• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01601 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both listed combinations; the contingent motion to amend is granted, replacing them with substitute claims 3 and 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated we would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Institution Dec. 19. We reasoned that our review of the ’199 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’199 patent on more general principles of cellular communications and signaling. Id. at 19– 20. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and therefore, we concluded that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “device associated with a driver at all.” PO Resp. 39 (citing Valenti III Decl. ¶ 94). Patent Owner continues, “Petitioner’s expert acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Williams Dep. 128:14–129:25, 132:1–8). This is a misrepresentation of Mr. Williams’s testimony. He was not asked whether Lalancette “discloses” a mobile communication device; he was asked to agree whether Lalancette “identi[fies] the mobile computer as a mobile communication device.” Williams Dep 129:10–13. He explained his response later in his testimony: “In the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing Smartphones.” Id. at 132:5–8. We do not agree with Patent Owner’s argument that this limitation is not met by Lalancette and we do not find the testimony of its expert, Dr. Valenti, credible or helpful. See Valenti III Decl. ¶¶ 94 (“Lalancette does not disclose a mobile device associated with a driver at all.”). As Petitioner points out, the argument supported by Dr. Valenti is an “attempt to improperly narrow the definition of a mobile device to only mean a smartphone of the driver.” Pet. Reply 24. We find that this argument and the supporting expert testimony are contradicted by the ’199 patent specification. See id, at 24–25 (quoting Ex. 1001, 3:10–11, defining mobile communication device broadly). We, therefore, find that the mobile computer disclosed in Lalancette meets the requirement of this claim limitation for a “mobile communication device associated with the driver.” We find for the reasons given that Petitioner demonstrates that Lalancette and Kemler meet limitation 1E.” slip op. at 45

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

    “We declined to adopt this implicit construction (and the related construction “actively generate”). Institution Dec. 23. The claims themselves do not require the controller to “actively formulate” a new indicator for the same rider requesting a subsequent trip for that second trip, or that “a new signal be actively formulated each time a ride is dispatched,” as Patent Owner’s analysis asserts. See infra. Nor is it clear how this construction is supported by the ’199 patent specification. The ’199 patent describes the controller as “communicatively coupled to the transceiver.” Ex. 1001, 2:10–11. Further, “[t]he controller is adapted to generate a first signal to be transmitted by the transceiver to a mobile communication device.” Id. at 2:12–14. Elsewhere in the patent, “controller” is defined as “any type of computing device, computational circuit, or any type of processor or processing circuit capable of executing a series of instructions that are stored in a memory associated with a with the controller.” Id. at 3:6–10. The operation of the controller is also described as follows: “The controller 110 may generate a first signal (also referred to herein as a ‘notification signal’) that is transmitted via the transceiver 120 to the mobile communication device 150 associated with the driver D.” Id. at 5:14–17. Still further, “[t]he controller 110 generates four different notification signals, NOTIFICATION-A, NOTIFICATION-B, NOTIFICATION-C, and NOTIFICATION-D, to be transmitted by the transceiver 120 to a first DRIVER'S MOBILE DEVICE 150A, a second DRIVER'S MOBILE DEVICE 150B, a third DRIVER'S MOBILE DEVICE 150C, and a fourth DRIVER'S MOBILE DEVICE 150D, respectively.” Id. at 6:39–46. And further, “[i]n other embodiments, wherein the vehicle identification system 11 is utilized, an indicatory signal to the rider's mobile communication device may be generated by the controller 110.” Id. at 7:4–7. In none of these descriptions of the controller’s operation is there” slip op. at 15

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–25. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-demand service system can also use location information from the driver’s device and/or transport information . . . to automatically determine the driver’s state or state of the transport service.” Id. at 22 (citing Ex. 1006 ¶¶ 29, 35). Petitioner explains that in Kalanick, “[w]hen a service application on the driver’s device determines that the transport service is to change state, such as to ‘arriving now,’ based on a determination that the driver is within a predetermined distance, the service application can trigger the indication device to output the user’s specific color.” Id. at 23 (citing Ex. 1006 ¶ 37). Thus, Kalanick’s system can “control the indication device to output the user’s color or other unique distinctive indicator based on the transport state.” Id. (citing Ex. 1006, ¶ 38). Petitioner explains that Kemler describes a central dispatching system in which one or more server computing devices of the centralized dispatching system may select a vehicle to be dispatched based upon the location of the client computing device. Id, (citing Ex. 1008, 10:3–33). Thus, Petitioner explains that Kemler, like Kalanick, “discloses ride-matching based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. Petitioner demonstrates that “a [person of ordinary skill] would find it obvious to modify Kalanick’s vehicle identification system in view of Kemler, at least because both systems disclose substantially similar ride-matching techniques based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. at 23–24. Petitioner also explains that a person of ordinary skill would “anticipate success of such a modification.” Id. at 24. Petitioner explains that “the controller in Kalanick is already in communication with the car and could easily send a signal to activate the display with the unique code.” Id. (citing Williams I Decl. ¶ 121). Petitioner recognizes that although both Kalanick and Kemler “focus” slip op. at 28

  Patent outcomesUS 10,559,199 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,559,199
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30

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

    “The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15

  Patent outcomesUS 9,892,637 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,892,637
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01600 · APJ John D Hamann · IPR · Final written decision

  Claim 1 is unpatentable under § 103 over Lalancette; the Board did not reach the Kalanick/Kemler or Lalancette/Kalanick grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “definition, with a qualification. Dec. on Inst. 17. In particular, we determined that a person of ordinary skill in the art also would have had at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. We also noted that from our review of the ’525 patent and the cited prior art, requiring specific experience with data privacy policies and protection models was not warranted, given the focus of the ’525 patent on more general principles of cellular communications and signal transmission. Id. On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’525 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See” slip op. at 8

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

    “We determine that no express construction is needed for this term because Petitioner shows that Lalancette teaches this limitation under either parties’ proposed construction, and Patent Owner does not dispute that Lalancette teaches the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”); see also infra Section V.B (finding that Petitioner demonstrates that Lalancette teaches “a display associated with a front windshield of a vehicle”).” slip op. at 11

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

    “Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal representing an indicator, rather than reciting that the controller generates the indicator. Ex. 1001, 8:13–18. And the Specification of the ’525 patent is replete with examples of the controller generating signals that represent an indicator for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 29. The language of claim 1 sets forth no such requirements. Ex. 1001, 8:8–23. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. Id.” slip op. at 12

  Patent outcomesUS 10,395,525 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,395,525
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38

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

    “1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12

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

    “Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13

  Patent outcomesUS 10,169,987 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,169,987
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01602 · APJ John D Hamann · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Lalancette; the Board did not reach the anticipation or Kalanick–Kemler obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’417 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt. The parties’ statements made during the oral hearing are consistent with this point. See Tr. 75:17–18 (Patent Owner stating that “[i]t’s not clear to us that the level of ordinary skill arguments actually matter”), 106:12–17 (Petitioner stating that its arguments do not depend on which definition we adopt). In sum, we maintain Petitioner’s definition, as qualified, for the level of one of ordinary skill in the art, and employ it in our analysis of the parties’ unpatentability arguments.” slip op. at 9

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

    “In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 12

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

    “Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). slip op. at 11

  Patent outcomesUS 10,748,417 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,748,417
• Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Mar 13, 2023 · IPR2021-01158 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1, 7–10, 15, and 19–20 as obvious over Church and Amsler-003; claims 2–6, 11–14, and 16–18 as obvious over Church, Amsler-003, and Fellin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we noted that Patent Owner did not dispute Petitioner’s assessment of the level of ordinary skill in the art, and we adopted Petitioner’s assessment for purposes of institution based on the information presented in the Petition and Dr. Lee’s testimony. Inst. Dec. 16 (citing Pet. 13; Ex. 1004 ¶ 30). Patent Owner does not dispute the level of See PO Resp. On the complete record, we maintain the definition of the level of ordinary skill in the art adopted at institution, which is consistent with the ’899 patent and the prior art of record.” slip op. at 9

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

    “In our Institution Decision, we noted that the parties’ proposed constructions differ slightly, but we determined it was unnecessary for us to construe “reportability likelihood” to decide whether to institute this inter partes review. Inst. Dec. 17. In papers filed during trial, the parties agree that arguments regarding whether the claims are unpatentable for obviousness do not turn on whether the Board adopts Petitioner’s or Patent Owner’s proposed construction. See Pet. Reply 3 n.2; PO Sur-reply 3. We agree with the parties’ assessment, and therefore we determine it is before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 11

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

    “We agree with Petitioner’s construction of “event log” as “aggregation of data associated with a detected threat event,” which the challenge this construction of “event log,” arguing instead that steps involving event logs recited in claim 1 must be performed in a certain manner. PO Resp. 16–17 (citing Ex. 2011 ¶¶ 66–68). We see no basis for importing other language of the claims into the construction of the term “event log” itself. To the extent those claim steps require construction, we consider the meaning of the claim language in the context of our obviousness analysis below.” slip op. at 12

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

    “f. Conclusion for Claim 1 For the reasons explained above, we are persuaded that the combination of Church and Amsler-003 teaches or suggests all the limitations of claim 1 and that a person of ordinary skill in the art would have combined Church and Amsler-003 in the manner asserted in the Petition. The parties do not present arguments or evidence regarding objective indicia of non-obviousness as set forth in the fourth Graham factor. See Pet. 70; PO Resp. Having considered the evidence of obviousness under the first three Graham factors, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 of the ’899 patent is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Church and Amsler-003.” slip op. at 31

  Patent outcomesUS 10,503,899 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,503,899
• Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Feb 9, 2023 · IPR2021-01148 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious under § 103 over Sourcefire and over Sourcefire combined with Judge.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in computer science, computer engineering or an equivalent, as well as four years of industry experience.” Pet. 18; see Ex. 1003 ¶ 31. In addition, Petitioner indicates a person of ordinary skill “would have had a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, user interfaces, and the use of customized rules to address cyber-attacks.” Id. Petitioner further asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. at 18–19. Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art. See generally PO Resp. We continue to find 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, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 19.” slip op. at 7

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

    “Based on the present record, we continue to not be persuaded that the Phillips standard mandates a construction different from the construction of “network-threat indicator” previously applied under the broadest reasonable interpretation standard. We agree with Petitioner that the broader construction of the term “network-threat indicator” was adopted by Patent Owner in district court litigation, without the requirement of the resource being previously determined to be associated with a network threat. Even without accounting for estoppel, we are unpersuaded the broader construction reads upon other resources, as Patent Owner alleges. The adopted construction, “indicator that represents the identity of a resource associated with a network threat,” already ties the resource, through association, to a network threat. We remain unpersuaded, on this record, that that requirement of previous determination should be imported into the meaning of the term “network-threat indicator” itself. Accordingly, based on the evidence and arguments presented, we continue to construe “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.”” slip op. at 12

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

    “We do not find Patent Owner’s arguments to be persuasive. We note, first, that Petitioner asserts that it would have required nothing more than the exercise of routine programming capabilities (Pet. 85–86), such that a reasonable expectation of success in making the combination is tacitly affirmed. Given the functionalities disclosed in both Sourcefire and Judge, we are persuaded that one of ordinary skill in the art would have had reason to combine their functions. Additionally, we are not persuaded that the use of feedback methods in both Sourcefire and Judge would be irreconcilable. Lastly, we are not persuaded that a prolixity of options provided by Judge would have dissuaded one of ordinary skill in the art from making the combination; Petitioner is arguing that having the rule provider device generate packet-filtering rules automatically is the provision of an automatic process to replace manual activity (Pet. 40–41 (citing In re Venner 262 F.2d 91, 95 (CCPA 1958))), through processes disclosed in Judge that would be readily apparent. 4. Conclusion For the reasons set forth in the Petition, we are persuaded that Petitioner has shown by a preponderance of the evidence that the combination of Sourcefire and Judge teaches the limitations of claim 1–20 and that a person of ordinary skill in the art would have combined the references as asserted. Accordingly, we determine that claims 1–20 would have been obvious over Sourcefire and Judge.” slip op. at 41

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

    “considerations) may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, industry praise, and expert skepticism. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012). Objective indicia are only relevant to the obviousness inquiry if there is a nexus between the claimed invention and the objective indicia of nonobviousness. In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017). A rebuttable presumption of nexus applies only “when [a patent owner] shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with [the claims].’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand, a patent owner is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. (reaffirming the importance of the “coextensiveness” requirement). Applying Fox Factory, the Board uses a two-step analysis in evaluating nexus between the claimed invention and the evidence of secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018- 01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether the patent owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75). We determine that Patent Owner has failed to establish a nexus between the claimed invention and the submitted evidence. First, we agree with Petitioner that the claimed features constitute only a small part of the commercial product and the two are far from being coextensive, and therefore Patent Owner is not entitled to a presumption of nexus. We also agree with Petitioner that Patent Owner has not established a factual nexus by showing that the industry praise is the “direct result of the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1374. We are persuaded by Petitioner that the praise relied on by Patent Owner is directed to features not recited in the challenged claims, such as the ability to “quickly take action or correlate and inform administrators of breaches,” “generat[ing] a PCAP [packet capture] of the incident,” and “validating” which vendor rules are triggered. See Pet. Reply 26; PO Resp. 66 (citing Ex. 2027, 1–4).” slip op. at 36

  Patent outcomesUS 10,757,126 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,757,126
• Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Feb 9, 2023 · IPR2021-01147 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–21 are unpatentable as obvious over Sourcefire.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we noted that Patent Owner did not dispute Petitioner’s assessment of the level of ordinary skill in the art, and we adopted Petitioner’s assessment for purposes of institution based on the information presented in the Petition and Dr. Lee’s testimony. Inst. Dec. 17 (citing Ex. 1003 ¶¶ 30–32). Patent Owner does not dispute the level of ordinary skill in the art proposed by Petitioner and adopted at institution. See PO Resp. On the complete record, we maintain the definition of the level of ordinary skill in the art adopted at institution, which is consistent with the ’028 patent and the prior art of record.” slip op. at 11

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

    “1312. The independent claims of the ’028 patent recite that the “network-threat indicators are associated with network-threat-intelligence reports.” Ex. 1001, 17:52–54, 19:43–45, 21:36–38 (emphasis added). Contrary to Patent Owner’s arguments, nothing in the claim language indicates that the network-threat indicators “must come from” or be “included in” a networkthreat-intelligence report. See PO Resp. 19 n.1, 20; Pet. Reply 5–6 (citing PO Resp. 19 n.1, 22, 28–41). Thus, we are not persuaded by Patent Owner’s claim construction arguments to the extent they are premised on an understanding that network-threat indicators must “come from” or be “included in” a network-threat-intelligence report. Moreover, we do not agree with Patent Owner that the claims are written in the past tense or use backward-looking language in a way that indicates that a network-threat indicator must represent the identity of a resource previously determined to be associated with a network threat in a network-threat-intelligence report. The relevant claim language involving network-threat indicators and network-threat-intelligence reports recites that “network-threat indicators are associated with network-threat-intelligence reports.” This language describes network-threat indicators as currently being associated with network-threat-intelligence reports, not as being previously determined to be associated with network threats or network-” slip op. at 15

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

    “based on . . . network-threat indicators . . . specified by the . . . packet filtering rule.” E.g., Ex. 1001, 17:59–18:7. Patent Owner argues that the “responsive to” language requires the applying and communicating steps to “be performed in reaction to a packet satisfying a packet-filtering rule based on network-threat indicators included in ‘network-threat-intelligence reports’ supplied by an ‘independent network-threat-intelligence provider.’” PO Resp. 26 (emphasis added) (citing Ex. 2019 ¶¶ 66–69). In Patent Owner’s view, this language “establishes a clear cause-and-effect relationship between (i) a packet satisfying a packet-filtering rule . . . and (ii) the subsequent application of an operator that allows the packet and communication of data indicating the packet was allowed.” Id. (citing Ex. 2019 ¶ 67). As discussed in the previous section, the claims do not require network-threat indicators to be “included in” network-threat-intelligence reports, so we disagree with that portion of Patent Owner’s proposed construction. Petitioner does not otherwise challenge Patent Owner’s construction of “responsive to,” primarily disputing Patent Owner’s characterization of the prior art with respect to this limitation. See Pet. Reply 16–18. To the extent interpretation of this term is necessary, we consider the meaning of the claim language in the context of determining whether the prior art teaches or suggests the limitations at issue.” slip op. at 18

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Issue preclusion [i.e., collateral estoppel] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (holding that issue preclusion applies in the administrative context). We agree with Patent Owner regarding the applicability of collateral estoppel. As Patent Owner points out, the claims of the ’722 patent determined to be unpatentable in IPR2018-01760 were subject to a different claim construction standard than the claims in this proceeding. Moreover, as discussed herein, the claims of the ’028 patent and those of the ’722 patent have some similarities, but the claim recitations are not identical. Therefore, we evaluate the arguments and evidence presented in this proceeding to determine whether Petitioner has demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable, rather than assuming that Patent Owner is generally estopped from asserting that Sourcefire does not teach or suggest the limitations of the challenged claims. Nevertheless, slip op. at 21

  Patent outcomesUS 10,542,028 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,542,028
• Google LLC v. Jawbone Innovations, LLCInstituted
  PTAB · Jan 3, 2023 · IPR2022-01124 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–20 under § 103 over Kanamori, McCowan, and Elko, finding a reasonable likelihood that the challenged claims are unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Given that the median time to go to trial in the Google case indicates that a decision is unlikely to precede our Final Written Decision, we find that factor 2 weighs against exercising our discretion to deny institution.” slip op. at 14

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

    “c) Analysis In regard to Patent Owner’s arguments regarding the simulations relied on by Petitioner’s declarant, we note that Dr. Vipperman’s declaration includes an extensive explanation in a section of the declaration titled “Simulations of Virtual Microphone Responses” that explains in detail the equations used for each simulation and the values of the variables in each equation based on Kanamori, McCowan, and the knowledge of a person of ordinary skill in the art. See Reply 1 (citing Ex. 1003 ¶¶ 50–60). Patent Owner is free to further explore the basis of Dr. Vipperman’s simulations, but at this stage we are not persuaded to disregard them. Also, in response to Patent Owner’s argument that 1000 Hz is not a representative speech signal, we note that the ’357 patent uses that frequency in its examples of speech signals, which undercuts Patent Owner’s argument. Ex. 1001, 11:41, 12:40. We are also not persuaded at this stage that the fact that Kanamori does not discuss near-field applications is inconsistent with Petitioner’s articulation of why a person of ordinary skill in the art would have been motivated to modify Kanamori based on the teachings of McCowan. Other than as discussed above, Patent Owner does not specifically” slip op. at 34

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

    “Petitioner argues that this modification of Figure 17A is motivated because it would have been obvious to implement Kanamori’s microphone device for use with near-field speech, such as a headset. Pet. 24 (citing Vipperman Decl. ¶ 80). Petitioner argues that although Kanamori discloses a variety of “use environments” and “purposes” for its microphone devices, it does not explicitly factor in the distance of the speech source to the microphones because the amplitude differences at each microphone caused by amplitude decay from the distance traveled “are negligible for far-field sources.” Id. at 28 (citing Ex. 1005 ¶¶ 151, 182; Ex. 1006, 93; Vipperman Decl. ¶ 84). In addition, Petitioner’s declarant Dr. Vipperman explains that when both speech and noise originate in the far field, a person of ordinary skill in the art would understand that Kanamori’s microphone device would suppress noise from most directions well but may struggle to suppress noise that originated from the same direction as the speech source because it could not differentiate between speech and noise arriving from the same direction. Id. at 29 (citing Ex. 1005, 168; Vipperman Decl. ¶ 86). To accommodate a near-field application such as a headset, Petitioner argues that one of ordinary skill would have been motivated to modify Kanamori’s noise reference signal m2 to account for differences in amplitude decay caused by distance travelled, which “can be significant in the near-field case.” Pet. 30 (citing Ex. 1006, 93; Vipperman Decl. ¶ 88). Petitioner argues that one of ordinary skill would have been motivated to turn to the teachings of McCowan, because it provided the information on how to modify Kanamori’s noise reference signal m2 for use in a device such as a headset. Id. at 32 (citing Ex. 1006, 88; Vipperman Decl. ¶¶ 89– 90). This includes considering the fact that, for a near-field speech source, a spherical wavefront model is more accurate than a planar wavefront, in which case phase misalignment and amplitude scaling must be taken into account. Id. at 33 (citing Ex. 1006, 89–90, 93–94; Vipperman Decl. ¶ 91). As a result, according to Dr. Vipperman’s analysis, the above modification of Figure 17A would have been obvious. Pet. 34–37 (citing Vipperman Decl. ¶¶ 95–98). Petitioner’s declarant Dr. Vipperman used simulations to generate plotted responses of virtual microphones m1 and m2 when this modified version of Figure 17A is used, which plots are reproduced below.” slip op. at 29

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “c) Analysis In regard to Patent Owner’s arguments regarding the simulations relied on by Petitioner’s declarant, we note that Dr. Vipperman’s declaration includes an extensive explanation in a section of the declaration titled “Simulations of Virtual Microphone Responses” that explains in detail the equations used for each simulation and the values of the variables in each equation based on Kanamori, McCowan, and the knowledge of a person of ordinary skill in the art. See Reply 1 (citing Ex. 1003 ¶¶ 50–60). Patent Owner is free to further explore the basis of Dr. Vipperman’s simulations, but at this stage we are not persuaded to disregard them. Also, in response to Patent Owner’s argument that 1000 Hz is not a representative speech signal, we note that the ’357 patent uses that frequency in its examples of speech signals, which undercuts Patent Owner’s argument. Ex. 1001, 11:41, 12:40.” slip op. at 34

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,122,357
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00836 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 28

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

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5.” slip op. at 23

  Patent outcomesUS 7,069,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,069,560

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.