- Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00067 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–36 are unpatentable under § 103; the Board relied on Morford and Maes, with Lu, McGrew, or Barreto for dependent-claim grounds, and did not reach Allen-based grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“With respect to the claimed ABD, we determine that even under Patent Owner’s construction requiring a “processor optimized for audio and video compression,” Petitioner has shown that the independent claims would have been obvious over Morford and Maes.10 Therefore, we need not construe the term to resolve the obviousness contentions at issue.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–20) or system (for system claims 21–36). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1003, 38:34–36, 38:42–54. However, claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 38:31–33. Clearly, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. But the claim limits these two actions to the individual steps in which they appear. Only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six stated autonomous ABD actions are required to be performed “without modification or circumvention of the router.”” slip op. at 12
- Skill levelSkill level board ownOther
“For purposes of this Decision, we do not determine that the differences between the proffered levels of ordinary skill in the art would be dispositive. We adopt our determination in the Institution Decision, in which we adopt the parties’ asserted level having between two to four years of experience. Inst. Dec. 20.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“b) Analysis Having reviewed the entirety of the record and analyzed the evidence, we determine, with respect to the limitations not specifically contested by Patent Owner, that Petitioner’s assertions are supported by the record, in the manner discussed above. Regarding those limitations contested by Patent Owner, we address and analyze those limitations below. As discussed below, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 is unpatentable under § 103 as obvious over the combination of Morford and Maes.” slip op. at 27
Patent outcomesUS 10,154,317 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,154,317 - Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00066 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–30 are unpatentable under § 103; the Board relied on Allen and Maes for claims 1–17, 21–24, 26, and 30, and did not reach remaining grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“without modification or circumvention of the router” as follows. We begin with the language of the claims and the originally-filed disclosure. With respect to the originally-filed disclosure of the ’574 patent, no explicit discussion is presented to define or explain the terms “modification” or “circumvention.” With respect to the claims as a whole, the “without modification to or circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–11, 22–30) or system (for system claims 12–21). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1001, 26:32–60. Claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 26:35–37. However, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. So, the claim limits these two actions to the individual steps in which they appear. Therefore, only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six autonomous ABD actions recited in the claim are required to be performed “without modification or circumvention of the router.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“3. Additional Claim Terms Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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)). With respect to the terms “scheduling logic,” “streaming information,” “contemporaneously with the live event,” “transmitted [received] out of band,” and “dynamically scaling the server based on demand,” these terms are not in controversy. Thus, we need not construe those terms.” slip op. at 16
- Skill levelSkill level board ownOther
“Patent Owner does not specifically assert a level of skill in the art. Patent Owner’s declarant, Dr. Akl, does testify that a person of ordinary skill in the art of the ’574 patent: would have . . . a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience in the design or development of telecommunication and networked systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 2017 ¶ 35. Under either level of skill, a person having a bachelor’s degree in computer engineering or a related field, and a couple years’ experience in networked systems or the equivalent would qualify as a person having ordinary skill in the art. The primary difference between Petitioner’s assessment and Dr. Akl’s is whether “2–3 years” or “four years” of experience is appropriate, neither explains why their assessment is appropriate. See Ex. 1007 ¶ 30; Ex. 2001 ¶¶ 20, 21 (addressing without argument or comment the assessment of Petitioner’s declarant); Ex. 2017 ¶ 35. For our analysis, we do not determine this difference to be dispositive; rather, we determine that the appropriate level is between two and four years of experience.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“that Allen lacks an ABD behind a router. Rather, we credit the testimony of Dr. Easttom that a “network has to have a router,” and “a router must be present in Allen” given Allen’s use of WANs with the Internet being one example of a WAN. Ex. 1007 ¶¶ 226, 228; Ex. 2001 ¶ 85; see Ex. 2005, 125:19–126:25. Dr. Akl also characterizes WANs at the critical time as having a “single, unique, public outfacing address,” referred to as its “WAN IP,” and that the term “WAN IP was used in the reference materials for (“share one Wide Area Network (WAN) IP address for multiple computers on your Local Area Network”)). Dr. Akl further describes client devices in a Local Area Network as connecting to other devices on the Internet through a router. Id. ¶ 43. Second, we find that Allen discloses an ABD, even under Patent Owner’s construction, because Allen’s MCD (1) is a “dedicated (i.e., specific-purpose) device” and not merely a general-purpose computer, and (2) is “configured to capture, process, store and/or send real-time media signals (e.g., audio signal, video signal . . . )” and broadcast the audio/video content over a network. See Ex. 1008 ¶¶ 1015, 1021, 1076–1077, Figs. 6, 8; Ex. 1056 ¶¶ 46–47. Additionally, we credit the testimony of Dr. Akl, who testified that “if [a computer] is able to carry out the functionality, then it’s not a general-purpose computer.” Ex. 1064, 55:23–25.” slip op. at 31
Patent outcomesUS 9,686,574 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,686,574 - PTAB · Apr 4, 2023 · IPR2022-01598 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–2, 6, 8–11, 15, 17, and 18 are anticipated by Kannan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“4. Analysis As already noted, Becton, Dickinson factors (a), (b), (d) all support a finding that the Kannan Publication was presented to the Office by listing the Kannan Publication in an IDS and the European Report. The first prong of the Advanced Bionics framework is satisfied.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The PTAB will weigh this factor against exercising discretion to deny institution under Fintiv if the median time-to-trial is around the same time or after the projected statutory deadline for the PTAB’s final written decision.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Interim Procedure for Discretionary Denials”). Because our projected statutory deadline is around the same time as the median time-to-trial here, we weigh this factor as weighing against exercising discretion to deny institution. Factor 3. Investment in the parallel proceeding by the court and the parties. slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we therefore conclude preliminarily that Petitioner has sufficiently shown that Kannan discloses limitation 1.a.” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s arguments and evidence as to the short comings of a single code block do not preclude a code block from being the recited “transmission block.” As a result, even if a single code block transmission block is problematic as to transmission or receiving transmission blocks, there is no explanation of why that fact makes a difference in our legal analysis of the scope of this claim term. We leave this issue for the parties to explore during trial. Based on the record before us, we preliminarily determine that the “transport block” of Kannan falls within the scope of the recited “transmission block,” because a transport block can be a transmission block in some scenarios. See Ex. 2001 ¶¶ 46, 48–49. Furthermore, the “transport block” may include a single code block. Moreover, we preliminarily determine that the “code block” of Kannan falls within the scope of the recited “transmission block.” This issue is subject to further development during trial.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 10,594,443 - PTAB · Mar 22, 2023 · IPR2022-01344 · APJ Barbara A Parvis · IPR · Institution
Institution was denied for claims 3–11 because the Petition did not show a reasonable likelihood of proving obviousness over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inter partes review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c) (emphasis added). “The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” Id. (emphasis added). We, therefore, consider the arguments and evidence presented in the Petition, including the testimony of Dr. Layton, as well as the arguments and evidence in the Preliminary Response, including the testimony of Dr. Stone, in determining what the drawings of Christensson would have conveyed to a person having ordinary skill in the art. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for patent owner
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we, therefore, do not adopt that aspect of the proposal. We agree with Patent Owner that Petitioner has not made a sufficient showing regardless of which definition we adopt. Accordingly, for purposes of this Decision, with the exception of the “at least” terminology noted above, we use Petitioner’s assessment of the level of skill for one of ordinary skill in the art in our analysis below.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petition, without further testimony (id.) does not remedy the deficiency. Dr. Layton’s Declaration does not disclose facts or data that Dr. Layton relies on in forming his opinion that the yellow highlighted circle illustrates opening 26h and the blue highlighted circle illustrates opening 30h. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Dr. Stone’s testimony that “Figure 7 is a bottom view of the Christensson connector, and Christensson could be illustrating relative depth of the openings in the housing and electrical contact member” (Ex. 2001 ¶ 146) is consistent with the illustration of Figure 7 and the related text. Ex. 1008, 3:5, Fig. 7. Also, Dr. Stone’s testimony that a person having ordinary skill in the art would not have understood Figure 7 of Christensson “as clearly illustrating the opening in the electrical contact being any larger or smaller than the opening in the housing” (Ex. 2001 ¶ 146) also is consistent with the illustration of Figure 7 and the related text. Ex. 1008, 6:34–39, Fig. 7. We, therefore, credit and give significant weight to the testimony of Dr. Stone regarding Figure 7 (Ex. 2001 ¶ 146) over the testimony of Dr. Layton (Ex. 1002 ¶¶ 88–89) because we find that Dr. Stone’s testimony is consistent with Christensson’s disclosures and we find that Dr. Layton’s testimony (Ex. 1002 ¶¶ 88–89) is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (Aug. 24, 2002) (precedential). As a result, we find Figure 7 of Christensson does not describe element 3.3, i.e., “having a second opening disposed therein, the second opening disposed substantially concentrically to the first opening, wherein the perimeter of the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“first opening 26h and second opening 30h is consistent with and supported by the text of Christensson. Claim 3, however, requires “wherein the perimeter of the second opening is less than the perimeter of the first opening” and that requirement is not supported by the quote of Christensson relied on by Petitioner. Contrary to Petitioner’s argument (Pet. 28–29), the quote of Christensson describes only “oblong opening 26h” and “similarly shaped opening 30h.” Ex. 1008, 6:34–39 (emphasis added). Petitioner does not emphasize the portion of the quote of Christensson that describes opening 26h as “slightly larger at its forward end.” Ex. 1008, 6:34–39. Also, Petitioner relies on the entirety of opening 26h as meeting the 28–29. For completeness, however, we note that the forward end portion of the first opening does not satisfy Petitioner’s construction of “first opening,” which is “the aperture, or a hole extending through the bottom wall of the housing from the bottom surface of the housing to the inner surface of the bottom wall that is sized to allow a press stud to extend therethrough.” Pet. 15 (citing Ex. 1002 ¶ 49). Accordingly, Petitioner’s arguments regarding the size of the perimeter of Christensson’s second opening are not supported by the quote of Christensson. Neither Petitioner nor Dr. Layton rely on any other text in Christensson for showing element 3.3. Pet. 28–30; Ex. 1002 ¶¶ 88–89.” slip op. at 17
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,038,484 - PTAB · Mar 9, 2023 · IPR2022-01343 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–11, 13, 14, 16, and 17 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inter partes review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c) (emphasis added). “The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” Id. (emphasis added). We, therefore, consider the arguments and evidence presented in the Petition, including the testimony of Dr. Layton, as well as the arguments and evidence in the Preliminary Response, including the testimony of Dr. Stone, in determining what the drawings of Christensson would have conveyed to a person having ordinary skill in the art. We give credit and significant weight to the testimony of Dr. Stone regarding Figure 3 (Ex. 2001 ¶¶ 153–154) over the testimony of Dr. Layton (Ex. 1002 ¶¶ 93–94) because we find that Dr. Stone’s testimony is consistent with Christensson’s disclosures and we find that Dr. Layton’s testimony (Ex. 1002 ¶¶ 93–94) is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (Aug. 24, 2002) (precedential). For instance, consistent with Patent Owner’s argument and Dr. Stone’s testimony, Figure 3 does not include reference number 30h. Ex. 1008, Fig. 3. Additionally, Dr. Layton testifies that the “second opening” is “defined by the light blue box,” but Dr. Layton’s testimony in his Declaration does not disclose facts or data that Dr. Layton relies on in forming his opinion that second opening 30h is the sliver in Figure 3 highlighted in blue. Ex. 1002 ¶ 94. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65 (a). slip op. at 21
- Skill levelSkill level board ownDecided for patent owner
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we, therefore, do not adopt that aspect of the proposal. We agree with Patent Owner that Petitioner has not made a sufficient showing regardless of which definition we adopt. Accordingly, for purposes of this Decision, with the exception of the “at least” terminology noted above, we use Petitioner’s assessment of the level of skill for one of ordinary skill in the art in our analysis below.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We give credit and significant weight to the testimony of Dr. Stone regarding Figure 3 (Ex. 2001 ¶¶ 153–154) over the testimony of Dr. Layton (Ex. 1002 ¶¶ 93–94) because we find that Dr. Stone’s testimony is consistent with Christensson’s disclosures and we find that Dr. Layton’s testimony (Ex. 1002 ¶¶ 93–94) is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (Aug. 24, 2002) (precedential). For instance, consistent with Patent Owner’s argument and Dr. Stone’s testimony, Figure 3 does not include reference number 30h. Ex. 1008, Fig. 3. Additionally, Dr. Layton testifies that the “second opening” is “defined by the light blue box,” but Dr. Layton’s testimony in his Declaration does not disclose facts or data that Dr. Layton relies on in forming his opinion that second opening 30h is the sliver in Figure 3 highlighted in blue. Ex. 1002 ¶ 94. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65 (a).” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“first opening 26h and second opening 30h is consistent with and supported by the text of Christensson. Claim 1, however, requires “a second opening smaller than and disposed at least partially within the first opening” and those requirements are not supported by the quote of Christensson relied on by Petitioner. Contrary to Petitioner’s argument that Christensson describes that the second opening is smaller than the first opening (Pet. 28–29), the quote of Christensson describes only “oblong opening 26h” and “similarly shaped opening 30h.” Ex. 1008, 6:34–39 (emphasis added). Contrary to Petitioner’s argument that Christensson describes that the second opening is “disposed at least partially within the first opening” (Pet. 28–29), the quote of Christensson describes that opening 30h is “[a]ligned above” opening 26h. Ex. 1008, 6:34–39 (emphasis added). Petitioner does not emphasize the portion of the quote of Christensson that describes opening 26h as “slightly larger at its forward end.” Ex. 1008, 6:34–39. Also, Petitioner relies on the entirety of opening 26h as meeting the “first opening” limitation, not just the forward end portion. See, e.g., Pet. 29. For completeness, however, we note that the forward end portion of the first opening does not satisfy Petitioner’s construction of “first opening,” which is “the aperture, or hole extending through the bottom wall of the housing from the bottom surface of the housing to the inner surface of the bottom wall that is sized to allow a press stud to extend therethrough.” Pet. 15 (citing Ex. 1002 ¶ 49). Accordingly, Petitioner’s arguments regarding the size and position of Christensson’s second opening are not supported by the quote of Christensson. Neither Petitioner nor Dr. Layton rely on any other text in Christensson for showing element 1.3. Pet. 28–30; Ex. 1002 ¶¶ 93–94.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,795,004 - PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentablePTAB · Feb 22, 2023 · IPR2021-01343 · APJ Nathan A Engels · IPR · Final written decision
Claims 1, 3–5, 7, 9, 10, 12, 14–16, and 18–20 are unpatentable as obvious over Baldwin; claims 6, 8, 11, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have been a person with a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience in digital video signal processing or digital video streaming or had a master’s degree in electrical engineering, computer engineering, computer science, or a similar field with a specialization in digital video signal processing.” Pet. 15 (citing Ex. 1003 ¶¶ 37–39). Petitioner also states that a person of ordinary skill would have been able to, among other things, encode and decode digital video signals, packetize, multiplex, and demultiplex encoded digital video signals for transmission, and implement modulation and channel coding. Pet. 15–16 (citing Ex. 1003 ¶ 40). Patent Owner states that a person of ordinary skill would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 13 (citing Ex. 2014 ¶ 20). Patent Owner states that its definition of a person of ordinary skill is similar to Petitioner’s definition and that any differences are not material. PO Resp. 13. We determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field and two years of experience in digital video signal processing or digital video streaming, which is consistent with the parties’ arguments, the ’014 patent, and the prior art of record.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “video information” Petitioner contends a person of ordinary skill would have understood that “video information” means “digital video data.” Pet. 16. Patent Owner disagrees with Petitioner’s proposed construction and contends “video information” should be given its plain and ordinary meaning. PO Resp. 13. Patent Owner also states that the construction of “video information” is immaterial to this proceeding. PO Resp. 13. We do not discern a meaningful dispute between the parties regarding the meaning of “video information,” and we do not expressly interpret the term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Among other problems with these arguments, it is not clear how or where Petitioner relies on the proposed combination to satisfy any specific claim limitations. Petitioner argues each of Cooper and Baldwin teaches each limitation of each independent claim, and Petitioner presents its combination of references separate from its comparisons of Cooper and Baldwin to the claims, without clearly stating how the references are to be combined or how those combined teachings satisfy particular limitations. Because Petitioner fails to identify its proposed combination with sufficient clarity, we are also not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been motivated to combine Cooper and Baldwin to yield the subject matter recited by the challenged claims. We also disagree with Petitioner’s argument that Realtime Data suggests that Petitioner does not need to show a motivation to combine. Reply 27–29 (citing Realtime Data, 912 F.3d at 1373–74). Unlike here, in Realtime Data, the secondary reference was cited for the “sole purpose” of confirming that an element was disclosed in the primary reference. Id. In this case, Petitioner proposes combining some teachings from each of Baldwin and Cooper. See Pet. 19–20; Reply 27. Accordingly, we determine Petitioner has not articulated an adequate rationale to combine the references to arrive at any particular challenged claim.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Patent Owner contends, and we agree, that Cooper does not teach that its receiver identifies which of two streams is expected to result in a lower latency, as required by limitation [1d]. PO Resp. 36–52. Where Cooper describes receiving a multiplexed composite signal, Cooper teaches always identifying the normal mode packet stream for decoding when it is available, without regard to latency, and identifying the robust mode packet stream for decoding only when the normal mode packet stream is not available, such as when normal mode packets are lost. E.g., Ex. 1004, 7:8–8:28. In fact, it would be inconsistent with Cooper’s teachings for the receiver to select the robust mode packet stream when the normal mode packet stream is available: Cooper teaches that “[u]nder normal conditions, the error signal is not active on the error signal line E. In response, the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets . . . .” Ex. 1004, 7:32–37 (emphasis added). Although Cooper also teaches that its receiver can decode the robust mode packet stream to avoid “undue delay” “at the beginning of any broadcast or channel change,” we find that Cooper does so only when the normal mode packet stream is not available. Ex. 1004, 17:23–45; see also Ex. 1004, 3:1–3. Specifically, Cooper states that “at the beginning of any broadcast or channel change,” there is a period of time (i.e., Tadv ) when the receiver’s delay device 220 is being filled. Ex. 1004, 17:23–26 (emphasis added). Cooper explains that waiting until delay device 220 is full would cause “undue delay when a receiver is switched on or a channel is changed.” Ex. 1004, 17:26–30. To address this delay, Cooper’s receiver decodes the robust mode packet stream, which “is immediately available,” so that a video signal can be presented until “the normal mode packet stream becomes available,” at which point the receiver switches to decoding the normal mode packet stream. Ex. 1004, 17:30–42. Consequently, we find that Cooper teaches that, at a channel change, its receiver receives (and decodes) the robust mode packet stream until it receives the normal mode packet stream. We disagree with Petitioner’s contrary argument that Cooper’s receiver receives both streams in this situation (see Reply 4–16), and, at a minimum, Petitioner has not persuasively shown that Cooper teaches or suggests this (see Ex. 2015, 82:22–85:13 (describing different scenarios but acknowledging that “Cooper doesn’t really illuminate either of these”)). Further, Cooper’s description of Figure 3 is consistent with our understanding of Cooper description of a channel change. Specifically, that portion of Cooper states: Time t0 may represent the time when the receiver is turned on, or when a user specifies a new content source to receive. During the time, Tadv, between t0 and t4, robust mode packets “a” to “j” are loaded into the delay device 220, and normal mode packets, designated “0” through “9” are received. At time t4, the normal mode packet “A” becomes available from the demultiplexer 210 and delayed robust mode packet “a” becomes available from the delay device 220. Under normal conditions, . . . the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets, as described above. This is illustrated by the cross hatching 301 in the normal mode packets “A” through “G”. Ex. 1004, 7:24–39. Cooper includes this description in order to explain its typical operation as well as to illustrate the relative timing of the robust mode packet stream and the normal mode packet stream. See Ex. 1004, 7:24–25, 7:40–8:28. This passage teaches that normal mode packets designated with capital letters (e.g., “A”) are displayed after time t4 under normal conditions; however, it does not address which (if any) packets are displayed between time t0 and time t4. As a result, we understand this passage of Cooper to indicate that “0” to “9” are simply placeholders, which” slip op. at 13
Patent outcomesUS 8,646,014 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,646,014 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentablePTAB · Feb 15, 2023 · IPR2021-01293 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–5 and 7 are unpatentable under § 103: claims 1 and 2 over Patrick, claim 2 over Patrick and Barrett, claims 3–5 over Patrick and Gringeri, and claim 7 over Patrick and Mahdavi.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the field of art (“POSITA”) of the ’098 patent would have been a person with a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field with at least two years of experience in video transmission systems, or a person with a master’s degree in computer science, computer engineering, electrical engineering, or a similar field with a specialization in video transmission systems. Pet. 18 (citing Ex. 1003 ¶¶ 55–56). Petitioner further contends that “[a] person with less education but more relevant practical experience may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 55–56). Petitioner further asserts that a person of ordinary skill in the art in 2004 would have known and had the skills necessary to: (1) “Design or implement video transmission systems and applications in compliance with standards such as TCP/IP, UDP, RTP, ATM, DVB, and ATSC;” (2) “Understand video coding and processing in compliance with standards such as MPEG-1, MPEG-2, MPEG-4, and H.26x;” (3) “Implement known techniques for determining available bandwidths between transmitting and receiving systems of media content; and” (4) “Understand common techniques for organizing and” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Petitioner proposes claim constructions for “transmission rate” and “steady-state transmission rate.” See Pet. 19–21. Patent Owner does not agree with Petitioner’s proposed claim constructions. See PO Resp. 16 (citing Ex. 2014 ¶ 20). Patent Owner, however, does not offer alternative proposed claim constructions, but instead asserts these terms should be construed in accordance with their plain and ordinary meanings. See id. As demonstrated in the analysis below, we need not expressly construe “transmission rate” and “steady-state transmission rate.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7
- Strike new argumentNew argument consideredDecided for petitioner
“As an initial matter, we do not agree with Patent Owner’s contention that the following Reply argument constitutes an impermissible new argument: “[s]ince [Patent Owner] is unable to dispute paragraph 38 teaches limitations [1b] and [1d] . . . .” Pet. Reply 9; see PO Sur-reply 12–13. Contrary to Patent Owner’s suggestion, we do not understand Petitioner to argue for the first time on Reply that Patrick’s paragraph 38 by itself teaches limitations [1b] and [1d]. Rather, we understand the Reply argument to address the dispute raised by Patent Owner regarding the disclosure of Patrick’s paragraph 38 as applied to limitations [1b] and [1d] in the Petition. See Pet. Reply 9; PO Resp. 38–40, 38 n.7, 52–53 (citing Ex. 2014 ¶¶ 50–51, 63–64, 70); Pet. 30–31, 37. Likewise, we do not agree that the portion of the Reply addressing the second sentence of Patrick’s paragraph 38 is a new argument that attempts to buttress the lack of discussion of paragraph 38 in the Petition. See PO Sur-reply 16; Pet. Reply 11. Instead, we find that these Reply arguments constitute a permissible response to Patent Owner’s arguments addressing how a person of ordinary skill in the art would understand the disclosure of Patrick’s paragraph 38. See PO Resp. 38 n.7 (citing Ex. 2014 ¶ 50), 52–53 (citing Ex. 2014 ¶¶ 63–64, 70; PO Resp. 38 n.7); see also 37 C.F.R. § 42.23(b); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)8 73–74.” slip op. at 28
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“paragraph 38 uses terms consistent with the terms used in the first sentence of paragraph 38 and terms used in paragraphs 31 and 36 to address act 206 of Figure 3. See id. ¶¶ 31, 36, 38. Moreover, the first sentence of paragraph 38 is consistent with Patrick’s paragraph 37 disclosure that network congestion or other restrictions between the server and client (i.e., a reduction of bandwidth between the server and client) may limit the rate of accelerated streaming. See Ex. 1004 ¶ 37 (quoted in Pet. 30–31). We give weight to Dr. Brody’s testimony that a person of ordinary skill in the art “reading Patrick’s disclosure would have understood that [Patrick’s] later disclosure [in paragraphs 33 through 39] provides additional details and teachings relevant to the invention as a whole,” (Pet. Reply 7 (citing Ex. 1033 ¶ 8)) because it is supported by the aforementioned interrelated teachings of at least Patrick’s paragraphs 31 and 36 through 38. We give minimal weight to Dr. Hayes’s cited supporting testimony regarding the “structure” of Patrick because it is not supported by a sufficient factual basis, and like Patent Owner’s arguments, is inconsistent with Patrick’s disclosure. Accordingly, contrary to Patent Owner’s arguments, we find: (1) Patrick’s paragraph 38 provides additional detail regarding the disclosures of paragraphs 31 through 36 with respect to act 206 of Figure 3; (2) the disclosures of paragraphs 37 through 39 are not limited to describing the period of accelerated streaming of act 208 of Figure 3; and (3) the corresponding disclosure related to act 206 of Figure 3 is not limited to the description of Patrick’s paragraphs 31 through 36.” slip op. at 30
Patent outcomesUS 9,402,098 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,098 - Netflix, Inc. v. Ca, Inc.All claims unpatentablePTAB · Feb 8, 2023 · IPR2021-01319 · APJ Nathan A Engels · IPR · Final written decision
Claims 1, 3–9, and 11–17 are unpatentable: claims 1, 3–9, and 11–16 as obvious over Medin and Seltzer; claim 17 as obvious over Medin and Markatos.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner states that a POSITA would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 21 (citing Ex. 2018 ¶ 20). Patent Owner notes that Petitioner presents a “similar” description of a POSITA, but Patent Owner states that it “does not necessarily agree with all of the ‘knowledge’ required by Petitioner’s definition.” PO Resp. 21. Patent Owner states, though, that “any differences in the parties’ view of a POSITA are not material” to Patent Owner’s arguments. PO Resp. 21. Based on the complete record, we determine an appropriate definition of the level of ordinary skill is a person with a bachelor’s degree in electrical engineering, computer science, or a similar discipline with two years of experience with computer networks and data storage, which is consistent with the parties’ contentions.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. “receiving a set of network objects in response to a first request to a server from a client” Petitioner contends the claim language “receiving a set of network objects in response to a first request to a server from a client” would have been understood by a person of ordinary skill to be a step that must be performed at the cache engine. Pet. 25. Further, Petitioner states that the limitation should be construed to mean “receiving a set of network objects at the cache engine in response to a first request to a server from a client.” Pet. 25–26. According to Petitioner, claims 20, 28, 39, and 47 require a cache engine that performs an equivalent receiving step, and Petitioner additionally cites certain dependent claims and portions of the Specification as support for its argument. Pet. 26–27 (citing Ex. 1001, 1:26–35, 3:42–51, 5:61–67, claims 2–6, 10–14). Patent Owner disagrees with Petitioner’s proposed construction and contends this limitation does not require any construction. PO Resp. 21 (citing Ex. 2018 ¶ 21). Patent Owner also states that the construction of this limitation is immaterial to the patentability of the challenged claims. PO Resp. 21. We determine it is unnecessary to expressly interpret this limitation to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Those positions, though, are inconsistent with the plain language of the claim. The claimed “cache memory” cannot refer only to a cache with volatile memory because the claim states that the “cache memory includ[es] mass storage.” Further, Patent Owner seeks to rewrite this claim term, with Patent Owner arguing “the plain and ordinary meaning of this limitation requires the cache to have both (1) memory and (2) mass storage.” Sur- Reply 3 (emphasis added). Independent claims 1, 9, and 17 do not recite a “cache” or a “memory” separate from “a cache memory in a cache engine, . . . said cache memory including mass storage.” Ex. 1001, 17:8–11, 17:41– 44, 18:13–16. Moreover, the Specification’s use of the qualifier “such as” in “memory (such as RAM)” (Ex. 1001, code (57), 2:9) evidences that RAM is merely a non-limiting example of memory; nothing in the Specification limits “memory”—much less “cache memory”—to RAM or volatile memory. Finally, although not directly applicable to our understanding of “cache memory,” the file history refers to “memory” broadly. In the file history, the applicant stated “the term ‘memory’ in the claims is meant to broadly encompass both fixed memories such as DRAMs, SRAMs, hard disks, caches, etc., as well as removable memories such as floppy disks, CD- ROMs, data tapes, etc.” Ex. 1002, 482. Contrary to Patent Owner’s arguments, that statement from the prosecution history evidences that the applicant understood “memory” to be a broad term and that the applicant could have limited its claims to particular types of memory, but chose not to. In total, the evidence of record, including Patent Owner’s arguments premised on intrinsic evidence, extrinsic evidence, and witness testimony,5 does not support Patent Owner’s arguments that “a cache memory in a cache engine, . . . said cache memory including mass storage” requires volatile memory. In our analysis below, we apply the plain language of the claims, noting that we understand the plain language to require mass storage but to permissively allow other types of memory, including volatile memory such as RAM.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“After fully considering the cited supporting evidence and according it appropriate weight, we are persuaded that a person of ordinary skill would have been motivated to combine the teachings of Medin and Seltzer “so as to substantially minimizes a time required for retrieving said network objects from said mass storage.” In particular, as Petitioner argues, Medin and Seltzer “share the goal of improving the speed and efficiency” of systems for storing information. Pet. 27–28 (citing Ex. 1004, 1:8–13, 2:9–15, 2:18–25, code (57); Ex. 1005, 307; Ex. 1003 ¶ 114). Contrary to Patent Owner’s arguments that the references’ goals are too generic and applicable to any references (PO Resp. 44–45; Sur-Reply 22), the references’ teachings are specifically complimentary: Medin teaches storing copies of frequently accessed multimedia content on UNIX-based computers to cache information and read and write it to mass storage (Ex. 1003, 5:60–64, 6:1–4, 6:36–56, 7:46–51, 7:61–8:2, 8:63–9:32), and Seltzer teaches techniques to improve read and write operations on UNIX-based computers (Ex. 1005, 307). The fact that Markatos advocates a different solution that purportedly outperforms “traditional” file system caching does not undermine Petitioner’s proposed combination for a number of reasons. Petitioner’s proposed combination includes Medin’s teachings of a file system to cache network objects and Seltzer’s teachings of ways of improving the read and write operations of a file system. Even if Markatos’s system purportedly outperforms other systems, that does not change the fact that Seltzer suggests techniques to improve Medin’s teachings that a POSITA would have had reason to implement to substantially minimize the time for retrieving network objects from mass storage with a reasonable expectation of success. In other words, we disagree with Patent Owner’s implication that Markatos’s disclosure of a purported improvement to traditional file system caching would lead a POSITA to dismiss Seltzer’s teachings of optimization techniques applicable to file system caching.” slip op. at 19
Patent outcomesUS 7,103,794 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,103,794 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentablePTAB · Feb 6, 2023 · IPR2021-01298 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–29 are unpatentable, principally as obvious over Lee alone, Lee and Glance, or Lee and Smith; claim 30 was not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“of independent claim 1 is either taught or suggested by Lee. We are also persuaded that, an ordinarily skilled artisan would have found it obvious, in view of Lee’s teachings, to arrive at the subject matter recited in claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Lee.” slip op. at 57
- Strike new argumentNew argument disregardedDecided for petitioner
“arguments in Patent Owner’s Sur-reply that are allegedly untimely (Paper 38), and Patent Owner responded (Paper 39). For the reasons explained below, we agree with Petitioner that the Sur-reply includes untimely new arguments, but we determine that those arguments would not have been persuasive even if they had been properly raised. See infra § II.E.1.b.ii (addressing Lee’s usage history).” slip op. at 3
Patent outcomesUS 10,911,938 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,911,938
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.