- Amazon.Com, Inc. v. Lexos Media IP, LLCInstitutedPTAB · Dec 12, 2023 · IPR2023-01001 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1, 38, and 53 on all asserted grounds, finding a reasonable likelihood of unpatentability over Malamud and Malamud with Nakagawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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 that follow, we institute an inter partes review as to claims 1, 38, and 53 of the ’449 patent on all grounds of unpatentability presented.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Fintiv Memorandum states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)); see id. at 7–9. The Fintiv Memorandum explains that such a stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner provides a Sotera stipulation. Pet. 63. Specifically, Petitioner stipulates that if we institute review, “Petitioner will not pursue the grounds raised, or that reasonably could have been raised, in this IPR.” Id. (referencing Sotera).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We apply a two-part test when evaluating whether to exercise discretion under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential) (“Advanced Bionics”). Specifically, we consider: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the claimed priority date would have had experience in the fields of human factors engineering or human computer interaction. The POSITA would have at least a bachelor’s degree in computer science, computer engineering, human factors engineering, or a related field and would have had at least two years of relevant work experience in the fields of UI design, or equivalent experience. Pet. 7 (citing Ex. 1003 ¶¶ 31–35). At this time, Patent Owner does not contest Petitioner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 28; see Ex. 2001 ¶ 29. For the purposes of this Decision, we adopt Petitioner’s formulation for the level of skill of one of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’449 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art)” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,118,449 - Amazon.Com, Inc. v. Lexos Media IP, LLCInstitutedPTAB · Dec 12, 2023 · IPR2023-01000 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claim 72 on all three obviousness grounds: Malamud; Malamud with Nakagawa; and Nielsen with Malamud.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Fintiv Memorandum states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)); see id. at 7–9. The Fintiv Memorandum explains that such a stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“However, as Petitioner correctly asserts, the arguments made in the 1749 IPR were markedly different from the arguments presented in this proceeding with respect to whether and how Malamud teaches “specified content information.”. Pet. 55–56. The 1749 IPR petitioner relied on information in Malamud’s transmitted message that “tells the operating system what type of cursor to display and sets forth the contents and type of information to be displayed in the cursor” (Ex. 1004, 5:49–52) for teaching the “specified content information includ[ing] information that is to be displayed on said display of said user’s terminal” (limitation c.i.2) in claim 72. 1749 IPR, Paper 21 (1744 IPR final written decision), 17. This led to a deficiency in the petition’s showing for the recitation (limitation c.ii of claim 72) that the cursor image is modified “responsive to movement of said cursor image over a display of said at least a portion of said information to be displayed on said display of said user’s terminal.” Id. at 17–19, 24–26. It was this argument in the 1749 IPR that was found to be fatal to arguments of unpatentability regarding claim 72 of the ’102 patent and an additional claim at issue in that proceeding. Id. at 25–26 (“Petitioner has not adequately demonstrated how Malamud . . . teaches or suggests this limitation because it has failed to explain how Malamud’s cursor image could exhibit movement over itself.”). Here, however, Petitioner does not rely on Malamud’s transmitted message as including the “specified content information” of limitation c.i.2 as the petition in the 1749 IPR did; rather, Petitioner here relies on the application program in Malamud as including this information. Pet. 34, 37; see infra at § II.E.2. We consider, therefore, with respect to Becton, Dickinson factor (d), this is a significant area in which there is no overlap between the arguments previously made, which were dispositive in the 1749 IPR, and the manner in which Petitioner in this proceeding relies on Malamud. Even though Malamud was before the Board in the 1749 IPR, the arguments presented in the Petition here were not previously considered by the Office.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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 that follow, we institute an inter partes review as to the challenged claim of the ’102 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the claimed priority date would have had experience in the fields of human factors engineering or human computer interaction. The POSITA would have at least a bachelor’s degree in computer science, computer engineering, human factors engineering, or a related field and would have had at least two years of relevant work experience in the fields of UI design, or equivalent experience. 3 The present record contains no evidence or argument relating to secondary considerations. Pet. 7–8 (citing Ex. 1003 ¶¶ 31–35). At this time, Patent Owner does not contest Petitioner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 28; see Ex. 2001 ¶ 29. For the purposes of this Decision, we adopt Petitioner’s formulation for the level of skill of one of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’102 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 5,995,102 - PTAB · Oct 18, 2023 · IPR2023-00778 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, 7, 9, 15, and 16 and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering, physics, optics or a related field, and approximately three years of experience in the fields of visual displays, circuit design, and related technologies.” Pet. 7 (citing Ex. 1002 ¶¶ 23–25). Petitioner states that the Board adopted this formulation in IPR2020-01289, Paper 9, 8–9 (PTAB Mar. 9, 2021). Id. Petitioner also asserts that “[o]ther formulations are also possible but, even if adopted, they would not materially change the analysis or the outcome.” Id. At this stage of the proceeding, Patent Owner “applies Petitioner’s level of ordinary skill without agreeing to it.” Prelim. Resp. 1. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“On the current record, we find that, for purposes of institution, Petitioner has sufficiently shown that the combination of Gettemy, Kerman, Rosenzweig, Whitted, and Bell teach this limitation and has provided sufficient rationale to combine the references. First, we credit Dr. Baker’s testimony that “notwithstanding that the system in Gettemy will not permit the user to set the slider below the lower end of the displayed range . . . nothing in Gettemy states that the purpose of summation of the minimum value of the brightness range is to ensure that the final display brightness value used to control the brightness of the display meets a predetermined desired level of brightness.” Ex. 1002 ¶ 324. Thus, Petitioner relies on Whitted and Bell to teach this limitation. As for Patent Owner’s arguments that Whitted and Bell provide “redundant” functionality, we disagree on the current record. Petitioner explains the benefits of adding the functionality from Whitted and Bell as a backstop and to compensate for degradation of conventional displays. Pet. 71–72. Moreover, Dr. Baker provides supporting testimony and citations to additional references in support of Petitioner’s motivation to combine the references, and, accordingly, we disagree with Patent Owner that there is no evidence to support Petitioner’s 15 Patent Owner argues that the Board’s decision in IPR2018-01262 is instructive. Prelim. Resp. 69. We disagree. That decision described several deficiencies in the Petition relating to the “dark level bias” limitation (see IPR2018-01262, Paper 14, 12–16), and Patent Owner oversimplifies the Board’s findings by quoting from one paragraph in the decision. contentions. See Ex. 1002 ¶ 336 (citing Ex. 1019, 1020, 1021). In addition, Patent Owner’s arguments that Whitted and Bell do not disclose the “dark level bias” address Whitted and Bell individually, rather than on the combination as proposed by Petitioner, with Gettemy, Kerman, and Rosenzweig, and are therefore not persuasive on this record. The parties may wish to further develop the record as to the foregoing issues during trial.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has sufficiently shown that Gettemy, Kerman, and Rosenzweig teach this limitation and has provided sufficient rationale to combine the references. Petitioner’s arguments that sliders were “commonly used” is supported by the disclosure in both Kerman and Rosenzweig. Ex. 1014, 39 (Kerman describing that a slider is “a popular user interface”); Ex. 1015, 44 (Rosenzweig describing a slider as “a familiar user interface element used in all major software programs”). Petitioner relies on Kerman and Rosenzweig to explicitly explain how Gettemy’s conventional slider is implemented. Pet. 57. Patent Owner’s arguments largely address the references individually, rather than on the combination as proposed by Petitioner, where Kerman and Rosenzweig are relied upon for the underlying technical functionality of Gettemy’s slider. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We find persuasive Dr. Baker’s testimony that “[a]n ordinarily skilled artisan, seeking to implement the brightness control system of Gettemy, would thus have been motivated to rely on the teachings of Kerman and Rosenzweig to better understand how to implement the slider controls in Gettemy, including the precise formula that produces the exact display brightness values exhibited in Gettemy.” Ex. 1002 ¶ 319. Further, we disagree with Patent Owner that Petitioner and Dr. Baker have made up an equation. The equations relied upon by Petitioner are directly from the Kerman and Rosenzweig references. See Pet. 57, 58, 62–64. Based on our review and consideration of the current record, we determine that, for purposes of institution, Petitioner has sufficiently shown that the combination of Gettemy, Kerman, and Rosenzweig teaches limitation 1(c) and has provided reasons sufficiently supported by factual underpinnings to combine the reference teachings with a reasonable expectation of success.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,223,117 - Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Jan 26, 2023 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Remand
Claims 1, 2, 9, 11–17, and 21–24 are unpatentable over Burns with Uy or AlphaGrip; claim 10 was not shown unpatentable because Burns does not teach detachable paddles.
RulingsRemand decision- RemandOther
“rendered claims 3–8 and 18–20 unpatentable. Valve, 8 F.4th at 1381. The Federal Circuit reversed our determination that Burns was not prior art. Id. at 1381. The Federal Circuit also vacated our determination that Valve had failed to prove that collectively claims 1, 2, 9–17, and 21–24 were unpatentable as obvious in view of Burns in combination with either Uy or AlphaGrip. Id. Accordingly, the Federal Circuit remanded the case to us to consider Valve’s challenges to the patentability of claims 1, 2, 9–17, and 21–24 of the ’229 patent as obvious based on the combinations of prior art listed in the table below. Claims6 35 U.S.C. § References 1, 2, 9, 10, 14–17, 21–24 103 Burns, Uy 1, 2, 9–17, 21, 22 103 Burns, AlphaGrip Id. C. Remand Background On remand, we authorized the parties to concurrently file an opening brief and then concurrently file responsive reply briefs. Paper 44, 4. The parties agreed, and we concurred, that no new evidence would be submitted during the remand proceeding. Id. at 3. Accordingly, we decide the issues on remand based on the record that was submitted during the original trial.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether AlphaGrip Is a Prior Art Printed Publication” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We find Ironburg’s critique of Mr. Willner’s testimony unavailing. Valve persuasively responds that Mr. Willner testifies that he personally recalls reviewing AlphaGrip on the internet during 2006, which significantly predates the filing of the oldest application in the priority chain of the ’229 patent, May 22, 2013, by at least six years. Compare Ex. 1009 ¶ 3 (testifying that online publication of AlphaGrip happened in 2006), with Ex. 1001, code (60) (identifying provisional application filed May 22, 2013, as earliest-filed priority application). Mr. Willner testifies that he is the inventor and designer of the controller that is reviewed in AlphaGrip, which we find to qualify him as an ordinarily skilled artisan. Ex. 1009 ¶¶ 1–3. Besides expressly testifying that he viewed AlphaGrip online during 2006, Mr. Willner also testifies in some detail about his recollection of his interactions with the author of AlphaGrip, Ryan Paul, and the events surrounding the publication of Mr. Paul’s review on Arstechnica’s website. Id. ¶¶ 4–5. Mr. Willner also reviews the version of AlphaGrip that Valve submitted as prior art and testifies that it is a true and correct copy of the review that he remembers seeing online during 2006. Id. ¶¶ 6–7. We find Mr. Willner’s testimony to be reliable in part because he recalls being “delighted” by the praise Mr. Paul lavished on the AlphaGrip controller. Id. ¶ 8. The publication of AlphaGrip marked an important event for Mr. Willner’s company. Mr. Willner states that he immediately posted a link on his own company’s website to Arstechnica’s AlphaGrip review in 2006, and his company maintains the link to Arstechnica’s review of AlphaGrip “to this day.” Id. We find that all these facts increase the probative value of Mr. Willner’s testimony on the issue of whether AlphaGrip was published and could easily have been found by interested persons during 2006. Although Mr. Willner may not have been a webpage manager for Arstechnica or be able to testify about precisely how many people accessed AlphaGrip in 2006, we find his testimony, as one of skill in the art himself to be compelling. Not only has Ironburg failed to refute any of Mr. Willner’s testimony with countervailing evidence, Ironburg did not cross-examine Mr. Willner to test his memory of the specific events set forth in his testimony. See PO Resp. 16–18 (failing to provide countervailing evidence or cite cross examination testimony).” slip op. at 12
- ExcludeMotion to exclude, deniedMixed
“We also disagree with Ironburg that we should exclude as hearsay or irrelevant Dr. Rempel’s testimony on how flexible the Burns’ paddles were or the extensive body of objective evidence cited and relied upon by him to support his testimony.9 Mot. 12–13. To the contrary, we agree with Valve that Dr. Rempel may properly rely upon the cited exhibits even if they would otherwise be inadmissible hearsay because they constitute the types of information upon which an expert would reasonably rely under Fed. R. Evid. 703. Opp. 10. Accordingly, we deny-in-part the Motion to the extent that it seeks to strike or exclude testimony in Dr. Rempel’s second declaration or Exhibits 1020, 1025, 1026, 1031, 1036, 1042 cited by Dr. Rempel in support of his analysis.” slip op. at 18
Patent outcomesUS 9,352,229 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,352,229 - PTAB · May 5, 2022 · IPR2022-00063 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–34 and all asserted grounds after finding a reasonable likelihood that Samsung would prevail on obviousness over Ellsberry and Jeddeloh.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“another patent asserted in the Related Case was filed within a week of the Preliminary Response. Id. We decline to attempt to predict how the District Court would proceed should a stay be requested by either of the parties. Accordingly, we find that this factor neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner admits that “[t]he district of Delaware has not yet set a trial date.” Id. Accordingly, this factor weighs against exercising our discretion to deny inter partes review.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Averbuj was not presented in combination with the other references asserted here and is only used in two of the four grounds, the combination of references asserted in the Petition do not qualify as art that was “previously presented” to the Office. Thus, we find that the combination of references asserted in the Petition, were not previously presented to the Office. Additionally, Patent Owner does not assert or explain sufficiently that Ellsberry, Jeddeloh, and/or Lee are cumulative of any reference cited during prosecution of the ’523 patent. Prelim. Resp. 41–43. On this record, we are not persuaded that Ellsberry, Jeddeloh, and Lee are cumulative of any reference cited during prosecution of the ’523 patent. Accordingly, the first condition of the first part of the Advanced Bionics framework is not satisfied, and we need not consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Conclusion After evaluating the Becton, Dickinson factors within the Advanced” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 6. Patent Owner does not dispute Petitioner’s characterization or offer its own. Accordingly, for purposes of this decision, we adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’523 patent written description and the asserted prior art. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers constructions of several terms which are not disputed by Patent Owner. Pet. 13–15. Nevertheless, we determine that it is not necessary to provide an express interpretation of any of the terms of the claims at this juncture. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,217,523 - Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18
Patent outcomesUS 9,807,826 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830 - Vudu, Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12
Patent outcomesUS 10,313,414 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,313,414 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 24, 2022 · IPR2021-01521 · APJ Bryan F Moore · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1, 9–11, 19–21, and 29–30 were obvious over Paxton and Sutton.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 16–56. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“or why its proposed Paxton-Sutton combination would generate rules and provision the rules ‘responsive to correlating,’ as required by the Challenged Claims.” Prelim. Resp. 43. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the correlating, one or more rules configured to identify packets received from the host located in the first network.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Claim Construction The parties do not dispute any claim constructions (see Pet. 14–15; Prelim. Resp. 41), we find no terms that need to be construed to resolve any issues, and, accordingly, we do not construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,560,176 - PTAB · Mar 15, 2022 · IPR2021-01158 · APJ Lynne E Pettigrew · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Palo Alto Networks would prevail in showing at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 325(d) because every ground asserted in the Petition is based on the same or substantially similar art and arguments already considered during prosecution of the ’899 patent. Prelim. Resp. 13–26. Section 325(d) states, in relevant part, “[in] determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider the following non-exclusive factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). After considering the parties’ arguments and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’899 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’899 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two years of professional experience or equivalent study in network security and the use of machine-learning algorithms.” Pet. 13 (citing Ex. 1004 ¶ 30). Petitioner further asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1004 ¶ 30). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art. See generally Prelim. Resp. Based on the information presented in the Petition and Dr. Lee’s testimony, we adopt Petitioner’s assessment for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,503,899
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.