- Splunk Inc. v. Sable Networks, Inc.Adverse judgmentPTAB · Aug 3, 2022 · IPR2021-01469 · APJ Garth D Baer · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment, entering judgment against it on claims 9, 10, 19, and 26.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). Under these circumstances, we grant Patent Owner’s Unopposed Motion for Adverse Judgment. ORDER It is: ORDERED that Patent Owner’s Motion for adverse judgment (Paper 16) is GRANTED, and FURTHER ORDERED that judgment is entered against Patent Owner with respect to claims 9, 10, 19, and 26 of the ’790 patent.” slip op. at 2
NonePatents in suitUS 8,817,790 - Unified Patents Inc. v. American Patents LLCAll claims unpatentablePTAB · Aug 3, 2022 · IPR2019-00482 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 5–7 are unpatentable as obvious over the asserted combinations of Coile, Templin, Hu, and Shapiro.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal (unopposed by Patent Owner) is consistent with the ’655 patent specification and the asserted prior art. 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). 7 The record does not include allegations or evidence of objective indicia of nonobviousness. Accordingly, we adopt the level of ordinary skill as articulated by Petitioner. Accord Inst. Dec. 22 (adopting same position).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“phrases, but rather assumes that a person of skill in the art would understand their meaning. See Phillips, 415 F.3d at 1313 (“[I]nventors are typically persons skilled in the field of the invention[,] and [] patents are addressed to and intended to be read by others of skill in the pertinent art.”). The Specification states a machine “shares its identity” with a user and “[a]s a 8 Although Patent Owner addressed claim construction at the oral hearing (see generally Tr. 42:20–56:15), Patent Owner did not do so in its briefs (see PO Resp. 12–13 n.5). The oral hearing arguments were untimely and will not be considered. See Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 85–86, available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Paper 28 at 7 (Scheduling Order) (“Patent Owner is cautioned that any arguments for patentability not raised in the response may be deemed waived.”); see also Tr. 88:5–15 (Petitioner objecting to new arguments). consequence, the authorized user assumes the identity of the machine and appears to the network as if it were that machine.” Ex. 1001, 2:31–34. “[T]he end user assumes the identity of the [machine] such that the connected end user has all of the access privileges assigned to the [machine].” Id. at 3:19–21. The Specification implies that multiple users can assume the identity of the same machine (id. at 2:34–36), and the Specification explains “the network resources do not worry about the true identity of the end user” after the user assumes the identity of the machine (id. at 4:33–34). Dr. Reddy testifies that, “[b]ased on this disclosure, a [person of ordinary skill in the art] would have understood the phrases ‘assume the identity’ of a machine and ‘assuming the identity’ of a machine to include at least ‘appear[ing] to the network as if it were’ that machine.” Ex. 1003 ¶¶ 46–47 (last alteration in original). On this record, we credit the testimony of Dr. Reddy because it is consistent with and supported by the Specification. Accordingly, we conclude the claimed phrase “assume the identity of a network element” means “appear to the network as if it were the network element,” and similarly, we conclude “assuming the identity of a network element” means “appearing to the network as if it were the network element.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“a. Independent Claim 5 Claim 5 recites “[a] method comprising . . . .” Ex. 1001, 5:30. We conclude that this preamble is not limiting. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”). But, even if the preamble were limiting, Petitioner has shown that Coile discloses a method, as recited. Pet. 15 (citing Ex. 1004, 1:16–17).” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“on the server via a proxy after successfully authenticating with the proxy. E.g., Ex. 1004, 1:36–47, 2:16–38, 2:44–49. According to Dr. Reddy, a person skilled in the art would have understood Coile’s client to use the proxy’s authorization to access these network resources. Ex. 1003 ¶ 77. In addition, Templin teaches that host A communicates with host C using gateway B and its address. Ex. 1005, 8:37–54. Templin’s host C “believ[es] it is communicating with a ‘host’” and “never learns of the existence of host A.” Id. at 8:44–46. Dr. Reddy explains that Templin teaches that host A “assume[s] the identity” of gateway B, as required by claim 5, because host A appears to the network (including, for example, host C) as if it were gateway B. Ex. 1003 ¶¶ 78–82; see supra § II.B.3 (construing “assume the identity of a network element” to mean “appear to the network as if it were the network element”). Patent Owner has not identified any evidence that contradicts this testimony, and we find Dr. Reddy’s testimony to be credible. Further, Patent Owner has not identified any deficiencies in Petitioner’s rationale. Accordingly, we are persuaded that the combination of Coile and Templin discloses these limitations. Finally, Petitioner asserts that a person of ordinary skill in the art would have been motivated to combine these references as proposed (Pet. 25–26), and Patent Owner has not argued otherwise. Dr. Reddy testifies that a person of ordinary skill in the art would have been motivated to combine the identified portions of Coile and Templin to yield the claimed invention, and Dr. Reddy explains the facts and rationale on which this testimony is based. Ex. 1003 ¶¶ 83–86. We find Dr. Reddy’s testimony to be credible, and we perceive no evidence that contradicts this testimony. Further, Petitioner’s rationale for combining the teachings of Coile and Templin is logical, consistent with, and supported by the cited evidence. Accordingly, we are persuaded that a person of ordinary skill in the art would have been motivated to combine Coile and Templin as proposed by Petitioner. For the foregoing reasons, Petitioner has proved by a preponderance of the evidence that claim 5 would have been obvious over Coile and Templin.” slip op. at 25
Patent outcomesUS 7,373,655 unpatentableClaim construction§ 103 obviousnesscites Markman · KSR · GrahamPatents in suitUS 7,373,655 - PTAB · Jul 13, 2022 · IPR2022-00165 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on every asserted ground after finding a reasonable likelihood of success for at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). The Guidance Memo states: “[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo at 3. Petitioner states: “Petitioner already stipulated that if IPR is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR. This favors institution. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential).” Prelim. Reply 5 (emphasis added). With regard to this representation by Petitioner, Patent Owner asserts: “There is no such stipulation of record in this matter or in the District Court, [See EX2018], nor has Petitioner ever provided any such stipulation by any other means.” Prelim. Sur-reply 4. Petitioner’s averment itself constitutes written representation to the Board that if inter partes review is instituted in this proceeding it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in this proceeding. Because Petitioner has represented to the Board that if inter partes review is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR, we decline to deny the Petition discretionarily. Guidance Memo at 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on each ground set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2009 ¶ 23.6 Based on the language “[i]f the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” we read the above-quoted testimony of Dr. Surati as indicating that in rendering his opinions, he has assumed the level of ordinary skill as stated by Mr. Willis, and that he has restated that level of ordinary skill more simply as: “a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Petitioner’s assertion is supported by the testimony of Mr. Willis. Ex. 1004 ¶¶ 32–35. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Given that Patent Owner has not disputed Petitioner’s assertion of the level of ordinary skill in the art, we adopt Petitioner’s primary statement of the level of ordinary skill in the art, but exclude Petitioner’s “alternative” statement for reasons discussed above. B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner has not proposed a specific construction for any claim term, and states that no express construction is necessary. Pet. 5. Further, Petitioner states that it interprets claims according to the standard set forth in Phillips. Id. Patent Owner has proposed an express construction for the term “event.” Also, the parties’ arguments reveal conflicting understanding and interpretation of the term “alternative title.” Patent Owner argues that in the context of the ’179 patent, an event is a “detectable condition of a system that can trigger a notification.” Prelim. Resp. 16. On the current record, however, we are uncertain that Patent Owner’s construction is the correct construction. For example, the ’179 patent explains that the method possesses “an event, such as by way of example but not limitation, a new mail event, a new instant message event, a reminder event, a calendar event, or some other event, and generating a string of characters that includes information associated with the event.” Ex. 1001, 2:3–7 (emphasis added). The quoted text appears broad. The ’179 patent states that the events used in the embodiments are merely examples. Id.; see also id. at 12:30–32 (“As used herein, the term ‘embodiment’ means an embodiment that serves to illustrate by way of example but not limitation.”). We have no need, however, to provide an express construction for “event,” because even under Patent Owner’s proposed construction for event, as explained in the discussions of the alleged grounds of unpatentability below, Petitioner has made a sufficient showing for institution purposes.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,402,179 - PTAB · Jul 13, 2022 · IPR2022-00164 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on all grounds, finding a reasonable likelihood of success on obviousness over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“According to our precedent, one way to mitigate those concerns is for a petitioner to present a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential); accord Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).3 Such a “stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, Paper 12 at 19 (citing Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 12 n.5 (PTAB June 16, 2020) (informative, designated July 13, 2020)).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. And we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. “would be someone with a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Prelim. Resp. 15 (citing Ex. 2009 ¶ 23). Patent Owner’s declarant, Dr. Surati, testifies: It is my belief that a POSITA [person with ordinary skill in the art] of the ‘135 patent would have possessed: a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems. If the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis. As noted above and on my CV [Ex. 2017], my qualifications exceed this description. Ex. 2009 ¶ 23 (emphasis added). The italicized sentence in the paragraph above is ungrammatical and unclear. It could be interpreted in multiple contradictory ways: The sentence could mean that, in rendering his opinions, Dr. Surati has assumed the level of ordinary skill as stated by Dean Willis. Or it could mean that, “if the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” Dr. Surati’s qualifications exceed those qualifications. Nevertheless, we see no meaningful difference between Petitioner’s definition and Patent Owner’s. Rather, Patent Owner’s definition appears to be a simplified version of Petitioner’s. To the extent that Patent Owner disagrees, Patent Owner is encouraged to explain how the differences affect the obviousness analysis. Also, we preliminarily determine that Petitioner’s definition is supported by the testimony of Dean Willis (Ex. 1004 ¶¶ 32–35) and is consistent with the level of skill reflected in the asserted references (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We need only construe terms that are in controversy and to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner argues that “[i]t is not necessary for the Board to resolve this claim construction dispute for purposes of this Preliminary Response because both Prelim. Resp. 59 n.5. We agree with Patent Owner on this point. See id. That is, we construe the term “title array” to require a data structure, which is not disputed. But other than that, we need not further construe the term at this stage.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,230,135 - Unified Patents, LLC v. Micropairing Technologies, LLCInstitution deniedPTAB · Jul 11, 2022 · IPR2022-00317 · APJ John R Kenny · IPR · Institution
Institution was denied for claims 29–31 because Petitioner did not show that Kizuka and Watabe teach using the configuration manager to redirect data and state information after a failure.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Thus, we determine that Petitioner has not sufficiently shown that Kizuka teaches, suggests, or renders obvious using the configuration manager to redirect the data and state information to the other identified processor after detecting the failure. Accordingly, Petitioner has not sufficiently shown that the combination of Kizuka and Watabe teaches, suggests, or renders obvious the redirection limitation. Thus, Petitioner has not demonstrated a reasonable likelihood of proving that claim 29 would have been obvious over Kizuka and Watabe.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. It is undisputed that, in Kizuka, continuation unit 22 redirects data and state information to another identified processor after a failure is detected. Pet. 49; Ex. 1003 ¶¶ 149–150; Prelim. Resp. 28–29. Continuation unit 22, however, is not part of administration facility 12 (or 2), which Petitioner identifies as Kizuka’s configuration manager. Ex. 1004, Fig. 3A; Pet. 39. Instead, continuation unit 22 is part of work allocation facility 13, which Petitioner identifies as Kizuka’s task manager. Ex. 1004, Fig. 3B; Pet. 31. Thus, according to Petitioner’s mapping, it is Kizuka’s task manager, not its configuration manager, that redirects data and state information to another identified processor. Ex. 1004, Figs. 3A and 3B. We are not persuaded by Petitioner’s argument that administration facility 12 is used to redirect data and state information, as required by the claim, merely because continuation unit 22 may use some information obtained from administration facility 12 to redirect the information. Pet. 49– 50. The redirection limitation recites using the configuration manager to redirect such information, not merely using information from the configuration manager to redirect such information. Ex. 1001, 9:48–50.” slip op. at 15
§ 103 obviousnessPatents in suitUS 7,178,049 - Cloudflare, Inc. v. Sable Networks, Inc.Adverse judgmentPTAB · Jun 13, 2022 · IPR2021-00969 · APJ Juliet Mitchell Dirba · IPR · Adverse judgment
After Patent Owner disclaimed all claims, the Board entered adverse judgment against Patent Owner and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our rules state that “disclaimer of a claim such that a party has no remaining claim in the trial” is “construed to be a request for adverse judgment.” 37 C.F.R. § 42.73(b). Patent Owner disclaimed all of the claims of the ’932 patent, and no claims remain in this proceeding. Therefore, adverse judgment is appropriate. See id.; see also Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018) (“[Rule 42.73(b)] gives the Board authority to construe a patent owner’s actions as a request for an adverse judgment.”).” slip op. at 3
NonePatents in suitUS 6,977,932 - Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. v. Jawbone Innovations, LLCInstitutedPTAB · Jun 8, 2022 · IPR2022-00213 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR on claims 1–9 because Petitioner showed a reasonable likelihood of prevailing on each asserted anticipation and obviousness ground over Zhang and Arndt.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“to Zhang and Arndt specifically, it does not mitigate completely the concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions. See Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24, at 11–12 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Therefore, similar to the holding in Sand Revolution, we determine that this factor weighs marginally against exercising our discretion to deny institution.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that a transitional term, such as “comprising,” does not exclude additional unrecited elements or steps (in the case of a method claim). Our reviewing Court, however, has limited the application of “comprising” so that we must avoid altering the scope of a particular claim step at issue. See Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007) (The Court acknowledged that “the term ‘comprising’ raises a presumption that the list of elements is nonexclusive” but warned that “‘[c]omprising’ is not a weasel word with which to abrogate claim limitations.”). Therefore, we decline to view “comprising” as an unbounded transition leaving the steps of the challenged claims untethered to the recited language. The specific language of the challenged limitation recites combining” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine Petitioner has demonstrated there is a reasonable likelihood it would prevail in establishing the unpatentability of all claims challenged in the petition. Additionally, we decline to exercise our discretion under 35 U.S.C. § 314 to deny the proposed challenges to patentability. Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, the Board has not made a final determination as to the patentability of any challenged claim. Our final decision will be based on the record as fully developed during trial.” slip op. at 51
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As discussed previously (see supra, Section II.B.1), we are unpersuaded based on the current record that the output signal with less acoustic noise must be generated at the exact same time the signals are combined. Rather, at this stage of the proceeding, we are persuaded that “generating output signals by combining signals output from the virtual microphone array, the output signals including less acoustic noise than the received acoustic signals” means (1) “generating output signals by combining signals output from the virtual microphone array” and (2) “the signals.” We have reviewed Petitioner’s arguments, the cited prior art, and the cited testimony from Dr. Kyriakakis regarding the currently undisputed limitations of claim 1. At this stage of the proceeding and based on the current record, we are persuaded that Petitioner’s showing is sufficient to support institution. Specifically, in referencing Zhang’s Figure 8, we are persuaded that Zhang’s output signal,5 Sc, is generated by combining virtual bi-directional microphone signals d1 and d2 (at combining device 86), even though the result of that combination, Z, is then denoised by suppression unit 88b before producing the final output signal Sc. See Ex. 1010 ¶¶ 38–39. Additionally, we credit the testimony of Dr. Kyriakakis, who explains that Zhang’s reference signal r1 (generated by adaptive channel decoupling device 88a) is used to “suppress all the noise from the main channel signal to output the clear audio signal Sc.” Ex. 1002 ¶ 112 (citing Ex. 1010 ¶ 40). We further credit Dr. Kyriakakis’s testimony that “in my opinion, ‘output signals’ as recited in the claim refers to the fact that over time more than one signal may be generated and outputted.” Id. ¶ 114. We are persuaded by Dr. Kyriakakis’s testimony that “Zhang’s clear audio signal Sc discloses ‘output signals’ because it too can generate and output more than one signal in continued operation.” Id. Accordingly, on the present record, we are satisfied Petitioner has” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,280,072 - Triller, Inc. v. Tiktok Pte. Ltd.Institution deniedPTAB · May 16, 2022 · IPR2022-00181 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 19, 23, 24, or 28 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Petitioner contends that the PCT application does not include “anything that could reasonably be characterized” as disclosing the metadata limitation. Pet. 12–13 (citing Ex. 1025 ¶ 81). Petitioner, however, does not elaborate or address any aspect of the PCT application’s disclosure. See id. Patent Owner argues that the PCT application discloses the metadata limitation. Prelim. Resp. 6–12. According to Patent Owner, the PCT application describes a mobile device receiving and displaying “descriptive information” about a track (such as the song title, artist, and duration) without downloading the track itself, and this “descriptive information” discloses the “track meta-data” recited in the claim. Id. at 8–11 (citing Ex. 1008, 4:27–5:9, 11:6–16, 13:14–21, 51:7–13, 91:7–10, 105:16–18, 116:1–10, 133:2–3, 134:10–15, 149:21–23, 149:25–150:3, 150:12–26, 152:1–9, 153, 156). In support, Patent Owner notes that the PCT application describes “[m]etadata” as “[i]ndividual items of data or collections of data, of,” among other things, mobile content such as “full music downloads.” Id. at 7 (citing Ex. 1008, 13:14–21) (emphasis omitted). Patent Owner further explains by asserting that “[t]he fact that the track metadata is provided as a search result, but not the music file itself, demonstrates” disclosure of the metadata limitation. Id. at 9. In addition, Patent Owner submits that the PCT application discloses “sharing” track information because users can send their playlists and recommendations to other users. Id. at 11–12 (citing Ex. 1008, 5:21–22, 7:2–4, 59:10–14, 61:15–28, 65:1–17, 66:18–9, 67:7–9, 101:17–102:13, 130:8–17, Figs. 84, 97, 106). On this record, we are persuaded that the PCT application discloses the metadata limitation, which (for purposes of this Decision) requires a software application that uses “track meta-data” that (1) exists separately from the music track, (2) exists separately in any way from other forms of metadata, and/or (3) is stored in a separate database. See supra § II.B (claim construction). In particular, Patent Owner persuasively shows that the PCT application discloses a mobile device application that uses “track meta-data” (e.g., attributes of music tracks, such as the song’s title, artist, and duration) stored on the mobile device while the corresponding track and its metadata remain separately stored on a remote server.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“2. Law on Written Description Support “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)). “To satisfy the written description requirement [in § 112,] the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” Id. (second alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement” necessarily “varies predictability of the relevant technology.” Id. The invention need not be described in haec verba, but a disclosure that merely renders obvious the claims does not provide adequate written description support. Id. at 1352.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“connect these dots. For example, it is unclear whether Petitioner proposes a combination of Abrams’s web browser and Khedouri’s music application, or whether it instead proposes that one be replaced with the other. See id. at 53–54. Petitioner also does not address whether a person of ordinary skill in the art would have had a reasonable expectation of success in combining a web browser and a music application. See id. Rather, Petitioner simply refers to combining “Khedouri’s music sharing functions” with “Abrams’ social networking functions” (id. at 54), which does not address the requirement that “a software application” meet these limitations. Moreover, Petitioner does not sufficiently explain why a person of ordinary skill in the art would have combined the functionality of Abrams and Khedouri. See KSR, 550 U.S. at 418 (obviousness requires analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Liberally interpreting the relevant portion of the Petition, Petitioner contends that a motivation to combine is established because: (1) the references themselves provide the motivation to combine, (2) the proposed combination was desirable and predictable, (3) an ordinary artisan would have been motivated to add music to Abrams, and/or (4) an ordinary artisan would have been motivated to add Abrams’s social networking functions to Khedouri. See Pet. 53–54; see also supra § II.E.1 (reproducing relevant portion of Petition with corresponding reference numbers). We are not persuaded. themselves provide the requisite motivation. See Pet. 53. Abrams is directed to “connecting users in an online computer system based on their relationships within social networks.” Ex. 1009 ¶ 1; see also id. ¶ 36 (“What is needed is a system that allows individuals to replicate the process of developing personal relationships through social networks, using a computer system and database.”). Khedouri, on the other hand, is directed to “selecting, requesting, downloading, and playing audio” files on a user’s portable audio player device from a content delivery service. Ex. 1011, Abst., ¶ 3. Petitioner identifies (and we perceive) no disclosure in either reference that suggests their combination. See Pet. 53–54. Petitioner incorrectly implies that Khedouri “expands on [Abrams’s] ‘music theme.’” Id. at 53. Abrams states that a user can identify the user’s interests as well as favorite music, books, tv, and movies (Ex. 1009 ¶ 91, Fig. 2), and each of these are stored as a text field in Abrams’s database (id. ¶¶ 89, 91, Fig. 2). This is a passing reference to music, not a music theme. Petitioner also contends that both Abrams and Khedouri teach most limitations of the claim (Pet. 53 (citing Ex. 1025, 120–123)), but even if that were true, it does not explain why a person of ordinary skill in the art would have combined them. Second, Petitioner’s assertions that the proposed combination would have been “desirable” and “predictable” are conclusory and entitled to little weight. See Pet. 54. Petitioner relies on Dr. Shamos’s testimony in support, but it similarly fails to provide analysis or evidence to support his conclusions. See Ex. 1025 ¶ 170. Accordingly, we assign little weight to that testimony. 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 TQ Delta, 942 F.3d at 1358. a desirable feature” and the combination would provide users “the ability to not only identify and publicize information about their favorite music on their profiles (and learn about others’ favorite music from others’ profiles) but to actually search for that music and be able to listen to it.” Pet. 54 (citing Ex. 1025 ¶ 170). Although this identifies vague benefits of a combination (i.e., sharing information and facilitating access to music), it fails to explain why an ordinary artisan would have been motivated to incorporate these benefits in Abrams’s social network. Petitioner also provides no evidence that an ordinary artisan would have had reasonable expectation of success in making this proposed combination. See id. at 53– 54. Given the specific facts and circumstances of this case, we are concerned that this rationale suffers from improper hindsight bias. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.” (internal quotation marks omitted)).” slip op. at 24
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,294,430 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00180 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, with the first part being whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 25 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’322 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, electrical engineering, or an equivalent discipline, or equivalent experience, including familiarity with multitasking and multithreading, wireless communications and client/server computing, and, in addition, familiarity with digital music distribution and DRM.” Ex. 1025 ¶ 62; Pet. 35. Patent Owner submits that one of ordinary skill in the art would have had “a Bachelor’s degree in Computer Science, Computer Engineering, Human Factors, or an equivalent degree and at least two years of experience working in the fields of user interfaces, communications applications, networking applications, or media applications, or a person with equivalent education, work, or experience in such fields.” Prelim. Resp. 2. The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther
“Petitioner does not identify any specific claim term for construction. Pet. 5. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’322 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1002, 8:63–65). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions10 from the “Definitions” section of the Specification:” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,992,322 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00179 · APJ John D Hamann · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6, 22, 26, 27, and 31 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’132 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework, with the first part being whether the same or substantially the 4 US 2006/0008256 A1, published Jan. 12, 2006 (Ex. 1011, “Khedouri”). 5 US 8,572,169 B2, issued Oct. 29, 2013 (Ex. 1010, “Partovi”). 6 US 2010/0031366 A1, published Feb. 4, 2010 (Ex. 1012, “Knight”). substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id. Moreover, as we discuss below, we disagree with Patent Owner that Sittig employing a browser was a reason that particular rejection was overcome. See infra Section IV (addressing Applicant’s remarks to a rejection). Rather, the rejection was overcome for failing to teach a limitation (i.e., that a software application allowed a user, over a wireless connection, to create a user account) that Abrams teaches. See id.; infra Section VI(B)(3) (applying Abrams). Nor do we agree with Patent Owner that Abrams (unlike Reddick) fails to teach allowing a user to create an account. See infra Section VI(B)(3) (applying Abrams). substantially the same arguments previously were presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. In light of the above, we find that the first part of the Advanced Bionics framework is not met, and thus, we do not proceed to the second part. See Advanced Bionics, Paper 6 at 10. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Pet. 4. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’132 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1001, 8:61–63). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions7 from the “Definitions” section of the Specification: (i) “Client: A computing device connected to a network delivering the features and functions of a network-centric application to the user or consumer of the application”; (ii) “Wireless Computing Device: A type of Client which connects to the network via a Wireless Network”; and (iii) “Wireless Network: A network which provides wireless” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,648,132
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.