• Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentable
  PTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision

  Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5

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

    “In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. 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 5

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15

  Patent outcomesUS 11,373,058 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · Graham
  Patents in suitUS 11,373,058
• Google LLC v. Wag Acquisition, L.L.C.All claims unpatentable
  PTAB · Mar 20, 2024 · IPR2022-01413 · APJ Hubert C Lorin · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Carmel; the Board did not reach the three alternative obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We observe that Patent Owner cites no intrinsic evidence to support its “clarification” to Petitioner’s description of a person of ordinary skill in the art. See PO Resp. 6; Ex. 2002 ¶ 13. Be that as it may, our analysis would not change if we adopted Patent Owner’s “clarification” to Petitioner’s description of a person of ordinary skill in the art. As Petitioner indicates, Patent Owner’s “clarification” would increase the level of ordinary skill. See PO Resp. 6; Ex. 2002 ¶ 13. “[I]t is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). Accordingly, we adopt Petitioner’s proposed definition for the level of skill in the art possessed by a person of ordinary skill in the art because it comports with the technology and claims in the ’636 patent and the asserted references and appears reasonable. C. Claim Construction” slip op. at 13

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

    “For the foregoing reasons, we are unpersuaded that the intrinsic evidence requires a construction that limits the plain and ordinary meaning of 1[c]–1[c(ii)] as Patent Owner proposes. 4 Referring to Ex. 1001, 8:13–15 (“Once a connection is made to a user’s computer (e.g., user computer 18), server 12 sends the media data to the user computer in the following manner.”) See Ex. 1103, 97:15–17 (referring to 8:15–17 of the ’824 patent). We determine that 1[c]–1[c(ii)] are to be construed broadly, consistent with the plain and ordinary meaning, which covers a request specifying “one” serial identifier of the requested “more” elements, which is in line with Petitioner’s construction. See Pet. Reply 6. They do not require pulling every slice subsequent after the requested starting slice. We will apply that construction in analyzing Petitioner’s challenge under the asserted ground.” slip op. at 37

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

    “2. Conclusion as to Claim 1 For the reasons discussed above, we determine that a preponderance of the evidence supports Petitioner’s position that Carmel renders obvious the subject matter of claim 1 of the ’636 patent. 3. Independent Claims 5 and 9 Claims 5 and 9, drawn to a “server system” and a “computer program product,” respectively, parallel “method” claim 1 discussed above. Petitioner indicates that claim 5 “presents no material differences from claim 1 in terms of the basic functions it recites.” Pet. 49. “Claim 9 is materially the same as claim 1 except it is written as a computer program product instead of a method.” Id. at 53. Patent Owner does not provide any specific arguments as to these claims. See PO Resp. 36–56. For the reasons discussed with respect to claim 1, we determine that a preponderance of the evidence supports Petitioner’s position that Carmel” slip op. at 59

  • ExcludeMotion to exclude, deniedDenied

    “Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.” Consolidated Trial Practice Guide5 79–80. Petitioner moves to exclude the following exhibits: 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. • Ex. 2003 (Declaration of Dr. Henry Houh filed in IPR2022-01228 (Ex. 1002)); • Ex. 2004 (May 23, 2023 Deposition of Dr. Kevin Jeffay filed in IPR2022-01430 and -01433); • Ex. 2008 (In re Certain Fitness Devices, Streaming Components Thereof, and System Containing Same, Inv. No. 337-TA-1265, Initial Determination (ITC Sept. 9, 2022) (CALJ Clark S. Cheney); and, • Ex. 2009 (In re Certain Fitness Devices, Streaming Components Thereof, and System Containing Same, Inv. No. 337-TA-1265, Evidentiary Hearing - Volume III (ITC March 14, 2022). Mot. Excl. 1–2. Petitioner states, inter alia, that “Exhibits 2003, 2004, and 2009 are a declaration, deposition, and hearing transcript containing testimony of experts not involved in this IPR and from cases not involving [Petitioner].” Id. at 2. Petitioner contends that Mr. Hoarty should not be allowed to rely on any of these exhibits as the bases of his expert testimony. Id. at 2. “Exhibit 2008 is an Initial Determination from the ITC, which should be excluded under FRE 401 as irrelevant.” Id. at 3. We have not relied on any of these exhibits in reaching our decision. Accordingly, we need not determine whether to exclude the challenged material. Therefore, the Motion to Exclude is dismissed as moot. slip op. at 63

  Patent outcomesUS 9,762,636 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,762,636
• Google LLC v. Wag Acquisition, L.L.C.All claims unpatentable
  PTAB · Mar 20, 2024 · IPR2022-01412 · APJ Hubert C Lorin · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Carmel alone; the Board did not reach the alternative Carmel–Ravi and Carmel–Narayan grounds.

  RulingsFinal written decision

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

    “However, a plain reading of 1[e] yields another possibility; that is, a request specifying “one” serial identifier of the requested “more” elements.” slip op. at 33

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

    “We have reviewed the record and find Petitioner has the stronger position. The claim does not recite “push” or “pull,” even though the parties agree that 1[e] reflects a “pull” technique (PO Resp. 1; Pet. Reply 1). What the claim recites is “receiving requests at the server system” (i[e]) and “responsive to the requests, sending, by the server system, the one or more media data elements . . . to the requesting user systems corresponding to the requests via one or more data connections over the Internet, for one or more of the media data elements” (1[f]). Petitioner must show that Carmel teaches this claimed technique, not necessarily a “pull” technique as Patent Owner characterizes it. In that regard, Petitioner shows, inter alia, that Carmel teaches that “[r]esponsive to a user input, client 30 selects an appropriate starting slice and begins to download and decode (decompress) files 42, 44, 46, etc.” Ex. 1003, 10:44–47; Pet. 24 (also quoting Ex. 1003, 11:5–7 (“Responsive to the [user] selection, server 36 begins to transmit data slices [to the client 30]”)). This disclosure satisfies the technique that is claimed; that is, “sending, by the server system, the one or more media data elements” “responsive to receiving requests at the server system.”” slip op. at 40

  • ExcludeMotion to exclude, deniedDenied

    “Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.” Consolidated Trial Practice Guide5 79–80. slip op. at 61

  Patent outcomesUS 9,742,824 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,742,824
• Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentable
  PTAB · Feb 27, 2024 · IPR2023-00813 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds and dismissed the motion to exclude as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “We decline to read in a requirement that the “program” of the preambles must be an “entire program.” In particular, we do not agree with Patent Owner that the limitation directed to “additional requests . . . during playing” or the mention in the specification of “additional data requests for the duration of playing” necessarily requires that the “playing” refers to an entire program. For example, the recited requests could relate to playing a portion of a program, a premise with which both declarants agree. Ex. 1103, 22:22–24:9; Ex. 1111 ¶¶ 13–16. Thus, we reject Patent Owner’s “entire program” interpretation.” slip op. at 13

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

    “We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40

  Patent outcomesUS 9,729,594 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,729,594
• Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentable
  PTAB · Feb 27, 2024 · IPR2022-01411 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10

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

    “We decline to construe limitations 1b(i)–1b(ii) other than to agree with both parties (PO Resp. 11, 28–29; Pet. Reply 5) that the recited “data rate” refers to the capability of the data connection. See, e.g., Ex. 1001, 4:40–43 (“The bandwidth requirement of audio or video media refers to the data rate in bits per second that must be transmitted and received in order to listen to or view the material uninterrupted.”); Ex. 1002 ¶ 126; Ex. 1103, 26:19–29:7; Ex. 1111 ¶ 24. This is sufficient to dispose of the instant case. See Realtime Data, 912 F.3d at 1375.” slip op. at 18

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

    “We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40

  Patent outcomesUS 9,729,594 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,729,594
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Wag Acquisition, L.L.C.All claims unpatentable
  PTAB · Feb 15, 2024 · IPR2022-01430 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over Carmel, Feig, and Willebeek under § 103(a).

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 18

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

    “C. Claim Construction We construe claim terms “using the same claim construction” slip op. at 19

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

    “Accordingly, an ordinarily skilled artisan would have had a reasonable” slip op. at 98

  Patent outcomesUS 9,742,824 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,742,824
• Fanduel, Inc. v. Winview Inc.All claims unpatentable
  PTAB · Jan 29, 2024 · IPR2022-01307 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 2, 9, 14–16, 20, 21, 23, 24, 26, 27, 31–33, 40, 41, 43, and 49 are unpatentable as anticipated by Vänskä or obvious over Vänskä, alone or with Barros.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. Based on the fully developed trial record, we are able to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Rubin, FanDuel argues that “a person of ordinary skill in the art . . . as of June 20, 2005 [(the filing date of the ’356 application)], would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development.” Pet. 13 (citing Ex. 1003 ¶¶ 20, 21). In its Patent Owner Response, WinView does not address the level of ordinary skill in the art. See PO Resp. Accordingly, we maintain our preliminary determination regarding the level of ordinary skill in the art. Dec. on Inst. 9–10. That is, we adopt FanDuel’s proposed assessment of the level of ordinary skill in the art because Dr. Rubin’s supporting testimony is consistent with the ’543 patent and the asserted prior art. We apply this assessment of the level of ordinary skill in the art in our anticipation and obviousness evaluations below.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “particular issue, the evidence demonstrates that it was well-known to a person of ordinary skill in the art that GPRS provides Internet connectivity. We address each piece of relevant evidence in turn. First, as evidence of the general background knowledge in the art, FanDuel introduced a document with its Reply that explicitly defines GPRS and, in particular, discusses the difference between using GSM and GPRS protocols. Ex. 1011. According to this document, “GPRS revolutionized GSM by providing real data capability and enabling emails and simple web browsing – albeit at speeds much slower than the current standard.” Id. at 1. This document further states that “GPRS provided . . . uninterrupted connectivity to the internet for mobile phones.” Id. FanDuel argues—and we agree—that this document is evidence that a person of ordinary skill in the art would have understood that GPRS provides Internet connectivity to mobile phones. See Pet. Reply 13.” slip op. at 27

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

    “Given that controlling case law mandates that we must consider the explicit and inherent disclosures in Vänskä, “together with the knowledge of one of ordinary skill in the pertinent art” (In re Paulsen, 30 F.3d at 1480), we find that evidence of record supports a finding that Vänskä’s mobile terminal 100 connects to the Internet via a cellular data network when downloading the disposable mini-applications over mobile WAN 130 using GPRS. Stated differently, Vänskä’s mobile terminal 100 connects to the Internet via the mobile WAN 130 using GPRS and, therefore, describes the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” We do not agree with WinView’s argument that FanDuel fails to explain how Vänskä discloses an actual or direct connection to the web or Internet purportedly required by the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” See PO Resp. 15–19; PO Sur-reply 3–6. Apart from the “mobile . . . computing device” being “web-connected,” the “loading,” “selecting,” and “downloading” steps of independent claim 1 do not require explicitly an actual or direct transmission of data over the web. See Ex. 1001, 12:19–42. Similarly, apart from the “mobile . . . computing device” being “Internet-connected,” the “transmitting” and “receiving” steps of independent claim 49 do not require explicitly an actual or direct transmission of data over the Internet. Id. at 15:3–26. The specification of the ’543 patent supports our view in this regard because it discloses that “the [computing] device connects via the cellular network and/or Internet to the service provider’s server.” Id. at 8:5–9, Fig. 1 (step 106); see also id. at 10:64–65 (stating that, when downloading the “Activity Client,” “the cell phone connects through the cellular network and Internet to a game server”). Therefore, contrary to WinView’s arguments, the specification of the ’543 patent contemplates that the mobile computing device connects to the Internet via a cellular network—it does not require an actual or direct connection to the Internet. The method steps of independent claims 1 and 49 reflect this broad scope because, as we explain above, they do not require an actual or direct transmission of data over the web or Internet. Given the broad scope of the specification and the plain language of independent claims 1 and 49, we agree with FanDuel that Vänskä properly accounts for the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device” because it discloses that mobile terminal 100 connects to the Internet via the mobile WAN 130 using GPRS. We also do not agree with WinView’s argument that, because Vänskä does not disclose any of the browsers, servers, or protocols necessary for web or Internet connectivity, it cannot disclose the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” See PO Resp. 20–22, PO Sur-reply 7. WinView fails to recognize that, apart from a single instance in the specification that is labeled as an “example,” the ’543 patent also fails to disclose any browsers, servers, or protocols necessary for web or Internet connectivity. See Ex. 1001, 6:48 (“An example protocol implemented is TCP.”). Put simply, WinView seeks a level of detailed description in Vänskä that is not otherwise provided in the ’543 patent. We decline to impose such a heightened standard on Vänskä, especially when neither the specification nor the claims of the ’543 patent sufficiently describe the purported invention as requiring the use of browsers, servers, or protocols necessary for an actual or direct web or Internet connectivity.” slip op. at 29

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

    “In its Petition, FanDuel contends that, “[f]or purposes of this proceeding only, [FanDuel] does not believe any claim construction is necessary to resolve [its unpatentability] analysis.” Pet. 12 (citing Ex. 1003 ¶ 41). In its Patent Owner Response, WinView agrees with FanDuel by stating that “no [claim] terms require construction,” and that each claim term should be giving its ordinary and customary meaning. PO Resp. 11. Based on the fully developed trial record, there is no controversy between the parties that requires us to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  Patent outcomesUS 10,721,543 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,721,543
• Draftkings Inc. v. Winview Inc.All claims unpatentable
  PTAB · Jan 29, 2024 · IPR2022-01351 · APJ Hubert C Lorin · IPR · Final written decision

  Claims 1, 3, 4, and 6 are unpatentable as obvious over Wallace and Fahy; the Board did not reach the Wallace-only ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had the equivalent of a Bachelor’s Degree in computer science, computer engineering, or a related subject and two or more years of experience in the field of multimedia networking. Less work experience may be compensated for by a higher level of education, such as a Master’s Degree, and vice versa.” Pet. 3 (citing Ex. 1002 ¶ 26). Patent Owner acknowledges Petitioner’s contention but “takes no position with respect to Petitioner’s proposed level of skill.” PO Resp. 15. Petitioner’s proposed definition of a person of ordinary skill in the art is consistent with the ’243 patent, and we adopt that definition for our analysis in this decision. 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).” slip op. at 9

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

    “We begin our analysis by first looking to the claim. “Claim construction begins, as it must, with the words of the claims.” Vehicular Techs. Corp. v. Titan Wheel Int'l, 141 F.3d 1084, 1088 (Fed. Cir. 1998). The preamble of claim 1 recites “equalizing effects of latency differences in a game of skill or chance or other entertainment.” Ex. 1001, 15:2–3. The phrase “latency differences” is not preceded by a qualifier such as “all.” Nor is a source of “latency differences” specified. Nothing in the preamble or in the body of the claim would suggest to one of ordinary skill in the art that the claimed method is limited to addressing the group of all potential sources of latency.” slip op. at 14

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

    “3. Conclusion as to claim 1 Accordingly, for all the reasons discussed with respect to claim 1, and given that the parties do not present arguments and evidence regarding objective indicia of nonobviousness, we find a preponderance of the evidence supports Petitioner’s position that the combination of Wallace and Fahy teaches the claimed subject matter and Petitioner has articulated a sufficient rationale for combining the teachings of the references with a reasonable expectation of success in arriving at the claimed subject matter. 3. Claims 3, 4 and 6 Petitioner contends that dependent claims 3, 4, and 6 would have been obvious over Wallace and Fahy, providing reasoning why the subject matter of each claim would have been obvious to a person of ordinary skill in the art. Pet. 62–69 (citing, inter alia, Ex. 1002 ¶¶ 117–132). We have reviewed that analysis, supported by the testimony of Dr. Jeffay, and find it persuasive.” slip op. at 38

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

    “2. Motivation to Combine Wallace and Fahy In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent and would have had a reasonable expectation of success in doing so. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’).” Id. at 418.” slip op. at 35

  Patent outcomesUS 9,878,243 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,878,243
• Fanduel, Inc. v. Winview Inc.All claims unpatentable
  PTAB · Jan 29, 2024 · IPR2022-01306 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1, 4, 7, 28–31, 49, 57, 68, and 81 are unpatentable as obvious over Malaure and McKeown.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the invention of the ’730 patent “would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development,” and “would understand the references referred to in this report and have the capability to draw inferences from them.” Pet. 13 (citing Ex. 1004 ¶¶ 20–21). Patent Owner has not disputed the level of ordinary skill in the art. PO Resp. 17 (“Because the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of skill.”). For purposes of this Decision, we adopt Petitioner’s proposal as consistent with the ’730 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

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

    “In its Petition, Petitioner contends that, “[f]or purposes of this proceeding only, Petitioner does not believe any claim construction is necessary to resolve [its unpatentability] analysis.” Pet. 13 (citing Ex. 1004 ¶ 41). In its Patent Owner Response, Patent Owner agrees with Petitioner by stating that “no claim terms require construction beyond their plain and ordinary meaning. PO Resp. 12. Based on the fully developed trial record, there is no controversy between the parties that requires us to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “We observe that Malaure’s central system 1 (e.g., “game server”) includes applications for predictive games 10–15 and on-demand game engines. Ex. 1006 ¶¶ 17, 20; Ex. 1004 ¶ 88. Malaure further teaches that programmers may provide a single set of application components in any desired format and the broadcast system interfaces (BSIs) convert the application components before or during broadcast for delivery over a broadcast network. Ex. 1006 ¶¶ 6, 14. As an example of operation, Malaure teaches that when the operator clicks on button 51, the set of application components (ie. executable program files, bitmaps, sound samples, real-time instructions, video clips etc.) are passed to the CCS 5 and then fed as parallel data streams to the BSIs 26 which convert the application components as appropriate prior to deliver over a respective broadcast network 3. Id. ¶ 26. This disclosure is consistent with and supports Petitioner’s position that Malaure’s applications (e.g., interactive predictive games 10–15) are configured for communicating with the set-top-boxes or personal computers over a broadcast network such as the internet (e.g., WebTV). We further credit Dr. Rubin’s testimony of the same in paragraph 94 of his declaration because Dr. Rubin’s testimony is supported by similar disclosure provided in paragraph 25 of Malaure. Ex. 1004 ¶ 94 (citing Ex. 1006 ¶ 25 (“the application will then be transmitted to the CCS 5 and broadcast to all the user interfaces 4 over the broadcast network”)). Additionally, Malaure teaches that set-top-boxes or personal computers are grouped by their respective broadcast networks. See Ex. 1006, Fig. 1. Malaure teaches that broadcast networks 20–25 are separate, each with its user interfaces 4 (e.g., set-top-boxes and personal computers), and each having: a respective different broadcast protocol. In order to deal with this problem, each target platform has an associated Broadcast System Interface (BSI) 26 which converts the set of application components associated with each application into a plurality of streams of broadcast data, each stream of broadcast data conforming with the broadcast protocol of its respective target platform. Thus when the operator clicks on button 51, the set of application components (ie. executable program files, bitmaps, sound samples, real-time data instructions, video clips etc.) are passed to the CCS 5 and then fed as parallel data streams to the BSIs 26 which convert the application components as appropriate prior to delivery over a respective broadcast network 3.” slip op. at 24

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

    “Here, Petitioner has done much more than assert Malaure and McKeown are in the same field or from the same time frame. Petitioner explains that Malaure’s system “provides a convenient method of delivering an interactive application to a number of target platforms each having different requirements. For instance, the target platforms may comprise broadcast networks having different data protocols, formats or speeds.” Ex. 1006, ¶[0007]. Thus, Malaure discloses an architecture that “allows the programmers to merely provide a single set of application components in any desired format, without needing to know anything about the ultimate target platforms” over which the applications would communicate to user devices. Id., ¶ [0006]; Ex. 1004, ¶79. A POSITA would recognize the benefits and the flexibilities afforded by Malaure’s system in developing interactive applications. Id., ¶80. Indeed, Malaure itself identifies examples of a number of interactive gaming applications (Ex. 1006, ¶¶[0002], [0017]) and directs a POSITA to McKeown for additional specifics related to one of the interactive games, football. Id., ¶[0020]. Thus, a POSITA would readily incorporate into Malaure the details of the game play associated with the interactive applications described in McKeown. Ex. 1004, ¶80. Pet. 25. Additionally, with respect to limitation [1-a-ii], Petitioner asserts that Malaure further recognized that “[d]ifferent broadcast networks delivering the same programme are not necessarily temporally synchronized” because of variances in the clocks of different set-top-boxes or because different networks may have different clocks. Ex. 1006, ¶[0034]. Thus, “[i]n order to manage these anomalies between networks,” Malaure disclosed that “it is necessary for the BSI handling that network to compensate by introducing the required delay, either by delaying the broadcast of messages, or more appropriately by altering the timing information within messages.” Id., ¶[0035]; Ex. 1004, ¶117. Thus, the combined system of Malaure in view of McKeown discloses sending the lock out signals at “an appropriate time based on an amount of delay” that accounts for system latencies and delays related to different networks. Ex. 1004, ¶118. And because the “lock out” signals of McKeown prevent the users from entering and responding with additional predictions related to game of skill, Malaure and McKeown’s combined system discloses sending a lockout signal at an appropriate time based on an amount of delay to prevent users from submitting a response to a game of skill or chance or other entertainment. Id., ¶¶108-18.” slip op. at 39

  Patent outcomesUS 9,993,730 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,993,730
• Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentable
  PTAB · Nov 3, 2023 · IPR2023-00287 · APJ Jeremy M Plenzler · IPR · Final written decision

  The Board held claims 1–4, 7–28, and 31–44 unpatentable as obvious over Woycik; it did not reach the Tengler challenge.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert does not know how P[atent ]O[wner]’s proposed definition would impact any opinions in his supporting declaration.’” Id. (citing Ex. 1029, 10:20–11:11); see also Ex. 1034, 10–14. Patent Owner provides no rebuttal to this position in its Sur-Reply, other than alleging that “[a]lthough experienced in ‘point-” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. slip op. at 13

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “Objective indicia of non-obviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia of non-obviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of non-obviousness to be accorded substantial weight, their proponent must establish a nexus between the evidence and the merits of the claimed” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Long-felt need can be shown by evidence that indicates that the prior art had a recognized need for a solution to the problem and that others had tried and failed to find a solution to that problem. Al-Site Corp. v. VSI Int’1, Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983). Notably, the case law characterizes the need in terms of a long-felt but unresolved need. Al-Site, 174 F.3d at 1325 (discussing “long felt but unresolved needs”). Accordingly, Patent Owner must show that the need was both known and not resolved. Patent Owner fails to provide evidence to support its allegations regarding long-felt need. Instead, Patent Owner cites to conclusory paragraphs from Mr. Cheng’s declaration that simply parrot the statements in the Petition. And, based on Patent Owner’s Response, it is not entirely clear what the prior art allegedly had recognized as a problem needing a solution, let alone that others had tried and failed to find a solution to that problem. There is simply no evidence supporting Patent Owner’s position. Moreover, Patent Owner must also show that if the need was known, it was also unresolved. As best we can decipher what the alleged need was, based on our analysis of the challenges below, that need was already met. Finally, we note that it is unclear how the claimed arrangement provides a solution to the problem that others had tried and failed to solve. Indeed, as noted above, the only reference to any claim is Patent Owner’s allegation that “the web-based POS builder system is built completely on the as recited in claims. EX1001, Claims 1, 27, 42, 43, and 44.” PO Resp. 77. For at least the reasons set for above, Patent Owner’s evidence of non- obviousness is entitled to little, if any, weight.” slip op. at 16

  Patent outcomesUS 11,226,793 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,226,793

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.