- PTAB · Aug 18, 2022 · IPR2022-00471 · APJ Joni Y Chang · IPR · Institution
The Board instituted IPR on claims 8–10, 15, 24–26, and 31 over four asserted grounds: anticipation by G.992.1 and obviousness over SC-060, G.992.1 with SC-060, and G.992.1 with Wunsch.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredRpi dispute resolved for petitionerDecided for petitioner
“Petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). 3. RPI Analysis” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“the Memorandum” or “Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo, 2. The Memorandum explains that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Id. at 4. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. “[W]here the PTAB determines that the information presented at the institution stage 8 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf 19 presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4−5. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. In addition, “[t]he compelling evidence test affirms the PTAB’s current approach of declining to deny institution under Fintiv where the evidence of record so far in the case would plainly lead to a conclusion that one or more claims are unpatentable.” Id. at 5 n.6 (citing, e.g., Illumina Inc. v. Trs. Of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020) (declining to deny under Fintiv in light of strong evidence on the merits even though four factors weighed in favor of denial and remining factor was neutral)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agreed[] that a flag signal does not include information indicating when the FIP settings are going to be used.” Prelim. Resp. 8. In its Claim Construction Memorandum Opinion, the District Court in the Delaware case, after considering both parties’ arguments and evidence, rejected Patent Owner’s proposed construction and adopted Defendants’ compromise construction, which does not import the negative limitation advanced by Patent Owner into the claims. Ex. 2027, 7−8; see also Ex. 1024, 2. The District Court in the Delaware case noted that “the patent does not provide lexicography for ‘flag signal,’” and “[Patent Owner] does not argue that a disclaimer supports it[s] construction.” Ex. 2027, 7−8. The ’835 patent discloses that “synchronization can be based on, for example, a synchronization using FEC codeword counters or a flag signal.” Ex. 1001, 11:7−9. The “flag signal” embodiment does not limit a flag signal to “an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol,” as Patent Owner alleges. The portions of the Specification relied upon by Patent Owner and Dr. Madisetti use permissive language in explaining that “[f]or example, the flag signal could be an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol.” Ex. 1001, 12:29−31. Moreover, Patent Owner conceded at the Markman hearing in the Delaware case that a flag signal may contain information that indicates when updated FIP settings are to be used, as long as the” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’835 patent, prior art of record, and supported by the testimony of Dr. Jacobsen, except that we do not accept the qualifier “at least,” which would expand the required amount of experience indefinitely.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,462,835 - Sensor Electronic Technology, Inc. v. Lite-On Technology Corporation And Genesis Photonics, Inc.Institution deniedPTAB · Jul 15, 2022 · IPR2022-00397 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–8, 10, or 11 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “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). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’013 patent would have had “a Bachelor’s Degree in electrical engineering, materials science, physics, or a similar discipline,” and “one to two years of experience in the field of LED packaging design with knowledge of device design, the semiconductor and contact metal materials involved with the fabrication of an LED device, as well as LED packaging design.” Pet. 5 (citing Ex. 1010 ¶¶ 30–31). Patent Owner asserts that a person of ordinary skill in the art at the relevant time would have had (i) “at least an undergraduate degree in electrical engineering (or similar discipline with an electrical and/or semiconductor emphasis) and two or more years of experience in LED device design, fabrication and packaging,” (ii) “a master’s degree with at least a year of experience in those fields,” or (iii) “an equivalent combination of education and experience.” Prelim. Resp. 2. 7 With respect to the fourth Graham factor, the parties do not present arguments or evidence regarding objective indicia of non-obviousness. See Pet. 88; see generally Prelim. Resp. We see little difference between the parties’ contentions regarding the level of ordinary skill in the art. For purposes of this Decision, we apply the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the level of skill in the art at the time of the invention as reflected in the ’013 patent and the prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“1. “orthographic projection” Petitioner argues that “orthographic projection” is a term of art that should be construed according to its plain meaning, which Petitioner contends is “a two-dimensional graphic representation of an object in which the projecting lines are at right angles to the plane of the projection.” Pet. 6 (quoting Ex. 1012, 1 (dictionary.com definition of “orthographic projection”)) (citing Ex. 1010 ¶ 33). Petitioner contends that this construction tracks the term’s usage in the ’013 patent. Id. at 7 (citing Ex. 1001, 4:5–12). Specifically, Petitioner contends that a person of ordinary skill in the art would understand Figure 1B of the ’013 patent “to be a two-dimensional representation of the LED chip as it appears against the plane of the conductive layer.” Id. at 7–8 (citing Ex. 1010 ¶ 36). Patent Owner agrees with Petitioner’s proposed construction of the term “orthographic projection” for purposes of the proceeding. Prelim. Resp. 19. Based on the present record, we agree with Petitioner that its proposed construction is consistent with the term’s usage in the ’013 patent and we adopt it for purposes of this Decision. In particular, we construe “orthographic projection” as “a two-dimensional graphic representation of an object in which the projecting lines are at right angles to the plane of the projection.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionOther
“Based on the evidence in the present record, we agree with Patent Owner’s proposed construction and adopt it for purposes of this Decision. In particular, we agree with Patent Owner that “the bonding pad and a corner of the rectangle are correspondingly disposed” means that “the bonding pad is disposed at a location corresponding to a corner of the rectangle,” which is consistent with the Specification of the ’013 patent and further supported by Dr. Lebby’s testimony. We also agree with Patent Owner that the orthographic projection must be “on” the patterned conductive layer, which the claim language expressly requires and which is consistent with Figures 1A and 1B and their descriptions. See Ex. 1001, 4:5–7 (“[A]n orthographic projection of the LED chip 130a of this embodiment on the patterned conductive layer 120a is a rectangle.” (emphasis added)). Therefore, we construe “an orthographic projection of the LED chip on the patterned conductive layer is a rectangle, the bonding pad and a corner of the rectangle are correspondingly disposed” to mean “an orthographic projection of the LED chip on the patterned conductive layer is in a shape of a rectangle and the bonding pad is disposed at a location corresponding to a corner of the rectangle.”” slip op. at 14
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 8,587,013 - PTAB · Jun 30, 2022 · IPR2021-00361 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1, 2, 5, 7, 14, and 17 are unpatentable as anticipated by Dukach and obvious over Dukach, alone or with Dunsmuir.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention of the ’613 patent, “would have had a Bachelor’s degree in computer science or a related field, and two years of work experience in operating systems, file systems, networks, and/or client-server applications, though additional education or work experience can make up for more or less formal education.” Pet. 20 (citing Ex. 1002 ¶ 31). Patent Owner does not present an alternative definition of the skilled artisan, and does not dispute Petitioner’s definition thereof. See generally PO Resp.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“skilled artisan to have its “ordinary and customary meaning[],” allegedly “a stream of data bytes that can be read and written (among other common operations).” PO Resp. 3. But as noted by Petitioner (Pet. Reply 3–4), the only intrinsic evidence cited by Patent Owner does not support its proposed construction in the context of the ’613 patent; rather, such evidence favors Petitioner. See PO Resp. 4 (citing Ex. 1001, 2:35–45 (a “‘file is accessed via the file descriptor’”), 2:46–3:7 (“‘the system calls that access files via file descriptors do not distinguish between a file on media and a communication channel’”)); see also PO Resp. 7 (“It is undisputed that file descriptors were conventionally ‘associated with’ files stored on media, communication channels, and even hardware devices.” (emphasis added)). Patent Owner also cites extrinsic evidence, namely, Dunsmuir (Ex. 1007), to support its proposed construction: “Conceptually, a file consists of a stream of data bytes followed by a logical end-of-file. … Because UNIX file I/O is performed through a uniform file interface, a program that can read and write files can read and write anything.” PO Resp. 4 (quoting Ex. 1007, 22). But as noted by Petitioner (Pet. Reply 4–6), Patent Owner does not explain why this “conceptual” meaning set forth in the generic context of programming interfaces in a UNIX operating system would apply in the specific context of the ’613 patent. See Pet. Reply 4 (“[Patent Owner’s] proposed construction is problematic because it is inconsistent with the specification of the ’613 patent.”). Patent Owner also does not explain what “among other common operations” means in the context of its own proposed construction. For the foregoing reasons, and those discussed below, we agree with Petitioner’s proposed construction of “file.” First, the claims of the ’613 patent support Petitioner’s proposed construction. For example, claim 1 recites that a “file” is accessed via a file descriptor. Ex. 1001, 14:55. Claim 5 recites a file descriptor being associated with “a communication channel” and determining with what file type the file descriptor is associated. Ex. 1001, 15:44–57. Together, these limitations show that a “file” is an entity assessed via a file descriptor, and such an entity includes, for example, a communication channel (i.e., per these claims, a communication channel is a type of file associated with a file descriptor). We find nothing in the claims, and Patent Owner does not direct us to anything in the claims, that supports limiting the term “file” only to a “stream of data bytes that can be read and written.”” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“in the abstract, discloses the claimed “indicator,” but rather the inclusion (or storage or presence) of that number in a list of monitored file descriptors discloses such a stored “indicator.” See, e.g., Pet. 49 (“[The skilled artisan] would have understood that, before the listen( ) call or the accept( ) call attempts to access a file using a file descriptor, it examines the file descriptor to determine if it is on the list of monitored file descriptors—the ‘indicators’ of a file type associated with the control pipe for services to be performed by the front end server.” (emphasis added)); Pet. 37–38 (“Dukach utilizes the presence or absence of a file descriptor’s number stored in a list of monitored file descriptors to indicate the file type associated with the file descriptor, which is how the ’613 patent describes indicating a file type by the indicator’s presence or absence in an indicator table.”); see also Pet. Reply 13 (“Petitioner contended in the Petition and maintains that it is the presence of a file descriptor’s number on the list of monitored file descriptors, not the file descriptor’s number itself, that teaches the claimed indicator.” (bold omitted)); cf. PO Resp. 9 (“[A]n ‘indicator’ . . . must reflect . . . an indication that such file descriptor is associated with a communication channel.”). Patent Owner also variously argues “Dukach does not disclose or” slip op. at 34
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In our Institution Decision, we credited the foregoing and related testimony of Dr. Greenspun (Ex. 1002 ¶¶ 96–98), and noted that Patent Owner at that stage of the proceeding had not offered any evidence to rebut Dr. Greenspun’s testimony. Dec. 30–31. Despite that, as highlighted by Petitioner, Patent Owner still offers no evidence to rebut Dr. Greenspun’s testimony in this regard. See Pet. Reply 16 (“But in arguing all these [above arguments], [Petitioner] presents no rebuttal evidence—neither a deposition testimony of Dr. Greenspun, nor a rebuttal testimony by its own expert, nor any other evidence.”); see generally PO Resp. Instead, Patent Owner merely declares Dr. Greenspun’s testimony “conclusory” and tainted by “vague leap[s]” (see, e.g., PO Resp. 14), but yet makes such accusations against a technical declarant with nothing but attorney-argument. Regardless, for the same reasons given by Petitioner (see Pet. Reply 16–18), we disagree with Patent Owner and continue to credit Dr. Greenspun’s technical testimony as to the subject limitation. See Pet. Reply 16–18 (Petitioner explaining why “[Patent Owner’s] attorney argument is wrong”.). As noted above, Patent Owner variously argues Dukach does not disclose “storing” of the indicator at issue in this limitation. See generally PO Resp. 7–17. To summarize, we disagree with Patent Owner, and as explained above, are persuaded by Petitioner’s evidence, including the unrebutted testimony of Dr. Greenspun, that Dukach discloses storing information that points to a file type associated with a file descriptor. First, we are persuaded that, in Dukach, the presence or absence of a file descriptor’s number in the list of monitored file descriptors constitutes information that points to a file type associated with the file descriptor. See Pet. 37–40 (citing, inter alia, Ex. 1005, 11:5–40; Ex. 1002 ¶ 96; Ex. 1001, 11:12–42). Second, we also are persuaded that, in Dukach, the list of monitored file descriptors “needs to be maintained in memory such that it can be used by software to check an at-issue file descriptor’s presence or absence in the list,” which constitutes storing the indicator. Pet. Reply 16– 17 (quoting Ex. 1002 ¶ 97); see Pet. 40 (citing Ex. 1002 ¶ 97). Finally, even if Patent Owner were correct that Dukach does not disclose a particular embodiment in the ’613 patent (see, e.g., PO Resp. 15 (discussing an embodiment “only applicable for binary file types”)), the issue before us is not whether Dukach indeed discloses such an embodiment, but rather whether Dukach discloses the invention recited, for example, in claim 1, given the breadth (scope) of the limitations defining that invention.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,560,613 - Intel Corporation v. Parkervision, Inc.All claims unpatentablePTAB · Jun 30, 2022 · IPR2021-00346 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1, 6–9, 12, and 17–20 are unpatentable as obvious over Downey and Sedra, with Hahnel added for claims 6–9 and 17–20.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededDecided for petitioner
“second sentence using the pronoun “it” and specifically states that “[t]ypically” the type of input that may control the switch is “an electrical or electronic input.” This sentence is important at least because the patentees chose to describe these control inputs as “typically.” The use of “typically,” in this context, is non-limiting. In other words, the ’108 patent expressly leaves open the option that the described switch may be controlled with an input that is not electrical or electronic. The fourth, and final, sentence of this paragraph is critical. It specifically states that “[i]f the switch is controlled by an electronic signal, it is typically a different signal than the signals connected to either terminal of the switch.” This sentence is significant for several reasons. First, by stating “if the switch is controlled by an electronic signal” (emphasis added), the Specification reaffirms that the switch may be controlled by an input that is not an electronic signal. Second, reading the sentence as a whole, it states that “[i]f the switch is controlled by an electronic signal, it is typically a different signal than the signals connected to either terminal of the switch” (emphasis added). To clarify, a signal that is different than the signals connected to either terminal of the switch is what the parties refer to as “an independent control signal.” Thus, the fourth sentence, in the context of the parties’ dispute, means that if the switch is controlled by an electronic signal, it is typically an independent control signal. The same meaning of “typically” applies here, i.e., it is non-limiting. Thus, if the first part of the sentence that provides the conditional clause (if) is met, i.e., the switch is controlled by an electronic signal, the electronic signal is not always an independent control signal because typically does not require always. Putting the discussion above into context, particularly in comparison to the construction advocated by Patent Owner, it is important to recognize that the lexicographic definition does not require a switch to be “dictated by an independent control input” because the definition specifically says that if the switch is controlled by an electronic control signal it is typically a different signal (i.e., an independent signal). Thus, Patent Owner’s proposed construction seeks to limit the term “switch” to what is expressly stated in the Specification as typical.” slip op. at 21
- Skill levelSkill level board ownOther
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in 5 Neither party presents evidence of objective indicia of nonobviousness. electrical engineering or a related subject and two or more years of experience in the field of radio frequency circuit design.” Pet. 40 (citing Ex. 1002 ¶ 29). Patent Owner contends that a person of ordinary skill in the art “would have: (a) a Bachelor of Science degree in electrical or computer engineering (or a related academic field), and at least two (2) additional years of experience in the design and development of radio frequency circuits and/or systems, or (b) at least five (5) years of experience and training in the design and development of radio frequency circuits and/or systems.” PO Resp. 5 (citing Ex. 2022 ¶ 20). We determine that the two proposed levels are closely aligned and are consistent with the ’108 patent and the asserted prior art.6 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt the following level in determining the patentability of the challenged claims: a person of ordinary skill in the art would have had a bachelor’s degree in electrical or computer engineering, or a related subject, and two years of experience in the field of radio frequency circuit design and development.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Downey alone discloses this limitation. As discussed above, Patent Owner argues at length about why inverter U5A in Downey’s frequency tripler circuit is not configured as a switch and does not operate as a switch. Patent Owner’s arguments are based on the specific circuit components shown in Downey’s frequency tripler circuit and characteristics of the MM74C04 inverter. Patent Owner does not address Petitioner’s contention that the combination of Downey and Sedra also teaches this limitation, except to argue that Sedra’s inverter when combined with Downey “would not change the operation of Downey’s frequency tripler circuit,” and that a person of ordinary skill in the art “would have to ignore all of the disclosure in Downey, and abandon all of the teachings and suggestions of Downey” to combine the two references. PO Resp. 49–50. Patent Owner therefore does not meaningfully address Petitioner’s proposed combination. See In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (“the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art”) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). The claims require “a first switch configured to up-convert.” Sedra specifically discloses a switch used to implement an inverter, and also states that an “inverter is basically a voltage-controlled switch”—disclosure that Patent Owner does not dispute. See Ex. 1004, 908–09, Fig. 13.2. Patent Owner also does not dispute that Downey’s frequency tripler circuit includes an inverter that upconverts the input signal. Ex. 1003, 4:8–13. Patent Owner’s arguments are directed to the inverter U5A that operates as a non-linear amplifier, as disclosed in Downey. PO Resp. 46–50. Patent Owner specifically argues “[i]nverter U5A in the frequency tripler circuit of Downey is not configured as a switch, nor can it be without rendering the circuit unsuitable for its intended purpose.” PO Resp. 48. But Sedra’s inverter is a switch. Patent Owner does not explain why a switch-based inverter would not work in Downey to accomplish the up-conversion.” slip op. at 39
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Decided for petitioner
“IV. PETITIONER’S OBJECTION TO PATENT OWNER’S DEMONSTRATIVES At the oral hearing, Petitioner objected to Patent Owner’s demonstratives 81 and 82 (see Paper 30) as containing new arguments that were not previously presented by Patent Owner. Tr. 6:17–7:1. Petitioner argued that those demonstratives contain testimony from Dr. van der Weide that Patent Owner did not cite in its Sur-reply and address an issue that was not presented in Patent Owner’s Response. Id. Patent Owner did not rely on those demonstratives during the oral hearing. Id. at 8:10–15 (Patent Owner’s counsel stating that he may not refer to those demonstratives during the hearing). We therefore dismiss Petitioner’s objection as moot.21” slip op. at 70
Patent outcomesUS 8,190,108 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,190,108 - Sensor Electronic Technology, Inc. v. Lite-On Technology CorporationInstitution deniedPTAB · Jun 27, 2022 · IPR2022-00396 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9, 18, and 20 obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 3:33−34. The Specification discloses that “[r]eferring to FIG. 1, in a preferred embodiment, one end of each first groove 14 extends to the edge of the semiconductor layer 2.” Id. at 4:38−40. Other embodiments of the ’549 patent also show a device having at least one groove that extends to a sidewall of semiconductor layer 2. Ex. 1001, Figs. 3−9. The Specification discloses that, by extending the first grooves to the edges of the second doped layer and the light emitting layer, “the current can spread evenly over the first doped layer through the first contact to improve the problem of current crowding and achieve the uniform distribution of current” in the LED. Id. at 3:4−8. Patent Owner contends that a person of ordinary skill in the art would have understood that the claim phrase “extends to the edge of the first doped layer” means “extends to a sidewall of the first doped layer.” Prelim. Resp. 20 (citing Ex. 2001 ¶ 98). In view of the claim language and the Specification, we agree with Patent Owner.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill in the art of the ’549 patent would have had “at least an undergraduate degree in electrical engineering (or similar discipline with an electrical and/or semiconductor emphasis) and two or more years of experience in LED device design, fabrication and packaging,” or alternatively, “a master’s degree with at least a year of experience in those fields, or an equivalent combination of education and experience.” Prelim. Resp. 4 (citing Ex. 2001 ¶¶ 71−72). However, Patent Owner does not point out any meaningful difference between the parties’ assessments. We note that the open-ended language “at least” in Patent Owner’s assessment may cause certain ambiguity. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’549 patent, prior art of record, and supported by the testimony of Jack Josefowicz, Ph.D.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“sufficiently supported by Yasuda or other objective evidence. Petitioner’s analysis rests on impermissible hindsight. An obviousness analysis must provide a sufficient and specific reasoning to guard against the impermissible use of hindsight, even for a structurally simple claimed invention, as here. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[O]bviousness grounds cannot be sustained by mere conclusory statement; instead, there must be some articulated reasoning with some underpinning to support the legal conclusion of obviousness.”); see also id. 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.”). Notably, Petitioner fails to show that Yasuda discloses extending a” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,829,549 - Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · Jun 7, 2022 · IPR2022-00295 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 7–12, 22–24, and 33–67 on all petitioned grounds, finding a reasonable likelihood of success on the § 103(a) combinations.
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 › Fintiv (parallel litigation)Decided for petitioner
“Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in light of the Texas case where Patent Owner has asserted the ’038 patent and other patents against Petitioner. See Prelim. Resp. 7–12; supra § II.B.” slip op. at 16
- Parallel petitionsDecided for petitioner
“Under the circumstances here, two petitions challenging claims in the ’038 patent will not place a substantial and unnecessary burden on the Board or Patent Owner. In IPR2022-00202, the Board will consider challenges to related U.S. Patent No. 10,142,810 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 9 (PTAB May 23, 2022) (granting institution of inter partes review); supra § II.B. In IPR2022-00291, the Board will similarly consider challenges to related U.S. Patent No. 10,708,727 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00291, Paper 10 (PTAB May 24, 2022) (granting institution of inter partes review); supra § II.B. Thus, in other proceedings the Board will consider and become familiar with Diacakis, Tanigawa, and Hullfish and the relevance of those references to claims in related patents.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. Petitioner also asserts that “[a]dditional education might 5 The record does not include evidence concerning objective indicia of nonobviousness. compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 92–97. At this stage of the proceeding, Patent Owner does not address the educational level or work experience of a person of ordinary skill in the art. See, e.g., Prelim. Resp. 1–7, 12–16. Based on the current record and for purposes of institution, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’038 patent and the asserted prior art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,492,038 - Epic Games, Inc. v. Ingenioshare, LLCInstitution deniedPTAB · May 26, 2022 · IPR2022-00297 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 5, 7, 53, 54, 56, 57, and 59 obvious over Furlong or Diacakis.
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 “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 stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Each of these claims does not reintroduce the term “message” in the body of the claim but instead relies on the instance of “message” introduced in the preamble for antecedent basis. Notably, the first reference to “message” in the body of claim 1 (Element 1.1) appears in a limitation (“receiving, by the server, the message from the person using the first device”), describing a positive step in the claimed “method.” Similarly, the first reference to “message” in the body of claim 53 (Element 53.3) appears in a limitation (“wherein the at least one computing device [of the server] is configured to receive the message from the person using the first device”), describing a structural feature (“computing device”) of the claimed “server.” As Patent Owner notes, the “message” recited in each of Elements 1.1 and 53.3 refers back to the phrase “a person, using a first device, trying to 8 electronically convey a message from the first device to a second device” recited in the preambles. Prelim. Resp. 1−2, 10. Because claims 1 and 53 require the server (or the computing device in the server) to “receive the message from the person using the first device,” the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in the preambles of these claims is essential to understanding the limitations in these claims, not merely reciting an intended purpose of the claimed invention. This “indicates a reliance on both the preamble and claim body to define the claimed invention.” Catalina, 289 F.3d at 808; Bell Commc’ns Research, 55 F.3d at 620; Shoes by Firebug, 962 F.3d at 1368. Therefore, the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in each of the preambles of claims 1 and 53 is limiting.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Notably, neither the authenticated session with PLAS 15, nor the request from the third-party application (steps 500 and 502), is the “message” the person is trying to convey to the device of the user, as required by Element 53.3. Significantly, Furlong discloses that, after PLAS 15 notifies the third-party application of the subscriber’s availability (step 512), “the application sends the message to the subscriber (step 514)” directly, not via the server, PLAS 15. Ex. 1007 ¶ 94 (emphasis added), Fig. 5. Thus, PLAS 15 in Furlong does not receive the message the third-party application (person) is trying to convey to the device of the subscriber (user).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Here, Petitioner asserts that a person of ordinary skill in the art of the ’407 patent would have had “a Bachelor’s degree in Computer Science, or equivalent field and three to five years of experience working with Internet communication systems.” Pet. 23 (citing Ex. 1003 ¶¶ 67−72). At this juncture, Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. 2 At this time, the parties do not address objective indicia of nonobviousness, which accordingly do not form part of our analysis. See Pet. 75 (“Petitioner is unaware of any evidence of secondary considerations that would support a finding of non-obviousness.”). 10 For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’407 patent, prior art of record, and supported by the testimony of Dr. Kevin Almeroth.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,744,407 - Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · May 24, 2022 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–9 and 15–17 on all asserted § 103 grounds, finding a reasonable likelihood that Epic would prevail on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation, and Patent Owner does not, at this time, propose any different articulation. See Ex. 1003 ¶¶ 92–97. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Although “Petitioner does not believe that any terms need to be construed to assess the arguments presented” in its Petition, Patent Owner raises an issue with respect to the challenged claims’ recitation of a “network-based portal.” See Pet. 25; Prelim. Resp. 15–16. In particular, Patent Owner contends that “[t]he specification of the ’727 Patent uses the term ‘network-based portal’ consistently as being at the server-side of a network.” Prelim. Resp. 15. Patent Owner supports its contention by identifying examples where the specification of the ’727 patent describes a “portal” as separate from a “mobile phone” or from a person’s “wireless device.” Id. at 15–16 (citing Ex. 1001, 6:12–13, 6:32–33, 6:55–63, 16:1–3). But the specification also includes numerous examples where the portal functionality is implemented in a “mobile phone,” i.e., a client-side device. See Ex. 1001, 3:10–19, 9:3– 10:2, 10:17–13:27, 14:64–15:54, Figs. 7–11. For example, the specification explains that a “mobile communication device,” such as a “mobile telephone,” may perform steps depicted in Figures 7 through 11. See id. at 9:4–8, 10:17–28, 11:60–12:5, 13:1–9, 14:7–13, 14:66–67, 15:44–46; see also id. at 14:36–38 (identifying a “mobile telephone” as an example of a “mobile communication device), 17:53–55 (same). And Patent Owner categorizes a “mobile phone” as a client-side device. See Prelim. Resp. 16– 22. To adopt Patent Owner’s exclusion of client-side functionality from the scope of the recited “network-based portal” would thus exclude preferred embodiments. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Accordingly, for purposes of this Decision, we decline to adopt such an exclusion. The parties will have an opportunity to elaborate on their positions for proper construction of “network-based portal” during the trial. On the record before us, we do not find it necessary to construe any other term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Among such reasons, Petitioner identifies both references’ teachings regarding prioritization of communications from certain individuals, as well as the similarity of Diacakis’s “presence and availability” information with Loveland’s “current circumstance” information. Id. at 53–56 (citing Ex. 1007 ¶¶ 8, 24; Ex. 1008, 3:45–5:24, Figs. 1–2). Petitioner supports this identification with testimony by Dr. Almeroth, who also supports Petitioner’s contention that the combination would both yield predictable results and be reasonably expected to succeed. Ex. 1003 ¶¶ 152–161; Pet. 54–57. At this time, Patent Owner disputes neither Petitioner’s reasoning to effect the combination nor Petitioner’s specific analysis of the individual limitations of claims 7–9. On the current record, and mindful of the standard that applies during this preliminary phase of the proceeding, we find that Petitioner’s reasoning is sufficiently supported by rational underpinning.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“discretion under 35 U.S.C. § 314(a) to deny the Petition in light of the state of the related litigation. Prelim. Resp. 9–14 (citing, inter alia, NHK Spring Co., Ltd. v. Intri-plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). But on the same date Patent Owner filed its Preliminary Response, the district court granted Petitioner’s motion to dismiss for improper venue, thereby terminating the related litigation. See Ex. 3001, 9. We agree with Petitioner that “this dismissal moots Patent Owner’s arguments based on Fintiv” and that “[b]ecause there is no longer any parallel proceeding, there is no basis for a discretionary denial under § 314(a).”4 Reply 1. We accordingly decline to exercise our discretionary authority to deny the Petition.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,708,727 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision
Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableUnpatentable
“added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20
Patent outcomesUS 9,591,360 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,591,360 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00206 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 are unpatentable as obvious over the stated prior-art combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“U.S. Patent No. 8,825,887 (“the ’887 patent”). The claims of that patent include the same term referring to “at least one portion,” and the ’887 patent shares its written description with the ’636 patent. In our Final Written Decision in CBM2020-00028 (Paper 33, 9−13), we found that the plain and ordinary meaning of this term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” CBM2020-00028, Paper 33 at 10–11. We declined to adopt Patent Owner’s implicit claim construction because it improperly imports extraneous limitations into the claims and excludes a preferred embodiment. Id. at 11–” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“as “a file containing one or more media references and other information used by a communication device to obtain media.” PO Resp. 14–17. Patent Owner contends that “a play script is not itself limited to being a list.” Id. at 15. Patent Owner argues that a script “is a file, which can be processed by a computer to obtain media” because the claims recite that the play script contains “instructions.” Id. Patent Owner also cites the district court’s adoption of this construction. Id. at 13–14. Whether or not a playlist is a file is not a meaningful distinction for the purposes of this Final Written Decision. As Petitioner notes, all of the “play scripts” identified by Petitioner in the prior art are files. Reply 6. We agree with Petitioner that we need not determine which party’s construction applies for purposes of our analysis. Nidec, 868 F.3d at 1017.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“reservation. Patent Owner now proposes the following construction: “arrangement regarding reserved resources of a streaming system.” PO Resp. 17. Patent Owner cites the specification and Mr. Adam’s testimony 13 for support. Id. (citing Ex. 1001, 10:33−37; Adams Decl. ¶ 110). Mr. Adam relies on the ’636 patent specification, which states that “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37. Further, “[t]he reservation uniquely identifies the viewer 118 or 120 and the customized play script.” Id. at 10:27–28, 10:34–37. The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Based on the description in the specification, we construe “reservation” as “a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party points out any meaningful difference between the parties’ assessments. We therefore apply Patent Owner’s more detailed assessment on the level of ordinary skill in the art. This proposal is consistent with the ’636 patent, the prior art of record, and is supported by 16 the testimony of Mr. Adams. Adams Decl. ¶¶ 27–29. However, our analysis would be the same under either party’s description.” slip op. at 16
Patent outcomesUS 9,135,636 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,135,636
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.