• Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentable
  PTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner

    “Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43

  Patent outcomesUS 9,865,135 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,865,135
• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11

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

    “structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36

  Patent outcomesUS 10,076,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,076,257
• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Sep 11, 2024 · IPR2023-00664 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–24 were not determined unpatentable because the cited combinations failed to teach or suggest the claimed selectable widget functionality and lacked a coherent rationale to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34).” slip op. at 7

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

    “In our Decision to Institute, we construed “input that is directed to a portion of” a user interface. Paper 8, at 9; see also Pet. 24–25. Because this interpretation is not necessary for our final determination, we do not repeat it here.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3. Petitioner’s reliance of the testimony of Dr. Rosenberg (see Ex. 1003 ¶ 91) is unpersuasive because Dr. Rosenberg merely restates the Petitioner’s assertions without reliance on persuasive evidence of record. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, at 5 (Feb 10, 2023) (Vidal, Dir.) (“[T]he Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support and repeated, verbatim, Petitioner’s conclusory arguments.”). When addressing Chae’s three graphics in Figure 6(b) during cross-examination, Dr. Rosenberg testifies that “[t]hey’re not a numbered element, so they’re not spoken about specifically those three ones”). Ex. 2005, 56:9–14, 54:21–22 (“Chae doesn’t talk about the weather icon”). Further, the final record does not support Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood that “part of the well-known functionality of widgets was that selecting a widget would cause ‘display of an application corresponding to the respective user interface object.’” Ex. 1003 ¶ 91. None of the references relied upon by Petitioner discloses this alleged “well-known functionality of widgets,” nor does the evidence of record support any industry standard usage of the term widget in the appropriate timeframe. See Ex. 2003 ¶¶ 46–48. Petitioner has also not persuasively shown that selections of Chae’s SIM card icons result in the display of an application as claimed. See Ex. 1005 ¶¶ 152–154, Fig. 22; see also Tr. 43:14–17 (“the claimed interface object causes display of the corresponding application, but selection of this paragraph 152, Figure 22 widget causes selection of something different, a sim environment.”). We find Patent Owner’s position more persuasive, when Chae uses the word widget, it is not using that word to refer to something that launches into an application, but instead Chae’s widgets show use-state information related to a SIM environment. See Ex. 1005 ¶¶ 152–154; Tr. 33:3–12. Specifically, Chae discloses “widgets that show use-state information of the first and second SIMs (SIM1 and SIM2),” and “when a user selects one of [the] widgets,” it “unlocks the SIM corresponding to the dragged widget.” Ex. 1005 ¶¶ 152, 153, Fig. 3 (unlocking SIM displays home screen customized to unlocked SIM). Chae does not support that these widgets relate to the graphic items in its Figure 6(b), nor does Chae explain how its widgets could be understood as the claimed “user interface objects” of the widget screen user interface. As explained persuasively by Dr. Cockburn, “the only widgets that are described in Chae are widgets relating to the use state of the multiple SIM cards,” and “[t]hese widgets described in Chae do not correspond to applications and thus do not cause display of applications when the widgets are selected.” Ex. 2003 ¶ 46 (quoting Ex. 1005 ¶ 152).” slip op. at 25

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

    “Based on the final record before us, we conclude that Petitioner has not persuasively shown that the combination of prior art teaches the required widget limitation of “a respective user interface object . . . when selected, causes display of an application corresponding to the respective user interface object” as recited in claim 1. Petitioner relies on Chae’s Figure 6(b), which is reproduced below: Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3.” slip op. at 24

  Patent outcomesUS 11,106,352 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,106,352
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand

  The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.

  RulingsRemand decision

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

    “We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13

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

    “I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52

  • Strike new argumentNew argument disregardedDecided for petitioner

    “I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62

  • ExcludeMotion to exclude, grantedMixed

    “7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5

  Patent outcomesUS 10,225,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentable
  PTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; 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.”). In cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 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.”).” slip op. at 48

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60

  Patent outcomesUS 6,925,308 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Apple Inc. v. Masimo CorporationNo claims unpatentable
  PTAB · Apr 12, 2022 · IPR2020-01524 · APJ Robert L Kinder · IPR · Final written decision

  The Board held claims 1–16 not unpatentable because Petitioner failed to prove obviousness over the asserted Richardson-based grounds, including the required distinct, nonzero duty cycles.

  RulingsFinal written decision

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

    “Based on the final record, we find Patent Owner’s proposed interpretation of “duty cycle” persuasive. The evidence cited supports “duty cycle” to mean “the ratio of operating time (or on time) of a light source to the total time period during which the light source is intermittently operated, expressed as a percentage.” See Ex. 2002 ¶ 36 (relying on an electronics dictionary and testifying as to how the ’776 patent uses “duty cycle” consistent with its plain and ordinary meaning to require a ratio of operating time to total elapsed time). We are persuaded by the Specification of the ’776 patent describing the “duty cycle” as the ratio of the operating time (or on time) of the red and infrared LEDs to the total time period during which the LEDs are intermittently operated, expressed as a percentage. See Ex. 1001, 2:43–44; Ex. 2004, 225; Ex. 2002 ¶¶ 37, 39. The duty cycle is described as consistently being “in the range of about 3.125% to about 25%.” Ex. 1001, 2:43–44, Figs. 5, 8. The weight of the evidence, including the claim language and Specification, convinces us that neither the first nor the second duty cycles can be 0%. The claims require the first and second control protocol light sources to generate light so that the patient monitor can calculate a pulse rate based on the light. See Ex. 1001, 11:45–12:21 (“when operating according to the first control protocol, calculating . . . measurement values of the pulse rate, . . . responsive to light from the first control protocol light source” and “calculating the measurement values of the pulse rate, . . . responsive to light from the second control protocol light source”); Ex. 2002 ¶¶ 41, 42. The first and second duty cycles cannot be 0% because the light sources of the first and second control protocol light source would not generate light to enable pulse rate calculation as required by the claims. See Ex. 2002 ¶ 42 (“[I]f the first control protocol light source had a duty cycle of 0%, the light source would be inactive and would not generate light. If the light source did not generate light the monitor could not calculate the ‘measurement” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies.” Pet. 6 (citing Ex. 1003 ¶ 32 (“someone with a working knowledge of physiological monitoring technologies”)). “Alternatively, the person could have also had a 1 Neither party has introduced objective evidence of non-obviousness. See Tr. 23:25–24:3. Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “for this proceeding, [Patent Owner] applies the asserted level of skill identified in the Petition.” PO Resp. 11– 12. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “generated by the source is adjusted to optimize the signal to noise ratio and to minimize power consumption.” Ex. 1006, 11:54–57; Pet. 46, 49, 50. Turcott conveys that this “can be done by adjusting the drive current, the frequency of the pulse train, the pulse duration, or the duty cycle of the pulse train.” Ex. 1006, 11:57–59. Dr. Anthony contends that Turcott describes shifting the frequency of the pulse train and adjusting the duty cycle from one duty cycle to another, and infers that these things could be done during normal operation of the device to reduce power consumption. See, e.g., Ex. 1003 ¶¶ 81, 82, 87. We do not agree that Turcott teaches shifting the frequency of the pulse train or adjusting the duty cycle during normal operation of the device as alleged by Petitioner. We have considered Dr. Anthony’s testimony as to these points, but we determine that the scope of Turcott’s teachings are better explained by Dr. Madisetti. We find more persuasive Dr. Madisetti’s testimony and reasoning that a person of ordinary skill in the art would have understood that Turcott’s adjustments would happen during device design or setup, and not during operation of the device. Ex. 2002 ¶¶ 101–105. This is so because Turcott discloses operating at a single, low duty cycle that minimizes power consumption. See Ex. 2002 ¶ 104; Ex. 1006, 11:51–52 (“To conserve energy, the source is preferably driven with a low duty cycle pulse train.”). We also find persuasive Dr. Madisetti’s cross-examination testimony that the use of the terminology “optical power generated by the source is adjusted” in Turcott, “refers and describes to a POSA that it’s adjusted, past tense, at design time or manufacturing or setup,” and that “Turcott refers to this adjusted in past tense through the term ‘adjusting’ referring to that time at manufacturing or setup.” Ex. 1038, 22:16–24:15.” slip op. at 43

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

    “As we determined above, the claimed first and second duty cycles cannot be 0%. This determination precludes Petitioner’s first mapping of Richardson from reading on claims 1 and 11. Petitioner identifies the first mapping of Richardson as the transition of Richardson’s oximeter from State 2 to State 1. Pet. 10 (“For this first mapping of Richardson . . . the claim elements . . . are mapped to disclosure in Richardson describing the oximeter transitioning from State 2 (as the first control protocol) to State 1 (as the second control protocol).”). Petitioner argues that State 2 (blue below) is the “first control protocol” and State 1 (orange below) is the “second control protocol” required by claims 1 and 11. Patent Owner’s annotated Figure 2 of Richardson (Ex. 1004) describes implementing the noise reduction methods in a pulse oximeter having three states, including State 1 (highlighted in orange) and State 2 (highlighted in blue). PO Resp. 33. Richardson’s pulse oximeter transitions from State 1 to State 2 “[e]very 30 seconds,” and “[t]he purpose of State 2 is to detect new noise sources that may have appeared since the last State 0 measurements.” Ex. 1004, 9:39–42. In State 2, the oximeter reassesses the noise “by turning off one LED; typically the red LED,” for about 1.4 seconds. Id. at 6:2–3, 9:52–53. When the 1.4 seconds (i.e., idle time) expires, the oximeter automatically returns to State 1 where it uses the newly estimated noise values. Id. at 9:63–65; see also id. at 9:66–10:5 (discussing idle time). When operating in State 1, the oximeter has both LEDs turned on. Id. at 5:55–67. Petitioner argues that the red LED “has a duty cycle of 0%” in State 2 and a duty cycle of “at least 25%” in State 1. Pet. 16. Petitioner admits that in State 2 “the red light source is turned off.” Id. As we determined in the claim construction analysis, a person of ordinary skill in the art would have understood that the “first duty cycle” cannot be 0% based on the claims and Specification. Thus, under the proper construction of “first duty cycle,” turning off the red LED in State 2 (Petitioner’s “first control protocol”) is not operating according to a “first duty cycle” as required by claims 1 and 11. Ex. 2002 ¶ 66.” slip op. at 28

  Patent outcomesUS 10,433,776 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,433,776
• Apple Inc. v. Masimo CorporationNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2020-01523 · APJ Josiah C Cocks · IPR · Final written decision

  Apple did not prove claims 1–7, 9–18, and 20–24 unpatentable; the asserted obviousness grounds failed to establish the claimed power reduction or the required light detector-derived processing characteristics.

  RulingsFinal written decision

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

    “In our view, Patent Owner has the better explanation for what a person of ordinary skill in the art would understand from the ’703 patent as to what constitutes the “processing characteristics” that factor into the patient monitoring described by the claims. In that respect, we agree with Patent Owner’s above-noted assessments of the requirements of claims 4 and 8. Patent Owner persuasively explains that claim 4 does not emerge as meaningless based on Patent Owner’s construction of “processing characteristics” but instead claim 4 further refines the understanding of the type of processing characteristics that are received from the light detectors, i.e., signal characteristics rather than physiological measurements. We also share Patent Owner’s view that the understanding of claim 8 taken in the context of the Specification (e.g., Fig. 4), establishes that the estimate of power consumption is determined based on signals from light detector 490. We agree that Petitioner’s views as to how claims 4 and 8 inform the meaning of “processing characteristics” lack support and fall short. We conclude that it is inconsistent with the ’703 patent to tease out the sweeping premise advanced by Petitioner that simply any information that is processed, regardless of its source, can constitute the “processing characteristics” that are employed as a part of all of the challenged claims to monitor a patient based on light signals. Rather, we rely on the written description of the ’703 patent as a useful guide in informing the meaning of “processing characteristics,” and conclude that the proper understanding of the term is that such characteristics are derived from signals from light detectors. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”). Accordingly, we conclude that, in the context of the ’703 patent, “processing characteristics” are determined from a signal received from one or more detectors configured to detect light.” slip op. at 13

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

    “2. Other Claim Terms Upon consideration of the entirety of the arguments and evidence presented, we conclude no further explicit construction of any claim term is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not offer its own assessment of the level of ordinary skill. Patent Owner, however, does level a measure of criticism of Petitioner’s assessment of the level of skill in the art as being inconsistent with Petitioner’s own declarant, Dr. Anthony, in not accounting for experience in “non-invasive optical biosensors.” PO Resp. 16–17. Nevertheless, Patent Owner expresses that it “applies the asserted level of skill identified in the Petition.” Id. at 17 (citing Ex. 2001 ¶ 22). We determine that the Petitioner’s expressed level of ordinary skill in the art is consistent with the ’703 patent and the prior art of record. Accordingly, we adopt it in this Decision.” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Petitioner’s view that suspending Diab’s motion artifact suppression module necessarily will result in reduced power consumption. Although Amano does describe that its particular system enjoys reduced power consumption when its body movement component eliminating section 30 is suspended (Ex. 1004, 21:65–22:6), Patent Owner presents plausible reasoning and evidence that such power reduction may not occur in Diab’s differently structured and configured system. As between the conflicting testimony of Dr. Anthony and Dr. Madisetti on this matter, we find more credible the testimony of Dr. Madisetti in explaining why the same power consumption reduction attributed in Amano may not occur in Diab’s differently structured system. See, e.g., Ex. 2001 ¶¶ 76–77, 87–90. Yet, the premise of supposed power reduction is the foundational reason that Petitioner advances in combining the teachings of Amano with Diab. We conclude that Petitioner has not met its burden of persuasion on this issue. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 31

  Patent outcomesUS 8,457,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,457,703
• Intel Corporation v. Parkervision, Inc.No claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11

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

    “Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  Patent outcomesUS 7,539,474 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,539,474
• SHDS, Inc. / Galderma Laboratories, L.P. v. Truinject Corp.No claims unpatentable
  PTAB · Nov 15, 2021 · IPR2020-00937 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1, 3, 4, 6–16, and 20–26 were not shown unpatentable because the petition did not account for required simulated therapeutic-agent delivery and real-time digital-plunger limitations.

  RulingsFinal written decision

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

    “In light of the parties’ mutually acknowledged agreement of the meaning of the noted-term, and given that we do not see reason on the record before us to deviate from that meaning, we apply the same meaning of “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus” to the noted claim phrase and consider no further construction to be necessary. 3. Remaining Claim Terms We discern that no other term needs an express construction to resolve the parties’ dispute. See Nidec, 868 F.3d at 1017.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Thus, Patent Owner proposes a construction of the above-noted phrase as “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus.” Petitioner acknowledges that “the parties agreed to the construction of this term in the Delaware Action. No further construction of the term is required.” Pet. Reply 5. In light of the parties’ mutually acknowledged agreement of the meaning of the noted-term, and given that we do not see reason on the record before us to deviate from that meaning, we apply the same meaning of “a simulated flow of therapeutic agent delivered from the digital model of the syringe to the digital model of the training apparatus” to the noted claim phrase and consider no further construction to be necessary.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “on Lampotang’s paragraph 89, Petitioner attempts to expand its proposed ground, and uses the Petitioner Reply to do so. To that end, Petitioner turns to specific disclosure of Samosky at paragraph 67 as providing an evidentiary basis to conclude that depiction of a simulated delivery of a therapeutic agent “would have been obvious.” Pet. Reply 14. A reply provides an opportunity for a party to respond to arguments made, for instance, in a patent owner response. 37 C.F.R. § 42.23(b). A reply, however, is not an appropriate vehicle to reconfigure a proposed ground based on new or additional evidence that is not reasonably tied to a ground advanced in the Petition, which is what Petitioner seeks to do here. The Petition does not set forth an adequate basis to conclude that Petitioner relied on Samosky’s teachings to account for features of claim 1 of the ’232 patent. As Patent Owner points out (PO Sur-reply 13–14), it is impermissible and untimely for Petitioner to now attempt to do so as a part of the Reply. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n [inter partes review] petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016)).” slip op. at 21

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Lampotang’s disclosure with reference to Figure 2 focuses on the CVL technique, which involves withdrawing blood from a blood vessel rather than injecting medication into the patient’s body. Ex. 1008 ¶¶ 89-90. The CVL technique is not concerned with visualizing a simulated flow of therapeutic agent delivered from a digital model of the syringe to the digital model of the training apparatus. Ex. 2005 ¶ 102; see PO Resp. 41. We credit Dr. Pugh’s testimony on this matter, as we find it consistent with Lampotang’s disclosure as to the content of its Figure 2 and Lampotang’s description of the CVL technique. See, e.g., Ex. 1008 ¶¶ 78, 89–90.” slip op. at 20

  Patent outcomesUS 10,290,232 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,290,232
• Hulu, LLC / Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00647 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–5 and 12 were not shown unpatentable over Pyle and Marusi or Lewis and Marusi because each ground failed to establish a required claim limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 7–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 9

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

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’720 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “‘[t]he plain language of the claim clearly indicates only a single [list] is used’ to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 15 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’720 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’720 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[d], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[c] and discussed above. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Fundamentally, Petitioner fails to provide any reason in the Petition as to why one of ordinary skill in the art would have found it obvious to retrieve a list of assets based on Lewis. Instead of providing a reason as to why retrieving a list of assets would have been obvious, Petitioner points to a result achieved by Lewis—generating a dynamic manifest file that contains a list of URLs to container files containing content. In the context before us, pointing to a result to allege that a step in a process leading to the result would have been obvious is insufficient without also providing a reason with rational underpinning. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Here, Petitioner relies upon the result of Lewis’s process—generating a dynamic manifest file containing a list of URLs—as the only basis as to why a previous step in the claim would have been obvious without providing any reason why the achieved result means the previous step would have been obvious. Further, although Petitioner cites to Dr. Reader’s declaration (Ex. 1003 ¶ 233), Dr. Reader’s testimony does not provide any further explanation or reason as to why this aspect of limitation 1[c] would have been obvious.11 Rather, the Petition’s 11 To the extent Petitioner relies upon its discussion of the combined teachings of Lewis and Marusi as set forth at the beginning of Petitioner’s discussion of this ground (see Pet. 54–57), that portion of the Petition does not provide an additional reason why retrieving a list of assets as recited in discussion appears to be exactly the same as Dr. Reader’s testimony on this point. Thus, Petitioner’s argument that it would have been obvious to retrieve a list of assets in light of Lewis is not supported sufficiently on the record before us.” slip op. at 46

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDecided for patent owner

    “In its Reply, Petitioner contends that “[c]ontrary to [Patent Owner’s] claim that Lewis does not teach a list and that there was no reason to modify Lewis’ system ([PO Resp.] 30–32), the Petition and Dr. Reader clearly explain why lists and database operations would have been obvious to a [person of ordinary skill in the art].” Pet. Reply 19 (citing Pet. 62–63; Ex. 1003 ¶¶ 237–239). Petitioner reiterates the position asserted in the Petition—that it would have been obvious to retrieve a list of assets because Lewis teaches that a dynamic manifest file contains a list of URLs to container files containing content. Id. Petitioner also contends that “Lewis itself explains that it was well-known that manifest files contain a list of media assets to be played.” Id. (citing Ex. 1006 ¶ 20 (noting that “Manifest Resp. 37–38 (citing Ex. 2010 ¶ 79). In its Reply, Petitioner responds to Patent Owner’s assertion by pointing to stored video segments 375 as assets, not just processed video segments 315a–c. Pet. Reply 19 (citing Ex. 1003 ¶¶ 230–231). In the Petition, Petitioner did not assert or rely upon stored video segments 375 as teaching the recited “assets” or “list of assets”; rather, Petitioner relied upon processed video segments 315a–c. See Pet. 62. Petitioner’s attempt to assert, for the first time, in its Reply that processed video segments 375 also teach the recited “assets” is an improper reply argument. See, e.g., Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74, available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Generally, a reply . . . may only respond to arguments raised in the preceding brief. . . . ‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability . . . of an original . . . claim . . . .”); see PO Sur-reply 16–18 (discussing Petitioner’s new argument). Petitioner’s attempt to (1) rely upon stored video segments 375 to teach the recited assets and (2) assert that Lewis teaches, as opposed to rendering obvious, retrieving a list of assets are both new arguments that are inappropriately raised for the first time in Petitioner’s Reply and, therefore, we disregard them. file 257 includes entries 258a through 258f”), Fig. 2 (noting that Figure 2 shows entries pointing to video segments)).” slip op. at 45

  Patent outcomesUS 9,270,720 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,270,720

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.