• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution denied
  PTAB · Aug 19, 2024 · IPR2024-00452 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving the challenged claims obvious over the asserted combinations.

  RulingsInstitution decision

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

    “A. Legal Standard Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 9

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

    “have viewed Grube’s common bit-loading scheme as providing improvements over and benefits to the Gurantz system’s ability to multi-cast information, we agree with Patent Owner that this contention is unsubstantiated. Although there is sufficient evidence that Grube’s common bit-loading scheme improves upon and benefits infrastructures utilizing telephone lines, Petitioner provides no basis, or minimal at best, to bridge those advantages obtained in the context of Grube’s system to Gurantz’s BCN. The evidence Petitioner cites from Grube and Mr. Bertonis (Ex. 1009, 4:43–51, 17:20–40; Ex. 1002 ¶¶ 135–136) either describes how Grube’s bitloading scheme works in an infrastructure utilizing telephone lines or it represents that the bit-loading scheme is able to satisfy the need for a one-tomany and/or many-to-one communication system within an infrastructure that utilizes existing telephone wires. Moreover, Mr. Bertonis’s testimony provides little, if any, persuasive information to bridge the gap between how Grube’s bit-loading scheme’s usefulness within a telephone line infrastructure translates to a skilled artisan into adding similar value within a BCN infrastructure; instead, Mr. Bertonis largely mirrors the naked assertions Petitioner makes and cites to the same evidence without further substantive reasoning. See 37 C.F.R. § 42.65(a) (“Expert testimony that modulation scheme from a plurality received response signals that each include a respective bit-loading modulation scheme determined by a separate node. To be clear, “we accept” these contentions about what Grube discloses without making a determination about whether the evidence of record supports such a finding in order to focus our analysis on the dispositive issue, which is whether, in view of Grube, Petitioner demonstrates sufficiently a rationale with a rational underpinning for modifying the nodes in Gurantz’s BCN system in the manner claimed.” slip op. at 24

  • Skill levelSkill level petitioner adoptedOther

    “a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 17–18 (citing Ex. 1002 ¶ 84). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’759 patent specification and the prior art.” slip op. at 11

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

    “37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,889,759
• DISH Network L.L.C. / DISH Network Service L.L.C. et al. v. Entropic Communications, LLCInstitution denied
  PTAB · Aug 15, 2024 · IPR2024-00560 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 29–38 were unpatentable, failing to explain why a skilled artisan would make the proposed combinations.

  RulingsInstitution decision

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

    “ANALYSIS Legal Standards Petitioner bears the burden to demonstrate unpatentability, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A claim is unpatentable for obviousness if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a)5; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4)” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have a degree in electrical engineering, computer engineering, or a related field and experience working in signal processing and/or communication systems/networks, e.g., a bachelor’s and three or more years of experience; a master’s and at least one year of experience; or a doctorate and some work experience. Additional education could substitute for professional experience, or vice versa. Pet. 6–7 (citation omitted). Patent Owner does not offer a definition of a person of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

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

    “Petitioner’s reasoning in support of the proposed modification of Grube is insufficient. Even if we assume that one of ordinary skill in the could apply Grube’s modulation techniques to a broadband coaxial network (as required by independent claims 29 and 34), Petitioner does not adequately explain why a person of ordinary skill in the art would do so. Petitioner does not identify any benefits that would be achieved by the 7 Person of ordinary skill in the art. proposed modification. Pet. 12. Dr. Williams’ testimony does not cure these deficiencies in Petitioner’s reasoning as it simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 11–13, with Ex. 1003 ¶¶ 52–56. Further, even if we assume that Grube is analogous art, a reference discussing subject matter that qualifies it to be within the scope of available prior art does not necessarily also establish that one of ordinary skill would have had a reason to make the modifications required to meet the limitations set forth in the claim. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10 (PTAB Oct. 16, 2018) (informative) (citing Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App'x 971, 977 (Fed. Cir. 2017) (unpublished) (“a broad characterization of [a reference] as . . . falling within the same alleged field . . . without more, is not enough for [Petitioner] to meet its burden of presenting a sufficient rationale to support an obviousness conclusion”)). Petitioner’s reasoning seems to say no more than that one of ordinary skill in the art could have made the proposed modification because Grube is within the scope of available prior art.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “In response to Petitioner’s allegation “that because Grube uses DMT transmitters and receivers, a POSITA would be motivated to add coaxial cable to Grube’s system,” Patent Owner contends “that ‘DMT transmission schemes’ may generally be used in coaxial cable systems has no bearing on whether Grube’s specific teachings are appropriate for coaxial cable.” Prelim. Resp. 35. According to Patent Owner, “Grube’s teachings of enabling one-to-many communications between a headend and buildings on a telephone line are simply not needed in a cable system, which long ago addressed one-to-many communications between a cable operator and cable modems.” Id. (citing id. at 34–38; Ex. 2003 ¶ 100). In addition, Patent Owner contends that the fact “that two references may have some technological overlap does not substitute for a motivation to combine.” Prelim. Resp. 35–36 (citing PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987, 993-994 (Fed. Cir. 2017); Securus, 701 F. App’x. at 977; Johns Manville, IPR2018-00827, Paper 9 at 10-11, 16-17 (Oct. 16, 2018)). Patent Owner contends further that “[i]n the end, Petitioner has proposed combining two fundamentally different systems for no reason other than that the modification or combination would allegedly meet the claims” and that “[i]t is well-settled that obviousness is not established merely because the ‘elements of the claimed invention were independently known in the prior art.’” Id. at 36–37 (citing Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017); Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882, 887 (Fed. Cir. 2024). In other words, Patent Owner contends that Petitioner’s proposed combination is based on improper hindsight reasoning. See id. at 36–37. We agree with Patent Owner that Petitioner has not adequately explained why a person of ordinary skill in the art would have modified Grube to use broadband coaxial cable network instead of a twisted-pair telephonic system for the reasons discussed above. In particular, we agree that Petitioner’s reasoning is based on improper hindsight.” slip op. at 16

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,631,450
• DISH Network L.L.C. / DISH Network Service L.L.C. et al. v. Entropic Communications, LLCInstitution denied
  PTAB · Aug 8, 2024 · IPR2024-00562 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, principally failing to show the required clock adjustment based on estimated propagation delay.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), 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.” For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review of the ’681 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 9 (citing Ex. 1003 ¶¶ 1–11, 16, 17). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’681 patent specification and the prior art.” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “understood that “to compensate for propagation delay . . . at least one of the nodes’ clocks would have to be adjusted.” Id. (citing Ex. 1003 ¶¶ 114–120). Petitioner relies on Dr. Acton’s testimony that in his opinion “local clocks would have to be adjusted” to compensate for propagation delay. Ex. 1003 ¶ 116 (emphasis added). Patent Owner argues that IEEE802.3ah does not teach or suggest “any adjusting of a clock based on a propagation delay” and “the Petition improperly relies on expert testimony to bridge the gap of the lacking disclosure.” Prelim. Resp. 32 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Consolidated Practice Guide” or “CTPG”) 36). Consistent with Patent Owner’s argument, we find that IEEE802.3ah does not describe adjusting a local clock time that results in “compensating” for round trip time. Ex. 1005, 439. We are not persuaded by the Petition or Dr. Acton’s testimony that a person of ordinary skill in the art would have understood from IEEE802.3ah’s disclosure of “ranging for compensating” for round trip time that “local clocks would have to be adjusted.” Pet. 39; Ex. 1003 ¶ 116 (emphasis added). Dr. Acton’s Declaration does not disclose underlying facts or data that support sufficiently that compensating requires adjusting a local clock. 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 22

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

    “Consistent with Patent Owner’s argument, we find that IEEE802.3ah does not describe adjusting a local clock time that results in “compensating” for round trip time. Ex. 1005, 439. We are not persuaded by the Petition or Dr. Acton’s testimony that a person of ordinary skill in the art would have understood from IEEE802.3ah’s disclosure of “ranging for compensating” for round trip time that “local clocks would have to be adjusted.” Pet. 39; Ex. 1003 ¶ 116 (emphasis added). Dr. Acton’s Declaration does not disclose underlying facts or data that support sufficiently that compensating requires adjusting a local clock. 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 23

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,363,681
• DISH Network L.L.C. / DISH Network Service L.L.C. et al. v. Entropic Communications, LLCInstitution denied
  PTAB · Jul 31, 2024 · IPR2024-00546 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would be unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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); see 37 C.F.R. § 42.108. For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had (i) a bachelor-level degree in electrical engineering, computer engineering, or a related field, and three or more years of experience working in signal processing and/or communications systems/networks; (ii) a master’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience in signal processing and/or communications systems/networks; or (iii) a doctoral degree in electrical engineering, computer engineering, or a related field, and at least some experience in signal processing and/or 5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’539 patent issued from an application that was filed before the effective date of the applicable AIA provisions (Ex. 1001, code (22)), the pre-AIA versions of §§ 102 and 103 apply. 6 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. communications systems/networks. Additional education could substitute for professional experience, or vice versa.” slip op. at 8

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

    “Petitioner states that “no express constructions are required in this proceeding” and “Petitioner reserves the right to address any construction proposed by Patent Owner or the Board.” Pet. 3. Patent Owner does not identify any claim terms which require construction and states Patent Owner “reserves its right to respond to any construction Petitioner later proposes.” Prelim. Resp. 8–9. We agree with the Parties that at this point in this proceeding, no express construction of any claim term is necessary.” slip op. at 9

  • BurdenNot reached

    “of a MAC layer using a probe packet.” Prelim. Resp. 26. Specifically, Patent Owner contends that “Hou discloses that its CMTS measures metrics, but without reference to any ranging protocol or request” and that this disclosure would not have suggested a MAC layer using a probe packet as required. Id. at 31 (citing Ex. 1005, 6:35–36, Fig. 5). We agree.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,621,539
• Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentable
  PTAB · Jul 2, 2024 · IPR2023-00578 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over Anthony and Hanggie, alone or in combinations with Matthews and Robertson.

  RulingsFinal written decision

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

    “3. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 14

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

    “does not generate the claimed images because it displays active applications in 3D space, where “the user can interact with the control buttons on the window, [thus] the window (object) is not an image.” PO Resp. 41, 46. Both parties agree that the language of claim 1 (limitation [1d-1]) requires interacting with an image in order to prompt the replacement of the image in 3D space with objects within 2D space. See Tr. 46:25–47:3; Pet. 55–56. Accordingly, Patent Owner’s argument that Hanggie cannot teach the claim limitation because there is interaction with an image runs contrary to the plain meaning of the claim language and Patent Owner’s view of that language. Additionally, we agree with Petitioner’s arguments that the disclosures of the ’868 patent support the claimed interactivity of the images in the 3D space. Pet. Reply 2–5. In particular, Petitioner refers to the ’868 patent’s explanation that “the 3D GUI runs as an Active X control within the Internet Explorer web browser,” and “once [a] file, document, application or desktop is added to the virtual space 300, it is fully interactive and functional and appears no different from, or close to, the original way the program functions when it was not in the 3-D Cartesian space 300.” Id. at 4 (citing Ex. 1001, 5:33–44, 21:12–28, 21:29–43; Ex. 1033 ¶¶ 11–12). Petitioner asserts, and we agree, that the Specification provides support that the images in 3D are interactive and function in a similar manner to those as corresponding objects in 2D. Id.” slip op. at 56

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

    “use of items in 2D space and difficulties in finding files, this argument is based on Anthony’s prior art discussion offered to identify the need for improvements that are solved by its 3D invention. See Ex. 1007 ¶¶ 6, 8. But the issue identified as the problem with 2D items, that is, difficulties in finding 2D files, is not at issue in the combination of the prior art that Petitioner proposes. As discussed, in the combination that Petitioner asserts, with the selection of a maximize button on a 3D window, the window would be displayed in 2D and would occupy all or most parts of the screen—so in that combination, difficulties in finding the 2D files would not be an issue. Pet. 57 (citing Ex. 1003 ¶ 111). Further, Petitioner offers the advantages that this presentation in 2D space would conserve power and allow certain users to interact with an application in a 2D environment. Ex. 1003 ¶¶ 66, 69. Accordingly, we credit Dr. Fuchs’s testimony that Petitioner’s proposed “specific experience [of the combination] would not deter a user from replacing images in 3D space with an object in 2D space.” Ex. 1033 ¶ 48. We also do not find persuasive Patent Owner’s argument that Anthony’s approach is different from the claimed invention because its method for” slip op. at 65

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “suggested to one skilled in the art, objective evidence of nonobviousness (so called “secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). “[E]vidence of secondary considerations may often be the most probative and cogent evidence in the record.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). “[T]o be accorded substantial weight in the obviousness analysis, the evidence of secondary considerations must have a ‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient connection’ between the evidence and the patented invention.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “The patentee bears the burden of showing that a nexus exists.” WMS” slip op. at 66

  Patent outcomesUS 9,696,868 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,696,868
• Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentable
  PTAB · Jul 2, 2024 · IPR2023-00344 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over the listed combinations of Anthony, Hanggie, Matthews, and Robertson.

  RulingsFinal written decision

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

    “The Board instituted an inter partes review of the challenged claims pursuant to 35 U.S.C. § 314. Paper 11 (“Dec.”). We joined Google LLC as a party to the proceeding (collectively, with Apple Inc., “Petitioner”) based on a petition and motion for joinder filed in IPR2023-00578. Paper 14.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Google LLC, which filed a petition in IPR2023-00578, has been joined as a petitioner in this proceeding. See Paper 14, 8.” slip op. at 1

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

    “1. “3D space” and “two-dimensional (2D) space” The parties agree that the claim terms “3D space” and “two-” slip op. at 12

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

    “use of items in 2D space and difficulties in finding files, this argument is based on Anthony’s prior art discussion offered to identify the need for improvements that are solved by its 3D invention. See Ex. 1007 ¶¶ 6, 8. But the issue identified as the problem with 2D items, that is, difficulties in finding 2D files, is not at issue in the combination of the prior art that Petitioner proposes. As discussed, in the combination that Petitioner asserts, with the selection of a maximize button on a 3D window, the window would be displayed in 2D and would occupy all or most parts of the screen—so in that combination, difficulties in finding the 2D files would not be an issue. Pet. 57 (citing Ex. 1003 ¶ 111). Further, Petitioner offers the advantages that this presentation in 2D space would conserve power and allow certain users to interact with an application in a 2D environment. Ex. 1003 ¶¶ 66, 69. Accordingly, we credit Dr. Fuchs’s testimony that Petitioner’s proposed “specific experience [of the combination] would not deter a user from replacing images in 3D space with an object in 2D space.” Ex. 1033 ¶ 48. We also do not find persuasive Patent Owner’s argument that Anthony’s approach is different from the claimed invention because its method for” slip op. at 65

  Patent outcomesUS 9,696,868 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,696,868
• Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentable
  PTAB · Jul 2, 2024 · IPR2023-00579 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious: claims 1–5, 7–8, 10–13, 15–17, and 19 over Anthony and Hanggie; claims 6, 9, 14, and 18 over Anthony, Hanggie, and Matthews.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted and applied Petitioner’s proposed definition of the level of ordinary skill in the art. Dec. 20. Patent Owner states that it “generally agrees” with the level of skill adopted in the Decision on Institution. PO Resp. 21. Patent Owner states that Dr. Schaefer and Mr. Bakhash meet the definition. Id. Based on our review of the ’654 patent, the types of problems and solutions described in the ’654 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 11

  • Expert testimonyDecided for patent owner

    “Petitioner argues that Patent Owner’s expert, Dr. Schaefer, is not qualified to opine as a person of ordinary skill in the art because he does not meet the required qualifications as his work experience does not amount to two years. Pet. Reply 7 n.3 (citing Ex. 1031, 14:22–19:6). We do not find this assertion persuasive because, as Patent Owner points out (PO Sur-reply 5 n.3), Dr. Schaefer was working in the field of 2D and 3D user interfaces with the companies SensAble Technologies, Microsoft, and Mok3, and had also completed a Master of Science degree before the critical date of September 2005. See Ex. 2015 ¶¶ 5–11, 88; Ex. 1031, 14:22–17:17. In that time frame, Dr. Schaefer was also working towards a Doctoral degree, which he completed in 2006. See id. To the extent that Dr. Schaefer’s work experience is short of two years, his additional education more than compensates for any deficiency in work experience.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “3D space” and “two-dimensional (2D) space” The parties agree that the claim terms “3D space” and “two- dimensional (2D) space” should be construed as “a virtual space defined by a three-dimensional coordinate system” and “a finite graphical area defined by a two-dimensional coordinate system,” respectively. Pet. 10–11 (citing Ex. 1005,3 6); PO Resp. 21–22 (citing Ex. 2011,4 16–17). The construction is based on the construction issued by the district court in the Samsung case. Ex. 2011, 19. 3 Petitioner’s Opening Claim Construction Brief, SpaceTime3D, Inc. v. Apple Inc., No. 6:22-cv-00149 (W.D. Tex.). 4 Claim Construction Order, SpaceTime3D, Inc. v. Samsung Electronics Co., No. 2:19-cv-00372 (E.D. Tex.). Although Patent Owner has agreed to the construction of these terms, Patent Owner contends that “these constructions should be viewed in light of the [Samsung] Court’s attendant reasoning.” PO Resp. 22. Patent Owner argues that because the district court differentiated “objects” and “spaces,” “in determining the presence of a 2D or 3D space, it is irrelevant whether the objects themselves are 2D or 3D. What is important is the space in which the objects reside.” Id. Patent Owner further asserts that for claim limitation [1d-2], “it is not the object (e.g., window) that is 2D but the space in which the object is presented.” Id. at 55. We address this issue in the discussion of limitation [1d-2] below, infra Section II.D.3.c.ii. In the discussion of the construction of the terms, the district court found that “[t]he specification describes the 3D space as a ‘seemingly unlimited space’ that creates the ‘illusion of infinite space in three dimensions.’ In contrast, the specification describes the 2D space as the ‘finite working graphical area’ of the desktop, and not as a virtual space.” Ex. 2011, 17. The district court’s constructions of “3D space” and “two-dimensional (2D) space” are supported by the description in the Specification. Accordingly, we accept the parties’ agreement and adopt the district court’s constructions of these terms.” slip op. at 12

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

    “On this record, in light of the broader disclosures in the ’654 patent, we decline to import an additional limitation into the term “image” to place a restriction on interactions to not include modifications, as proposed by Patent Owner. Further, Patent Owner does not cite to any supporting evidence to show that the patentee acted as its own lexicographer or disavowed claim scope to restrict the construction of the term “image.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term,” and “‘clearly express an intent’ to redefine the term.”). Thus, the Specification, as a whole, does not support Patent Owner’s proffered construction of “image” that adds the limitation that its underlying content cannot be modified in an interaction.” slip op. at 57

  Patent outcomesUS 9,304,654 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,304,654
• Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentable
  PTAB · Jul 2, 2024 · IPR2023-00343 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Anthony and Hanggie; claims 6, 9, 14, and 18 are also unpatentable over Anthony, Hanggie, and Matthews.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Citing testimony from Dr. Fuchs, Petitioner asserts that a person of ordinary skill in the art (“POSITA”) as of September 13, 2005 (the earliest possible priority date of the ’654 patent) would have had “at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with 2D and 3D graphical user interfaces.” Pet. 10 (citing Ex. 1003 ¶¶ 31–32). Petitioner further states that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 31– 32). In the Decision on Institution, we adopted and applied Petitioner’s proposed definition of the level of ordinary skill in the art. Dec. 20. Patent Owner states that it “generally agrees” with the level of skill adopted in the Decision on Institution. PO Resp. 21. Patent Owner states that Dr. Schaefer and Mr. Bakhash meet the definition. Id. Based on our review of the ’654 patent, the types of problems and solutions described in the ’654 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “3D space” and “two-dimensional (2D) space” The parties agree that the claim terms “3D space” and “two- dimensional (2D) space” should be construed as “a virtual space defined by a three-dimensional coordinate system” and “a finite graphical area defined by a two-dimensional coordinate system,” respectively. Pet. 10–11 (citing Ex. 1005,3 6); PO Resp. 21–22 (citing Ex. 2011,4 16–17). The construction is based on the construction issued by the district court in the Samsung case. Ex. 2011, 19. 3 Petitioner’s Opening Claim Construction Brief, SpaceTime3D, Inc. v. Apple Inc., No. 6:22-cv-00149 (W.D. Tex.). 4 Claim Construction Order, SpaceTime3D, Inc. v. Samsung Electronics Co., No. 2:19-cv-00372 (E.D. Tex.). Although Patent Owner has agreed to the construction of these terms, Patent Owner contends that “these constructions should be viewed in light of the [Samsung] Court’s attendant reasoning.” PO Resp. 22. Patent Owner argues that because the district court differentiated “objects” and “spaces,” “in determining the presence of a 2D or 3D space, it is irrelevant whether the objects themselves are 2D or 3D. What is important is the space in which the objects reside.” Id. Patent Owner further asserts that for claim limitation [1d-2], “it is not the object (e.g., window) that is 2D but the space in which the object is presented.” Id. at 55. We address this issue in the discussion of limitation [1d-2] below, infra Section II.D.3.c.ii. In the discussion of the construction of the terms, the district court found that “[t]he specification describes the 3D space as a ‘seemingly unlimited space’ that creates the ‘illusion of infinite space in three dimensions.’ In contrast, the specification describes the 2D space as the ‘finite working graphical area’ of the desktop, and not as a virtual space.” Ex. 2011, 17. The district court’s constructions of “3D space” and “two-dimensional (2D) space” are supported by the description in the Specification. Accordingly, we accept the parties’ agreement and adopt the district court’s constructions of these terms.” slip op. at 12

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

    “3. Remaining claim terms Based on the record before us, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13

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

    “additions to the proposed construction for the term “image” such that its underlying content cannot be modified in an interaction, as discussed above. Patent Owner points to two embodiments in the ’654 patent Specification, which allegedly provide support that “the imaged object . . . cannot be interacted with in 3D space, i.e., inactive images.” PO Sur-reply 15–19. Conversely, Petitioner points to the ’654 patent that discloses that when graphics from the 2D desktop are displayed in 3D space, “the functionality of the 2D programs and documents” is retained and “the 3D GUI runs as an Active X control within the Internet Explorer web browser.” Pet. Reply 3–5 (citing Ex. 1001, 5:22–33, 20:39–41). Further, the ’654 patent discloses, for instance, “a Microsoft Word document [] running in a window [] within a 3D virtual space” (Ex. 1001, 20:56–57) where “once [a] file, document, application or desktop is added to the virtual space 300, it is fully interactive and functional and appears no different from, or close to, the original way the program functions when it was not in the 3-D Cartesian space 300” (Ex. 1001, 20:66–21:3). Pet. Reply 3–4. We agree with Petitioner that these disclosures provide support that the images in 3D are interactive and the functionality of the 3D images can be the same as objects in 2D. Id. On this record, in light of the broader disclosures in the ’654 patent, we decline to import an additional limitation into the term “image” to place a restriction on interactions to not include modifications, as proposed by Patent Owner. Further, Patent Owner does not cite to any supporting evidence to show that the patentee acted as its own lexicographer or disavowed claim scope to restrict the construction of the term “image.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term,” and “‘clearly express an intent’ to redefine the term.”). Thus, the Specification, as a whole, does not support Patent Owner’s proffered construction of “image” that adds the limitation that its underlying content cannot be modified in an interaction.” slip op. at 57

  Patent outcomesUS 9,304,654 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,304,654
• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Jul 1, 2024 · IPR2024-00454 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that the Reavey–Chandhri combination met limitation 1h.

  RulingsInstitution decision

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

    “view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11

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

    “The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 11–15. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,003,315
• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Jul 1, 2024 · IPR2024-00455 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that Reavey and Chandhri disclose or suggest limitation 1[h].

  RulingsInstitution decision

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

    “shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. And as a result, we find Petitioners have not demonstrated a reasonable likelihood of proving that the Reavey/Chandhri combination render independent claims 1 and 28 unpatentable, which is a deficiency that necessarily extends therethrough to all of the dependent claims challenged in all three grounds.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 11 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11

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

    “The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 12–16. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12

  • BurdenDecided for patent owner

    “view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,003,315

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.