- Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · May 28, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2025-00296 with IPR2024-00810.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. DECISION The challenges to the ’110 patent’s claims in this Petition are identical to the challenges in the ’810 IPR’s petition. See, e.g., Pet. 6; ’810 IPR, Paper 1, 8. Additionally, in this proceeding, Patent Owner has not argued that the Petition’s challenges lack sufficient merit to institute trial. See, e.g., Notice 1. For the same reasons we explained in the ’810 Institution Decision, we institute inter partes review of all challenges in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. In this proceeding, we are persuaded that Petitioner has demonstrated that joinder with the ʼ810 IPR would avoid duplication and promote the efficient resolution of both proceedings.” slip op. at 5
NonePatents in suitUS 8,982,110 - Inductev, Inc. v. Witricity CorporationAll claims unpatentablePTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision
Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8
Patent outcomesUS 8,461,719 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,461,719 - PTAB · Jan 29, 2025 · IPR2024-00842 · APJ Michael L Woods · IPR · Institution
The Board instituted review of claims 1–29 based on a reasonable likelihood of prevailing and granted EndyMed’s motion to join the ’386 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, the underlying premise of Serendia’s arguments here and in the ’386 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the ’386 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 1–29 of the ’836 patent. See ’386 IPR, Paper 18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“evidences nonobviousness for four different patents. In this situation, a presumption of nexus is appropriate only if patent owner demonstrates that the claims of all four patents “generally cover the same invention.” See Fox Factory, 944 F.3d at 1377 (“Where a product embodies claims from two patents, a presumption of nexus can be appropriate only if the claims of both patents generally cover the same invention.”). “The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.” Id. at 1378 (citation omitted). “In such situations, the patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Id. (citation omitted). Here, Serendia does not demonstrate that the four different patents cover the same invention. See Prelim. Resp. 59–74. Indeed, Serendia does not address U.S. Patents 9,775,774, 9,320,536, and 10,869,812 at all. See id. That Serendia separately sought patent protection for each of these four patents suggests that these patents do not generally cover the same invention. Cf Fox Factory, 944 F.3d at 1378 (“The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.”). We made a similar determination in the ’386 IPR. See, e.g., ’386 IPR, Paper 18 at 38 (“Patent Owner fails to set forth which patents ‘generally cover’ the Sylfirm X device.” (citations omitted)).” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We disagree with Serendia. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely. Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. A Sotera stipulation mitigates concerns of duplicative efforts, and we decline to discretionarily decline institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or motion for joinder on the basis of the parallel Delaware litigation.8” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,480,836 - PTAB · Jan 9, 2024 · IPR2023-01084 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Meta would prevail on at least one claim, including claim 14 over Avendano and Visser.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00276 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 2. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 8. Subsequently, Petitioner filed an Unopposed Motion to Withdraw Motion for Joinder in light of the Board terminating the Amazon IPR based on settlement. Paper 9, 1–2. We grant Petitioner’s Unopposed Motion to Withdraw Motion for Joinder.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition. Prelim. Resp. 14 (citing Ex. 2002 ¶ 26). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art. Our decision would not have changed had we adopted Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“At this stage, we agree with Petitioner that Patent Owner’s proposed construction improperly imports an embodiment from the specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill- Rom Servs. Inc. v. Stryker Corp., 755 F. 3d 1367, 1371 (Fed. Cir. 2014). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. “The standards for finding lexicography and disavowal are exacting. To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotation omitted). On this record, there is no such clear definition in the specification, express or implied. The disclosed filter β(z) “describes the relationship between O1 and calibrated O2 for speech.” Ex. 1001, 5:31–32. But the filter β(z) is merely a disclosed embodiment and does not define the claimed “filter that describes a relationship for speech.” See id. Patent Owner also points to no disclosure that disavows interpretations other than the example filter β(z). Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). We decline Patent Owner’s invitation to limit the claims to unclaimed features. Further, because Patent Owner attempts to import an embodiment from the specification into claim 14, we need not determine at this stage whether claim 14’s “filter that describes a relationship for speech” is broad enough to encompass the disclosed calibration and delay filters, as Petitioner contends. See Prelim. Reply 2.” slip op. at 10
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01083 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5–9, 12, and 13 were obvious over Avendano ’880 and Hou.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 35 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity. Petitioner’s alternative argument, that “[a]s another example, a calibration also would be applied to the second signal x2 by Hou’s ‘first minimum estimate unit 508’ to generate a first quantity,” also fails. Id. at 36–37. This argument is untenable because Hou’s first minimum estimate unit 508 merely “estimates the minimum for the first electronic sound signal.” Ex. 1008, 5:36–38. Hou does not describe unit 508 as performing a calibration. Nor does Petitioner explain how Hou’s minimum estimate constitutes a calibration. Pet. 36–37. And Petitioner’s expert merely parrots the Petition. Ex. 1003 ¶ 135. Thus, Petitioner’s conclusory assertion is unpersuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We determine below that Petitioner has not met its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered independent claim 1 obvious. As the remaining claims all depend from claim 1 and Petitioner’s second challenge only addresses dependent claims, Petitioner’s failure to meet its burden on this challenge is dispositive, and we need not address Ground 2. See Pet. 1.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - ROKU, Inc. v. Universal Electronics Inc.Adverse judgmentPTAB · Dec 28, 2023 · IPR2021-00263 · APJ Russell E Cass · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 because Patent Owner cancelled all challenged claims in a co-pending reexamination.
RulingsAdverse judgment- RehearingRehearing, grantedGranted
“After our Denial Decision, the Director issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Fintiv Guidance”)1, directing that “[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a 1 The Interim Fintiv Guidance is available at https://www.uspto.gov/ sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf. parallel ITC proceeding.” Interim Fintiv Guidance, 7. Following the Federal Circuit’s decision, we conducted a conference call with counsel for the parties and allowed the parties to submit additional briefing to address the status of the case, the status of any related proceedings, the Interim Fintiv Guidance, and any actions that should be taken by the panel at this point concerning this proceeding. Papers 16–18. After considering the parties’ arguments, we granted Petitioner’s Request for Rehearing on February 8, 2023, concluding that, in light of the Interim Fintiv Guidance, exercising discretion to deny institution under 35 U.S.C. § 314(a) was not warranted in this case. Paper 19, 5–12. We also determined that Petitioner had demonstrated a reasonable likelihood of success in proving that the challenged claims were unpatentable, and instituted an inter partes review of claims 1–11 of the ’317 patent with respect to all grounds set forth in the Petition. Id. at 12–37.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“(b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: . . . (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b). In the ’074 Reexam, Patent Owner cancelled all of challenged claims 1–11, and the USPTO has issued a Reexamination Certificate indicating that these claims are cancelled. Ex. 2100, 2; Ex. 1046, 1:15. The Board has previously construed a patent owner’s cancellation in a reexamination of all claims challenged in a pending IPR as a request for adverse judgment under § 42.73(b). See Tarsco Bolted Tank Inc. v. Tank Connection, LLC, IPR2016-01634, Paper 16 at 2 (PTAB Aug. 24, 2017) (“Cancellation of claims 1–11” in an ex parte reexamination “is construed as a request for adverse judgment” in the corresponding IPR proceeding.); Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2–3 (PTAB Apr. 14, 2016) (“Pursuant to 37 C.F.R. § 42.73(b), we construe cancellation of all claims involved in this proceeding” in “a concurrent Reexamination of the” patent at issue “as a request for adverse judgment.”). We agree with the prior decisions in Tarsco and Mercedes-Benz that a patent owner’s cancellation of all challenged claims in an IPR in a co-pending ex parte reexamination is properly construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). Consequently, we construe Patent Owner’s cancellation of all of the claims challenged in this IPR in the ’074 Reexam as a request for adverse judgment.” slip op. at 5
NonePatents in suitUS 10,600,317 - PTAB · Oct 26, 2023 · IPR2023-00883 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on the challenges to claims 1–20 and joined Micron as a petitioner in IPR2022-01427, with its role limited as stated in its motion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. Petitioner argues that, if joinder is granted, it will take an “understudy” role and would only assume a primary role if Samsung ceases participation in the proceeding. Motion 6–9. In the “understudy” role, Petitioner represents, among other things, that it “will not be making any substantive filings,” that it “agrees to be bound by all filings by Samsung . . . except for filings regarding termination and settlement,” and that it “will not cross-examine or defend any witness at deposition.” Motion 7–8. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 1427 IPR.” slip op. at 4
NonePatents in suitUS 9,318,160 - PTAB · Oct 26, 2023 · IPR2023-00882 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on all petition challenges and joined Micron as a petitioner in IPR2022-01428, subject to its stated understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Although Petitioner requests that we “join this IPR with the [1428] IPR” (Motion 2), the joinder statute does not permit this. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020) (“[W]e hold that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings . . . .”). Thus, we treat Petitioner’s Motion for Joinder as a request to be joined as a petitioner to the 1428 IPR, and, for the reasons discussed herein, we grant that request.” slip op. at 2
NonePatents in suitUS 8,787,060 - Google LLC v. Parus Holdings, Inc.Rehearing grantedPTAB · Sep 18, 2023 · IPR2022-00279 · APJ Patrick M Boucher · IPR · Rehearing
The Board granted rehearing and instituted review of claims 1–4 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Kovatch and Burrows.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of this Decision, we thus make a preliminary determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29. Petitioner’s element-by-element analysis explains Petitioner’s position as to how each limitation of independent claims 1 and 2 is met within such a combination. Id. at 14–32. Although Patent Owner makes a number of arguments in its Preliminary Response why the combination does not meet certain limitations, those arguments are precluded by our preliminary determination that collateral estoppel applies. See Prelim. Resp. 29–44.7 We have thus re-evaluated the parties’ arguments in light of the findings made in the 846 IPR, and affirmed by the Federal Circuit, and we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows. We accordingly grant Petitioner’s Rehearing Request and institute an inter partes review of all claims on all grounds asserted in the Petition.8 See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 20
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“The party seeking to invoke collateral estoppel must show: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against who collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.” Google, 54 F.4th at 1381. Each of these requirements appears to be met with respect to the issue of whether Kovatch discloses rankings associated with the order in which web site addresses are accessed. First, the claim limitations at issue in the two proceedings are sufficiently similar to raise the issue of collateral estoppel. See Ohio Willow Wood, 735 F.3d at 1342 (“If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies. . . . Thus, the mere use of different words in these portions of the claims does not create a new issue of invalidity.”). For example, claim 1 of the ’705 patent recites “a rank number assigned to each one of said web sites and stored in said database” and “access[ing] one of said web sites having the highest said rank number,” while claim 10 of the ’431 patent recites “a ranking associated with each said web site address, said ranking indicating the order in which the plurality of pre-selected web sites are accessed.” Ex. 1001, 19:58–59, 19:65–66; 846 IPR, Ex. 1001, 21:9–11.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,721,705 - Snap Inc. v. You Map Inc.All claims unpatentablePTAB · Aug 31, 2023 · IPR2022-00568 · APJ Jason M Repko · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Feldman and Jackson, or Feldman, Jackson, and Rush; the contingent motion to amend is granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering, computer science, or a related field, plus two years’ work or research experience with location-based content delivery and/or visualization.” Pet. 5 (citing Ex. 1003 ¶¶ 19– experience and vice versa.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, testifies that he “generally agree[s]” with Petitioner’s proposed articulation, and provides substantially the same expression of the level of ordinary skill in the art. Shamos Decl. ¶¶ 30–31. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Although Patent Owner appears to argue that applying the preference factors to a general score does not encompass weighting the general score’s components (see, e.g., id. at 10–12; Sur-reply 13–16), this is not reflected in Patent Owner’s proposed construction (PO Resp. 12). Patent Owner’s construction provides no limitation on how the preference factors are applied to a general score. See id. To the extent Patent Owner argues that the phrase “applied to,” as recited in the claim, excludes such component-based weighting, we disagree. Rather, the record better aligns with Petitioner’s argument that “applied to” involves a linear combination of values, which could be the values of the general score’s components. See Pet. 30–31. Petitioner’s position is supported by the plain language of the claim, the ’727 patent’s discussion of weighted aggregation, and Mr. William’s testimony—all of which indicate that weighting the component scores is encompassed by claim 1. As for the plain language, the claim does not define how the factors are “applied to” the general score. Rather, the claim only recites that they are. In the context of the claim, the preference factors are applied to the general score. Patent Owner does not dispute this. PO Resp. 12. Claim 1 further recites that the customized score is based on the application of the preference factors to the general score. Ex. 1001, 23:14–27. We note that the generate the combined ranking, which is then used for the recited selection. Beyond that, the claim does not specify how the two rankings are used or how the combined ranking must be generated. Thus, under the claim’s plain language, the customized score can be used to rank the posts and is based on the general score. Id.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“adequately supported. We find that Mr. William’s declaration is adequately supported. This is not case where an expert “does not disclose the underlying facts or data on which the opinion is based.” See 37 C.F.R. § 42.65(a). Rather, Mr. Williams adequately supports his testimony about the second preference factor with reasoning based on Jackson’s teachings about how the social-network distance is used to weight the global score. See, e.g., Williams Decl. ¶ 133 (citing Ex. 1006, Fig. 4A, 16:23–25, 58–60). weighting criteria can be used together. Id. ¶¶ 147–149 (citing Ex. 1006, 3:57–44:22, 5:53–58, 9:54–67, 13:17–22, 17:47–67). Mr. Williams’s analysis relies on Jackson’s discussion of using multiple factors to score a post. Ex. 1006, 17:47–55, cited in Williams Decl. ¶ 147; see also Pet. 42–43; Reply 9. Mr. Williams also cites Jackson’s discussion of how social-network distance and geographic distance can be used together. Williams Decl. ¶ 147 (citing Ex. 1006, 3:57–4:22). We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144). We disagree with Patent Owner’s argument that neither Petitioner nor” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144).” slip op. at 32
Patent outcomesUS 10,616,727 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,616,727
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