- Meta Platforms, Inc. / Amazon.Com, Inc. et al. v. Almondnet, Inc.All claims unpatentablePTAB · Nov 28, 2023 · IPR2022-01064 · APJ Kristen L Droesch · IPR · Final written decision
Claims 9–12 are unpatentable under §103 over Meyer, Zeff, Edlund, and Fisher; the Board did not reach the challenge adding Tittel.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We do not agree with Patent Owner’s construction for “automatically with the BT computer system.” Under Phillips, the starting point for the analysis is the language of the claims themselves. See Phillips, 415 F.3d at 1314. Claim 9 recites “automatically with the BT computer system” and does not otherwise recite or require the acts recited in the claims that follow, such as “arranging for a third party computer system . . . to electronically tag a first computer of a first visitor visiting a website . . .” to be performed in whole or part by the BT computer system. Accordingly, based on the record evidence, we decline to adopt Patent Owner’s proposed construction for “automatically with the BT computer system.” As demonstrated in the analysis below, we need not further explicitly construe “automatically with the BT computer system” to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“property” and “demographic information about a visitor to a media property” (PO Resp. 7–8) (emphasis added), while the cited ’615 Patent Specification discloses that the “visitor’s profile “could be the observed behavior of the visitor on the media property, demographic information collected on the media property.” Ex. 1001, 3:37–44 (emphasis added); see also, e.g., Ex. 1001, 4:16–21, 4:64–67. In other words, without explanation, Patent Owner’s proposed construction for “profile information” encompasses the observed behavior, in general, of a media property visitor and the demographic information, in general, about a media property visitor, and is therefore broader than the cited ’615 Patent Specification, which more narrowly discloses the visitor’s observed behavior on the media property and the visitor’s demographic information collected on the media property. Patent Owner does not direct us to disclosure in the ’615 Patent Specification to support the full scope of Patent Owner’s proposed construction for “profile information.” In sum, based on the record evidence, we decline to adopt Patent Owner’s proposed construction for “profile information,” because the broad scope of the proposed construction is not supported by Patent Owner’s citations to the ’615 Patent Specification disclosure. Consistent with the cited ’615 Patent Specification disclosures, we instead construe “profile information” as “the observed behavior of the visitor on the media property, demographic information collected on the media property, or both.”8” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundNo construction neededDecided for petitioner
“system.” Under Phillips, the starting point for the analysis is the language of the claims themselves. See Phillips, 415 F.3d at 1314. The language of claim 9 does not include limitations precluding the later occurring transfer of any profile information as a result of tagging the first computer of a first visitor visiting a first website. See Ex. 1001, 14:7–40. We also agree with Petitioner’s arguments that the language of claim 9, by use of the transitional phrase “comprising,” does not preclude the occurrence of “transferring to the third party computer system any profile information” after the step of “arranging for a third party computer system . . . to electronically tag a first computer of a first visitor visiting a first website, which occurs “at a first time.” See id. We also do not agree with Patent Owner’s arguments that the ’615 Patent Specification supports its construction. Although Patent Owner directs attention to the ’615 Patent Specification disclosures that the BT computer company stores a visitor’s collected profile information and does not transfer it to the second media property, but asks the second media property to tag the visitor or arrange for a tag to be placed (see PO Resp. 10; Ex. 1001, 9:47–54), and further discloses that the BT company has no economic incentive to transfer profile information to the second media property (see PO Resp. 11; Ex. 1001, 9:54–65), these disclosures do not provide sufficient support for Patent Owner’s requirement that “arranging for a third party computer system . . . to electronically tag a first computer of a first visitor visiting a first website” must not result in transfer of visitor profile information to the third party computer system. See PO Resp. 10–11.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web). A person could also have qualified with more formal education and less technical experience, or vice versa. Petitioner’s definition, and does not offer an alternate definition. See PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 18
Patent outcomesUS 9,830,615 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,830,615 - Nearmap US, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00735 · APJ Russell E Cass · IPR · Final written decision
Claims 1–16 were not shown unpatentable because the Snavely-based combinations did not teach a “primary oblique image” as construed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner’s construction of the term “primary oblique image” as “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” This construction is supported by the ’518 patent Specification, which includes a listing of “Terminology” that contains the following definition for the term “primary oblique image”: Primary oblique image—a displayed oblique image that can be considered ‘in front of’ the other displayed images. The primary oblique image can also be a master image. Ex. 1001, 6:25:31–34.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the full trial record, we find that Petitioner has not sufficiently shown that the proposed combination includes a “primary oblique image” as properly construed. As discussed above, we construe the term “primary oblique image” to require “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” See supra § II.A.1(b). In its papers, Petitioner does not demonstrate that Snavely discloses a “primary oblique image” that can be considered “in front of” the other displayed images. To the contrary, we agree with and find credible Dr. Bajaj’s testimony that the “main view” of Snavely’s Figure 5, which Petitioner points to as the “primary oblique image,” is “behind the other displayed images in overlay panes,” such as the information pane, thumbnail pane, and map pane, and “therefore, necessarily cannot be considered ‘in front of’ the other displayed images.” Ex. 2007 ¶ 60; see Ex. 1004, Fig. 5; PO Resp. 26. Our conclusion is also supported by the fact that Snavely refers to the information, map, and thumbnail panes as “overlay panes.” Ex. 1004, 5 (“The components of this window are the main view, which fills the window, and three overlay panes: an information and search pane on the left, a thumbnail pane along the bottom, and a map pane in the upper-right corner.”). We agree with and find credible Dr. Bajaj’s testimony that Snavely’s description of these panes as “overlay” panes confirms that “the main view image is behind the images shown in the map pane, the information pane, and the thumbnail pane.” Ex. 2007 ¶ 61 (citing Ex. 1004, 5). Additional support is found in Dr. Forsyth’s deposition testimony, where he explained that one of ordinary skill would have understood “overlay panes” to be “on top of” a main display:” slip op. at 38
- ExcludeMotion to exclude, deniedDenied
“E. Patent Owner’s Motion to Strike and Motion to Exclude Patent Owner filed a Motion to Strike certain portions of the Third Munford Declaration (Exhibit 1020) and its Appendices, which Petitioner submitted to show that Snavely and Irani were publicly accessible before the critical date of the ’518 patent. Paper 30. Patent Owner also filed a Motion to Exclude certain Appendices of the Second Munford Declaration (Exhibit 1016) and Third Munford Declaration, which Petitioner also submitted to show public accessibility of Snavely and Irani. Paper 35. Because, as discussed above, we find that Petitioner has not proven by a preponderance of the evidence that the challenged claims would have been obvious over Snavely, Balfour, Irani, and Yelton, we need not reach whether Petitioner has sufficiently shown that Snavely and Irani were publicly accessible before the critical date. We, therefore, deny Patent Owner’s Motion to Strike and Motion to Exclude as moot.” slip op. at 40
Patent outcomesUS 8,593,518 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,593,518 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution deniedPTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,010,330 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - Nearmap US, Inc. v. Pictometry International Corp.All claims unpatentablePTAB · Oct 20, 2023 · IPR2022-00733 · APJ Garth D Baer · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Kennedy, Florance, and Kreft; the Board did not reach the two alternative obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. PRELIMINARY MATTERS A. LEVEL OF ORDINARY SKILL Petitioner contends a person of ordinary skill in the art at the time of the ’880 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 7. Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. The plain meaning of the limitation at issue requires only displaying (“providing visual access”) to images that have come from an aerial image database (“images of an aerial imagery database”). As Petitioner notes, however, nothing in the term’s plain language requires accessing a database. Id. Moreover, as Petitioner notes, the doctrine of claim differentiation undermines Patent Owner’s construction because dependent claim 3 expressly recites the database-access step Patent Owner seeks to add to claim 1, which does not have that language. Id. at 5. See, e.g., InterDigital Commc’ns, LLC v. ITC, 690 F.3d 1318, 1324 (Fed. Cir. 2012) (“The doctrine of claim differentiation is at its strongest in this type of case, ‘where the limitation that is sought to be “read into” an independent claim already appears in a dependent claim.’” (quoting Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)). Thus, for the reasons above, we agree with Petitioner that the claimed “providing visual access to one or more oblique images of an aerial imagery database” step in claim 1 does not require accessing an aerial imagery database to retrieve the one or more oblique images.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner because even if Florance addresses accuracy in pre-defined geographic-search areas rather than images, that does not undermine Petitioner’s general contention that using Florance’s method (i.e., moving a marker from a preliminary position to a property’s center) would ultimately improve accuracy and exclude unwanted properties in Kennedy’s oblique images. Likewise, even if Kennedy never asserts that location information is often inaccurate, that does not undermine Petitioner’s rationale because Petitioner’s reason to combine references need not be explicit in the prior art. See KSR, 550 U.S. at 419. Given Petitioner’s accuracy-improvement rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that including Florance’s movable markers in Kennedy’s system would have been obvious to one skilled in the art. See id. at 418, 419.” slip op. at 13
- BurdenFwd all claims unpatentableUnpatentable
“Other than the arguments addressed above, Patent Owner does not additionally challenge Petitioner’s obviousness showing based on Kennedy, Florance, and Kreft. We have reviewed Petitioner’s arguments and evidence and, based on that analysis, we find Petitioner has shown by a preponderance of the evidence that claims 1–20 would have been obvious over Kennedy, Florance, and Kreft.” slip op. at 16
Patent outcomesUS 8,542,880 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,542,880 - PTAB · Oct 11, 2023 · IPR2023-00617 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 3, 12, 14, and 15 on all asserted obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons given, Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claims 1 and 12.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 9 (citing Mudge Decl. ¶ 87). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Mudge explains that “[a person of ordinary skill] would have understood that, while Figure 1 does not depict lines connecting interconnect 108 to core 112-1 and to L2/L3 cache hierarchy, Figure 1’s arrowed lines represent the hierarchical organization of reports and commands between components, not their physical connections.” Mudge Decl. ¶ 99. Dr. Mudge’s testimony is supported by Bose’s description of Figure 1 as showing “a hierarchical power-performance monitor.” Ex. 1005, 3:59–61. Elsewhere, Bose refers to this figure as showing a “management hierarchy” (id. at 6:18) and explains that “[t]o clearly define the responsibility of each layer of the hierarchy, the layers are designed and configured such that the layers report upward and command downward in the hierarchy” (id. at 6:49–52). This disclosure in Bose supports Dr. Mudge’s conclusion that “[b]ased on Bose’s depicted and described hierarchical organization of reports and commands between components, and, based on Bose’s use of the well-known term of art ‘interconnect,’ it would have been obvious to a [person of ordinary skill] that Bose’s interconnect 108 couples and connects to each core and to L2/L3 cache hierarchy.” Mudge Decl. ¶ 99. We find that on this record Petitioner has demonstrated sufficiently at this stage that this element is met by Bose.” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - PTAB · Oct 11, 2023 · IPR2023-00567 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Qualcomm would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (1) 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, 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). We must also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (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, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“physics, or a related field” and would have had “at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 13 (citing Mudge Decl. ¶ 25). At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 14 (citing Mudge Decl. ¶¶ 77–78). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - Metacluster LT, Uab v. Bright Data Ltd.All claims unpatentablePTAB · Oct 4, 2023 · IPR2022-00687 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–14, 16, 17, 20–24, and 26–32 are unpatentable as obvious over Kocherlakota, alone or with RFC 1122; the Board did not reach the Cohen ground.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“record supports the district court’s construction for “first server” as “server that is not the client device or the web server” that we find to apply here in view of the full record. Conversely, we find that the evidence of record does not support Patent Owner’s position that a “first server” is a “server that is not a client device.” a. Claim Language Under Phillips, the starting point for our analysis is the language of the claims themselves. See Phillips, 415 F.3d at 1314. In claim 1, the steps of the method are performed “by the first server.” Ex. 1001, 19:23–24; see PO Resp. 18 (citing Ex. 2041 ¶ 87). In steps 1[a], the 1[e] of claim 1, the first server, “receiv[es], from the first client device, the first URL,” and “receiv[es], from the first client device, the second URL.” See Ex. 1001, 19:25, 19:33. Consistent with the district court’s claim construction for “first server” as “server that is not the client device or the web server,” which we find applies here, steps 1[a] and 1[e] of claim 1 confirm that the first server is not the first client device.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art as of October 8, 2009[]—the ’622 Patent’s earliest claimed priority date—would have had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems. The prior art and the ’622 Patent also evidence this level of ordinary skill. Here, the background technology described in Section VII [of the Petition] and the prior art described in Section IX [of the Petition] demonstrate that a [person or of ordinary skill in the art] would have been familiar with the underlying principles of Web, Internet, network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols. Pet. 12 (citing Ex. 1002 ¶¶ 33, 34, 36). Patent Owner asserts that a person of ordinary skill in the art “would, as of 10/8/2009, have a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” PO Resp. 2 (citing Ex. 2041 ¶ 25). According to Patent Owner, “Patent Owner’s analysis herein does not change under the Board’s preliminary definition of a [person of ordinary skill in the art].” Id. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’622 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 8
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (emphasis omitted)). In other words, a presumption of nexus is appropriate “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand, “‘[w]hen the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process,’ the patentee is not entitled to a presumption of nexus.” Id. Additionally, “[a] finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations.” Fox Factory, 944 F.3d at 1373. Even in the absence of a presumption, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74.” slip op. at 47
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia outweighedDecided for petitioner
“c. Commercial Success In any event, even if Patent Owner established nexus, which we do not find, Patent Owner’s evidence of commercial success is lacking. For example, Patent Owner relies on the testimony of Dr. Williams to support its assertion of $22,136,000 revenue in the year 2021. See PO Resp. 75 (citing Ex. 2041 ¶ 271). Dr. Williams’s does not provide an underlying factual basis for this testimony, and, therefore, it is entitled to little weight. See Ex. 2041 ¶ 272; 37 C.F.R. § 42.65(a). In addition, Patent Owner fails to explain or otherwise allege that its advertising of “enterprise-grade scaling,” “770,000+ Datacenter IPs” “99.99% success rate” and “ #1” rating constitutes evidence of commercial success. See PO Resp. 75; PO Sur-reply 26; Ex. 2041 ¶ 270; Ex. 2039, 1–2, 5. d. Conclusion For the reasons explained above, we conclude that Patent Owner’s evidence purportedly showing commercial success is insufficient because it does not show nexus with the claimed invention. Thus, the objective indicia of nonobviousness is insufficient to outweigh Petitioner’s evidence of obviousness of challenged claims 1, 14, 17, 20–24, and 27–32 on the basis of Kocherlakota. Accordingly, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 1–7, 10, 14, 16, 17, 20–24, and 26–32 would have been obvious over Kocherlakota. 5. Summary After considering the parties’ arguments, the entire record, and weighing the objective indicia of nonobviousness, we determine that Petitioner’s showing of obviousness is strong and outweighs the minimally weighted evidence of commercial success. Accordingly, based on the entire record, Petitioner has established by a preponderance of the evidence that claims 1–7, 10, 14, 16, 17, 20–24, and 26–32 are unpatentable under 35 U.S.C. § 103 over Kocherlakota. E. Challenge to Claims 8, 9, and 11–13 over Kocherlakota and RFC 1122” slip op. at 53
Patent outcomesUS 11,190,622 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,190,622 - Netskope, Inc. v. Fortinet, Inc.Institution deniedPTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution
The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe a claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 9,231,968
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.