- Intuit Inc. v. Samesurf, Inc.All claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63
Patent outcomesUS 9,185,145 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145 - Alivecor, Inc. v. Apple Inc.Institution deniedPTAB · May 10, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 20–22, 24, 29, and 37 obvious over either asserted combination of references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we do not institute an inter partes review of claims 20–22, 24, 29, and 37 of the ’533 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art would have had “a working knowledge of physiological monitoring technologies and human interface design” and a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies and human interface design. Pet. 7; Ex. 1003 ¶ 45. Petitioner alternatively argues that a person of ordinary skill in the art “could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline” and that “[m]ore education can supplement practical experience and vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 45). Patent Owner does not propose a level of ordinary skill in the art and does not dispute Petitioner’s proposal. See generally Prelim. Resp. We adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“For support that AHIT would have been understood to display the required “first user interface,” Petitioner only points us to its testimonial evidence; however, the cited testimony is substantively the same as the argument presented in the Petition with no additional citations to the record that indicate that one of ordinary skill in the art would have understood AHIT to disclose the recited “first user interface.” Compare Pet. 20–21, with Ex. 1003 ¶ 199 (citing nothing in the record). Moreover, in its argument regarding the recited “second user interface,” Petitioner contends that “the display of a preset icon via the screen is a different interface (e.g., a first user interface) from the display of progress of collecting the ECG data via the screen (e.g., a second user interface).” Pet. 25–26 (citing Ex. 1003 ¶ 222). Petitioner clearly equates AHIT’s display with a preset icon to the “first user interface,” which is different from its previous argument that one of ordinary skill in the art “would have understood that a screen, and certainly a screen with the disclosed prompt of AHIT’s wearable device, would have displayed a first user interface indicating that the wearable device was ready to detect biometric information” and “that the first user interface was displayed to inform the user, prior to the collection of the ECG data, that the device was ready to collect ECG data because the user would need to be informed that the trigger action could be effectively received by the device.” Compare id. at 20–21, with id. at 25–26. The cited testimonial evidence also opines that “the person of ordinary skill in the art would have understood that the AHIT user interface would transition from a preset icon (e.g., a first user interface) to a display of ¶ 222. Petitioner’s declarant also equates AHIT’s display of a preset icon with the first user interface, which contradicts AHIT’s disclosure that “when collecting ECG data, the wearable device may display a preset icon via the screen.” Ex. 1006 ¶ 39. We, therefore, give little weight to the opinion of Petitioner’s declarant regarding the “first user interface” because it does not make clear what teaches, suggests, or would have been understood to disclose the “first user interface” and conflicts with what AHIT describes. Compare Ex. 1003 ¶ 199, with id. ¶ 222 and Ex. 1006 ¶ 39.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner, however, provides insufficient argument and evidence that resuming initialization or resetting the data processing device would revert to a first user interface after the first input was no longer detected for a second period of time or replace the information displayed on the user interface. Pet. 16, 34. As implicitly acknowledged by Petitioner, the cited portions of Hooper do not describe replacing displayed information. See Pet. 16, 34; Ex. 1007, 2:22–3:13, 6:15–25, Fig. 2. The cited testimonial evidence also does not cite to any part of the record that would tend to support the opinion that a “person of ordinary skill in the art would have understood that resuming initialization or resetting the data processing device would replace the display” (Ex. 1003 ¶ 181), a “person of ordinary skill in the art would have understood that resuming display” (id. ¶ 249), and “it would have been obvious to a person of ordinary skill in the art to revert to the first user interface after the first input was no longer detected for a second period of time” (id. ¶ 250). Petitioner’s declarant also does not explain why “a change in the display would have been obvious to a person of ordinary skill in the art in view of AHIT’s explicit goal of saving wearable device resources.” Id. ¶ 248. Petitioner does not argue adequately or cite sufficient evidence that changing from one user interface to another would have saved wearable device resources. Pet. 34; Ex. 1003 ¶ 248. As discussed previously, Petitioner does not provide sufficient argument and evidence that its proposed combination would have had “a first user interface indicating that the first electronic device is ready to detect biometric information.” Even if Petitioner did adequately show that its proposed combination would have had the required first user interface, Petitioner fails to show with sufficient argument and evidence that its proposed combination would have “replac[ed] display of the second user interface with the first user interface,” for the above-discussed reasons.” slip op. at 23
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,568,533 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Apr 25, 2024 · IPR2024-00071 · APJ Robert L Kinder · IPR · Institution
The Board denied institution under § 314(a), finding substantial road-mapping concerns from Masimo’s staggered petition challenging claims 6 and 7.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“has modified its prior positions to account for both arguments made in preliminary responses, as well as concerns identified by the panel in the 745 IPR decision to institute. See Prelim. Resp. 11. Claims 6 and 7 depend from claims 1 and 4. Masimo has bolstered its analysis of Markel and Mills with respect to certain elements of claim 1 and its reasons for combining the references in this second Petition. For example, Petitioner added new mappings of the Markel-Mills combination to address claim 1 in direct response to concerns identified by Patent Owner and by the panel in the 745 IPR. See id. at 11–13. Addressing limitation 1[b(i)], Petitioner added a new mapping of Markel based on pushbuttons having electrodes as shown in Figure 2 of Markel. See Pet. 51–52. Petitioner even identified this discussion of Figure 2 as “a second mapping of the claims.” Id. This second mapping of claim 1 based on Figure 2, and the corresponding analysis, appear nowhere in the analysis of claim 1 (or claim 4) in Masimo’s 745 IPR petition. The new embodiments relied on and modified arguments addressing claim 1 of the ’257 patent suggest that Petitioner is using the prior proceedings as a roadmap to address issues to its first petition in the 745 IPR. Accordingly, this factor weighs strongly in favor of invoking our discretion to deny institution.” slip op. at 20
Discretionary denialPatents in suitUS 10,076,257 - Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2023-00004 · APJ George R Hoskins · IPR · Final written decision
Claims 1–4, 9–11, 17, and 18 are unpatentable: claims 1–4, 9, 11, and 17 as obvious over Sfarti and Foley; claims 10 and 18 as obvious over Sfarti, Foley, and Möller.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’299 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 10–11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’299 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 20–21. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed board ownDecided for petitioner
“function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “renderer unit”, and “tessellate unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’299 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“transforming is performed by a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the disclosed microcode. See Ex. 1001, 5:20–29, 5:51–67, 7:1–8, 7:12–13, 12:24–28; Ex. 1003 ¶¶ 104–105. We construe “transform unit” as a means-plus-function limitation with the function of transforming graphic objects into transformed objects (claims 1 and 11) including control points (claims 2 and 11), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the specification. The foregoing construction of “transform unit” is identical to the preliminary construction in the Institution Decision, with two exceptions. First, it adds that the corresponding structure is a GPU with computer graphics pipeline hardware including a processor. See Inst. Dec. 22–23. We agree with Patent Owner’s contention that the ’299 patent describes such pipeline hardware as being part of “[t]he present invention,” so we include it in our construction. Ex. 1001, 5:20–29. Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 22–23; Pet. 11–12. As Patent Owner points out, the ’299 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude the claim is open to both a dedicated processor and a non-dedicated processor.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 25
Patent outcomesUS 7,245,299 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,245,299 - Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2022-01589 · APJ George R Hoskins · IPR · Final written decision
Claims 1–4, 9–11, 17, and 18 are unpatentable as obvious over Sfarti and Foley, with claims 10 and 18 also unpatentable over Sfarti, Foley, and Möller.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’299 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 10–11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’299 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 20–21. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “renderer unit”, and “tessellate unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’299 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”).” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“transforming is performed by a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the disclosed microcode. See Ex. 1001, 5:20–29, 5:51–67, 7:1–8, 7:12–13, 12:24–28; Ex. 1003 ¶¶ 104–105. We construe “transform unit” as a means-plus-function limitation with the function of transforming graphic objects into transformed objects (claims 1 and 11) including control points (claims 2 and 11), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the specification. The foregoing construction of “transform unit” is identical to the preliminary construction in the Institution Decision, with two exceptions. First, it adds that the corresponding structure is a GPU with computer graphics pipeline hardware including a processor. See Inst. Dec. 22–23. We agree with Patent Owner’s contention that the ’299 patent describes such pipeline hardware as being part of “[t]he present invention,” so we include it in our construction. Ex. 1001, 5:20–29. Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 22–23; Pet. 11–12. As Patent Owner points out, the ’299 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude the claim is open to both a dedicated processor and a non-dedicated processor.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 25
Patent outcomesUS 7,245,299 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,245,299 - Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2023-00006 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 10–20 are unpatentable as obvious over Sfarti and Foley because the combination teaches the claimed graphics pipeline, including a tessellation unit between transformation and lighting.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’534 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’534 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 7–8. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “rendering unit”, and “tessellating unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’534 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Mr. Van Dyke’s apparent disagreement with this” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 10; Pet. 14– 15. As Patent Owner points out, the ’534 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude that the claim is open to both a dedicated processor and a non-dedicated processor. Nonetheless, we agree with Petitioner’s position that the transform unit encompasses, at least in some embodiments, a different unit from the other three claimed units. This is suggested by the language of claim 10, which refers to each of the units separately. Claim 10 additionally refers to the tessellation unit being “coupled between the transform unit and the lighting unit,” demonstrating that at least those three units can be different units. Further, Figure 3 of the ’534 patent correspondingly illustrates four separate units 2, 9, 3, and 4 within GPU 7. See Ex. 1001, Fig. 3, 7:4–15. Thus, although the transform unit may perform functions other than the transforming function, the transform unit in at least some embodiments does not perform the lighting, rendering, or tessellating functions of the other claimed units. In summary, we construe “transform unit” as a means plus function limitation with the function of transforming graphic objects into transformed objects (claims 10 and 15), or the function of transforming the spatial coordinates of said graphic objects (claim 12), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the ’534 patent specification. Further, the transform unit does not perform the lighting, rendering, or tessellating functions of the other claimed units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 23
Patent outcomesUS RE42,534 unpatentableClaim construction§ 103 obviousnesscites Graham - Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentablePTAB · Apr 16, 2024 · IPR2022-01591 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 10–20 are unpatentable as obvious over Sfarti and Foley because their combination teaches the claimed graphics pipeline, including a tessellation unit between transformation and lighting.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’534 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’534 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 7–8. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “rendering unit”, and “tessellating unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’534 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”).” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“preliminary construction in the Institution Decision, with two exceptions. First, it adds that the corresponding structure is a GPU with computer graphics pipeline hardware including a processor. See Inst. Dec. 10. We agree with Patent Owner’s contention that the ’534 patent describes such pipeline hardware as being part of “[t]he present invention,” so we include it in our construction. Ex. 1001, 5:25–34. Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 10; Pet. 14– 15. As Patent Owner points out, the ’534 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude that the claim is open to both a dedicated processor and a non-dedicated processor. Nonetheless, we agree with Petitioner’s position that the transform unit encompasses, at least in some embodiments, a different unit from the other three claimed units. This is suggested by the language of claim 10, which refers to each of the units separately. Claim 10 additionally refers to the tessellation unit being “coupled between the transform unit and the lighting unit,” demonstrating that at least those three units can be different units. Further, Figure 3 of the ’534 patent correspondingly illustrates four separate units 2, 9, 3, and 4 within GPU 7. See Ex. 1001, Fig. 3, 7:4–15. Thus, although the transform unit may perform functions other than the transforming function, the transform unit in at least some embodiments does not perform the lighting, rendering, or tessellating functions of the other claimed units. In summary, we construe “transform unit” as a means plus function limitation with the function of transforming graphic objects into transformed objects (claims 10 and 15), or the function of transforming the spatial coordinates of said graphic objects (claim 12), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the ’534 patent specification. Further, the transform unit does not perform the lighting, rendering, or tessellating functions of the other claimed units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 23
Patent outcomesUS RE42,534 unpatentableClaim construction§ 103 obviousnesscites Graham - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,198,054 - T-Mobile USA v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00830 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 are anticipated by Wu; claims 6, 7, 12, and 17 are obvious over Wu and Sabat-552.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“packetize” or “packetizing” as recited in claims 2, 9, and 14. PO Resp. 19– 20; Pet. Reply 5–6. Patent Owner argues that we should construe “packetize” to mean “create data packets that include destination information.” PO Resp. 19–20. Patent Owner argues that this is consistent with how the Board previously interpreted this claim term in the 00571 IPR. PO Resp. 19 (citing Ex. 1017). We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1016. Thus, issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1014. 2. Collateral Estoppel With Respect to the 00571 IPR We find and determine that the final written decision in the 00571 IPR, and the Federal Circuit’s CommScope decision affirming that decision, satisfies the conditions for applying collateral estoppel because the 00571 discloses materially the same claim limitations7 challenged here, and Patent Owner had full representation throughout the proceedings. Setting aside the factors of issue preclusion for a moment, our reviewing court’s affirmance of our final written decision in CommScope is persuasive authority that supports our prior construction of “packetizing” and Petitioner’s showing that Wu teaches the disputed packetizing limitations under that construction. In addition, issue preclusion prevents Patent Owner from re-litigating the issue of whether Wu teaches materially the same disputed limitation. See Pet. Reply 24; Ex. 1017, 31–34 (final written decision determining obviousness of claims 9, 10, 14, and 16 of the ’473 patent over Wu and Sabat-426); Ex. 1072, 5 (summarizing the final written decision regarding the packetizing limitations), 10–16 (finding no error in the determinations regarding the packetizing limitations).” slip op. at 12
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499
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.