- Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentablePTAB · Oct 27, 2022 · IPR2021-00830 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Keagy, Miller, and the knowledge of an ordinary skilled artisan.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“‘Autonomic’ refers to an ability for a cloud computing environment to manage its own operations with little or no governance by hand from any user or system administer. ‘Autonomic scaling’ therefore refers to an ability of a cloud computing environment to manage its own scaling operations with little or no governance by hand from any user or system administer. This paper describes autonomic scaling in the sense of adding and removing instances of virtual machines and their data processing applications as data processing workload increases and decreases with a cloud computing environment. Ex. 1001, 2:35–45.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“iii. Other terms After reviewing the evidence and arguments presented by the parties, we determine that it is not necessary to our decision to construe any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that an ordinary skilled artisan “would have had a bachelor’s degree in computer science, computer engineering, or a related discipline and three years of experience in the relevant technical field— cloud computing, computer networks and systems—or the equivalent.” Pet. 18 (citing Ex. 1003 ¶ 48). Petitioner further states that “[a] POSITA also would have been aware of and generally knowledgeable about the structure 4 The parties have not introduced any evidence concerning secondary considerations. levels of education may substitute for less experience, and vice versa.” Id. at 18–19. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 8. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’612 patent and the prior art of record.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For the following reasons, we determine that Petitioner persuasively shows that an ordinary skilled artisan would have combined Keagy and Miller in the manner proposed, and Patent Owner’s contentions are unavailing. We look to Dr. White’s testimony in connection with analyzing Patent Owner’s contentions. With respect to deploying additional instances of a VM, Dr. White points to page 37 of the Petition where Petitioner argues that “Keagy contains a similar disclosure [to Miller]” of up-scaling VM resources. Ex. 2011 ¶ 105. Dr. White, however, specifically states his disagreement that Keagy discloses deploying an additional instance of a VM. Id. ¶ 106. Patent Owner also disputes that Keagy discloses deploying that Miller discloses deploying an additional instance of a VM. Id. at 28. As explained below in connection with limitation 1.C, Patent Owner’s argument that Miller does not disclose deploying an additional instance of VM is based on its claim construction that “deploying” requires “creating a new instance of a VM” that we did not adopt for the reasons stated in Section II.C. Id. Dr. White’s quibbles with Miller in this regard are also based on the same claim construction that we do not adopt. Ex. 2011 ¶ 107 (“Miller does not create any new instances of a VM”). As further explained in our analysis of limitation 1.C, assuming Patent Owner is correct concerning Keagy’s lack of disclosure of adding additional instances of a VM, Miller discloses deploying additional instances of a VM under the proper claim construction. Consequently, modifying Keagy with Miller’s disclosure of deploying additional instances of a VM does not entail adding a feature to Keagy that it already possesses. Pet. 69; Ex. 1003 ¶¶ 204–206. Dr. White’s testimony with respect to removing entire instances of a VM takes a similar tack. Dr. White points to page 70 of the Petition that “Keagy already discloses the termination and deletion of entire VMs.” Ex. 2011 ¶ 108 (citing Pet. 70). Dr. White specifically states his disagreement that Keagy has such a disclosure. Id. Petitioner relies on Dr. Jakobsson’s testimony at paragraphs 203 and 208. Pet. 70. In paragraph 208, Dr. Jakobsson directs us to his testimony in connection with, inter alia, limitation 1.D. In connection with limitation 1.D, Dr. Jakobsson testifies that “Keagy teaches the termination and deletion of entire VMs outside of the autonomic scaling context.” Ex. 1003 ¶ 128. Consequently, modifying Keagy with Miller to terminate entire VM instances in the context of to Keagy that it already possesses.” slip op. at 35
Patent outcomesUS 8,572,612 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,612 - PTAB · Sep 21, 2022 · IPR2022-00457 · APJ Sally C Medley · IPR · Institution
The Board instituted IPR of claims 1–9, 11–19, 21, 23, 25, and 27, finding a reasonable likelihood that at least one challenged claim is obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Office during the prosecution of the ’440 patent in an IDS on November 24, 2014” and “the Examiner initialed Lahetkangas as being considered.” Prelim. Resp. 11 (citing Pet. 17; Ex. 1002, 69; Ex. 1011), 33. We agree that Lahetkangas was previously presented to the Office during prosecution of the ’440 patent. Ex. 1001, code (56); Ex. 1002, 69; see also Pet. 17 (Petitioner acknowledging that Lahetkangas was cited in an IDS). Accordingly, we determine that part one of the Advanced Bionics framework is satisfied. 3. Part Two of the Advanced Bionics Framework Patent Owner asserts that Petitioner has failed to show material error by the Examiner during prosecution. Prelim. Resp. 51. We disagree. As Petitioner points out, although the Examiner considered Lahetkangas in an IDS, Lahetkangas was not discussed in any Office Action or Response. Pet. 17–18. We find that Lahetkangas was not extensively evaluated during examination and was not the basis for a rejection. Petitioner has presented a sufficient showing that the Examiner overlooked disclosures in Lahetkangas that render obvious the challenged claims. See infra. We, therefore, agree with Petitioner that the Office erred in a manner material to the patentability of the challenged claims. Pet. 18–19.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’440 patent. See Pet. 3–4 (citing Ex. 1003 ¶ 70). Dr. Kakaes states that a person having ordinary skill in the art (POSITA) “would be someone who had a Master’s degree in Electrical Engineering, Applied Mathematics, Computer Science, Physics or equivalent.” Ex. 1003 ¶ 70. Citing Dr. Kakaes, Petitioner further states that the POSITA would have also had “three to five years of experience working with wireless digital communication systems” and that “[a]dditional education might compensate for less experience, and vice-versa.” Id. Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For purposes of this Decision, we need not expressly construe any claim term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). E. Asserted Obviousness of Claims 1–7, 9, 11–17, 19, 21, 23, 25, and 27” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Claim 18 depends from claim 11 and includes a similar limitation. Petitioner provides reasons for employing Wang’s “extended or aggressive MCS table (i.e., a second MCS table).” Pet. 65–70. We have reviewed Petitioner’s showing for dependent claims 8 and 18 and find such showing sufficiently persuasive at this stage of the proceeding. Id. Patent Owner does not contest claims 8 and 18 separately. Prelim. Resp. 63–64. We conclude that, based on the totality of the arguments and evidence currently in the record, Petitioner has sufficiently shown, for purposes of institution, that Lahetkangas and Wang with or without LTE TS 36.213 teach or suggest the limitations of claims 8 and 18, and that a person of ordinary skill in the art would have had reason to combine the references in the manner Petitioner proposes. Accordingly, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that challenged claims 8 and 18 would have been obvious over Lahetkangas and Wang with or without LTE TS 36.213.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,509,440 - Apple Inc. v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Sep 21, 2022 · IPR2022-00348 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show Agiwal and Abedini were entitled to their provisional priority dates, leaving no reasonable likelihood of prevailing on claims 1–15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018). For the reasons set forth below, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims, and we do not institute inter partes review.” slip op. at 2
- BurdenDenied
“Fatal to the Petition, though, Petitioner did not establish that the subject matter relied upon for prior art was effectively filed in the provisional applications. 35 U.S.C. §§ 102(a)(2), 102(d). Under the AIA, a provisional application must “describe[] the subject matter” relied upon as prior art in the reference patent. 35 U.S.C. §102(d); see also MPEP § 2154.01(b). Petitioner does not assert, much less show, that the provisional applications satisfy the subject-matter requirement. Accordingly, Petitioner has not shown that Agiwal and Abedini are entitled to the priority dates of their provisional applications, and Petitioner has not shown a likelihood that it would prevail in its challenges to any claims of the ’915 patent.” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedNot shown unpatentable
“Fatal to the Petition, though, Petitioner did not establish that the subject matter relied upon for prior art was effectively filed in the provisional applications. 35 U.S.C. §§ 102(a)(2), 102(d). Under the AIA, a provisional application must “describe[] the subject matter” relied upon as prior art in the reference patent. 35 U.S.C. §102(d); see also MPEP § 2154.01(b). Petitioner does not assert, much less show, that the provisional applications satisfy the subject-matter requirement. Accordingly, Petitioner has not shown that Agiwal and Abedini are entitled to the priority dates of their provisional applications, and Petitioner has not shown a likelihood that it would prevail in its challenges to any claims of the ’915 patent.” slip op. at 6
§ 102 anticipationPatents in suitUS 10,484,915 - PTAB · Sep 9, 2022 · IPR2022-00338 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–4, 6–10, 12, 14–17, and 19–24 on all petitioned challenges, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“E. Conclusion Concerning Discretionary Denial Under § 325(d) After analyzing the Becton factors in view of the Advanced Bionics” slip op. at 24
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,995,357 - PTAB · Sep 7, 2022 · IPR2022-00337 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–40 on all petitioned grounds, finding a reasonable likelihood of success on the §103 challenges, including obviousness over Bao and Feuersanger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–40 in the ’655 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As also explained in our patentability analysis below, Petitioner demonstrates a reasonable likelihood of prevailing in proving the challenged claims unpatentable as obvious over Kwon. See Pet. 48–83; infra §§ IV.F.2–IV.F.4. In doing so, Petitioner demonstrates that the Examiner erred in a manner material to the patentability of challenged claims when (1) rejecting the claims only due to obviousness-type double patenting and (2) failing to appreciate that Kwon ’790/Kwon teaches the claimed subject matter. See Ex. 1002, 134–41 (rejecting the claims only due to obviousnesstype double patenting and citing Kwon ’790 without explanation), 192–99 (allowing the claims after terminal disclaimer filed); Ex. 1003 ¶¶ 304–520; infra §§ IV.F.2–IV.F.4. Because Petitioner persuasively shows on this record that Kwon teaches the claimed subject matter, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. For these reasons, we decline to exercise our discretion under § 325(d) to deny institution.” slip op. at 16
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The descriptions of an ordinarily skilled artisan articulated by Petitioner and Patent Owner differ mainly in the educational level, i.e., “at least a Bachelor’s degree” according to Petitioner and “a Bachelor’s degree” according to Patent Owner. Pet. 6; Prelim. Resp. 8; see Ex. 1003 ¶ 20; Ex. 2001 ¶ 17. Based on the current record and for purposes of institution, we accept Patent Owner’s description of an ordinarily skilled artisan as consistent with the ’655 patent and the asserted prior art. If the prior art renders the claimed subject matter obvious to a person with less experience and less knowledge, then the prior art renders the claimed subject matter obvious to a person with more experience and more knowledge. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner “agrees with Petitioner that no claim terms require an express construction for the purposes of this proceeding.” Prelim. Resp. 9 (citing Pet. 6). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and 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); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,454,655 - Triller, Inc. v. Tiktok Pte. Ltd.Institution deniedPTAB · May 16, 2022 · IPR2022-00181 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 19, 23, 24, or 28 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Petitioner contends that the PCT application does not include “anything that could reasonably be characterized” as disclosing the metadata limitation. Pet. 12–13 (citing Ex. 1025 ¶ 81). Petitioner, however, does not elaborate or address any aspect of the PCT application’s disclosure. See id. Patent Owner argues that the PCT application discloses the metadata limitation. Prelim. Resp. 6–12. According to Patent Owner, the PCT application describes a mobile device receiving and displaying “descriptive information” about a track (such as the song title, artist, and duration) without downloading the track itself, and this “descriptive information” discloses the “track meta-data” recited in the claim. Id. at 8–11 (citing Ex. 1008, 4:27–5:9, 11:6–16, 13:14–21, 51:7–13, 91:7–10, 105:16–18, 116:1–10, 133:2–3, 134:10–15, 149:21–23, 149:25–150:3, 150:12–26, 152:1–9, 153, 156). In support, Patent Owner notes that the PCT application describes “[m]etadata” as “[i]ndividual items of data or collections of data, of,” among other things, mobile content such as “full music downloads.” Id. at 7 (citing Ex. 1008, 13:14–21) (emphasis omitted). Patent Owner further explains by asserting that “[t]he fact that the track metadata is provided as a search result, but not the music file itself, demonstrates” disclosure of the metadata limitation. Id. at 9. In addition, Patent Owner submits that the PCT application discloses “sharing” track information because users can send their playlists and recommendations to other users. Id. at 11–12 (citing Ex. 1008, 5:21–22, 7:2–4, 59:10–14, 61:15–28, 65:1–17, 66:18–9, 67:7–9, 101:17–102:13, 130:8–17, Figs. 84, 97, 106). On this record, we are persuaded that the PCT application discloses the metadata limitation, which (for purposes of this Decision) requires a software application that uses “track meta-data” that (1) exists separately from the music track, (2) exists separately in any way from other forms of metadata, and/or (3) is stored in a separate database. See supra § II.B (claim construction). In particular, Patent Owner persuasively shows that the PCT application discloses a mobile device application that uses “track meta-data” (e.g., attributes of music tracks, such as the song’s title, artist, and duration) stored on the mobile device while the corresponding track and its metadata remain separately stored on a remote server.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“2. Law on Written Description Support “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)). “To satisfy the written description requirement [in § 112,] the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” Id. (second alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement” necessarily “varies predictability of the relevant technology.” Id. The invention need not be described in haec verba, but a disclosure that merely renders obvious the claims does not provide adequate written description support. Id. at 1352.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“connect these dots. For example, it is unclear whether Petitioner proposes a combination of Abrams’s web browser and Khedouri’s music application, or whether it instead proposes that one be replaced with the other. See id. at 53–54. Petitioner also does not address whether a person of ordinary skill in the art would have had a reasonable expectation of success in combining a web browser and a music application. See id. Rather, Petitioner simply refers to combining “Khedouri’s music sharing functions” with “Abrams’ social networking functions” (id. at 54), which does not address the requirement that “a software application” meet these limitations. Moreover, Petitioner does not sufficiently explain why a person of ordinary skill in the art would have combined the functionality of Abrams and Khedouri. See KSR, 550 U.S. at 418 (obviousness requires analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Liberally interpreting the relevant portion of the Petition, Petitioner contends that a motivation to combine is established because: (1) the references themselves provide the motivation to combine, (2) the proposed combination was desirable and predictable, (3) an ordinary artisan would have been motivated to add music to Abrams, and/or (4) an ordinary artisan would have been motivated to add Abrams’s social networking functions to Khedouri. See Pet. 53–54; see also supra § II.E.1 (reproducing relevant portion of Petition with corresponding reference numbers). We are not persuaded. themselves provide the requisite motivation. See Pet. 53. Abrams is directed to “connecting users in an online computer system based on their relationships within social networks.” Ex. 1009 ¶ 1; see also id. ¶ 36 (“What is needed is a system that allows individuals to replicate the process of developing personal relationships through social networks, using a computer system and database.”). Khedouri, on the other hand, is directed to “selecting, requesting, downloading, and playing audio” files on a user’s portable audio player device from a content delivery service. Ex. 1011, Abst., ¶ 3. Petitioner identifies (and we perceive) no disclosure in either reference that suggests their combination. See Pet. 53–54. Petitioner incorrectly implies that Khedouri “expands on [Abrams’s] ‘music theme.’” Id. at 53. Abrams states that a user can identify the user’s interests as well as favorite music, books, tv, and movies (Ex. 1009 ¶ 91, Fig. 2), and each of these are stored as a text field in Abrams’s database (id. ¶¶ 89, 91, Fig. 2). This is a passing reference to music, not a music theme. Petitioner also contends that both Abrams and Khedouri teach most limitations of the claim (Pet. 53 (citing Ex. 1025, 120–123)), but even if that were true, it does not explain why a person of ordinary skill in the art would have combined them. Second, Petitioner’s assertions that the proposed combination would have been “desirable” and “predictable” are conclusory and entitled to little weight. See Pet. 54. Petitioner relies on Dr. Shamos’s testimony in support, but it similarly fails to provide analysis or evidence to support his conclusions. See Ex. 1025 ¶ 170. Accordingly, we assign little weight to that testimony. 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.”); see also TQ Delta, 942 F.3d at 1358. a desirable feature” and the combination would provide users “the ability to not only identify and publicize information about their favorite music on their profiles (and learn about others’ favorite music from others’ profiles) but to actually search for that music and be able to listen to it.” Pet. 54 (citing Ex. 1025 ¶ 170). Although this identifies vague benefits of a combination (i.e., sharing information and facilitating access to music), it fails to explain why an ordinary artisan would have been motivated to incorporate these benefits in Abrams’s social network. Petitioner also provides no evidence that an ordinary artisan would have had reasonable expectation of success in making this proposed combination. See id. at 53– 54. Given the specific facts and circumstances of this case, we are concerned that this rationale suffers from improper hindsight bias. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.” (internal quotation marks omitted)).” slip op. at 24
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,294,430 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00180 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, with the first part being whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 25 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’322 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, electrical engineering, or an equivalent discipline, or equivalent experience, including familiarity with multitasking and multithreading, wireless communications and client/server computing, and, in addition, familiarity with digital music distribution and DRM.” Ex. 1025 ¶ 62; Pet. 35. Patent Owner submits that one of ordinary skill in the art would have had “a Bachelor’s degree in Computer Science, Computer Engineering, Human Factors, or an equivalent degree and at least two years of experience working in the fields of user interfaces, communications applications, networking applications, or media applications, or a person with equivalent education, work, or experience in such fields.” Prelim. Resp. 2. The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther
“Petitioner does not identify any specific claim term for construction. Pet. 5. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’322 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1002, 8:63–65). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions10 from the “Definitions” section of the Specification:” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,992,322 - Gain Capital Holdings, Inc. v. Oanda CorporationAll claims unpatentablePTAB · Mar 16, 2022 · CBM2020-00023 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–12 are unpatentable under § 101; proposed substitute claim 13 is unpatentable under §§ 101 and 103 over Pictet, and the revised motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“all directed to “time-based trade analysis” “improperly describes the claims at too high a level of abstraction, as warned against in” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1337 (Fed. Cir. 2016). PO Resp. 5–6. We disagree. Petitioner’s articulation of the abstract idea to which claim 1 is allegedly directed is appropriately focused and tied to the specific language of the limitations of the claim. Petitioner explains how the recited “price data” and “current system position information” are the key inputs for time-based trade analysis and how calculating a trade recommendation using sub-models based on different times of day constitutes such analysis. See Pet. 31–34. Further, “time-based trade analysis” is not a general field, but rather a particular practice, namely the analysis of potential trades based on time. That type of analysis is reflected expressly in claim 1 via the use of a plurality of sub-models where each is based on “a different time of day.” Petitioner’s analysis is persuasive, as it is consistent with the language of claim 1 and supported by the testimony of Mr. Donefer, which we credit.6 Based on the full record developed during trial, we are persuaded that claim 1 recites time-based trade analysis. Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea.” slip op. at 21
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We disagree. Claim 1 does not recite a distributed system architecture, sub-model calculations executed concurrently in parallel, or real-time operation for a large number of users, all of which Patent Owner relies on to show a patent-eligible application of the alleged abstract idea. See Reply 6, 8; Ex. 1038 ¶¶ 22, 25–26. Claim 1 broadly recites “calculating trade recommendation information from each of a plurality of trading sub-models,” each “based on a different time of day,” and “calculating a trade recommendation . . . based on said trade recommendation information from each of said trading sub-models.” The claim does not specify how, when, or by what component the calculations are performed. Thus, Patent Owner’s contention that steps (d) and (e) do not represent well-understood, routine, and conventional activity is not commensurate with the language of the claim. With respect to what is actually recited in the claim, we are persuaded based on the full trial record that the calculations are the abstract idea itself (i.e., the fundamental economic practice of “time-based trade analysis”), rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea. See supra Section II.F.1.b; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Regardless, though, Petitioner also has provided persuasive evidence regarding the conventionality of steps (d) and (e), particularly given the broad manner in which they are recited in the claim. See, e.g., Ex. 1004 ¶¶ 69–84; Ex. 1021, 115 (“It is widely documented that return volatility varies systematically over the trading day and that this pattern is highly correlated with the intraday variation of trading volume and bid-ask spreads.”); Ex. 1019, 13 (“Trading models offer a real-time analysis of foreign exchange movements and generate explicit trading recommendations. These models are based on the continuous collection and treatment of foreign exchange quotes by market makers around the clock at the tick-by-tick frequency level.”); Ex. 1031, 728–732 (describing modeling that accounts for time periods of different levels of activity, such as when particular FX markets are open, and using time intervals of “hours, days, weeks or years”). Petitioner also has provided a detailed explanation citing persuasive evidence that, even if claim 1 did require distributed parallel processing and real-time trading model calculations, both were well-understood, routine, and conventional at the time of the ’534 patent. See Reply 9–11, 15–17; Ex. 1038 ¶¶ 23 (citing, for example, Ex. 1031, 228–232), 29–35 (citing, for example, Ex. 1031, 718). We credit Mr. Donefer’s testimony, which is supported by evidence in the record and unrebutted—Patent Owner did not address the evidence discussed in the Petition and Mr. Donefer’s initial declaration in its Response, did not file a Sur-Reply addressing Mr. Donefer’s reply declaration and cited evidence, and did not provide any contrary evidence in the record. See Reply 1, 3.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony of Mr. Donefer, for why a person of ordinary skill in the art would have had reason to combine Pictet’s teachings and arrive at the method of proposed substitute claim 13. Id. at 24–25 (citing Ex. 1031, 716–723; Ex. 1038 ¶¶ 52–58, 75–77). Petitioner argues that a person of ordinary skill in the art “would have recognized that Pictet’s data collection and storage steps (i.e., steps (a)-(c)) provide inputs for the subsequent calculations (i.e., steps (d)-[(e)]),” “would have understood Pictet as teaching that the distributed parallel processing . . . applies to the implementation of the trading models performing those calculations,” and would have had “reason to use at least five of the parameters discussed [in Pictet] when configuring the rules governing the ‘grand’ model.” Id. at 24. Petitioner further contends that numerous types of parameters were routinely used when designing and evaluating trade models, and Pictet’s moving average . . . is no different. Moreover, Pictet describes two categories of threshold values (i.e., trend and overbought/oversold) and expressly teaches using “several threshold values of both types,” which at a minimum suggests four such parameters. The voting scheme is also an integral part of the weighted moving average Pictet describes. A [person of ordinary skill in the art] also had reason to incorporate a time parameter setting the amount of time in the past that is considered, since a [person of ordinary skill in the art] would have understood that price data from the distant past is less 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that “the Board need not address issues that are not necessary to the resolution of the proceeding”). relevant to a moving average. Pictet also teaches using stop-loss and stop-profit parameters as part of its model implementation. Id. at 24–25 (citations omitted). We have reviewed Petitioner’s analysis and find it persuasive. Petitioner’s reasoning is consistent with the disclosure of Pictet and supported by the testimony of Mr. Donefer, which we credit. For the reasons stated by Petitioner and Mr. Donefer, we find that a person of ordinary skill in the art would have had reason to combine the cited teachings of Pictet in the manner asserted with a reasonable expectation of success.” slip op. at 53
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“3. Patentability Pursuant to 37 C.F.R. § 42.221(d)(2), Petitioner “bears the burden of persuasion to show, by a preponderance of the evidence,” that proposed substitute claim 13 is unpatentable. Petitioner argues that proposed substitute claim 13 fails to recite patent-eligible subject matter under 35 U.S.C. § 101, is indefinite under 35 U.S.C. § 112, second paragraph, and would have been obvious under 35 U.S.C. § 103(a). Opp. 3–25. For the reasons explained below, we determine that Petitioner has met its burden to show, by a preponderance of the evidence, that claim 13 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103(a), and need not reach Petitioner’s arguments regarding definiteness under 35 U.S.C. § 112, second paragraph.” slip op. at 39
Patent outcomesUS 7,496,534 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR · GrahamPatents in suitUS 7,496,534 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 4, 2022 · IPR2021-01289 · APJ Bryan F Moore · IPR · Institution
The Board denied institution of IPR on claims 1–19 under General Plastic, finding the second petition unnecessary and inefficient; it also denied Apple’s conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“In none of its briefs does Petitioner explain “why the Board should exercise its discretion to institute additional petitions if it [the Board] identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a),” short of saying that “Bohbot-Gundlach (470 IPR) and Kim (this Petition) offer very different disclosures.” Explanation 3; TPG 60.8 However, Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. TPG 59. Accordingly, based on the record before us, we agree with Patent Owner (Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying institution of the proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“Conclusion In light of the General Plastic factors, the Uniloc decision, the guidance in the TPG, and the arguments presented for and against the exercise of discretionary denial, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a). IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Conditional Motion for Joinder is denied.” slip op. at 11
Discretionary denialPatents in suitUS 10,259,020 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 3, 2022 · IPR2021-01292 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution of IPR on claims 1–13 under § 314(a), applying General Plastic to Apple's follow-on petition, and denied Apple's conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. Second, if the petition warrants institution, we then “decide whether to ‘join as a party’ the joinder applicant.” Id. Thus, before determining whether to join Petitioner as a party to the 338 IPR, we first determine whether the petition warrants institution under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,589,320
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.