• Foursquare Labs, Inc. v. Mimzi, LLCRehearing denied
  PTAB · May 19, 2020 · IPR2019-01287 · APJ J John Lee · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–19 in place because the challenged prior-art and priority arguments did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION 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 all matters it contends were misapprehended or overlooked by the Board. Id. The Board applies an abuse of discretion standard when reviewing a decision on a petition for rehearing. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportOther

    “governing statute was 35 U.S.C. § 102(a)(2) (2013), as amended by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Inst. Dec. 13–19. On the record available at the time, we agreed with Petitioner that the ’981 Patent included claims with an effective filing date on or after March 16, 2013, the effective date of the AIA amendment to § 102. See id.; Reply 1–2; AIA § 3(n)(1). Specifically, we determined (preliminarily) that the challenged claims are not adequately supported by the written description of U.S. Patent Application No. 12/181,956 (“the ’956 Application”), and, thus, could not claim priority to the ’956 Application, the only application in the priority chain that was filed before the AIA’s relevant effective date. Inst. Dec. 17–19. Under post-AIA § 102(a)(2), a published patent application of another inventor (like Yoo) is prior art if it “was effectively filed before the effective filing date of the claimed invention.” Yoo was filed on May 6, 2008. Ex. 1003, code (22). Consequently, under post-AIA § 102(a)(2), Yoo would qualify as prior art because its filing date is before the effective filing date of the claimed invention.2 Ex. 1001, code (60). 2 We note that Yoo’s effective filing date precedes all of the possible effective filing dates listed on the face of the ’981 Patent, including the July 29, 2008 filing date of the ’956 Application. See Ex. 1001, code (60). As noted above and discussed further below, however, whether the claims are supported by the ’956 Application relates to the threshold issue of whether post-AIA § 102(a)(2) applies to Yoo.” slip op. at 3

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,981
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Unified Patents Inc. v. Velos Media, LLCNo claims unpatentable
  PTAB · May 12, 2020 · IPR2019-00194 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–3, 5, 13–15, and 17 were not shown unpatentable because the asserted grounds failed to establish the claimed scan passes or scan order.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts a person of ordinary skill in the art at the time of the application resulting in the ’449 patent “would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience in the field of video coding.” Pet. 23–24. Patent Owner does not contest that definition of a skilled artisan or offer a different one. Petitioner’s definition is consistent with the descriptions in the ’449 patent and the asserted art, and we adopt it.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Although Petitioner proposes a construction for “information indicating levels of significant coefficients” (Pet. 27), we determined in the Institution Decision that there was no need to construe the phrase. Inst. 5. Absent any indication from the parties why such a construction would impact our analysis, we reach that same conclusion here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “the phrase “in a first scan pass” and shows the proper grammatical relationship. That limitation recites “coding information indicating levels . . . according to the scan order used for coding the information indicating significant coefficients in a second scan pass.” The phrase “in a second scan pass” serves not to frame the scan order—the scan order for coding level information must be the same as the scan order for coding significance information. Rather, “in a second scan pass” relates to the phrase “coding information”—no other understanding of “in a second scan pass” would make sense. For internal consistency, that same understanding must apply to the first limitation such that “in a first scan pass” frames the step of “coding information.” Thus, the claim language requires coding significance information in a first scan pass, and then coding level information in a second scan pass, where each scan pass uses the same scan order.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We find Cheon’s disclosure regarding a purported second scan is insufficient to carry Petitioner’s burden. The primary disclosure Petitioner relies on states only that “[l]evel information of an effective coefficient . . . is encoded after the significance map is encoded.” Ex. 1003 ¶ 175. That does not expressly state that a second scan is performed to encode the level information. Petitioner is left relying on a statement by its declarant that a person of skill would have understood to perform a second scan pass when encoding the level information. Pet. 61. But Petitioner’s declarant provides no explanation and instead simply makes the conclusion. Ex. 1002 ¶ 127. We do not afford significant weight to such a conclusory statement. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We are left with the possibility that Cheon’s paragraph 175 discloses a second scan, but that does not persuade us that Cheon makes an adequate disclosure to teach a second scan. In this regard, we credit the testimony of Patent Owner’s declarant that skilled artisans would have understood Cheon’s paragraph 175 to teach a single scan pass. Ex. 2034 ¶¶ 158–159.” slip op. at 11

  Patent outcomesUS 9,338,449 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,338,449
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentable
  PTAB · Apr 8, 2020 · IPR2018-01476 · APJ J John Lee · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Paulraj, Walton, and Huang; the Wallace and Walton ground does not establish the required simultaneity.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering or an equivalent as well as three years of experience working with “multi-antenna wireless communication systems,” or one year of such experience with a master’s degree in electrical engineering focusing on communications systems. Pet. 7–8 (citing Ex. 1003 ¶ 41). Patent Owner does not dispute Petitioner’s 2 U.S. Patent No. 6,067,290, issued May 23, 2000 (Ex. 1005, “Paulraj”). 3 H. Huang et al., Achieving High Data Rates in CDMA Systems Using BLAST Techniques, in CONFERENCE RECORD, IEEE GLOBAL TELECOMMUNICATIONS CONFERENCE 2316 (1999) (Ex. 1006, “Huang”). 4 U.S. Patent No. 7,095,709 B2, issued Aug. 22, 2006 (Ex. 1008, “Walton”). 5 U.S. Patent Application Pub. No. 2002/0193146 A1, published Dec. 19, 2002 (Ex. 1009, “Wallace”). formulation of the level of skill in the art, and applies it for its arguments. PO Resp. 10. Based on the information presented in the Petition and Dr. Singer’s testimony, we agree with Petitioner’s formulation, which is supported by the record and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “limiting. See Pet. Reply 5; PO Sur-reply 7–8; Tr. 8:5–15. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, 182 F.3d at 1305). On the other hand, a preamble generally is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). For example, if “deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” the preamble is not limiting. Id. at 809 (citing IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000)). Here, we are persuaded the preamble is limiting. Although the parties dispute whether spatial multiplexing and transmit diversity occur simultaneously, it is undisputed that spatial multiplexing is part of the claimed invention. See Pet. 2; PO Resp. 6; Tr. 6:13–26 (Petitioner indicating “we agree that the claims require transmit diversity and signal multiplexing”). The Specification supports this view. For example, the Specification states that “i[t] is an object of the present invention to improve reception performance of specific data on a receiving side while maintaining the transmission efficiency of a communication system.” Ex. 1001, 2:3–6 (emphasis added). The technique for improving transmission efficiency disclosed in the Specification is spatial multiplexing. See id. at 5:13–17 (describing “two transmission systems to transmit different items of data, [which] maintains high transmission efficiency”), Figs. 3, 4; see also id. at 1:42–47 (indicating “signals sent from a plurality of transmission antennas at the same timing and same frequency in substream units” help “realize a high-speed, high-volume communication”). Further, the only part of claim 1 that recites spatial multiplexing is the preamble. See Pet. Reply 3–6; PO Sur-reply 4; Ex. 1020, 21:22–22:18. Neither party indicates that any other claim language captures spatial multiplexing. Thus, if the preamble is not limiting, claim 1 would not incorporate spatial multiplexing at all, which is inconsistent with how the invention is described in the Specification. Consequently, we determine that the preamble of claim 1 recites “essential structure or steps” and, thus, is “necessary to give life, meaning, and vitality” to the claim. See Catalina Mktg., 289 F.3d at 808.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “The final limitation of claim 1 (the “wherein” clause) recites “generat[ing] a replica data item by replicating a specific data item of the plurality of data items, and map[ping] the plurality of data items to the at least one of the plurality of antennas such that the specific data item and the replica data item are transmitted from different antennas at a same time.” It is undisputed that this limitation recites transmit diversity. Critically, as Patent Owner observes, this limitation recites “a specific data item of the plurality of data items” (emphasis added), i.e., the “specific data item” that is replicated for transmit diversity is part of the same “plurality of data items” recited in the preamble for spatial multiplexing. See PO Resp. 7 (“Therefore, the specific data item described in transmit diversity (TD) with the replica data item, is also involved in spatial multiplexing (SM) at the same time . . . with other data items of the plurality [of] data items . . . .”); PO Sur-reply 4 (asserting that the “same ‘plurality of data items’ are subject to spatial multiplexing in the preamble and transmit diversity in [the ‘wherein’ clause]”); Tr. 44:22–45:2. Consequently, in order for both the preamble limitations and the “wherein” clause limitations to be met, a plurality of data items, including the specific data item, must be transmitted via spatial multiplexing, i.e., using a plurality of antennas in parallel. In other words, both the specific data item and at least one other data item that is different (i.e., the recited “plurality”) must be transmitted at the same time. In addition, both the specific data item and its replica data item must also be transmitted at the same time, as recited in the “wherein” clause, for transmit diversity. Thus, at least three data items—the specific data item, its replica, and another different data item—must be transmitted at the same time to satisfy the claim because both spatial multiplexing (preamble) and transmit diversity (“wherein” clause) must occur. See PO Resp. 7; Pet. Reply 2–3; Ex. 1020, 12:17–21. As a result, the claim requires simultaneity.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Based on the complete trial record, we agree with Petitioner’s reasoning and evidence discussed above. Consequently, we find that a preponderance of the evidence indicates that the combination of Paulraj, Walton, and Huang teaches each limitation of claims 1 and 6, including the requirement of simultaneity. Patent Owner advances several arguments opposing Petitioner’s contentions, which we find unpersuasive for the reasons explained below.” slip op. at 23

  Patent outcomesUS 7,764,711 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,764,711
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 11, 2020 · IPR2018-01498 · APJ J John Lee · IPR · Final written decision

  Claims 4, 7–9, 12, 14, 16, 18, and 19 are unpatentable as obvious over the Bergen/Reimer and Armstrong grounds, with Abecassis for specified claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 9 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does 2 U.S. Patent Application Publication No. 2007/0250901 A1, published Oct. 25, 2007 (Ex. 1004, “McIntire”). 3 U.S. Patent No. 6,965,890 B1, issued Nov. 15, 2005 (Ex. 1023, “Dey”). 4 U.S. Patent No. 6,038,367, issued Mar. 14, 2000 (Ex. 1024, “Abecassis”). 5 U.S. Patent No. 6,956,573 B1, issued Oct. 18, 2005 (Ex. 1028, “Bergen”). 6 U.S. Patent No. 5,696,905, issued Dec. 9, 1997 (Ex. 1005, “Reimer”). 7 U.S. Patent Application Publication No. 2007/0003223 A1, published Jan. 4, 2007 (Ex. 1021, “Armstrong”). not dispute Petitioner’s formulation of the level of skill in the art. Based on the information and testimony presented with the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 10. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’282 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 7–8. We determine that no claim terms of the challenged claims in the ’282 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). To the extent any interpretation of claim language is necessary, we address those issues in the context of our unpatentability analysis below. C.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “playing in response to the request for information.” Petitioner argues that a person of ordinary skill would have recognized that presenting results of a request/query could interfere with viewing the video, and, thus, pausing the video would have been obvious given that it would have been “trivial” for the artisan to implement such a “ubiquitous” feature. Pet. 51–52 (citing Ex. 1002 ¶ 148). Additionally, the Petition cites Reimer as teaching this limitation. Id. at 52. Specifically, Petitioner notes that Reimer teaches using the “Pause” button of a remote control to initiate a query. Id. (citing Ex. 1005, 16:7–14). According to Petitioner, a skilled artisan would have been motivated to combine this feature of Reimer with Bergen because the two references are directed to similar systems, and doing so would constitute the use of a known technique (pausing) to improve Bergen’s system in the same way it improves Reimer’s system. Id. (citing Ex. 1002 ¶¶ 151–152; KSR, 550 U.S. at 417). We agree with Petitioner’s analysis and find that the combination of Bergen and Reimer teaches each limitation of claim 12. Also, we find that Petitioner has articulated a sufficient rationale that would have motivated a person of ordinary skill to combine those teachings. Thus, Petitioner has established by a preponderance of the evidence that claim 12 is unpatentable as obvious over Bergen and Reimer.” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “(id.)—in other words, the user sees the depicted item in Frame A but, due to reaction time, does not transmit the request for supplemental content about the item until Frame B, which is later in time and which may not depict that item any longer. See id. ¶ 272. In McIntire’s system, the supplemental content would be mapped to both Frame A and Frame B so that when the system receives the request at Frame B, it nonetheless retrieves the supplemental content for the item depicted in Frame A because it was also mapped to Frame B. See id. ¶ 140. This enables the system to identify “one or more articles appearing in the media stream at or around the point in time at which” the user request was received, because the articles are mapped to identifiers representing multiple frames at or around the time the articles appeared. See id. ¶ 310 (emphasis added). But though Frame A and Frame B may be different segments with different segment identifiers, they are both mapped to the same supplemental content. See id. Thus, displaying that content may be considered displaying information associated with both identifiers, but it is the same information, whereas the challenged claims require the information to be different. Petitioner argues that McIntire teaches displaying different information by virtue of the fact that the two segment identifiers it relies on represent two different segments. Pet. Reply 5–6. As discussed above, however, McIntire describes mapping the identifiers to the same content, even when they represent different segments/frames. Next, Petitioner notes that the items depicted in the video change from segment to segment, which creates the user delay problem. Id. at 6. According to Petitioner, “the purpose of identifying additional frame identifiers ‘around’ the current location and retrieving supplemental content for multiple [identifiers] is to display different information associated with previously depicted items that are not depicted in later locations.” Id. Petitioner is correct that McIntire discloses displaying information associated with previously depicted items, which may be different than information associated with items depicted in the current segment (because the items are different). Still, Petitioner has not addressed how McIntire teaches also displaying the information associated with items depicted in the current segment contemporaneously. McIntire’s discussion of the user delay problem teaches that the user is requesting information regarding the previously depicted items, not both the previous items and the current items contemporaneously, due to reaction time. See Ex. 1004 ¶ 272. That is why McIntire describes mapping both the previous and current segment identifiers to the information about the previously depicted items, not the currently depicted items. See id. ¶ 140. Petitioner also contends that a person of ordinary skill in the art would have known about the user delay problem, and that artisans “were motivated to solve it by providing different supplemental content associated with video frames before the request location,” which was within an ordinary artisan’s skill. Pet. Reply 6–7. Essentially, Petitioner’s argument amounts to a contention that the background knowledge of a person of ordinary skill would have supplied this limitation even if it was not taught by McIntire. Such a theory is untimely and will not be considered because it was not advanced in the Petition. See Pet. 28–29; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).” slip op. at 44

  Patent outcomesUS 9,380,282 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,380,282
• Amazon.Com, Inc. v. Customplay, LLC.All claims unpatentable
  PTAB · Mar 5, 2020 · IPR2018-01497 · APJ John R Kenny · IPR · Final written decision

  Claims 2, 4, 6, 14, 16, and 19 are unpatentable on at least one §103 ground; claim 4 was not shown unpatentable over Rakib and Livesey.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Computer Engineering, or Computer Science, and at least three years of experience in the design of digital video systems. Pet. 11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “constructions for the terms “retrieve” and “item” for its showing of the asserted obviousness of claims 14 and 19. Inst. Dec. 11–12; see also Pet. 17, 26. Therefore, we construed “retrieve” and “item” as they are defined in the Specification. Specifically, we construed “retrieve” as comprising “obtain, acquire, procure, download, transfer, extract, and to come into possession by any means or methodology.” Inst. Dec. 12; see also 2 The Petition in this proceeding was filed on August 1, 2018. Ex. 1001, 15:4–8. And we construed “item” as “(i) items, products, objects, properties, acts, or information, whether or not they offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; (iii) product placements; and (iv) items, products, objects, properties, acts, or information, that offer informational or entertainment opportunities.” Inst. Dec. 12; see also Ex. 1001, 4:48–55. For our construction for “item,” we included the Specification’s definition of “product placement,” which is “(i) items, products, objects, properties, acts, or information that offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; and (iii) product placements.” Inst. Dec. 13; see also Ex. 1001, 4:55–61. Neither party objected to our preliminary constructions of these terms. PO Resp. 6; Pet. Reply, generally. We maintain these constructions and determine that we do not need to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “trial, we agree with Patent Owner and do not find that Rakib and Livesey teach or suggest the above limitation. Petitioner’s obviousness theory for this limitation rests on its arguments about what an ordinarily skilled artisan could have done. According to Petitioner, an ordinarily skilled artisan would have understood that a partial overlay could be used to display information. Then Petitioner argues what an ordinarily skilled artisan would have been motivated to do if the artisan decided to use a partial overlay. But Petitioner provides no persuasive evidence that an ordinarily skilled artisan would have been motivated to choose the partial overlay— the predicate act in Petitioner’s analysis. And obviousness cannot be established by merely proving what an ordinarily skilled artisan could have done. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, Petitioner’s argument and Dr. Bovik’s testimony that the above limitation simply arranges old elements (requests for information and pausing control instructions), with each performing the same function it had been known to perform, and yields no more than predictable results, are conclusory. Pet. 80–81; Ex. 1002 ¶¶ 202–203. For that reason, we are not persuaded by that argument or that testimony.” slip op. at 69

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Third, an ordinarily skilled artisan would have been motivated to modify Rangan’s apparatus to permit requests for additional information as taught by Rakib for the following reasons: (i) Rangan discloses providing a unique customized experience for numerous users, and an ordinarily skilled artisan would recognize this goal would be best accomplished by providing a portion of the related information and then allowing each user to decide what additional information should be disclosed; (ii) disclosing all information that users may be interested in would be onerous; (iii) Rangan suggests that the user would be able to branch to additional information after selecting the hotspot; and (iv) this modification would be a simple substitution of one known element for another known element to obtain predictable results. Ex. 1002 ¶¶ 71–80. We also find that an ordinarily skilled artisan would have a reasonable expectation of making such a modification. Id. ¶ 80. Fourth, we do not agree with Patent Owner that this modification would impermissibly change Rangan’s principle of operation. PO Resp. 24. The proposed combination would not require that any change in the basic operation of Rangan’s system because Rangan’s system already requests information. See supra Section III.A.2.f.; Ex. 1102 ¶¶ 39–40. The modification would simply involve making another request. Ex. 1102 ¶ 40. We also credit Dr. Bovik’s testimony that Rangan and Rakib do not have incompatible operating structures. Id.” slip op. at 35

  Patent outcomesUS 9,124,950 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,124,950
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01496 · APJ J John Lee · IPR · Final written decision

  Claims 4–6 and 10–20 are unpatentable as obvious under the stated § 103(a) grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 10–11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 11. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’346 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 16. We determine that no claim terms of the challenged claims in the ’346 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). C.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “retrieving supplemental content, including “an image of the actress” (visual depiction of the performer), based on a mapping (reference) that associated that content to the segment depicting that actress. See Ex. 1004 ¶ 278; Pet. 28–29. Petitioner asserts inter alia that a skilled artisan would have been motivated to combine these teachings with the system in Thomas because displaying an actor’s image, as taught in McIntire, would have been a well-known technique applied in a conventional fashion to the similar device taught in Thomas to yield predictable results. See Pet. 29–30 (citing Ex. 1002 ¶ 68; KSR, 550 U.S. at 417). In addition, the Petition notes that Thomas teaches displaying “actor information” such as “biographical information” and “[a]ny other suitable information relating to . . . the actor,” which would have suggested to a skilled artisan to include images of the actor. Id. at 30 (quoting Ex. 1003 ¶ 106); Ex. 1002 ¶ 68. This analysis is persuasive, and its supporting evidence is credible and convincing.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “such metadata from a service. Ex. 1006, 6:44–50. The Petition sets forth several reasons why a person of ordinary skill would have been motivated to combine these teachings, including that it constitutes a simple substitution of one known technique (Reimer’s request for actor information) for another similar technique (Clarke’s request for metadata) to obtain predictable results. Pet. 73–75 (citing KSR, 550 U.S. at 417). Although Patent Owner argues Clarke “teaches away” from the claimed user request and that the combination of Clarke and Reimer is based on impermissible hindsight, its positions are unpersuasive because they are conclusory and unsupported. PO Resp. 54–55. In particular, with regard to teaching away, Patent Owner fails to identify evidence indicating that a skilled artisan would have understood Clarke to “criticize, discredit, or otherwise discourage the solution claimed” in the ’346 Patent. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the complete record, we find that this limitation is taught by the combination of Clarke and Reimer, and that an ordinary artisan would have been motivated to combine their teachings.” slip op. at 50

  Patent outcomesUS 8,494,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,346
• Cisco Systems, Inc. v. Centripetal Networks, Inc.All claims unpatentable
  PTAB · Jan 23, 2020 · IPR2018-01386 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Narayanaswamy, Kapoor, Johnson, and Kjendal; claims 10–16 are unpatentable as obvious over those references and the Diffserv Specification.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Patent Owner’s sole nexus explanation is a conclusory assertion that “the salutary benefits of Centripetal’s TIG [threat interface gateway] are made possible in large part by the ’213 patent’s dynamic security policies, which are automatically managed and distributed by the claimed SPM, as well as its network layer packet-by-packet rule enforcement, packet digest logging function and packet transformation function for routing packets to a monitoring device.” PO Resp. 62 (citing Ex. 2004, Goodrich Decl. ¶217). Dr. Goodrich’s testimony cited in support of this statement is merely a nearverbatim copy of this conclusory statement with no additional explanation. See Ex. 2004 ¶ 112; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As a result, we find that Patent Owner has not established a sufficient nexus between the cited industry praise and the invention of the challenged claims.” slip op. at 57

  • Skill levelOther
  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Patent Owner further argues that our construction removes any patentable weight from the word “dynamic” because it does not explicitly state that the policy is “non-static.” PO Resp. 15–16. Patent Owner does not point to any use of the expression “non-static” in the ’213 patent Specification. In some embodiments, a dynamic security policy may be constructed or revised manually off line and loaded into SPMS memory by an administrator (Ex. 1001, 14:23–47); in other embodiments the SPMS may be configured to add, remove, or alter one or more dynamic security policies based on information received from devices within the network known to be associated with malicious traffic (id. at 14:48–15:37). As discussed above, however, the Specification explicitly states “As used herein, a dynamic security policy includes any rule message, instruction, file data structures, or the like that specifies criteria corresponding to one or more packets and identifies a packet transformation function to be performed on packets corresponding to the specified criteria.” Id. at 4:58–64. As our construction is consistent with that language, we decline to adopt Patent Owner’s construction.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “and only now are contesting the construction of “packet-by-packet.” Indeed, we are not convinced that we should construe “packet-by-packet” when the phrase used in claim 1 is “on a packet-by-packet basis.” Both “packet-by-packet” and “on a packet-by-packet basis” are not defined in the Specification. It is unclear from the ’213 patent whether “on a packet-by-packet basis” requires inspecting every single packet, even if the preceding packet indicates there is no application-layer packet-header information in the following expected packet. On the other hand, as packets may arrive out of order, it appears that some inspection of each packet may be necessary. packet-by-packet basis” means performing the transformation function only on those packets that comprise the application-layer packet-header information specified in a rule. For example, claim 1 recites “identifying” such packets “on a packet-by-packet basis,” and then “performing . . . the packet transformation function” on such packets. In any case, we do not apply a construction that encompasses analyzing multiple packets at one time. However, the construction “working a packet at a time” offers little insight into what “on a packet-by-packet basis” actually means. At this late stage of the proceeding, we address this issue only to the extent necessary for this Decision in our substantive analysis of the claims, as explained below.” slip op. at 15

  Patent outcomesUS 9,565,213 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,565,213
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCInstitution denied
  PTAB · Jan 15, 2020 · IPR2019-01574 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Patent Owner statutorily disclaimed challenged claims 16 and 19.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDenied

    “the ’949 patent. Ex. 2001. Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original” slip op. at 2

  Discretionary denial
  Patents in suitUS 7,339,949

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.