• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing granted
  PTAB · Oct 19, 2022 · IPR2022-00862 · APJ Sheila F Mcshane · IPR · Rehearing

  On Director remand, the Board instituted inter partes review of claims 1, 2, 6–11, 13, and 15–24 on all petitioned grounds and granted joinder with IPR2021-01493.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Commerce for Intellectual Property and Director of the United States Patent and Trademark Office vacating our previous decision denying institution, remanding for further proceedings, and ordering us to reconsider joinder after reconsidering the decision denying institution. Paper 18 (“Remand Dec.”).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We consider the Director’s Memorandum, which directs that “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.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, 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. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “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.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13

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

    “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.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, 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. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “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.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13

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

    “As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1493 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1493 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 37

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,484,510
• Major Data Uab v. Bright Data Ltd.Instituted
  PTAB · Sep 15, 2022 · IPR2022-00916 · APJ Kevin C Trock · IPR · Institution

  The Board instituted IPR of claims 1, 2, 6–11, 13, and 15–24 on all asserted grounds, finding a reasonable likelihood of prevailing and compelling evidence of unpatentability.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Pet. 2. Patent Owner expresses concern, however, that “Major Data was formed as a ‘back-up’ option to continue these IPRs,” and represents that Patent Owner “has not sued Major Data for infringement of any patents and Patent Owner is not aware of any services offered by Major Data.” Prelim. Resp. 3. In its Preliminary Reply, however, Petitioner points out that shortly before Patent Owner filed the Preliminary Response, Petitioner had advised Patent Owner and “confirmed, inter alia, that it is not affiliated with any of the Code200 parties and did not discuss the preparation or filing of IPRs with anyone apart from privileged communications with its own attorneys.” Pet. Prelim. Reply 3. Petitioner avers that “it did not file its IPRs at any another party’s behest.” Id. In its Preliminary Sur-reply, Patent Owner does not directly challenge Petitioner’s representations, but instead “reserves all rights including, e.g., vacatur and sanctions, if any contradictions to Petitioner’s representations should arise.” PO Prelim. Sur-reply 4. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’510 Patent” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Neither party addresses, however, another directive of the Memorandum, which states that “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.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, 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.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds, if unrebutted at trial, would plainly lead to a conclusion that the challenged claims are unpatentable by a preponderance of the evidence. See infra Sections IV.D–I. Instituting inter partes review under these circumstances “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.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 11

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’510 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the art “would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 16. Petitioner further asserts that a person of ordinary skill would be familiar with “the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. (citing Ex. 1005 ¶¶ 25–27). Patent Owner submits that a person of ordinary skill in the art would have “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 29–30 (citing Ex. 2025 ¶ 18). Patent Owner acknowledges that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. at 30. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’510 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,484,510
• Major Data Uab v. Bright Data Ltd.Instituted
  PTAB · Sep 15, 2022 · IPR2022-00915 · APJ Kevin C Trock · IPR · Institution

  Instituted IPR on claims 1, 2, 12, 14, 15, 17–19, and 21–29 on all asserted grounds, based on compelling evidence that the challenged claims would be unpatentable if unrebutted.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied

    “Memorandum, which states that “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.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, 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.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds, if unrebutted at trial, would plainly lead to a conclusion that the challenged claims are unpatentable by a preponderance of the evidence. See infra Sections IV.E–J. Instituting inter partes review under these circumstances “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.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 12

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Petitioner identifies Major Data UAB as the real party-in-interest. Pet. 2. Patent Owner expresses concern, however, that “Major Data was formed as a ‘back-up’ option to continue these IPRs,” and represents that Patent Owner “has not sued Major Data for infringement of any patents and Patent Owner is not aware of any services offered by Major Data.” Prelim. Resp. 3. In its Preliminary Reply, however, Petitioner points out that shortly before Patent Owner filed the Preliminary Response, Petitioner had advised Patent Owner and “confirmed, inter alia, that it is not affiliated with any of the Code200 parties and did not discuss the preparation or filing of IPRs with anyone apart from privileged communications with its own attorneys.” Pet. Prelim. Reply 3. Petitioner avers that “it did not file its IPRs at any another party’s behest.” Id. In its Preliminary Sur-reply, Patent Owner does not directly challenge Petitioner’s representations, but instead “reserves all rights including, e.g., vacatur and sanctions, if any contradictions to Petitioner’s representations should arise.” PO Prelim. Sur-reply 4. Based on the current record, we determine that Petitioner has” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 16. Petitioner continues that “[s]uch a person would be familiar with the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. at 16–17 (citing Teruya Decl. ¶¶ 25–27). Patent Owner submits that a person of ordinary skill in the art would have had “a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 29–30. We regard Petitioner’s more specific definition as consistent with the ’319 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for petitioner

    “device” as a “consumer computer” was previously considered, and rejected, by the district court in the Teso Litigation. See, e.g., Ex. 1017, 10–12. In the Preliminary Response, Patent Owner takes issue with the evidence and the reasoning used by the district court to reject Patent Owner’s previously proposed construction. See, e.g., Prelim. Resp. 34–36. We have considered Patent Owner’s evidence and arguments in the Preliminary Response that the district court’s construction of the claim term “client device” as a “communication device that is operating in the role of a client” is incorrect. See Prelim. Resp. 31–49. For purposes of this decision, however, we concur with the district court’s reasoning and agree with its construction of the claim term “client device” as a “communication device that is operating in the role of a client.” This construction is consistent with, and supported by, the intrinsic evidence of the specification.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,257,319
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Instituted
  PTAB · Jul 1, 2022 · IPR2022-00353 · APJ Sheila F Mcshane · IPR · Institution

  The Board instituted inter partes review of claims 1, 2, 6–11, 13, 16, 18–25, 29–34, 36, 39, and 41–46 on all asserted grounds, finding a reasonable likelihood of prevailing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Under factor (c) and based on the record before us, the fact that Crowds was not the basis of rejection in the prosecution of the ’344 patent nor was identified by the parties as the basis of rejection in any of the related patents weighs strongly against exercising our discretion to deny institution under 35 U.S.C. § 325(d). See Becton Dickinson, Paper 8 at 17; see also Kayak Software Corp. v. Int’l Bus. Machs. Corp., CBM2016-00075, Paper No. 16 at 11 (PTAB Dec. 15, 2016) (informative). As such, the record does not demonstrate the extent to which the Examiner considered Crowds alone or in combination with RFC 1122 and RFC 2616, as asserted in this Petition and applied to the challenged claims. Under factors (e) and (f), and as discussed infra at Section IV.D, Petitioner has provided sufficient evidence that Crowds discloses every limitation of the independent claim of the ’344 patent. Additionally, the examiner did not have the benefit of the claim construction of the district court, which we have adopted here (infra Section IV.B), which included broad constructions of the terms “client device” and “second server.” We also consider these factors to weigh strongly against exercising our discretion to deny institution under 35 U.S.C. § 325(d). Accordingly, in view of the issues addressed above, we determine that the evidence supports that the Office erred in a manner material to the patentability of challenged claims. For the foregoing reasons, we are not persuaded to exercise our discretion under § 325(d) to deny institution.” slip op. at 10

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

    “At this juncture, we determine that Petitioner has provided sufficient evidence that Crowds discloses the preamble of claim 1 and limitations 1[a]– 1[e].8” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems” as of the date of the invention. Pet. 12–13 (citing Ex. 1003 ¶ 30). Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 33 (citing Ex. 2017 ¶ 21). Patent Owner acknowledges, however, that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’344 patent and the prior art before us.6 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that, at this juncture, we agree with Patent Owner that the proposed qualifications are not materially different and our assessment of the merits of the Petition, as discussed below, would remain the same under either parties’ proposed qualifications.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for petitioner

    “statements regarding the construction of terms. Specifically, the district court stated that “a component can be configured to operate in different roles—so long as it does not ‘simultaneously serve as more than one of: the client device, the first server/second server, and the web server.’” Ex. 1014, 10. That is, although the district court determined that a single component could not simultaneously serve more than one function at any particular time, it stated that different components could operate in different roles. Id. More particularly, in the discussion of “server” terms, the district court indicated that the function of a component, not its structure, serves to define the term. Id. at 7–10. For instance, the district court adopted the language “a device that is operating in the role of” for the term “client device.” See id. at 10. Further, the district court found that the contention “that a client device is specifically not a server—is not supported by the specification.” Ex. 1011, 11. The district court also stated that “[t]he patents do not include servers as a type of ‘communication device,’ but that is not sufficient to construe ‘client device’ as unable to act as a server in all cases.” Id. at 12 (emphasis added). We credit the district court’s interpretation of the claim terms. Accordingly, for the purposes of this decision we adopt the construction of a “client device” as “communication device that is operating in the role of a client.” Ex. 1011, 12. Additionally, we construe the term “second server” as “server that is not the client device” (id. at 14), consistent with the district court’s clarification (Ex. 1014, 8, 11).” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,044,344
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Instituted
  PTAB · Jun 1, 2022 · IPR2022-00103 · APJ Sheila F Mcshane · IPR · Institution

  The Board instituted inter partes review of claims 1, 2, 6–11, 13, 15, 16, and 18–23 on all asserted grounds, finding a reasonable likelihood of prevailing on anticipation and obviousness.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “Under factor (c) and based on the record before us, the fact that Crowds was not the basis of rejection in the prosecution of the ’342 patent nor was identified by the parties as the basis of rejection of in any of the related patents weighs strongly against exercising our discretion to deny institution under 35 U.S.C. § 325(d). See Becton, Dickinson, Paper 8 at 17; see also Kayak Software Corp. v. Int’l Bus. Machs. Corp., CBM2016-00075, Paper No. 16 at 11 (PTAB Dec. 15, 2016) (informative). As such, the record does not demonstrate the extent to which the Examiner considered Crowds alone or in combination with RFC 1122 and RFC 2616, as asserted in this Petition and applied to the challenged claims. Under factor (f), and as discussed infra at Section IV.D, Petitioner has provided sufficient evidence that Crowds discloses every limitation of the independent claim of the ’342 patent. Additionally, the examiner did not have the benefit of the claim construction of the district court, which we have adopted here (infra Section IV.B), which included broad construction of the terms “client device” and “second server.” We also determine that Crowds, asserted here, is more material than the combination of Fang and Zaid, which were the basis of a rejection in prosecution of the related ’319 patent. As Petitioner points out, the basis of the applicant’s arguments regarding the examiner’s rejection over Fang and Zaid includes that the rejection was not clear, the prior art was non-analogous, and there was improper rationale for combining the references. 6 Pet. 64–65 (citing Ex. 1018, 13, 19–22). The examiner’s basis for allowance of the claims of the ’319 patent application, while lacking specificity, does state that allowance was granted “in view of the Applicant’s arguments.” Ex. 1018, 9. Here, the applicant’s arguments, that include assertions of nonanalogous art and improper rationale to combine, with the examiner identifying applicant’s arguments as a reason for allowance, persuade us that the single reference Crowds is more material than the combination of Fang and Zaid. Or, in other words, we do not discern that the combination of Fang and Zaid is stronger prior art than Crowds.” slip op. at 11

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

    “At this juncture, we determine that Petitioner has provided sufficient evidence that Crowds discloses the preamble of claim 1 and limitations 1[a]– 1[d].9” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 31–32 (citing Ex. 2017 ¶ 21). Patent Owner acknowledges, however, that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. at 32. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’342 patent and the prior art before us.7 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that, at this juncture, we agree with Patent Owner that the proposed qualifications are not materially different and our assessment of the merits of the Petition, as discussed below, would remain the same under either parties’ proposed qualifications.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Patent Owner has failed to consider some of the district court’s statements on the construction of terms. Specifically, the district court stated that “a component can be configured to operate in different roles—‘so long as it does not simultaneously serve as more than one of: the client device, the first server/second server, and the web server.’” Ex. 1014, 10. That is, although the district court determined that a single component could not simultaneously serve more than one function at any particular time, it stated that different components could operate in different roles. Id. More particularly, in the discussion of “server” terms, the district court indicated that the function of a component, not its structure, serves to define the term. Id. at 7–10. For instance, the district court adopted the language “a device that is operating in the role of” for the term “client device.” See id. at 10. Further, the district court found that the contention “that a client device is specifically not a server—is not supported by the specification.” Ex. 1011, 11. The district court also stated that “[t]he patents do not include servers as a type of ‘communication device,’ but that is not sufficient to construe ‘client device’ as unable to act as a server in all cases.” Id. at 12 (emphasis added). We credit the district court’s interpretation of the claim terms. Accordingly, for the purposes of this decision we adopt the construction of a “client device” as “communication device that is operating in the role of a client.” Ex. 1011, 12. Additionally, we construe the term “second server” as “server that is not the client device” (id. at 14), consistent with the district court’s clarification (Ex. 1014, 8, 11). We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,044,342
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision

  Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.

  RulingsFinal written decision

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

    “The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

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

    “is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9

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

    “added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20

  Patent outcomesUS 9,591,360 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,591,360
• Lyft, Inc. v. Rideshare Displays, Inc.Instituted
  PTAB · Apr 11, 2022 · IPR2021-01599 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1, 2, 4, and 6–8 on all asserted grounds, finding a reasonable likelihood of success on the Kalanick/Kemler obviousness and Lalancette anticipation challenges.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “discovery.” Pet. 17. We agree with Petitioner that although some time has been invested in the case by the parties and the district court on preliminary matters, the fact discovery, expert discovery, and dispositive motion deadlines have not yet passed, not to mention the deadlines for pre-trial submissions and trial. See Ex. 2005, 3–11 (Scheduling Order). Moreover, we do not give weight to the work done on the issue of patent eligibility under Section 101, as that issue cannot be raised in this inter partes review and therefore does not result in any duplication of work done by the district court.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “At the outset, we note that Kemler was not cited during prosecution of the ’987 patent application. See Pet. 20. Thus, for two of the three grounds in the Petition, namely, those relying on Kemler in combination with Kalanick or Kemler, the combination of references before us in this proceeding was not before the examiner. Petitioner points out that neither Kalanick nor Lalancette was used, either alone or in combination with other references, as a basis for a rejection during prosecution. Pet. 21. In fact, neither reference was discussed by the patent owner or the examiner during the prosecution, nor did the examiner make any prior art rejections before allowing the application to issue. Thus, we agree with Petitioner that Becton, Dickinson factor (c), which considers the extent to which the asserted art was evaluated during examination, points us in the direction of declining to exercise our discretion to deny institution. See Pet. 21. As we will discuss in more detail infra, the Petition analyzes the challenged claims of the ’987 patent in light of the teachings of Kalanick and Lalancette, as well as Kemler, and demonstrates that Kalanick and Lalancette disclose aspects of the claims relied on by the examiner in his reasons for allowance. See Sections IV.F (Kalanick), IV.G (Lalancette).4 This analysis further demonstrates error on the part of the examiner in overlooking teachings of those references material to patentability of the challenged claims. Thus, Becton, Dickinson factor (e), which asks whether petitioner has demonstrated material error on the part of the examiner, weighs against exercising our discretion to deny institution.” slip op. at 15

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

    “In sum, we determine that for the reasons given Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claim 1.” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At this stage, we adopt Petitioner’s more general formulation, with the following qualification. We would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Our review of the ’987 patent and the cited prior art does 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. However, at this stage, the arguments presented by the parties do not depend on the definition of the person or ordinary skill, and therefore, our decision would be the same under either formulation.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,169,987
• Netnut Ltd. v. Bright Data Ltd.Instituted
  PTAB · Mar 21, 2022 · IPR2021-01492 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1, 2, 12, 14, 15, 17–19, and 21–29 because Petitioner showed a reasonable likelihood of prevailing on at least one claim across the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “partes review in this proceeding, at this stage we agree with Petitioner’s claim constructions, specifically, that “the devices in question may be configured to operate in different roles and are characterized by the function they perform (i.e., sending or receiving), not by any physical properties.” Pet. 4–5. More specifically, we adopt the district court’s construction, with the clarification that the second server is “a device that is operating in the role of a server and that is not the first client device.” See infra, Section IV.C. This construction is consistent with the extrinsic evidence offered by Petitioner (Ex. 1018, 5), as well as the construction of “server” adopted by the Board in IPR2021-00458, involving a patent similar to the ’319 patent. See IPR2021-00458, Paper 11, 21. As this claim construction is central to this controversy and favors Petitioner, we determine that the merits of the Petition are strong. Thus, this factor strongly favors not exercising our discretion to deny institution. Conclusion In summary, after weighing the factors and taking a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review, we are not persuaded to exercise our discretion to deny review. The strong showing on the merits in the Petition and relatively minor investment in the merits of the validity challenge in district court persuade us that efficiency and integrity of the system would not be served by denying review.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “We have reviewed Petitioner’s arguments and Patent Owner’s brief response. Prelim. Resp. 41–43. For the most part, Patent Owner relies on its Fintiv analysis, discussed supra. For example, for the first factor (“whether the same petitioner previously filed a petition directed to the same claims of the same patent”), Petitioner contends that “Petitioner was not involved with the prior IPR challenging the [’319] Patent.” Pet. 12. Patent Owner responds that “[a]lthough NetNut was not involved in the Code200/Teso IPR proceedings, Patent Owner respectfully disagrees that this factor ‘strongly favors institution’ in view of the detailed Fintiv analysis above.” Prelim. Resp. 42. Similarly, for General Plastic factors 2–6, Patent Owner refers to its Fintiv analysis. Id. at 42–43. For factor 7, Patent Owner responds that “Patent Owner is not presently aware of any risk that the Board will be unable to meet the one-year deadline under 35 U.S.C. § 316(a)(1).” Id. at 43. After considering the Petition and Patent Owner’s response, for the reasons discussed in connection with Fintiv, supra, and for the reasons given by Petitioner, we are not persuaded to exercise our discretion to deny the Petition under General Plastic.” slip op. at 15

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’319 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 20 (citing Teruya Decl. ¶¶ 25–27). Petitioner continues that “[s]uch a person would be familiar with the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 47. But Patent Owner acknowledges that this definition and Petitioner’s definition of a person of ordinary skill in the art “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. (footnote omitted). We regard Petitioner’s more specific definition as consistent with the ’319 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. We agree, however, that this definition and Patent Owner’s definition of a person of ordinary skill in the art “are not materially different,” and that our decision would be the same using either definition. slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,257,319
• Netnut Ltd. v. Bright Data Ltd.Instituted
  PTAB · Mar 21, 2022 · IPR2021-01493 · APJ Sheila F Mcshane · IPR · Institution

  The Board instituted IPR on claims 1, 2, 6–11, 13, and 15–24 on all grounds, finding a reasonable likelihood that NetNut would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “approximately six months prior to the date of the final written decision issuing in this case. We note, however, that a trial date for this Patent Owner slipped by six months in a case in the Eastern District of Texas (see Ex. 1101, docket entries 65, 509), and, further, that Patent Owner sought extensions in a related court proceeding (Ex. 1102). The presently-scheduled trial date is six months off. Factoring in the potential for changed circumstances, we determine that this factor weighs only slightly in favor of exercising our discretion to deny institution.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”), the Board set out a list of seven factors to consider when asked to exercise its discretion to deny review of follow-on petitions. Here, Patent Owner states that it relies on Fintiv, which it believes is dispositive, and does not rely on General Plastic. Prelim. Resp. 40, n.28. Nevertheless, Patent Owner addresses certain of the General Plastic factors. For factor 1, Patent Owner asserts that as to Code200 and Teso, who were prior petitioners in IPR2021-01358, Patent Owner “is not presently aware of a significant relationship between NetNut and either Code200 or Teso.” Id. at 40. But Patent Owner disagrees that this factor strongly favors institution. Id. at 40– 41. For General Plastic factors 2–5, Patent Owner relies on the arguments presented for factor 3 of Fintiv, and for General Plastic factor 6, Patent Owner relies on its arguments presented for Fintiv factor 6. Id. at 41. On this record, we determine that, based on the facts of this case, the General Plastic factors weighing against exercising discretion outweigh the facts that favor exercising discretion. For General Plastic factors 2–6, we do not find Patent Owner’s arguments persuasive for the reasons discussed above for Fintiv factors 3 and 6. Additionally, Petitioner was not a petitioner in previous proceedings, nor is there any evidence in the record that Petitioner has a significant relationship with petitioners in an earlier case, as acknowledged by Patent Owner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019–00062, Paper 11 at 9–10 (PTAB April 2, 2019) (precedential) (existence of a “significant relationship” between the different petitioners would weigh in favor of discretionary denial); Prelim. Resp. 40. Accordingly, factor 1 of General Plastic also weighs against the exercise of discretionary denial. Thus, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 16

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

    “At this juncture, we determine that Petitioner has provided sufficient evidence that Crowds discloses the preamble of claim 1 and limitations 1[a]– 1[d].9” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 46 (citing Ex. 2006 ¶ 19). But Patent Owner acknowledges that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’510 patent and the prior art before us.7 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that, at this juncture, we agree with Patent Owner that the proposed qualifications are not materially different and our assessment of the merits of the Petition, as discussed below, would remain the same under either parties’ proposed qualifications.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,484,510
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8

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

    “We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30

  Patent outcomesUS 8,825,887 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips
  Patents in suitUS 8,825,887

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.