared to Figure 4 of Kim is the temperature line that has the value of 0 when the temperature is cold and the value of 1 when the temperature is hot. See Ex. 1102 ¶ 116 (Fig. A). There is no explanation of how the modified teaching of the BIAS signal of Lee (i.e., modified or converted to a digital signal) would have worked in the proposed combination of Figure A.” slip op. at 69

  Patent outcomesUS 8,081,026 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12

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

    “not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Coastal Industries, Inc. v. Shower Enclosures America, Inc.Some claims unpatentable
  PTAB · Nov 19, 2018 · IPR2017-00573 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11–14, and 16–26 are unpatentable; claims 4, 6, 10, and 15 are not shown unpatentable. Substitute claims 33 and 34 are granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention. Pet. 26. Patent Owner sets forth many assertions related to the level of ordinary skill in the art at the time of the invention. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet. Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of those assertions, as a substantive matter, Petitioner asserts that “PO does not dispute the definition of a PHOSITA, offer a contrary definition, explain how a different definition might affect the Board’s analysis, nor contest the Board’s specific interpretation of the prior art references to put the PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15– 16. We agree with that assessment. Moreover, we note that the level of ordinary skill in the art is often reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, as an initial matter, we address Petitioner’s unopposed substantive assertion with respect to the level of ordinary skill in the art at the time of the invention.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “track members” Independent claims 1, 12, 19, and 22 each recite “track members.”” slip op. at 28

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “B. Patentability of Substitute Claims 33 and 34 Petitioner asserts that various claim limitations are disclosed in the” slip op. at 100

  • ExcludeMotion to exclude, deniedDenied

    “701, 702 and 37 C.F.R. § 42.65(a). Specifically, Patent Owner asserts that Mr. Poenariu’s testimony is entirely based on his finding as to the level of ordinary skill in the art, and because Mr. Poenariu did not articulate a sufficient factual basis for his conclusion as to the level of ordinary skill in the art, his entire testimony us unreliable and should be excluded. PO Mot. 5–6. Petitioner responds that Mr. Poenariu discloses more than a sufficient amount of underlying facts on which to base his testimony, and, thus, Patent Owner’s assertions go to weight and not admissibility. Pet. Opp. 6–9. We agree with Petitioner.” slip op. at 105

  Patent outcomesUS 7,174,944 mixed
  Claim constructioncites Phillips · KSR
  Patents in suitUS 7,174,944
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision

  Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26

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

    “at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,053,494
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7

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

    “correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22

  • Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner

    “Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,053,494
• Oracle America Inc. / Oracle Corporation et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jan 8, 2018 · IPR2016-01434 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable as obvious; claim 14 was not shown unpatentable because the cited personal notes were not “content contributed.”

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “While the parties use slightly different language, we are unable to discern any substantive differences between the proffered levels of skill and basic qualifications of a person of ordinary skill in the art. Accordingly, we adopt Dr. Papakonstantinou’s articulation of the level of ordinary skill as our own, if for no other reason then for its conciseness, with the understanding that the differences between the proffered levels of ordinary skill are limited and inconsequential in our analysis.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “above-identified single statement in the specification, which uses permissible language such as “can be” and “does not need to be,” is sufficient to justify Patent Owner’s assertions, which for all practical purposes, is a disavowal of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”) We also credit the testimony of Dr. Almeroth over that of Dr. Papakonstantinou, because, among other reasons, Dr. Almeroth supports his testimony with relevant citations to the specification, while Dr. Papakonstantinou largely repeats that which is set forth in the Patent Owner Response, without further analysis. graphical fields that allow the input of administrative information without programming” are advantageous over “cumbersome programming performed in the past.” Ex. 2002 ¶¶ 44, 47. We treat this argument as subsumed within Patent Owner’s argument that the specification disparages prior art systems that require HTML programming to perform administrative tasks.” slip op. at 16

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

    “224, 232 encompasses a “link to content.” In application, however, “what is a wireless LAN?” 224, 232 is actually two separate components: (1) the underlying technical set of computer instructions that, upon clicking the link associated with “what is a wireless LAN?” 232, transports a user to a web page associated with “what is a wireless LAN?” 232; and (2) the words “what is a wireless LAN?” 224 itself displayed on the computer display, but separate from the technical set of computer instructions set forth in (1). In this example, (1) is “link to content, but not itself ‘content,’” however, (2) is itself “content.” More precisely, when we now consider “what is a wireless LAN?” 224, 232 in relation to the aforementioned construction of “content” as “electronic data embodying information for an individual or individuals,” it becomes clear that “what is a wireless LAN?” 224, 232 is both “links to content” and “content.” Specifically, component (1) of “what is a wireless LAN?” 232 is “links to content,” but not “content” itself, because the underlying technical set of computer instructions is not “electronic data embodying information for an individual or individuals,” but for a computer. By contrast, component (2) of “what is a wireless LAN?” 224 is “content,” as it is clearly “electronic data embodying information for an individual or individuals,” in that the words “what is a wireless LAN?” are intended to convey information to an individual. So, as a practical matter, we discern that every disclosure of a “link to content” that includes “electronic data embodying information for an individual or individuals” (i.e., any information associated with a “link” that is separate from a generic indication of the “link” itself), is “content.” See also Ex. 3001, 6–16 (providing further analysis concerning construction, which we expressly incorporate herein). Accordingly, we determine that a proper construction of “content” is “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. We are persuaded that “administrative interface” is broader than the “administrative page” mentioned in the specification, in that an “administrative interface” may encompass 9 While discussing “graphical user interface” during oral argument, Patent Owner stated that it was not disclaiming claim scope. Tr. 47:20–22 (“We’re not arguing that the claim terms have been disclaimed in some phrase.”). something other than an “administrative page.” We are also persuaded that the specification’s disclosure of a non-limiting embodiment, that of a highlyautomated and browser-based “administrative page,” does not require that a proper construction of “administrative interface” include “graphical user interface.” As admitted by Patent Owner, these pages are “example[s]” only, and, at best, merely “impl[y]” the presence of a “graphical user interface.” See PO Resp. 8–9 (citing Ex. 1002, 16:39–44; Ex. 2002 ¶ 40). We are persuaded that an “implied example” does not belong in a proper construction of a claim term. Indeed, Petitioner asserts that Patent Owner’s factual premise, concerning the above “implied example,” is flawed, as the specification’s “reference to automation and a browser provides no basis for restricting the claimed ‘administrative interface’ to a graphical user interface.” Pet. Reply 5–6 (citing Ex. 1033 ¶ 15) (Dr. Almeroth testifies that “automation of computer systems does not require a graphical user interface.”). More specifically, Dr. Almeroth identifies other automated “interfaces” in the specification, such as “a networked cash register, bar code scanner or electronic product code reader” (Ex. 1002, 13:8–15, 14:51–52) that do not require a “graphical user interface.” Ex. 1033 ¶ 14. We agree with Dr. Almeroth’s analysis of the specification. Dr. Almeroth asserts further, and we agree, again, that “[o]ne of ordinary skill would understand that that cash register could be connected to a server that is accessible only via a command line interface, and that administrators could use command-line tools . . . to group content on that server.” Ex. 1033 ¶ 14. Patent Owner cites In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–1150 (Fed. Cir. 2012) for its finding of an implicit definition of a” slip op. at 13

  Patent outcomesUS 7,516,177 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,516,177

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.