- Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00864 · APJ Debra K Stephens · IPR · Final written decision
Claims 3, 5, and 9 are unpatentable under § 103 because the Board found the asserted prior-art combinations taught the limitations required by its claim construction.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have [had] at least a Bachelor of Science degree in Electrical Engineering, Computer Science, or an equivalent field, as well as at least 2-3 years of academic or industry experience in the field of content delivery networks or comparable industry experience(s)” (Pet. 13 (citing Ex. 1002 ¶ 32)). Patent Owner does not dispute Petitioner’s assertion regarding the education or experience of an ordinarily skilled artisan at the time of the invention (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F. 3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Houh and Jones (Ex. 1002 ¶ 32; Ex. 2018 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two to three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. Claim Terms Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation. b) Other terms Based on the trial record, we determine that no additional terms require explicit construction (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 POSITAPlain and ordinary meaningDecided for petitioner
“independent claims 3 and 9 were mutually exclusive (Dec. to Inst. 8–9). We stated: As a matter of law, therefore, we determine with respect to claims 3 and 9, only one of the conditional limitations needs to be satisfied in the prior art to render the claim anticipated or obvious (see Ex Parte Schulhauser (Appeal No. 2013-007847 (PTAB Apr. 28, 2016) (precedential), at 8–10 (holding that conditional steps in process claims need not be carried out when conditions precedent to those steps are not satisfied to be within the broadest reasonable interpretation of the claim))” slip op. at 11
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision
Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - Dispersive Networks, Inc. v. Nicira, Inc.Rehearing grantedPTAB · Jul 17, 2019 · PGR2018-00063 · APJ Debra K Stephens · PGR · Rehearing
Patent Owner’s rehearing request was granted as to claim 7, which was removed from institution under § 112(b); institution on claims 1–6 and 8–11 remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
NonePatents in suitUS 9,722,815 - RPX Corporation / Huawei Enterprise USA, Inc. et al. v. Parity Networks, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00100 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–4, 6–9, 11–16, and 18–19 as obvious over Wilford; claims 5, 10, and 17 as obvious over Wilford and Ayres.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art of the subject matter of the ’378 patent would have had “(a) a bachelor’s degree in computer science or electrical engineering, and four or more years of experience with networks and networking devices, or (b) a master’s degree in computer science or electrical engineering, and two or more years of experience with networks and networking devices.” Pet. 10 (citing Ex. 1105 ¶¶ 30–34). Patent Owner does not offer a proposed level of skill in its Patent Owner Response and does not address Petitioner’s assertions regarding the education or experience of an ordinarily skilled artisan at the time of the invention. See generally PO Resp. We adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579 (Fed. Cir. 1995); Oelrich, 579 F.2d at 91.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“All challenged claims require a “hardware queue.” Petitioner argues “under BRI, the term ‘hardware queue’ should be interpreted to include hardware that is configurable by software to form a queue.” Pet. 42 (citing Ex. 1105 ¶ 210). Petitioner also suggests that an alternative definition of the term could “require special-purpose hardware circuitry to control at least some portion of the queue.” Id. at 44. Patent Owner does not define explicitly “hardware queue.” Nevertheless, Patent Owner’s declarant asserts “[t]he plain and ordinary meaning of a hardware queue, is well known,” i.e., that “such a queue would be designed by a circuit designer and formed to function as a queue as part of the manufacturing process of an electronic circuit,” and that it differs from a software queue “formed by software operating on general purpose or multi-purpose hardware.” Ex. 2001 ¶ 34. Additionally, Patent Owner’s argument in the Patent Owner Response suggests “hardware queue” means that the queue cannot be a “software queue” and “must be implemented in hardware.” PO Resp. 7, 9–12 (stating “Petitioners do not assert that the queue must be implemented in hardware”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner demonstrates reasons supported by a rational underpinning for combining Wilford and Ayres, including at least that the combination uses known methods to obtain predictable results. Pet. 61–66. For example, Petitioner provides evidence and argument that: A [person of ordinary skill in the art at the time of the invention] would have understood that monitoring CPU utilization as taught in Ayres is a conventional technique for monitoring CPU load in relation to the CPU’s capacity, and that known technology could be employed in Wilford to monitor utilization of the linecard’s CPU (as Ayres does) and provide that information to the added dynamic packet flow rate control module. (Lavian, ¶259 (discussing Ayres and citing Ex. 1112 at 4:67, 9:62-65, 10:18- 20, and 10:26)). Pet. 66. We agree with and adopt Petitioner’s contentions in the Petition as to claims 5, 10, and 17.” slip op. at 36
- Strike new argumentNew argument consideredDenied
“because it contains allegedly new arguments. Paper 24. Specifically, Petitioner states Patent Owner argued for the first time “a hardware queue” requires some unspecified “structure” “define[d]” by hardware “such as shift registers.” Paper 42, 2 (citing Sur-Reply at 2–3). Petitioner also asserts that Patent Owner, for the first time in “[t]he Sur-Reply[,] offers unsupported attorney arguments about alleged differences between the ‘hardware queues’ in Exs. 1110 and 1111 and Wilford’s queues based on alleged differences between SRAM and DRAM.” Paper 42, 3 (citing Sur-Reply at 2–3). Petitioner asserts Patent Owner’s arguments could have been made in the Patent Owner Response and thus are waived. Paper 8, 3 (arguments not in POR “will be deemed waived”); Update to the Trial Practice Guide (83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Trial Practice Guide” and its accessibility through the USPTO website: https://go.usa.gov/xU7GP)) at 15 (a “sur-reply that raises a new issue or belatedly presents evidence may not be considered”; a sur-reply may “respond” to arguments “raised” in the reply but “respond … does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing.”). Petitioner’s motion is denied. Patent Owner’s reference to “shift registers” is in response to arguments in the Reply regarding the definition of hardware queue. Additionally, Patent Owner’s reference to Exhibits 1110 and 1111 are in response to Petitioner’s reference to those exhibits for the first time in its Reply.” slip op. at 37
Patent outcomesUS 6,738,378 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,738,378 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00096 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3 and 8–10 are unpatentable under § 103 over Bernstein alone and over Bernstein combined with Rubin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Thus, Dr. Jones does not disagree with Petitioner and Dr. Franzon’s assessment but, rather, offers additional exceptions and qualifications, which 4 Dr. Phillip Gibbons is Petitioner Hulu’s declarant in IPR2018-00017, and Dr. Franzon and Dr. Gibbons offer the same assessment as to the level of ordinary skill in the art, as noted by Dr. Jones. See Ex. 2012 ¶ 20. we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Franzon’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1001, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.5” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 9. Petitioner introduces 6 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims. additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1006 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1007 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)), 1015 (declaration testimony of Dr. Sylvia Hall-Ellis that Bernstein was publicly available no later than March 3, 1986), 1018 (Machine Readable Cataloging (“MARC”) record for Bernstein). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“g. Conclusion as to claims 1 and 8 In summary, we find Bernstein teaches all of the limitations of claims 1 and 8, and we also find the combination of Bernstein and Rubin teaches all of the limitations of claims 1 and 8. In addition, we find that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the invention recited in claims 1 and 8 based on Bernstein alone and based on the combined teachings of Bernstein and Rubin. We also find that a person of ordinary skill in the art would have been motivated to combine the teachings of Bernstein and Rubin. Having considered the full record developed during trial, we conclude Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 1 and 8 would have been obvious under 35 U.S.C. § 103(a) based on Bernstein alone and based on the combined teachings of Bernstein and Rubin.” slip op. at 36
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371 - Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00366 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3 and 8–10 are unpatentable as obvious over Bernstein alone and over Bernstein combined with Blake.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree that this testimony undermines Dr. Gibbons’s opinions because Petitioner and Dr. Gibbons rely on Bernstein’s MVTO disclosures, not Bernstein’s other multiversion techniques, to show obviousness of the claims, a point made by Patent Owner in its Response. PO Resp. 4 (“That a practical garbage collection algorithm for Bernstein’s MVTO was not commonly known as of the Patent’s invention date is also highlighted by the fact that, in contrast to Bernstein’s lack of disclosure with respect to its discussion of MVTO, Bernstein does indeed disclose practical garbage collection algorithms for both of the other multi-version concurrency control methods that it discusses—however, the Petition does not suggest that either of these other methods renders the claimed inventions obvious.”). Furthermore, the examining attorney’s question about “whether a designer or a POSITA in 1997 would choose Bernstein’s third mixed method of multiversion concurrency control as opposed to the multiversion timestamp ordered or vice-versa” (Ex. 2017, 28:12–18) is irrelevant to the issues in this case. Dr. Gibbons testified that he “latched on to the multiversion timestamp ordering as an example of a concurrency control algorithm that teaches the claims.” Ex. 2017, 28:2–5; see KSR, 550 U.S. at 419 (“What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”). That Bernstein discloses other techniques in addition to MVTO does not diminish the teachings of MVTO relied upon by Petitioner and Dr. Gibbons. Therefore, we do not agree with Patent Owner that Dr. Gibbons’s testimony should be given no weight. Rather, we have weighed the evidence before us in arriving at our conclusions, as laid out in our analysis above.” slip op. at 40
- Skill levelSkill level petitioner adoptedOther
“Thus, Dr. Jones does not disagree with Petitioner and Dr. Gibbons’s assessment but, rather, offers additional exceptions and qualifications, which we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Gibbons’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1201, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.4” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102(b) (pre-AIA) because it was published on March 1, 1995, more than one year before the earliest patent application filing date on the face of the ’371 patent.” Pet. 18. In its Preliminary Response, Patent Owner argued Petitioner failed to show Blake was publicly accessible before the August 19, 1997, filing date of the ’371 patent. Prelim. Resp. 57–59. With its Reply, Petitioner submits the Declaration of James L. Mullins, Ph.D. Ex. 1227. Dr. Mullins testifies that Blake “was publicly available and accessible no later than the end of the November 1996.” Ex. 1227 ¶ 36. During the trial, Patent Owner did not contest the status of Blake as a prior art printed publication under 35 U.S.C. § 102. November 1996 is not more than one year prior to the August 19, 1997, filing date of the ’371 patent and, thus, would not qualify Blake as a prior art printed publication under 35 U.S.C. § 102(b), as asserted by Petitioner in the Petition. Nevertheless, based on Dr. Mullins’s testimony in rebuttal to Patent Owner’s argument, we determine Blake is prior art printed publication under 35 U.S.C. § 102(a).” slip op. at 14
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371 - Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00017 · APJ Daniel J Galligan · IPR · Final written decision
Claims 8–10 are unpatentable under § 103(a) over Bernstein alone and over Bernstein combined with Rubin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“I generally agree with the level of ordinary skill described by Gibbons, except that at the time of the invention, a person of ordinary skill in the art would not have been able to devise algorithms or conduct original design or development of new database systems. Rather, a person of ordinary skill would have been able to implement database management software, such as multi-version concurrency control, based on algorithms and designs already provided to them. As will be discussed in more detail in connection with particular arguments, designing software such as multi-version concurrency control contains theoretical aspects (such as proof of correctness) and inventive aspects (such as practical garbage collection) that were beyond the abilities of the person of ordinary skill. Ex. 2012 ¶ 21. Thus, Dr. Jones does not disagree with Petitioner and Dr. Gibbons’s assessment but, rather, offers additional exceptions and qualifications, which we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Gibbons’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics- or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1101, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.4” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 7. Petitioner introduces additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1106 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1107 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b). 5 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s premise that Bernstein does not disclose a “garbage collection” scheme for MVTO. As we discuss above, according to Patent Owner, “[i]dentifying which versions can be deleted and recovering the space associated with them” is “a concept known as ‘garbage collection.’” PO Resp. 22 (citing Ex. 2013, 50:14–25; Ex. 2014, 88:20– 89:11). Bernstein discloses deleting the oldest versions when space has run out, i.e., “garbage collection” commensurate with the scope of claim 8. Ex. 1103, 154. We are persuaded Petitioner’s articulated reasons to combine the teachings of Bernstein and Rubin have a rational underpinning, and specifically, we find a person of ordinary skill in the art would have been motivated to combine Rubin’s monitoring of disk storage space with Bernstein to proactively alert Bernstein’s data manager of impending disk space shortages rather than waiting until the data manager “run[s] out of space for storing versions.” See Ex. 1102 ¶¶ 68–70. We agree with Dr. Gibbons that maintaining “a minimal level of space, in turn, would have avoided the need to suspend the database system to perform deletion of old versions.” Id. ¶ 70.” slip op. at 28
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371 - Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentablePTAB · Mar 12, 2019 · IPR2018-00275 · APJ Debra K Stephens · IPR · Final written decision
Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable
“We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25
Patent outcomesUS 6,434,212 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,434,212 - Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentablePTAB · Mar 11, 2019 · IPR2017-02012 · APJ Debra K Stephens · IPR · Final written decision
Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25
Patent outcomesUS 6,434,212 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,434,212 - Tomtom, Inc. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentablePTAB · Mar 11, 2019 · IPR2017-02023 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–5 are unpatentable over Jimenez, Levi, and ordinary-skill knowledge; claims 6–8 were not shown unpatentable because Jimenez did not teach the claimed transmitter.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We find the ’212 Patent is directed to data for a particular user (see, e.g., ’212 Patent, Abstract). This conclusion is supported by the Specification. Indeed, all discussion in the ’212 patent is directed to a pedometer for use by and relying on data obtained from an individual user. Thus, the Specification suggests that the term “calibration” should be construed as a process that correlates a user’s stride rate and stride length. The Oral hearing confirms this conclusion. In the Oral Hearing, Petitioner’s counsel, Mr. Doshi, responded to a request to identify the calibration and the plurality of calibrations as follows: JUDGE STEPHENS: So what are you pointing at in the 212 patent as being [a] calibration and the plurality of calibrations? MR. DOSHI: That’s in column 5. So at column 5 it says that after a proper warm up the user completes a sample run or walk on the track at normal pace, et cetera, et cetera. So it's saying that here’s S1 and following completion of the first run, so here it’s saying you’re doing different walks at different speeds . . .where you're having the user walk at different walking speeds and measuring their step size as you do that (Trans. 21:1–10; see also Tr. 19:4–7) JUDGE ZADO: Okay. And then so taking that further then, I understand your argument to be that in the 212 patent the runner for the first sample S1 will run at one pace and that’s, according to Petitioner, that's one calibration and then the runner will run at a second pace for the S2 sample and that’s the second calibration, and then the runner will run at a third pace and then that's the S3 sample and then that's a third calibration? Is that Petitioner's argument? MR. DOSHI: Yes 13 (Tr. 22:4–11). Therefore, based on Petitioner’s statements at the Oral Hearing, the term “calibration” should be construed as the process of taking a sample that correlates step rate and step length for an individual.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.), 18 despite Patent Owner’s declarant, Dr. Caloyannides, opining that the level of ordinary skill would not be so limited as proposed by Mr. Blackadar: I note that although the qualifications Mr. Blackadar describes would qualify one as a PHOSITA in this case, I do not believe the definition of a PHOSITA here would be so limited. The technology of the ‘212 Patent implicates other fields, such as Sports Medicine, Exercise Science, and Physiology. I believe that a bachelor’s degree in one of these fields, or a similar field, with at least two years of practical experience working with pedometers and/or health or fitness trackers or sensors, or an advanced degree in one of these areas, could qualify one as a PHOSITA in this case (Ex. 2001 ¶ 26). Petitioner argues that Patent Owner’s definition of a person of ordinary skill in the art would mean a “[person having ordinary skill in the art] under Patent Owner’s definition would be more well-informed than Patent Owner’s own expert” (Pet. Reply. 2); however, we do not read Patent Owner’s assertion or Dr. Caloyannides’ testimony as suggested by Petitioner. Rather, we read Dr. Caloyannides’ testimony as expanding the fields of expertise. We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Our analysis in this Decision is supported by either assessment. Based on our review of the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Mr. Blackadar and Dr. Caloyannides, we adopt and” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Petitioner has persuaded us that Levi is from the same field of endeavor as the ’212 Patent –– pedometers that count the number of steps taken to calculate distance traveled (see Pet. 20). Specifically, although Levi adds a navigation feature, Levi is directed to a pedometer that, in pertinent part, adjusts step size according to step frequency in order to estimate distance traveled by a user (Levi, 6:6–43). Levi states “[t]he present invention for a ground speed/distance sensor is an improvement over a common hiker’s pedometer” and “[t]he present invention analyzes the frequency of a user’s footsteps to aid in the detection of future footsteps, and further to aid in determining the size of footsteps taken by the user” (Levi, Abstract, 2:57–60, 2:65–67). Similarly, the ’212 Patent is directed to a pedometer and specifically, a pedometer that calculates actual stride lengths of a user based on relative stride rates (’212 Patent, Abstract). Thus, both the ’212 Patent and Levi are from the same field of endeavor –– pedometers or devices that include or rely on pedometers. Furthermore, both Levi and the ’212 Patent are pertinent to the particular problem with which the inventor is involved –– accurate distance identification. 44 Patent Owner additionally argues “[t]he different problems addressed” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“A holding of obviousness can be based on a showing that “there was an apparent reason to combine the known elements in the fashion claimed” (KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Such a showing requires some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. (id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted)). As admitted by Patent Owner, an ordinarily skilled artisan would have known a user’s stride length could vary with stride rate at the time of invention (see PO Resp. 52). As noted by Petitioner, Levi discloses using a dynamic step size algorithm that “improve[s] the accuracy of distance 49 measurements of a human footstep sensor” (Pet. Reply 25 (citing Levi, 6:17–21)). We further credit Mr. Blackadar’s testimony that an ordinarily skilled artisan would have been motivated to improve Jimenez using Levi’s dynamic step size algorithm, to improve the calculated distances (Ex. 1005 ¶¶ 92). Indeed, we find that an ordinarily skilled artisan would have been motivated to combine the teachings of Jimenez and Levi to “monitor [ ] the distance traveled more accurately than prior pedometers that calculated distance based on average stride length” (Pet. 31 (citing Ex. 1005 ¶ 90), 32 (citing Ex. 1005 ¶ 92)). In particular, we find that, given it was known a user’s stride length could vary with stride rate, as admitted by Patent Owner (PO Resp. 52), an ordinarily skilled artisan would have been motivated to implement a data processor that accounted for this relationship, such as that described in Levi (Pet. 32–33 (citing Ex. 1005 ¶¶ 93–94)).” slip op. at 49
Patent outcomesUS 6,434,212 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,434,212
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.