- Unified Patents, LLC v. Mel Navip, LLCInstitutedPTAB · May 23, 2023 · IPR2023-00083 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood that claims 1–3 are obvious over Niemoeller, Nishizaki, and Yamamoto, and claims 4–5 over those references and Keely.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As Fintiv notes, the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv at 13–14. Given that we that have no indication the litigation is or will be stayed pending an IPR, we decline to speculate as to the possibility of a stay. Thus, this factor is neutral as to discretionary denial.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Discretion Under § 325(d) Petitioner contends that we should not exercise our discretion to deny institution under 35 U.S.C. § 325(d). Pet. 72. Petitioner asserts that no proceeding involving the ’368 Patent has been previously brought before the Office, and that none of the references cited herein was before the Examiner during prosecution. Id. Patent Owner does not argue otherwise. See Prelim. Resp. As such, we decline to exercise our discretion to deny institution of review under 35 U.S.C. § 325(d).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“had at least a bachelor’s degree in electrical or computer engineering, or an equivalent field, and at least two years of work experience involving telecommunications, signal processing, or speech recognition technology.” Pet. 6; see Ex. 1003 ¶ 17. Petitioner further asserts that “[m]ore education 7 Because we determine Fintiv factors 1–5 weigh against discretionary denial, we need not consider the compelling merits question. See CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (Feb. 27, 2023) (“The Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.”) (precedential). can supplement practical experience and vice versa.” Pet. 6. Patent Owner provides a generally commensurate statement in the Preliminary Response, supported by its declarant. Prelim. Resp. 6 (citing Ex. 1003 ¶¶ 9–11). Because we do not discern any substantive difference in the parties’ formulations, we adopt Petitioner’s assessment for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Petitioner asserts that “[n]o formal claim constructions are necessary in this proceeding because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Pet. 12 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Petitioner also asserts that because no claim terms use the term “means,” there is a rebuttable presumption that § 112 ¶ 6 does not apply, but Petitioner provides charts identifying the specific portions of the specification that describe the corresponding structure for each such potential limitation, should we decide the presumption is overcome and § 112 ¶ 6 applies. Id. at 12–18. Patent Owner agrees with Petitioner “that no formal claim construction is necessary in this proceeding and that no terms in the Challenged Claims use the terms ‘means’ to recite any means-plus-function limitations.” Prelim. Resp. 6. For purposes of this Decision, we determine that no claim term in the challenged claims of the ’368 Patent requires specific construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Similarly, because no claim recites an explicit “means” limitation, and because neither party deems construction under § 112 ¶ 6 necessary, we construe all limitations of the challenged claims in accordance with their ordinary and customary meaning.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,060,368 - Motorola Mobility LLC v. Maxell, Ltd.InstitutedPTAB · Feb 24, 2023 · IPR2022-01348 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 2–9, finding a reasonable likelihood that the challenged claims are unpatentable on the asserted Phillips and Russ grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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). After considering the Petition, the Preliminary Response, and the evidence of record, we institute an inter partes review as to the challenged claims of the ’394 patent on the grounds of unpatentability presented.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We determine that, as shown below, it is not necessary to explicitly construe any claim terms in order to make this institution decision. 12,13” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“17 We adopt the parsing of the claims as set forth in the Petition in order to follow the contentions in the Petition. 18 “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The preamble of claim 2 is a statement of purpose or intended use and claim 2 otherwise appears to define a structurally complete invention. Thus, our initial determination is that the preamble of claim 2 is not limiting. However, we need not decide whether the preamble of claim 2 is limiting as we determine the Petitioner establishes the cited art teaches a digital content reproducing apparatus. Figure 1 of Phillips depicts “an interactive television system.” Ex. 1005, 4:60–61. As quoted in the Petition (Pet, 27–28), the related description of Figure 1 of Phillips states, “[c]ontent such as television programming and digital music may be provided from programming sources 12 to television distribution facilities such as television distribution facility 14 using communication path 16” (Ex. 1005, 6:32–36) and “[t]he user equipment may receive television and music programming and other information from television distribution facility 14 over communication paths 26, 27, and 28” (id. at 6:56–59). Patent Owner does not argue the preamble of claim 2. Based on this record, we determine that the preamble of claim 2 is disclosed by Phillips.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Phillips and as obvious in view of Phillips and Ackley, and Phillips and Wallis. Pet. 8. Petitioner further challenges claims 3, 6, and 9 in view of Phillips and Uchida, Phillips and Ackley and Uchida, and Phillips and Wallis and Uchida. Id. For each of these additional challenges based on Phillips alone and Phillips in combination with additional references, the Petition includes a detailed argument for each challenged claim in which the cited art is mapped to the limitations and, for each obviousness challenge, contentions as to motivation to combine. Id. at 25–59. For each of these challenges based on Phillips alone and Phillips together with one or more other references, Patent Owner limits its arguments to those discussed above with regard to Phillips. See generally Prelim. Resp. We have considered all of Petitioner’s challenges based on Phillips alone and Phillips in combination with one or more references and Patent Owner’s contrary arguments relating to Phillips. We determine that for each of these challenges Petitioner has demonstrated a reasonable likelihood of showing the claims challenged in the Petition are unpatentable. For each of these additional claims and challenges, Petitioner has shown that institution is independently appropriate under the applicable legal standard. See 35 U.S.C. § 314(a).” slip op. at 40
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,170,394 - PTAB · Jan 27, 2023 · IPR2022-01168 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that claims 1, 5, 7, 11, 13, and 17 are obvious over Xu and Ferris, and claims 2–4, 6, 8–10, 12, 14–16, and 18 …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the contentions and the evidence of record at this juncture, we conclude Petitioner establishes a reasonable likelihood of prevailing in demonstrating the unpatentability of claims 1–18 of the ’134 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’134 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“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 before the effective date of the applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and 103. Our analysis would not change under the AIA versions of §§ 102, 103. 3 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’134 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’134 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner contends that, as to the phrase “determining a consumption rate of cloud resources by one or more virtual machines (VMs),” recited in claim 1 and “analogous limitations” in claims 7 and 13, a person of ordinary skill in the art “reading the claims in light of the specification would have understood that the claims’ use of ‘by one or more [VMs]’ refers to consumption rates of cloud resources by the VMs (i.e., the rate at which the VMs are consuming the cloud resources), not determination performed by the VMs.” Pet. 8 (citing Ex. 1002 ¶¶ 111–113). Petitioner argues that its proposal is consistent with the ’134 patent Specification. Id. (citing, e.g., Ex. 1001, 4:62–66, 5:15–17, 5:37–43, 5:51–53, Fig. 1). We preliminarily find Petitioner’s unopposed proposal consistent with the intrinsic record based on the record before us at this early juncture.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“environment and triggering external migration when a threshold value is reached. Id. (citing, e.g., Ex. 1006 ¶¶ 12, 51–52, 65). Petitioner asserts that extending Xu’s teachings of analysis and monitoring “for the cloud environment as a whole” would have been a “predictable, straightforward application of Ferris teachings” and “would have allowed Xu to migrate VMs to a separate cloud environment when it encounters cloud-wise resource scarcity.” Id. at 37 (citing, e.g., Ex. 1002 ¶¶ 207–219). Petitioner also asserts a person having ordinary skill in the art “would have recognized that the ability to move VMs to other cloud environments was advantageous, as it would provide a safety valve ensuring that VMs still have access to sufficient resources even if the current cloud environment becomes overloaded.” Id. at 38 (citing, e.g., Ex. 1002 ¶ 213). Petitioner further asserts that its proposed combination would have been viewed as a reasonable way to achieve balancing objectives. Id. at 38–39 (citing, e.g., Ex. 1002 ¶ 214; Ex. 1005, 1). We preliminarily find that Petitioner’s contentions are supported sufficiently by the cited portions of the asserted art. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have combined the teachings of Xu and Ferris in the manner proposed by Petitioner. After consideration of the contentions and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently that Xu alone or with Ferris teaches element 1.4 of claim 1 for purposes of institution.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,635,134 - Google LLC v. Jawbone Innovations, LLCInstitutedPTAB · Jan 3, 2023 · IPR2022-01061 · APJ Lynne E Pettigrew · IPR · Institution
The Board instituted inter partes review of claims 23–28 and 41–46 on the § 103(a) obviousness ground over Kanamori and McCowan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“at 7. Based on the current record, we decline to speculate how the district court might decide a motion to stay in the event Petitioner files one. Hence, we find that this factor does not weigh for or against exercising our discretion to deny institution. 2. Factor 2 — Proximity of Court’s Trial Date For the second Fintiv factor, the Interim Procedure states: Parties may present evidence regarding the most recent statistics on median time-to-trial for civil actions in the district court in which the parallel litigation resides for the PTAB’s consideration. Where the parties rely on time-to-trial statistics, the PTAB will also consider additional supporting factors such as the number of cases before the judge in the parallel litigation and the speed and availability of other case dispositions. . . . 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.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“have been obvious to modify Kanamori in view of McCowan to address near-field speech situations, such as the use of a headset, because nothing in Kanamori discusses the use of headsets, and adapting Kanamori to handle near-field speech sources would render Kanamori useless for its intended purpose of operating “in a noisy environment or reflective sound field . . . such as being used for loudspeakers or calling.” Prelim. Resp. 10–13 (citing Ex. 1005 ¶ 115). On this record, however, we are persuaded that the Petition provides sufficient argument and evidence, including Dr. Vipperman’s testimony, to show that a person of ordinary skill in the art would have been motivated to combine Kanamori and McCowan in the manner asserted. See Pet. 27, 31–41. Although Kanamori does not directly address near-field applications such as headsets, Petitioner makes a sufficient showing that a person of ordinary skill in the art would have modified Kanamori’s Figure 17A configuration to incorporate McCowan’s near-field compensation technique to make Kanamori’s noise suppression device more effective for near-field devices such as headsets. See id.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry experience or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6 (citing Ex. 1003 ¶ 25). Petitioner further asserts that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. (citing Ex. 1003 ¶ 25). At this stage of the proceeding, Patent Owner does not assert a different level of ordinary skill in the art at the time of the alleged invention and uses Petitioner’s proposed level of skill. Prelim. Resp. 6. Based on the current record and for purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, which is consistent with the ’691 patent and the prior art of record.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties state that express construction of any claim terms is unnecessary at this stage of the proceeding. Pet. 6–7; Prelim. Resp. 6. We agree that we need not construe any claim terms for purposes of deciding whether to institute an inter partes review. 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 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,503,691 - Google LLC v. Jawbone Innovations, LLCInstitutedPTAB · Jan 3, 2023 · IPR2022-01060 · APJ Lynne E Pettigrew · IPR · Institution
Instituted IPR of claims 1–22 and 29–40 on the asserted §103 ground over Kanamori and McCowan; the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrates a reasonable likelihood of prevailing in showing that at least one challenged claim is unpatentable. We decline, however, to characterize Petitioner’s challenges as “particularly strong on the preliminary record.” Therefore, weighing the facts in this particular case, we find that this factor does not weigh for or against exercising our discretion to deny institution.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“evidence, and we determine that, for purposes of institution, Petitioner shows sufficiently that the combination of Kanamori and McCowan teaches or suggests all the limitations of claim 1 and provides sufficient rationale for combining the references. Accordingly, we determine that the information presented demonstrates a reasonable likelihood that Petitioner will prevail in establishing that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Kanamori and McCowan.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“have been obvious to modify Kanamori in view of McCowan to address near-field speech situations, such as the use of a headset, because nothing in Kanamori discusses the use of headsets, and adapting Kanamori to handle near-field speech sources would render Kanamori useless for its intended purpose of operating “in a noisy environment or reflective sound field . . . such as being used for loudspeakers or calling.” Prelim. Resp. 10–12 (citing Ex. 1005 ¶ 115). On this record, however, we are persuaded that the Petition provides sufficient argument and evidence, including Dr. Vipperman’s testimony, to show that a person of ordinary skill in the art would have been motivated to combine Kanamori and McCowan in the manner asserted. See Pet. 20–23, 29–41. Although Kanamori does not directly address near-field applications such as headsets, Petitioner makes a sufficient showing that a person of ordinary skill in the art would have modified Kanamori’s Figure 17A configuration to incorporate McCowan’s near-field compensation technique to make Kanamori’s noise suppression device more effective for near-field devices such as headsets. See id.” slip op. at 36
- Skill levelSkill level petitioner adoptedOther
“different level of ordinary skill in the art at the time of the alleged invention and uses Petitioner’s proposed level of skill. Prelim. Resp. 6.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,503,691 - Google LLC v. Jawbone Innovations, LLCInstitutedPTAB · Jan 3, 2023 · IPR2022-01124 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–20 under § 103 over Kanamori, McCowan, and Elko, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Given that the median time to go to trial in the Google case indicates that a decision is unlikely to precede our Final Written Decision, we find that factor 2 weighs against exercising our discretion to deny institution.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Analysis In regard to Patent Owner’s arguments regarding the simulations relied on by Petitioner’s declarant, we note that Dr. Vipperman’s declaration includes an extensive explanation in a section of the declaration titled “Simulations of Virtual Microphone Responses” that explains in detail the equations used for each simulation and the values of the variables in each equation based on Kanamori, McCowan, and the knowledge of a person of ordinary skill in the art. See Reply 1 (citing Ex. 1003 ¶¶ 50–60). Patent Owner is free to further explore the basis of Dr. Vipperman’s simulations, but at this stage we are not persuaded to disregard them. Also, in response to Patent Owner’s argument that 1000 Hz is not a representative speech signal, we note that the ’357 patent uses that frequency in its examples of speech signals, which undercuts Patent Owner’s argument. Ex. 1001, 11:41, 12:40. We are also not persuaded at this stage that the fact that Kanamori does not discuss near-field applications is inconsistent with Petitioner’s articulation of why a person of ordinary skill in the art would have been motivated to modify Kanamori based on the teachings of McCowan. Other than as discussed above, Patent Owner does not specifically” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that this modification of Figure 17A is motivated because it would have been obvious to implement Kanamori’s microphone device for use with near-field speech, such as a headset. Pet. 24 (citing Vipperman Decl. ¶ 80). Petitioner argues that although Kanamori discloses a variety of “use environments” and “purposes” for its microphone devices, it does not explicitly factor in the distance of the speech source to the microphones because the amplitude differences at each microphone caused by amplitude decay from the distance traveled “are negligible for far-field sources.” Id. at 28 (citing Ex. 1005 ¶¶ 151, 182; Ex. 1006, 93; Vipperman Decl. ¶ 84). In addition, Petitioner’s declarant Dr. Vipperman explains that when both speech and noise originate in the far field, a person of ordinary skill in the art would understand that Kanamori’s microphone device would suppress noise from most directions well but may struggle to suppress noise that originated from the same direction as the speech source because it could not differentiate between speech and noise arriving from the same direction. Id. at 29 (citing Ex. 1005, 168; Vipperman Decl. ¶ 86). To accommodate a near-field application such as a headset, Petitioner argues that one of ordinary skill would have been motivated to modify Kanamori’s noise reference signal m2 to account for differences in amplitude decay caused by distance travelled, which “can be significant in the near-field case.” Pet. 30 (citing Ex. 1006, 93; Vipperman Decl. ¶ 88). Petitioner argues that one of ordinary skill would have been motivated to turn to the teachings of McCowan, because it provided the information on how to modify Kanamori’s noise reference signal m2 for use in a device such as a headset. Id. at 32 (citing Ex. 1006, 88; Vipperman Decl. ¶¶ 89– 90). This includes considering the fact that, for a near-field speech source, a spherical wavefront model is more accurate than a planar wavefront, in which case phase misalignment and amplitude scaling must be taken into account. Id. at 33 (citing Ex. 1006, 89–90, 93–94; Vipperman Decl. ¶ 91). As a result, according to Dr. Vipperman’s analysis, the above modification of Figure 17A would have been obvious. Pet. 34–37 (citing Vipperman Decl. ¶¶ 95–98). Petitioner’s declarant Dr. Vipperman used simulations to generate plotted responses of virtual microphones m1 and m2 when this modified version of Figure 17A is used, which plots are reproduced below.” slip op. at 29
- Expert testimonyPetitioner expert creditedDecided for petitioner
“c) Analysis In regard to Patent Owner’s arguments regarding the simulations relied on by Petitioner’s declarant, we note that Dr. Vipperman’s declaration includes an extensive explanation in a section of the declaration titled “Simulations of Virtual Microphone Responses” that explains in detail the equations used for each simulation and the values of the variables in each equation based on Kanamori, McCowan, and the knowledge of a person of ordinary skill in the art. See Reply 1 (citing Ex. 1003 ¶¶ 50–60). Patent Owner is free to further explore the basis of Dr. Vipperman’s simulations, but at this stage we are not persuaded to disregard them. Also, in response to Patent Owner’s argument that 1000 Hz is not a representative speech signal, we note that the ’357 patent uses that frequency in its examples of speech signals, which undercuts Patent Owner’s argument. Ex. 1001, 11:41, 12:40.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - Google LLC v. Nobots LLCInstitutedPTAB · Dec 1, 2022 · IPR2022-00941 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 3–9, 11, and 13–20 on all petition grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’885 “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 13. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then 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). Petitioner contends that all claim terms should be given their “ordinary and customary meaning as understood by a [person of ordinary skill in the art] and the patent’s prosecution history.” Pet. 4. Petitioner further contends that such meaning for the following terms is made explicit in the ’885 patent: “model data,” “issued data,” and “interest data.” Id. at 5 (citing Ex. 1001, 2:59–3:51). Patent Owner does not propose a construction for any claim term, or even address the issue of claim construction in its Preliminary Response. For purposes of this Decision, we regard all terms as having their ordinary and customary meaning as would be understood by an ordinarily skilled artisan. We determine that it is unnecessary to expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec, 868 F.3d at 1017 (citing Vivid Techs in the context of an inter partes review).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We conclude, at this time, that Petitioner’s reasoning is sound, and amply supported by record evidence. We also conclude that the record readily conveys that a skilled artisan would have had a reasonable expectation of success in combining the teachings of O’Sullivan and Willner to arrive at the invention of the relevant claims of the ’885 patent. On the record before us, we are not satisfied that either Patent Owner’s arguments or the testimony of its declarant, Samuel Russ, Ph.D., suitably take into account what a person of ordinary skill in the art would have gleaned from the teachings of O’Sullivan and Willner. See, e.g., Prelim Resp. 16, 25–27; Ex. 2101 ¶¶ 85–88. In that respect, and on the current record, we credit Dr. Lopresti’s testimony (e.g., Ex. 1003 ¶¶ 78, 79) over the countervailing testimony of Dr. Russ, as, in our view, Dr. Lopresti’s testimony better reflects what a skilled artisan would have understood in combining the teachings of O’Sullivan and Willner. Furthermore, although, as Patent Owner notes, the Petition does not use the specific phrase “reasonable expectation of success” (see, e.g., Prelim. Resp. 15), that such an expectation is present flows intrinsically from Petitioner’s and Dr. Lopresti’s explanation underscoring the proposed ground.” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Indeed, record evidence, which neither Patent Owner or Dr. Russ addresses, clearly suggests a recognized harmony in the field in distinguishing between two humans and distinguishing between a human and a computer. In that respect, O’Connell teaches, for instance, the following as a part of its disclosed fraud detection procedures: As discussed previously, the fraud detection results may include an indication of the likelihood that the person (or entity) acting as the user of the current session is in fact the actual user or is actually a different user or automated program instead engaging in fraudulent behavior, The algorithms used by the fraud detection module 116 and its sub-modules to determine the likelihood of fraudulent behavior may include both standard or general algorithms as well as algorithms specified by an implementer of the system (i.e., e-commerce application 118 operators) based on their own needs or observations of what is typical or fraudulent for their site. The flexibility of algorithms also includes whether to attempt to detect fraudulent behavior by both humans and automated programs to only attempt to detect one of the two. The fraud detection result algorithms may thus allow for flexible weighting and/or consideration of different or multiple factors. See Ex. 1007 ¶ 46. Because record prior art evidence clearly conveys recognition of the use of programming components and flexible algorithms to differentiate between different humans or between a human and an automated program, we do not agree with Patent Owner that there is any meaningful difference, much less a “fundamental difference,” between such differentiation in the relevant field. On this record, we find Patent Owner’s assessment to the contrary to be inadequately explained and supported, and we do not conclude that Tanzer is non-analogous art.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,423,885 - Google LLC v. Nobots LLCInstitutedPTAB · Dec 1, 2022 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Institution
Instituted review of claims 1–20 on all petition grounds after finding a reasonable likelihood of prevailing on at least one claim, including the Willner grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 6
- Other 314aDenied
“grounds” are necessary. Id. Although there is some overlap among the five numbered grounds in the Petition, such overlap is, in our view, neither excessive nor unexplained and does not rise to the level for which discretionary denial might be warranted. In that respect, Petitioner adequately explains what references it is relying for each claim limitation as a part of the various grounds.” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“3. On this record, Patent Owner does not adequately connect its arguments to the plain language of claim 1 or suitably account for Willner’s disclosure. In particular, we note that claim 1 simply requires that a server issue data to a client computing device and that model data either relate to or be in response to that data that the server issued (i.e., “the issued data”). The ’008 patent also explains that the issued data is data provided from a server to a different computing device for which the user status assessment is performed. See Ex. 1001, 3:33–37. Willner clearly discloses that a given website encompassing a server includes stored data indicative of vector patterns that are related to, or in response to, human interaction, and that such data is issued or provided to a different computing device where it is used as an assessment as to the presence of a human operator or bot. See, e.g., Ex. 1005 ¶¶ 37–38. At this time, we cannot discern why Willner’s disclosure in that respect does not account adequately for the pertinent requirements of claim 1, even if some of the involved model data may come from more than a single webpage. On this record, we conclude Petitioner’s contentions as to Willner’s disclosure in connection with step 1d) are persuasive. Further, at this time, we credit the testimony of Petitioner’s declarant, Dr. Lopresti (see, e.g., Ex. 1003 ¶¶ 78–83), over that of Patent Owner’s declarant, Dr. Russ (see, e.g., Ex. 2001 ¶¶ 93–99), as we conclude that Dr. Lopresti’s testimony is predicated on a better assessment of what claim 1 requires and of what Willner discloses.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“viability of combining Willner’s teachings with those of Kitts, but do not find that any of them warrant denial of institution of trial. The parties agree that a person of ordinary skill in the art has considerable education and experience in the areas of computer science and computer security. See Pet. 4; Prelim. Resp. 12. The record reflects that Kitts’s express teachings would have conveyed to a person of ordinary skill in the art involved in computer science and security that “passive data” can be useful as an “important tool” in the realm of evaluating the possibility that click fraud is occurring. See, e.g., Ex. 1009 ¶ 47; see also Ex. 1003 ¶ 118. Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity. KSR, 550 U.S. at 421. It follows reasonably from Kitts’s teachings that one of ordinary skill and creativity would have appreciated that passive data would have had recognized benefits in detecting click fraud in the type of system conveyed in Willner (see Ex. 1009 ¶ 47; see also Ex. 1003 ¶ 118), even if harnessing those benefits in such a system would require addressing issues of “complexity” as urged by Patent Owner. See, e.g., Prelim. Resp. 49. That is reasonably so even if Willner expresses praise for its own system’s effectiveness in detecting bots engaging in click fraud. There is no plausible indication on the record at hand that employing a particular type of data, i.e., passive data, in a click fraud detection system would have been beyond the skill of a skilled artisan so as to suggest non-obviousness. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). On this record, we find credible, and adequately supported by record evidence, Dr. Lopresti’s testimony that use of passive data was well known “to help differentiate humans from bots.” See, e.g., Ex. 1003 ¶ 118. We further credit Dr. Lopresti’s testimony that a person of ordinary skill in the art would have had adequate motivation to combine Willner’s and Kitts teachings (see, e.g., id.), and also conclude, at this time, that that the record reasonably conveys that there would have been a reasonable expectation of success in doing so. Accordingly, we conclude that institution of an inter partes review based on the ground involving the combined teachings of Willner and Kitts is warranted.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,595,008 - Commscope, Inc. v. TQ Delta, LLCInstitutedPTAB · Nov 28, 2022 · IPR2022-01012 · APJ Lynne E Pettigrew · IPR · Institution
The Board instituted IPR of claims 1–28 on both asserted § 103 grounds, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“Patent Owner does not assert that inclusion of Nokia as a real party interest would have barred the Petition under 35 U.S.C. § 315(b). See id. at 15–19. Therefore, it is unnecessary for us to determine whether Nokia is a real party in interest for purposes of deciding whether to institute an inter partes review. See SharkNinja Operating LLC v. iRobot Corp., IPR2020- 00734, Paper 11 at 18−20 (PTAB Oct. 6, 2020) (precedential) (no real party in interest analysis is necessary at institution absent allegation of time bar or estoppel based on unnamed RPI). Accordingly, at this stage of the proceeding, we do not consider whether Nokia should have been named as a real party in interest.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),6 which states, among other things, that “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.” Memorandum 3. On July 7, 2022, Petitioner submitted in the Texas litigation “Defendants’ Stipulation Regarding Invalidity Contentions,” which states that “Defendants hereby stipulate that if the Board institutes IPR in . . . IPR2022-01012, they will not pursue in this case the specific grounds identified . . . in connection with the referenced patent(s) [including the ’809 patent] and claim(s) as originally issued on the instituted IPR petition(s), or any other ground for a given patent for which the Board institutes that was raised or reasonably could have been raised in an IPR.” Ex. 1035, 3. Therefore, we decline to exercise our discretion to deny institution in this proceeding under Fintiv in accordance with the Memorandum.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d), the Board uses a two-part framework: (1) determining 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; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we consider whether the petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute Petitioner’s proposed level of skill in the art. See generally Prelim. Resp. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,833,809 - Commscope, Inc. v. TQ Delta, LLCInstitutedPTAB · Nov 15, 2022 · IPR2022-00809 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claims 1–4, 6, 7, 9–12, 14, 15, 17–20, 22–24, 26, and 28 are obvious.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“(“Nokia”) as a real party in interest. Prelim. Resp. 15–19. Patent Owner asserts that “Nokia and CommScope are co-defendants in the Texas Lawsuit, and they have acted in a clearly cooperative form in filing [13] actions before the Board” in that none of their “combined 13 IPR petitions overlap and cover the same patents, confirming a contract on joint strategy.” Id. at 17. Patent Owner does not assert inclusion of Nokia as a real party in interest would have barred the Petition under 35 U.S.C. § 315(b). See id. at 15–19. Therefore, determining whether Nokia is a real party in interest is not necessary for the purpose of rendering this Decision. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18−20 (PTAB Oct. 6, 2020) (precedential) (no real party in interest analysis is necessary at institution absent allegation of time bar or estoppel based on unnamed RPI). Accordingly, at this stage of the proceeding, we do not consider whether Nokia should have been named as a real party in interest.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),6 which states, among other things, that “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.” Memorandum 3. On July 7, 2022, Petitioner submitted in the Texas litigation “Defendants’ Stipulation Regarding Invalidity Contentions,” which states that “Defendants hereby stipulate that if the Board institutes IPR in . . . IPR2022-00809 . . . , they will not pursue in this case the specific grounds identified . . . in connection with the referenced patent(s) [including the ’348 patent] and claim(s) as originally issued on the instituted IPR petition(s), or any other grounds for a given patent for which the Board institutes that was raised or reasonably could have been raised in an IPR.” Ex. 1036, 3. Therefore, we decline to exercise our discretion to deny institution in this proceeding under Fintiv in accordance with the Memorandum.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Whether the Same or Substantially the Same Art or Arguments Were Previously Presented to the Office It is undisputed that G.993.2 and Fukushima were before the Examiner during prosecution of the ’348 patent. Pet. 11–12, 55; Prelim. Resp. 9, 11–12, 34. However, Petitioner asserts that “these references were not subject to any substantive analysis during prosecution of the [’348 patent].” Pet. 55. There is no assertion that Mitlin or Reynders were before the Examiner or are cumulative of prior art evaluated during examination, nor that the combination of G.993.2, Fukushima, and Mitlin or the combination of G.993.2, Mitlin, and Reynders were before the Examiner. See generally Prelim. Resp. In other words, each of Petitioner’s grounds relies on additional references that were not before the Examiner, i.e., Mitlin and Reynders. See, e.g., Pet. 2. Under these circumstances, we find the first part of the Advanced Bionics framework is not satisfied because the Petition sets forth a combination of prior art and arguments that are not the same or substantially the same as that considered by the Examiner during prosecution. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of institution, we find that Petitioner’s rationale, which is supported by the unrebutted testimony of Mr. McNair, is sufficient motivation to combine the references with a reasonable expectation of success. However, we note that Patent Owner’s arguments may have some merit, and encourage the parties to further develop this issue at trial. j) Conclusion for Independent Claim 1 Based on our review and consideration of the current record, we determine that Petitioner has adequately shown that the combination of G.993.2, Mitlin, and Fukushima teaches the limitations in claim 1, and has provided sufficient rationale for combining the references for purposes of institution. We determine, on the current record and for purposes of this Decision, that the information presented in the Petition demonstrates a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of G.993.2, Mitlin, and Fukushima.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,094,348
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.