- Netskope, Inc. v. Fortinet, Inc.Institution deniedPTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution
The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe a claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 9,231,968 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of success on at least one claim and compelling merits for Scoda anticipation of claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum7 titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. For the reasons that follow, although we find that Fintiv factors 1–5 weigh in favor of denying institution in this case, we determine that the Petition presents compelling merits as to the challenged claims, and thus, we decline to exercise our discretion to deny the Petition.” slip op. at 10
- 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). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’162 patent. Accordingly, we institute an inter partes review as to the challenged claims on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“recited in the Petition, does cite throughout to the asserted art and provides support for its assertions that the art discloses the claim language. We, therefore, determine Dr. Williams’s declaration is not without evidentiary support. See 37 C.F.R. § 42.63 (“Evidence consists of affidavits, declarations, transcripts of deposition, documents, and things.”). At this stage, we give weight to Dr. Williams’s testimony, which is the only testimony we have before us in this proceeding relating to the asserted art and how the art discloses the claim limitations. In contrast to the situation presented here, neither the petition nor the declarant in Xerox provided sufficient evidence to support the asserted positions; rather, the petition merely cited to the declaration which merely repeated the unsupported, conclusory assertions set forth in the petition. See Xerox Corp., IPR2022-00624, Paper 12 at 5 (stating the cited declaration testimony is conclusory and unsupported and adds little to the conclusory assertion for which it is offered to support); 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”). That is not the case here. As noted above, however, the ultimate weight of Dr. Williams’ testimony will be determined in light of the full record adduced during trial.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,516,091 - Patent Quality Assurance, LLC / Intel Corporation v. VLSI Technology LLCAll claims unpatentablePTAB · Jun 13, 2023 · IPR2022-00479 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–7, 9–11, and 13–16 as obvious over Harris, Abadeer, and Zhang; claims 2, 11, and 12 with Cornwell; and claim 8 with Bilak.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“claim 14, which recites a “means for providing the operating voltage to the memory at a value at least as great as the minimum operating voltage in response to the operating value selected by the processor being below the 1 Our bracketed designations for limitations largely follow those used by the parties. See Pet. 25–46. 2 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003). 3 US 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004). 4 US 2003/0122429 A1, published July 3, 2003 (Ex. 1005). 5 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006). 6 US 2005/0188230 A1, published Aug. 25, 2005 (Ex. 1007). minimum operating voltage.” Pet. 24, 64; Ex. 1001, 14:31–37. Petitioner points out that a district court construed the term as a means-plus-function term under 35 U.S.C. § 112, sixth paragraph, with the claimed function and a corresponding structure of the “power supply selector.” Id. at 64 (quoting Ex. 1028, 2). Patent Owner does not challenge or otherwise address that construction, and we apply it in this decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“This distinction is particularly significant because Harris describes that its low-power feature is realized by using “the test mode.” Ex. 1003, 4:64–65. The test mode uses a software-selected switch that allows the CPU to write to a register to control which power supply is provided to the memory. Id. at 3:9–18, 3:50–51. Thus, Harris describes that the low-power feature uses a software-defined switching threshold, and nothing about that threshold requires that it be the same as the threshold used for the failure mode. The failure mode, in contrast, is “a hardware controlled function” that monitors the voltage on the VDD terminal, and when that voltage “drops below a set level or threshold, the voltage on the Vstby terminal 132 is switched to power the memory 105 to sustain memory contents when either main or VDD power is failing.” Id. at 3:52–60. Accordingly, we do not agree with Patent Owner that “Harris’s system cannot use a threshold [for its low-power feature] lower than the power-failure detection threshold.” PO Resp. 11–12 (emphasis omitted). The two aspects use different mechanisms to control which power supply is provided to the memory. Relatedly, Patent Owner asserts that Petitioner fails to justify “why a POSITA would have been motivated to abandon the ‘failure mode’ in favor of pursuing the specific ‘low power feature.’” Id. at 14. Because Harris’s failure mode and low-power feature are distinct aspects of Harris’s operation, however, there would have been no need for skilled artisans to abandon one in favor of the other. In that regard, we credit Dr. Singh’s testimony that because Harris’s circuitry can be used for multiple functions, skilled artisans would have understood “how the operation of the circuitry would have been configured differently for those different functions or operations.” Ex. 1040 ¶ 9. Patent Owner argues additionally that, even if the low-power feature is distinct from the failure mode, Petitioner has not justified using the failure mode’s “set level or threshold” with a different threshold for the low-power feature. PO Resp. 13–14. But that argument ignores that the low-power feature uses software to control the switch, rather than the hardware-controlled failure mode, as described above. Because the low-power feature and failure mode are based on different controlling mechanisms, Harris already describes using different thresholds for switching the memory’s power supply in the two instances. And as Dr. Singh testifies, achieving the desired power savings or low-power operating parameters would have motivated skilled artisans to select a specific minimum operating voltage for the low-power feature. Ex. 1040 ¶ 9.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such a presumed nexus requires not only that a commercial product embodies the claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))). Petitioner notes that the jury infringement verdict is on appeal. Pet. Reply 23. According to Petitioner, Patent Owner fails to show the verdict demonstrates commercial success with a nexus to the challenged claims. Id. at 24. Petitioner argues that the challenged claims were not the basis for customer demand of the accused products. Id. (citing Ex. 1044, 811:13– 812:24 (Intel employee Adam King testifying that Intel’s customers care about numerous technical attributes, including graphics performance for video editing, camera quality for video conferencing and power efficiency for laptops)). Petitioner notes that Patent Owner accused only the “C6 SRAM multiplexer” feature of infringing the ’373 patent (Ex. 1042, 453:20– 25; Ex. 1044, 815:16–816:21) and that Patent Owner’s damages expert, Dr. Sullivan, “conceded that many of the thousands of other features ‘have nothing to do with what [Patent Owner] accuses.’” Pet. Reply 24 (quoting Ex. 1043, 690:19–691:24). The record before us does not show that Intel’s product or products underlying the infringement verdict are coextensive with “the invention disclosed and claimed.” See Fox Factory, 944 F.3d at 1373, 1377; Facebook, Inc. v. Express Mobile Inc., IPR2021-01457, Paper 38 at 76–80 (PTAB Mar. 14, 2023) (concluding an infringement verdict was insufficient to establish nexus). Rather, the record shows that the accused products contained many features beyond those claimed in the ’373 patent. Ex. 1043, 690:19–691:24; Ex. 1044, 815:16–816:21. That evidence persuades us that, regardless of a presumed nexus, the commercial success does not have a nexus with the challenged claims.” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We agree with Petitioner. Both Harris and the ’373 patent are in the field of memory power supply. While Harris describes a voltage-supply system allowing for a particular testing approach, its field is not limited to its primary purpose of soft-defect testing on-chip memory. Rather, Harris also describes that its system allows other features such as failure protection and a low-power feature. Ex. 1003, 3:50–67, 5:59–5:4. Thus, we find that Harris’s field is memory power supply, and more specifically, switchable memory power supplies. As discussed, the ’373 patent describes its related art as making tradeoffs between performance and power when choosing voltage and frequency for processors and memory. Ex. 1001, 1:12–25. While the ’373 patent describes determining the minimum operating voltage for each part and storing that determined value (id. at 2:3–37, 6:22–8:15), its disclosures are considerably broader in scope. The patent describes selecting memory voltage based on multiple considerations, such as using the logic voltage when it is higher than the memory minimum operating voltage, or a variety of minimum voltages depending on operating circumstances. Id. at 3:30–5:41. As to the system controlling a memory’s power supply, the ’373 patent describes mechanisms that may be used to control a memory’s power supply, such as power supply selector 21. Id. at 2:52–59, 5:42–58. It details operation of the power supply controller 28 and selector 21. Id. at 8:33–9:4. The ’373 patent describes alternatively that memory may be permanently coupled to a particular voltage bus that is scaled to provide the desired power. Id. at 2:59–61, 5:61–67. The disclosures regarding mechanisms for controlling the memory power supply show that the ’373 patent’s field is broader than just determining the minimum operating voltage. We find that the ’373 patent’s field includes switchable memory power supplies, supporting that Harris is from the same field as the ’373 patent. As to whether Harris is reasonably pertinent to the problem addressed by the ’373 patent, Petitioner contends that the ’373 patent addresses “lowering power consumption in integrated circuits, considering that ‘different types of circuitry within a data processing system may have different ranges of allowable operating voltages’ and that ‘the processor may be able to operate at a lower voltage than is possible for the memory.’” Pet. Reply 19 (quoting Ex. 1001, 1:12–25, 2:5–7). Petitioner contends that Harris addresses the same problem with its circuit to “ensure the memory is provided with sufficient voltage to avoid data loss.” Pet. 14–15 (citing Ex. 1003, 3:54–56, 3:64–67 (Harris’s disclosure of switching memory power supply “to avoid memory data loss”)). Patent Owner’s expert agrees that the ’373 patent addresses “the problem of providing different voltages to different parts of the circuit” to accommodate different “allowable operating voltages.” PO Resp. 49 (quoting Ex. 2052 ¶ 159). As discussed above, Harris discloses a mechanism for providing different voltages to different parts of its circuit, whether for testing or low-power operation. Ex. 1003, 3:50–67, 5:59–5:4. We find that Harris is reasonably pertinent to the problem of providing different voltages to different parts of the circuit. While the ’373 patent addresses other problems also, that does not undermine the problem to which Harris is reasonably pertinent. See Ethicon LLC v. Intuitive Surgical, Inc., No. 2021-1601, 2022 WL 1576779, at *4 (Fed. Cir. May 19, 2022) (nonprecedential) (holding that the patent owner’s identification of an additional problem beyond that supporting analogous art was irrelevant); Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1361 (Fed. Cir. 2020) (noting the analysis considers “one or more problems to which the claimed invention relates”). Accordingly, Harris is analogous art to the ’373 patent because it is both from the same field of endeavor and reasonably pertinent to a problem confronting the inventor of the ’373 patent.” slip op. at 25
Patent outcomesUS 7,523,373 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,523,373 - Patent Quality Assurance, LLC / Intel Corporation v. VLSI Technology LLCAll claims unpatentablePTAB · Jun 13, 2023 · IPR2021-01229 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–16 are unpatentable as obvious: claims 1–7, 9–11, and 13–16 over Harris, Abadeer, and Zhang; claims 2, 11, and 12 with Cornwell; and claim 8 with Bilak.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“II. ANALYSIS A. CLAIM CONSTRUCTION Petitioner contends that no claim requires construction other than claim 14, which recites a “means for providing the operating voltage to the memory at a value at least as great as the minimum operating voltage in response to the operating value selected by the processor being below the 1 Our bracketed designations for limitations largely follow those used by the parties. See Pet. 25–46. 2 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003). 3 US 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004). 4 US 2003/0122429 A1, published July 3, 2003 (Ex. 1005). 5 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006). 6 US 2005/0188230 A1, published Aug. 25, 2005 (Ex. 1007). minimum operating voltage.” Pet. 24, 64; Ex. 1001, 14:31–37. Petitioner points out that a district court construed the term as a means-plus-function term under 35 U.S.C. § 112, sixth paragraph, with the claimed function and a corresponding structure of the “power supply selector.” Id. at 64 (quoting Ex. 1028, 2). Patent Owner does not challenge or otherwise address that construction, and we apply it in this decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree. Primarily, Harris’s description of the low-power feature does not restrict the feature to a particular timing for switching the memory’s power supply. Instead, Harris uses “while” as a term of contrast— the memory receives the second power supply voltage, in contrast to the CPU, which receives the first power supply voltage. Ex. 1003, 4:66–5:2. Although Harris does not limit the low-power feature’s switching methodology, Petitioner explains that because Harris separately describes threshold-based voltage switching (in connection with the failure mode), implementing the claimed threshold-based switching in connection with the low-power mode would have involved using that known technique to achieve a predictable result (avoiding memory data loss). Pet. 32–33 (citing Ex. 1002 ¶ 76). We agree, and find that skilled artisans would have had reason to and would have known how to implement Harris’s low-power feature with the threshold-based switching described in Harris’s failure mode.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such a presumed nexus requires not only that a commercial product embodies the claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))).” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“and therefore cannot be used in an obviousness combination. PO Resp. 39– 52. To be analogous art, Harris must be in the same field of endeavor as the ’373 patent or be reasonably pertinent to the problem addressed by the ’373 patent. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).” slip op. at 24
Patent outcomesUS 7,523,373 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,523,373 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand
Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28
- ExcludeMotion to exclude, deniedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29
Patent outcomesUS 7,069,560 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.
RulingsRemand decision- RemandDecided for petitioner
“Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30
Patent outcomesUS 6,851,115 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Laltitude LLC, Dba Picasso Tiles v. Altus Holdings, Inc.All claims unpatentablePTAB · May 10, 2023 · IPR2022-00155 · APJ Bart A Gerstenblith · IPR · Final written decision
The sole challenged claim was held unpatentable as anticipated by Zhao US and Zhao CN; the Board did not reach the three obviousness grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“same as that used for infringement, except that for anticipation, the patented design is compared with the alleged anticipatory reference rather than an accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Id. at 528. The ordinary observer test requires the fact finder to consider all of the ornamental features illustrated in the figures that are visible at any time in the “normal use” lifetime of the accused product, i.e., “from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further, while the ordinary observer test requires consideration of the overall prior art and claimed designs, [t]he mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement” . . . so too minor differences cannot prevent a finding of anticipation. Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984)).” slip op. at 8
Patent outcomesUS D719,138 unpatentable§ 102 anticipation - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13
Patent outcomesUS 10,169,987 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,169,987 - Microsoft Corporation / Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution deniedPTAB · Apr 7, 2023 · IPR2022-01420 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 36, or 37 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’398 patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user or entity profile management or web-based targeted content delivery, or a related field. A person also could have qualified with more formal education and less technical experience, or vice versa. Pet. 17–18 (citing Ex. 1002 ¶ 11). “Patent Owner does not challenge this definition.” Prelim. Resp. 4. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’398 Patent Specification and the asserted prior art.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,677,398 - Tiktok Inc. v. Advanced Coding Technologies LLCInstitution deniedPTAB · Mar 27, 2023 · IPR2022-01546 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable as obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we deny the Petition and do not institute an inter partes review of the ’154 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of digital video and audio technologies.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. Id. Alternatively, Petitioner contends, “the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. at 5 (citing Ex. 1003 ¶ 22). Patent Owner states that “[f]or the purpose of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’154 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding. Pet. 14; Prelim. Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute.7 See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Third, as noted above, Petitioner also argues that it would have been obvious to one of ordinary skill in the art that elapsed playback time would be indicated by time stamps included in the audio content. Pet. 15–16. But, on this aspect of Petitioner’s contention, neither Petitioner nor Mr. Lett provides any reason why one of ordinary skill in the art would have found it obvious to include a time stamp in Lindroos’ audio data. Id.; Ex. 1003 ¶ 35. As reflected in our discussion above, Mr. Lett’s testimony regarding Exhibits 1010–1013 is unsupported by the references cited. Thus, Petitioner’s assertion that this limitation was “well known” and “would have been obvious” to one of ordinary skill in the art is not supported on the record before us. Accordingly, Petitioner fails to demonstrate on the present 13 Mr. Lett states that he “refer[s] to these other publications . . . merely for purposes of corroborating this common background knowledge recognizable to a [person of ordinary skill in the art] at the time.” Ex. 1003 ¶ 35. record that it was “well known and would have been obvious” “for elapsed playback time to be indicated by time stamps included in the audio content.” Pet. 15–16 (citations omitted).14” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,615,154
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.