• American Well Corporation v. Teladoc Health, Inc.Institution denied
  PTAB · Nov 3, 2021 · IPR2021-00933 · APJ John P Pinkerton · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the four asserted grounds.

  RulingsInstitution decision

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

    “We are authorized to institute an inter partes review where a petition demonstrates a reasonable likelihood that the petitioner would prevail with respect to at least one challenged patent claim. 35 U.S.C. § 314(a). We are never compelled, however, to institute a review. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). We may exercise our discretion to deny review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Id. at 1363; 35 U.S.C. § 312(a)(3). “Even when a petitioner demonstrates a reasonable likelihood” of prevailing with respect to at least one patent claim, institution of review “remains discretionary.” Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative). For the reasons explained below, we do not institute an inter partes” slip op. at 2

  • BurdenDecided for patent owner

    “c) Analysis We agree with Patent Owner that Petitioner has not sufficiently shown that Wang438 discloses limitation 1.1. Initially, we agree with Patent Owner that Wang438 does not disclose that monitoring device 50 displays any patient information. Id. at 23–24 (citing Ex. 2001 ¶ 59). Although Petitioner relies on paragraph 21 of Wang438, we agree with Patent Owner that paragraph 21 makes clear that the purpose of medical monitoring device 50, which may be a stethoscope, pulse oximeter, or EKG monitor, is to “take medical data from a patient.” Id. at 23 (citing Ex. 1005 ¶ 21). In other words, as Patent Owner states, “monitoring device 50 is a device that monitors data, not a ‘monitor’ that displays the data.” Id. (citing Ex. 1005 ¶ 21; Ex. 2001 ¶ 59) (emphasis omitted). Paragraph 21 does not disclose that monitoring device 50 displays any patient information. Instead, as Patent Owner argues, paragraph 21 of Wang438 discloses that monitoring device 50 may contain wireless transmitter 52 (as shown in Figure 1) that transmits the patient data to robot 12, which can then transmit the data to remote station 16. Id. at 23–24 (citing Ex. 1005 ¶ 21). We also agree with Patent Owner that Petitioner’s secondary references external to Wang438 cannot support an anticipation challenge based on Wang438. In that regard, Petitioner cites to five secondary references: Nellcor N-200 pulse oximeter operator’s manual (Ex. 1011, 16); GE-MAC 1200 ECG monitor operator’s manual (Ex. 1012, 9, 27); Phillips- PageWriter ECG monitor instructions for use (Ex. 1013, 14, 45–47); GE CARESCAPE V100 vital signs monitor brochure (Ex. 1017, 5); and, GE CARESCAPE V100 vital signs monitor operator’s manual (Ex. 1018, 13). See Pet. 23–28. None of these references were identified in the grounds set forth in the Petition. See Pet. 2–3. For the reasons stated below, we determine we cannot consider these secondary references because doing so would violate the requirement of Section 312(a)(3) for an inter partes review petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” See 35 U.S.C. § 312(a)(3). We also determine we cannot consider these secondary references because ground 1 challenges claim 1 for anticipation under 35 U.S.C. § 102 based on Wang438, which requires Petitioner to show that the single reference Wang438 discloses, either expressly or inherently, the limitations of claim 1. See Schreiber, 128 F.3d at 1477. Permitting Petitioner to argue Wang438 together with the secondary references would, as Patent Owner argues, convert the basis for ground 1 from anticipation to obviousness under 35 U.S.C. § 103(a). See Prelim. Resp. 25. Thus, we also determine we cannot consider Petitioner’s secondary references because doing so would be contrary to the requirement for the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based” (35 U.S.C. § 312(a)(3)) and the Board’s rule requiring a petition for inter partes review to identify the statutory grounds on which the challenge to the claim is based (37 C.F.R. § 42.104(b)).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 11 (citing Ex. 2001 ¶ 36). Based on our review of the limited record, we determine that Petitioner’s definition is consistent with the technology and skill reflected in the prior art of record and the specification of the ’185 patent. Thus, for purposes of this decision, we apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioner does not propose a specific construction for any claim term in this proceeding. Pet. 3. Instead, Petitioner asserts that “[a]ll [claim] terms should be given their ordinary and customary meaning,” and “Petitioner also reserves the right to identify terms for construction as may become necessary in the related District Court case.” Id. Patent Owner agrees with Petitioner that no formal claim constructions are necessary at this point. Prelim. Resp. 11. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See, e.g., 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 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,761,185
• Askeladden LLC v. Leigh M. RothschildAll claims unpatentable
  PTAB · Nov 19, 2020 · IPR2019-00856 · APJ Mitchell G Weatherly · IPR · Final written decision

  Original claims 3–10, 12, 13, and 20 were canceled; the Board denied the motion to amend because the proposed substitute claims were unpatentable as obvious.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The claim language itself implies that the financial services provider decides which biometric information is required during the transaction stage because the Decision Limitation is added to element 1F, which is the first step in the transaction stage recited in elements 1F–H. “[I]n assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 1E–H). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data uploaded in element 1E is used to validate and execute “a purchase transaction,” in element 1H (describing the operation of the claimed system during the transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 15

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

    “expressly discloses the Decision Limitation. Opp. 19–20. However, Petitioner contends that Ortiz discloses this concept by describing a system in which the user of a point-of-sale terminal is prompted to input at least one biometric attribute that is randomly selected from a database of previously provided (during enrollment) biometric data. Id. at 20 (citing Ex. 1026 ¶¶ 85–87, 90, 91, Figs. 5 (steps 106, 108) 6 (steps 140, 142); Ex. 1027 ¶¶ 38, 39). The security of Ortiz’s systems and methods is enhanced by enabling the system to randomly challenge the user of a point-of-sale terminal at the time of the transaction because an imposter could not know in advance which biometric attribute would be required by the financial service provider to authorize the transaction. Id. (citing Ex. 1026 ¶¶ 23, 87, 96, 97, 141, Figs. 5, 6; Ex. 1027 ¶¶ 40, 41). Petitioner relies on Dr. Alexander’s testimony to support its contention that an ordinarily skilled artisan “recognized the need to verify user authenticity, such as, e.g., at least in the first instance when enrolling initial biometric(s), to prevent imposters from accessing Karthik’s system and uploading his own fraudulent biometric data.” Pet. 26; see also id. at 27 (citing Ex. 1002 ¶¶ 139–141; Ex. 1004, 2:31–36, 3:33–38). Petitioner reasons that an ordinarily skilled artisan would have been motivated to utilize Robinson’s suggestion to use third party biometric data to verify a user with Karthik’s validation procedure because it “would provide additional security against identity theft.” Id. at 27 (citing Ex. 1002 ¶¶ 139–141). Dr. Alexander opines that an ordinarily skilled artisan would have reasonably expected to be able to incorporate Robinson’s use of third party biometric data into Karthik’s user enrollment protocol. Ex. 1002 ¶ 143. Based on Dr. Alexander’s testimony, Petitioner argues that an ordinarily skilled artisan would have found it obvious to modify the systems and methods suggested by the combined teachings of Karthik and Robinson to incorporate Ortiz’s ability for the financial services provider to decide the type of biometric information required for a transaction (i.e., the Decision Limitation). Doing so would “deter attempts to impersonate the legitimate user of a financial services card during the transaction stage.” Opp. 21 (citing Ex. 1027 ¶¶ 41, 42). Dr. Alexander also opines that an ordinarily skilled artisan would have expected to succeed in incorporating Ortiz’s system and method into the combined Karthik/Robinson system and method because doing so “would have only required a financial services provider to implement a program that allows a server to randomly select one or more of the plurality of biometrics enrolled in Karthik’s database, and communicate that selection to, e.g., a point-of-sale terminal for a user to input” and that the “combined methods, systems, and servers [would] work for their intended purpose.” Id. at 21–22 (citing Ex. 1026 ¶ 27; Ex. 1027 ¶ 43). Patent Owner has not provided any countervailing argument or evidence in response to Petitioner’s Opposition. Based on our review of Petitioner’s argument and evidence of record, which we adopt as our own (see In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016)), we determine that Petitioner has demonstrated by a preponderance of evidence that the combined teachings of Karthik, Robinson, and Ortiz render substitute independent claim 1 unpatentable as obvious.” slip op. at 24

  • 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. Based on testimony by Peter Alexander, Ph.D., Petitioner contends that an ordinarily skilled artisan as of June 11, 2008, would have either: “(i) a Bachelor-of-Science degree in electrical engineering, computer science, or computer engineering, or equivalent, and at least two years of additional experience in database and networking technology, computer security and/or authentication using biometric data, or (ii) a post-graduate degree in electrical engineering, computer science, or computer engineering, or equivalent.” Pet. 15 (citing Ex. 1002 ¶¶ 14–17). Patent Owner does not contest Petitioner’s position relating to the level of ordinary skill. See generally Mot. We find Petitioner’s description of the ordinary level of skill in the art at the time of the invention to be consistent with the level of skill reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt and apply the level of ordinary skill proffered by the Petitioner in this proceeding. D. WHETHER THE “DECISION LIMITATION” IS INDEFINITE” slip op. at 12

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 3–10, 12, AND 13: OBVIOUSNESS IN VIEW OF KARTHIK, ROBSINSON, ORTIZ, AND ONE OF LYON, CARTMELL, OR” slip op. at 18

  Patent outcomesUS 8,799,088 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,799,088
• Askeladden LLC v. Leigh M. RothschildAll claims unpatentable
  PTAB · Nov 19, 2020 · IPR2019-00855 · APJ Mitchell G Weatherly · IPR · Final written decision

  The Board canceled original claims 1, 2, 11, 14–19, and 21 and denied the motion to amend because the proposed substitute claims were obvious over Karthik, Robinson, and Ortiz.

  RulingsFinal written decision

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

    “The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteDecided for patent owner

    “The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the 7 Normally, a Patent Owner must identify material in the originally filed application leading to issuance of the patent at issue that supports the proposed amendment. Lectrosonics, Paper 15 at 7. Failing to cite the original disclosure is a basis for denying a motion to amend. Id. However, because Patent Owner appears pro se, we reviewed the original disclosure ourselves to verify that the portion of the Specification cited is identically found in that disclosure. Compare Ex. 1016 ¶ 42, with Ex. 1001, 9:9–14. Accordingly, in this case, we find that Patent Owner’s citation to the Specification functionally refers to material in the original disclosure. Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 1, 2, 11, 14–19, AND 21:” slip op. at 17

  • ScopeDecided for patent owner

    “3. Whether the Amendments Enlarge the Scope of the Claims An amendment may not enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). We determine that Patent Owner’s addition of the Decision Limitation narrows the scope of every challenged claim and thus satisfies the prohibition against enlarging the scope of any claim.” slip op. at 16

  Patent outcomesUS 8,799,088 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 8,799,088
• Werner Co. v. Louisville Ladder, Inc.All claims unpatentable
  PTAB · Aug 24, 2020 · IPR2019-00336 · APJ Richard H Marschall · IPR · Final written decision

  Claims 8–16 are unpatentable as obvious over the Louisville Catalog, Plotner, and Werner Brochure; claims 19 and 20 are unpatentable as obvious over those references and Modern Plastics Handbook.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ proposals do not differ in any respect that would suggest our determination on this issue would impact any of our findings in this case. At oral argument, the parties agreed that no issue in this case turns on the differences in the parties’ respective proposals. See Tr. 31:18–24 (Patent Owner’s counsel stating that “we do not believe that that slight difference between Petitioner and Patent Owner would be dispositive of any issue in the case”), 55:25–56:9 (Petitioner’s counsel stating that “all parties and experts agree that there’s no material difference in the proposed level of ordinary skill in the art”). The parties’ respective proposals differ in the number of years of experience required in the ladder design field; Petitioner proposes 5–7 years of experience, while Patent Owner proposes 3–5 years. Pet. 7; PO Resp. 6. Based on the full record before us, because the asserted references describe problems and solutions of ladder design that are relatively straightforward and presumably understandable with only a few years of industry experience, we apply Patent Owner’s proposal to our analysis because it requires fewer years of that experience.” slip op. at 9

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

    “we disagree with Petitioner’s argument that all bonds, including fasteners, necessarily include a portion of the shell and tread as the claim requires. Pet. 12. Instead, the requirement that the bond include a portion of the shell and a portion of the tread suggests something more than a third structure such as a fastener as the bonding structure. In other words, when a fastener joins a tread to a shell, neither the tread nor the shell aids in holding the two together; the fastener performs that “bonding” function. Further, independent claim 14 already requires a “bond,” and claim 16, which depends from claim 14, “further” requires a “mechanical fastener” in addition to the bond, without describing it as a species of bond. Ex. 1001, 18:40–41. Reading the “bond” of claim 14 to encompass the “mechanical fastener” of claim 16 would conflict with claim 16’s treatment of the mechanical fastener requirement as separate from the bond limitation. As Patent Owner notes, claim 16 does not state that the bond further comprises a fastener; it states that the cover further comprises a fastener. See PO Sur-reply 5. This claim structure at least suggests that “bond” in claim 14 does not encompass fasteners. Further, the use of the “comprising” transition language merely allows for the addition of unclaimed fasteners to the independent claims without falling outside the scope of the claims. That well known aspect of the “comprising” language does not mandate a broader reading of “bond” to include fasteners. Second, we agree with Patent Owner that the Specification distinguishes between the claimed bonds and the use of mechanical fasteners. PO Resp. 9–10. First, in the Background, the Specification stresses the need for a bond that goes beyond the prior art use of mechanical fasteners. See Ex. 1001, 2:19–27. Later, in the Detailed Description, the Specification describes the use of mechanical fasteners as “in addition” to the physical or chemical bonds, and as a further safety feature should the bond fail. See id. at 10:35–45; 14:3–14. The most natural reading of these passages supports Patent Owner’s position that fasteners are distinct from, and could optionally be used in addition to, bonds, not that fasteners are a type of bond.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “for “entirely open face” is too narrow. The crux of Patent Owner’s construction is that “the lowermost interior surface and corners of the ladder rail are sufficiently exposed both for inspection during use and proper fitting of the shell.” PO Resp. 13. The language of claim 8 does not support this construction. Claim 8 defines how much of the ladder rail must be exposed, and merely states that “a portion of the ladder rail” must be exposed when the shell and rail are engaged. Ex. 1001, 17:16–19; see also id. at 18:20–22 (claim 13 requiring “said shell defines an entirely open face so that a portion of the ladder rail is exposed”). The claim language does not state that any particular “portion” of the rail, much less “the lowermost interior surface and corners” of the rail, must be exposed. The absence of such specificity in the claim language counsels against reading in that limitation. In addition, the Specification does not suggest that the exposed “portion” of the rail referred to in claim 8 must include those portions identified in Patent Owner’s construction. Instead, the Specification refers broadly to the disadvantages of needing to remove protective boots to inspect the rail, and the need to expose enough of the rail to perform an inspection, without mentioning any specific portions that must be exposed. Ex. 1001, 1:66–2:5, 6:61–7:14. Patent Owner also acknowledges that the claims cover Figures 3 and 9, and Figure 3 shows structures occluding portions of the lowermost portion of the ladder rail, such as rail flange retainers and web engagement member 59. Patent Owner’s effort to construe the claim to cover a face that exposes specific portions of the ladder rail that are somewhat exposed in its own figures, while not allowing for any less exposure of the rail, demands much more precision than the claim language and Specification provide. The prosecution history also fails to provide that specificity, as at most it reveals that the applicants distinguished the claims over prior art that largely surrounded the ladder rail on four sides, exposing only small portions of the rail. See Ex. 1018, 250; Ex. 2004, Figs. 1, 2, 6. Based on the foregoing, we decline to adopt Patent Owner’s proposed construction. The parties further dispute whether the claimed “face” corresponds to the plane or missing side opposite exterior wall 42, above interior wall 44 (as Petitioner proposes), or includes any plane along base 50 within the interior of shell 32 (as Patent Owner proposes). See Pet. Reply 4– 5; PO Sur-reply 6–7. We need not resolve this issue because it appears that Patent Owner’s proposal is broader than, and would encompass, the “face” Petitioner identifies, and would therefore fail to aid Patent Owner in its efforts to distinguish over the prior art. Nevertheless, we agree with Petitioner that the more natural reading of “face,” in light of the Specification, refers to a single plane on the side opposite exterior wall 42 and above interior wall 44. See Ex. 1001, 6:61–7:10. This comports with the “entirely open” aspect of the claim language, as only the side opposite interior wall 42 and above interior wall 44 is shown as “entirely open” in Figures 3 and 9, while the inside of the shell contains structures that render that area not entirely open. See id. at Figs. 3, 9.” slip op. at 17

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

    “C. Challenges Under 35 U.S.C. § 102(a)/(b) Based on the Louisville Catalog and Under 35 U.S.C. § 103(a) Based on Plotner and the Louisville Catalog. Petitioner challenges claims 8–11 under 35 U.S.C. § 102(a)/(b) as anticipated by the Louisville Catalog and claims 8–16 under 35 U.S.C. § 103(a) as unpatentable over Plotner and the Louisville Catalog. Pet. 14– 48. Petitioner expressly conditions both of these challenges on our adoption of Petitioner’s proposed construction of the bond limitation that includes mechanical fasteners. Id. at 14, 21. For the reasons discussed above in our construction of the bond limitation, we reject Petitioner’s proposed construction and conclude that “bond” does not include mechanical fasteners. Accordingly, because we reject Petitioner’s stated premise for these challenges, we conclude that Petitioner has not proven by a preponderance of the evidence that claims 8–11 are anticipated by the Louisville Catalog or that claims 8–16 would have been obvious based on Plotner and the Louisville Catalog.” slip op. at 21

  Patent outcomesUS 7,000,731 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,000,731
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

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

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Unified Patents Inc. v. Velos Media, LLCNo claims unpatentable
  PTAB · May 12, 2020 · IPR2019-00194 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–3, 5, 13–15, and 17 were not shown unpatentable because the asserted grounds failed to establish the claimed scan passes or scan order.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts a person of ordinary skill in the art at the time of the application resulting in the ’449 patent “would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience in the field of video coding.” Pet. 23–24. Patent Owner does not contest that definition of a skilled artisan or offer a different one. Petitioner’s definition is consistent with the descriptions in the ’449 patent and the asserted art, and we adopt it.” slip op. at 5

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

    “Although Petitioner proposes a construction for “information indicating levels of significant coefficients” (Pet. 27), we determined in the Institution Decision that there was no need to construe the phrase. Inst. 5. Absent any indication from the parties why such a construction would impact our analysis, we reach that same conclusion here. 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).” slip op. at 6

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

    “the phrase “in a first scan pass” and shows the proper grammatical relationship. That limitation recites “coding information indicating levels . . . according to the scan order used for coding the information indicating significant coefficients in a second scan pass.” The phrase “in a second scan pass” serves not to frame the scan order—the scan order for coding level information must be the same as the scan order for coding significance information. Rather, “in a second scan pass” relates to the phrase “coding information”—no other understanding of “in a second scan pass” would make sense. For internal consistency, that same understanding must apply to the first limitation such that “in a first scan pass” frames the step of “coding information.” Thus, the claim language requires coding significance information in a first scan pass, and then coding level information in a second scan pass, where each scan pass uses the same scan order.” slip op. at 8

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

    “We find Cheon’s disclosure regarding a purported second scan is insufficient to carry Petitioner’s burden. The primary disclosure Petitioner relies on states only that “[l]evel information of an effective coefficient . . . is encoded after the significance map is encoded.” Ex. 1003 ¶ 175. That does not expressly state that a second scan is performed to encode the level information. Petitioner is left relying on a statement by its declarant that a person of skill would have understood to perform a second scan pass when encoding the level information. Pet. 61. But Petitioner’s declarant provides no explanation and instead simply makes the conclusion. Ex. 1002 ¶ 127. We do not afford significant weight to such a conclusory statement. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We are left with the possibility that Cheon’s paragraph 175 discloses a second scan, but that does not persuade us that Cheon makes an adequate disclosure to teach a second scan. In this regard, we credit the testimony of Patent Owner’s declarant that skilled artisans would have understood Cheon’s paragraph 175 to teach a single scan pass. Ex. 2034 ¶¶ 158–159.” slip op. at 11

  Patent outcomesUS 9,338,449 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,338,449
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentable
  PTAB · Apr 8, 2020 · IPR2018-01476 · APJ J John Lee · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Paulraj, Walton, and Huang; the Wallace and Walton ground does not establish the required simultaneity.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering or an equivalent as well as three years of experience working with “multi-antenna wireless communication systems,” or one year of such experience with a master’s degree in electrical engineering focusing on communications systems. Pet. 7–8 (citing Ex. 1003 ¶ 41). Patent Owner does not dispute Petitioner’s 2 U.S. Patent No. 6,067,290, issued May 23, 2000 (Ex. 1005, “Paulraj”). 3 H. Huang et al., Achieving High Data Rates in CDMA Systems Using BLAST Techniques, in CONFERENCE RECORD, IEEE GLOBAL TELECOMMUNICATIONS CONFERENCE 2316 (1999) (Ex. 1006, “Huang”). 4 U.S. Patent No. 7,095,709 B2, issued Aug. 22, 2006 (Ex. 1008, “Walton”). 5 U.S. Patent Application Pub. No. 2002/0193146 A1, published Dec. 19, 2002 (Ex. 1009, “Wallace”). formulation of the level of skill in the art, and applies it for its arguments. PO Resp. 10. Based on the information presented in the Petition and Dr. Singer’s testimony, we agree with Petitioner’s formulation, which is supported by the record and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “limiting. See Pet. Reply 5; PO Sur-reply 7–8; Tr. 8:5–15. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, 182 F.3d at 1305). On the other hand, a preamble generally is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). For example, if “deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” the preamble is not limiting. Id. at 809 (citing IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000)). Here, we are persuaded the preamble is limiting. Although the parties dispute whether spatial multiplexing and transmit diversity occur simultaneously, it is undisputed that spatial multiplexing is part of the claimed invention. See Pet. 2; PO Resp. 6; Tr. 6:13–26 (Petitioner indicating “we agree that the claims require transmit diversity and signal multiplexing”). The Specification supports this view. For example, the Specification states that “i[t] is an object of the present invention to improve reception performance of specific data on a receiving side while maintaining the transmission efficiency of a communication system.” Ex. 1001, 2:3–6 (emphasis added). The technique for improving transmission efficiency disclosed in the Specification is spatial multiplexing. See id. at 5:13–17 (describing “two transmission systems to transmit different items of data, [which] maintains high transmission efficiency”), Figs. 3, 4; see also id. at 1:42–47 (indicating “signals sent from a plurality of transmission antennas at the same timing and same frequency in substream units” help “realize a high-speed, high-volume communication”). Further, the only part of claim 1 that recites spatial multiplexing is the preamble. See Pet. Reply 3–6; PO Sur-reply 4; Ex. 1020, 21:22–22:18. Neither party indicates that any other claim language captures spatial multiplexing. Thus, if the preamble is not limiting, claim 1 would not incorporate spatial multiplexing at all, which is inconsistent with how the invention is described in the Specification. Consequently, we determine that the preamble of claim 1 recites “essential structure or steps” and, thus, is “necessary to give life, meaning, and vitality” to the claim. See Catalina Mktg., 289 F.3d at 808.” slip op. at 10

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

    “The final limitation of claim 1 (the “wherein” clause) recites “generat[ing] a replica data item by replicating a specific data item of the plurality of data items, and map[ping] the plurality of data items to the at least one of the plurality of antennas such that the specific data item and the replica data item are transmitted from different antennas at a same time.” It is undisputed that this limitation recites transmit diversity. Critically, as Patent Owner observes, this limitation recites “a specific data item of the plurality of data items” (emphasis added), i.e., the “specific data item” that is replicated for transmit diversity is part of the same “plurality of data items” recited in the preamble for spatial multiplexing. See PO Resp. 7 (“Therefore, the specific data item described in transmit diversity (TD) with the replica data item, is also involved in spatial multiplexing (SM) at the same time . . . with other data items of the plurality [of] data items . . . .”); PO Sur-reply 4 (asserting that the “same ‘plurality of data items’ are subject to spatial multiplexing in the preamble and transmit diversity in [the ‘wherein’ clause]”); Tr. 44:22–45:2. Consequently, in order for both the preamble limitations and the “wherein” clause limitations to be met, a plurality of data items, including the specific data item, must be transmitted via spatial multiplexing, i.e., using a plurality of antennas in parallel. In other words, both the specific data item and at least one other data item that is different (i.e., the recited “plurality”) must be transmitted at the same time. In addition, both the specific data item and its replica data item must also be transmitted at the same time, as recited in the “wherein” clause, for transmit diversity. Thus, at least three data items—the specific data item, its replica, and another different data item—must be transmitted at the same time to satisfy the claim because both spatial multiplexing (preamble) and transmit diversity (“wherein” clause) must occur. See PO Resp. 7; Pet. Reply 2–3; Ex. 1020, 12:17–21. As a result, the claim requires simultaneity.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Based on the complete trial record, we agree with Petitioner’s reasoning and evidence discussed above. Consequently, we find that a preponderance of the evidence indicates that the combination of Paulraj, Walton, and Huang teaches each limitation of claims 1 and 6, including the requirement of simultaneity. Patent Owner advances several arguments opposing Petitioner’s contentions, which we find unpersuasive for the reasons explained below.” slip op. at 23

  Patent outcomesUS 7,764,711 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,764,711
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 11, 2020 · IPR2018-01498 · APJ J John Lee · IPR · Final written decision

  Claims 4, 7–9, 12, 14, 16, 18, and 19 are unpatentable as obvious over the Bergen/Reimer and Armstrong grounds, with Abecassis for specified claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 9 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does 2 U.S. Patent Application Publication No. 2007/0250901 A1, published Oct. 25, 2007 (Ex. 1004, “McIntire”). 3 U.S. Patent No. 6,965,890 B1, issued Nov. 15, 2005 (Ex. 1023, “Dey”). 4 U.S. Patent No. 6,038,367, issued Mar. 14, 2000 (Ex. 1024, “Abecassis”). 5 U.S. Patent No. 6,956,573 B1, issued Oct. 18, 2005 (Ex. 1028, “Bergen”). 6 U.S. Patent No. 5,696,905, issued Dec. 9, 1997 (Ex. 1005, “Reimer”). 7 U.S. Patent Application Publication No. 2007/0003223 A1, published Jan. 4, 2007 (Ex. 1021, “Armstrong”). not dispute Petitioner’s formulation of the level of skill in the art. Based on the information and testimony presented with the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 10. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’282 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 7–8. We determine that no claim terms of the challenged claims in the ’282 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). To the extent any interpretation of claim language is necessary, we address those issues in the context of our unpatentability analysis below. C.” slip op. at 7

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

    “playing in response to the request for information.” Petitioner argues that a person of ordinary skill would have recognized that presenting results of a request/query could interfere with viewing the video, and, thus, pausing the video would have been obvious given that it would have been “trivial” for the artisan to implement such a “ubiquitous” feature. Pet. 51–52 (citing Ex. 1002 ¶ 148). Additionally, the Petition cites Reimer as teaching this limitation. Id. at 52. Specifically, Petitioner notes that Reimer teaches using the “Pause” button of a remote control to initiate a query. Id. (citing Ex. 1005, 16:7–14). According to Petitioner, a skilled artisan would have been motivated to combine this feature of Reimer with Bergen because the two references are directed to similar systems, and doing so would constitute the use of a known technique (pausing) to improve Bergen’s system in the same way it improves Reimer’s system. Id. (citing Ex. 1002 ¶¶ 151–152; KSR, 550 U.S. at 417). We agree with Petitioner’s analysis and find that the combination of Bergen and Reimer teaches each limitation of claim 12. Also, we find that Petitioner has articulated a sufficient rationale that would have motivated a person of ordinary skill to combine those teachings. Thus, Petitioner has established by a preponderance of the evidence that claim 12 is unpatentable as obvious over Bergen and Reimer.” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “(id.)—in other words, the user sees the depicted item in Frame A but, due to reaction time, does not transmit the request for supplemental content about the item until Frame B, which is later in time and which may not depict that item any longer. See id. ¶ 272. In McIntire’s system, the supplemental content would be mapped to both Frame A and Frame B so that when the system receives the request at Frame B, it nonetheless retrieves the supplemental content for the item depicted in Frame A because it was also mapped to Frame B. See id. ¶ 140. This enables the system to identify “one or more articles appearing in the media stream at or around the point in time at which” the user request was received, because the articles are mapped to identifiers representing multiple frames at or around the time the articles appeared. See id. ¶ 310 (emphasis added). But though Frame A and Frame B may be different segments with different segment identifiers, they are both mapped to the same supplemental content. See id. Thus, displaying that content may be considered displaying information associated with both identifiers, but it is the same information, whereas the challenged claims require the information to be different. Petitioner argues that McIntire teaches displaying different information by virtue of the fact that the two segment identifiers it relies on represent two different segments. Pet. Reply 5–6. As discussed above, however, McIntire describes mapping the identifiers to the same content, even when they represent different segments/frames. Next, Petitioner notes that the items depicted in the video change from segment to segment, which creates the user delay problem. Id. at 6. According to Petitioner, “the purpose of identifying additional frame identifiers ‘around’ the current location and retrieving supplemental content for multiple [identifiers] is to display different information associated with previously depicted items that are not depicted in later locations.” Id. Petitioner is correct that McIntire discloses displaying information associated with previously depicted items, which may be different than information associated with items depicted in the current segment (because the items are different). Still, Petitioner has not addressed how McIntire teaches also displaying the information associated with items depicted in the current segment contemporaneously. McIntire’s discussion of the user delay problem teaches that the user is requesting information regarding the previously depicted items, not both the previous items and the current items contemporaneously, due to reaction time. See Ex. 1004 ¶ 272. That is why McIntire describes mapping both the previous and current segment identifiers to the information about the previously depicted items, not the currently depicted items. See id. ¶ 140. Petitioner also contends that a person of ordinary skill in the art would have known about the user delay problem, and that artisans “were motivated to solve it by providing different supplemental content associated with video frames before the request location,” which was within an ordinary artisan’s skill. Pet. Reply 6–7. Essentially, Petitioner’s argument amounts to a contention that the background knowledge of a person of ordinary skill would have supplied this limitation even if it was not taught by McIntire. Such a theory is untimely and will not be considered because it was not advanced in the Petition. See Pet. 28–29; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).” slip op. at 44

  Patent outcomesUS 9,380,282 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,380,282
• Amazon.Com, Inc. v. Customplay, LLC.All claims unpatentable
  PTAB · Mar 5, 2020 · IPR2018-01497 · APJ John R Kenny · IPR · Final written decision

  Claims 2, 4, 6, 14, 16, and 19 are unpatentable on at least one §103 ground; claim 4 was not shown unpatentable over Rakib and Livesey.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Computer Engineering, or Computer Science, and at least three years of experience in the design of digital video systems. Pet. 11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “constructions for the terms “retrieve” and “item” for its showing of the asserted obviousness of claims 14 and 19. Inst. Dec. 11–12; see also Pet. 17, 26. Therefore, we construed “retrieve” and “item” as they are defined in the Specification. Specifically, we construed “retrieve” as comprising “obtain, acquire, procure, download, transfer, extract, and to come into possession by any means or methodology.” Inst. Dec. 12; see also 2 The Petition in this proceeding was filed on August 1, 2018. Ex. 1001, 15:4–8. And we construed “item” as “(i) items, products, objects, properties, acts, or information, whether or not they offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; (iii) product placements; and (iv) items, products, objects, properties, acts, or information, that offer informational or entertainment opportunities.” Inst. Dec. 12; see also Ex. 1001, 4:48–55. For our construction for “item,” we included the Specification’s definition of “product placement,” which is “(i) items, products, objects, properties, acts, or information that offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; and (iii) product placements.” Inst. Dec. 13; see also Ex. 1001, 4:55–61. Neither party objected to our preliminary constructions of these terms. PO Resp. 6; Pet. Reply, generally. We maintain these constructions and determine that we do not need to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “trial, we agree with Patent Owner and do not find that Rakib and Livesey teach or suggest the above limitation. Petitioner’s obviousness theory for this limitation rests on its arguments about what an ordinarily skilled artisan could have done. According to Petitioner, an ordinarily skilled artisan would have understood that a partial overlay could be used to display information. Then Petitioner argues what an ordinarily skilled artisan would have been motivated to do if the artisan decided to use a partial overlay. But Petitioner provides no persuasive evidence that an ordinarily skilled artisan would have been motivated to choose the partial overlay— the predicate act in Petitioner’s analysis. And obviousness cannot be established by merely proving what an ordinarily skilled artisan could have done. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, Petitioner’s argument and Dr. Bovik’s testimony that the above limitation simply arranges old elements (requests for information and pausing control instructions), with each performing the same function it had been known to perform, and yields no more than predictable results, are conclusory. Pet. 80–81; Ex. 1002 ¶¶ 202–203. For that reason, we are not persuaded by that argument or that testimony.” slip op. at 69

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

    “Third, an ordinarily skilled artisan would have been motivated to modify Rangan’s apparatus to permit requests for additional information as taught by Rakib for the following reasons: (i) Rangan discloses providing a unique customized experience for numerous users, and an ordinarily skilled artisan would recognize this goal would be best accomplished by providing a portion of the related information and then allowing each user to decide what additional information should be disclosed; (ii) disclosing all information that users may be interested in would be onerous; (iii) Rangan suggests that the user would be able to branch to additional information after selecting the hotspot; and (iv) this modification would be a simple substitution of one known element for another known element to obtain predictable results. Ex. 1002 ¶¶ 71–80. We also find that an ordinarily skilled artisan would have a reasonable expectation of making such a modification. Id. ¶ 80. Fourth, we do not agree with Patent Owner that this modification would impermissibly change Rangan’s principle of operation. PO Resp. 24. The proposed combination would not require that any change in the basic operation of Rangan’s system because Rangan’s system already requests information. See supra Section III.A.2.f.; Ex. 1102 ¶¶ 39–40. The modification would simply involve making another request. Ex. 1102 ¶ 40. We also credit Dr. Bovik’s testimony that Rangan and Rakib do not have incompatible operating structures. Id.” slip op. at 35

  Patent outcomesUS 9,124,950 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,124,950

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