• LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentable
  PTAB · May 19, 2025 · IPR2024-00699 · APJ St John Courtenay III · IPR · Final written decision

  Claims 1, 2, 6–11, and 14–18 are unpatentable under § 103; claims 3–5, 12, and 13 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that an ordinarily skilled artisan for the ’805 patent “would have been someone knowledgeable about and familiar with the television display technology that is pertinent to the ’805 patent. A POSITA would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 18–20). In its Preliminary Response Patent Owner indicated it “adopts Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for the purposes of [its] Preliminary Response.” Prelim. Resp. 28. We note Patent Owner does not dispute or otherwise disavow Petitioner’s definition of a POSITA in its Response or Sur-reply. See generally PO Resp.; PO Surreply. level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10

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

    “We disagree with Patent Owner. Id. We see nothing in the preamble 1.0, or “receiving” step 1.1.1, or “wherein” clause 1.1.2 that defines a data format prior to organizing step 1.2.1, and we decline to read limitations from the specification into the claim, i.e., a “pre-defined format” being defined prior to organizing step 1.2.1, as argued by Patent Owner. 5 PO Resp. 20. Preamble 1.0 is silent regarding any mention of a data format: “A method of providing content for a television (TV), the method comprising: . . . .” Although step 1.1.1 requires “receiving, by a processor, data relevant to one or more scheduled events from one of a corresponding subservice of a plurality of subservices,” at best this merely requires a type of data that is “relevant to one or more scheduled events” and does not require a particular data format to be used for “data relevant to one or more scheduled events,” nor the “pre-defined” format argued by Patent Owner. PO Resp. 20–21. (emphases added). Nor do we read step 1.1.2 as defining a particular data format used by the three recited types of subservices: “[1.1.2] wherein the plurality of subservices comprises a video-on-demand (VOD) subservice, electronic programming guide (EPG) subservice, and a media subservice.” 5 We emphasize that patentability is based upon the claims. “It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). according to a pre-defined format corresponding to each of the plurality of subservices.” (emphases added). However, we find Patent Owner’s contention unavailing that the term “pre-defined format” recited in step 1.2.1 requires three different data model pre-defined formats because claim 1 is silent regarding the argued term “different.” See PO Sur-reply 9 (regarding Patent Owner’s response to the question of “whether element [1.2.1] and the term ‘pre-defined format’ requires three different data models.” Patent Owner responds: “For the above reasons, they do.”). Moreover, we note the term “data model” is not introduced until subsequent “wherein” clause 1.2.2, which merely requires that “the predefined format comprises one of a VOD data model, an EPG data model and a media data model.” (emphasis added).” slip op. at 20

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

    “Regarding the claim 1 term “uniform format” Petitioner replies that Patent Owner “does not dispute that the prior art teaches a ‘uniform format’” in step 1.2.4. Pet. Reply 8 (citing generally PO Resp.). Therefore, Petitioner argues “for the purposes of this proceeding, the term “uniform format” does not require express construction.” Pet. Reply 8 (citing Nidec (Fed. Cir. 2017)). Nevertheless, at the Board’s request (Dec. 29), Petitioner proceeds to address the scope of the claim 1 term “uniform format.” Pet. Reply 8. Petitioner notes that the ’805 patent uses the term “uniform format” in column 33: “The data models provide uniform formats for the respective subservices (i.e., VOD subservice 1420, EPG subservice 1424, and media subservice 1428) and/or the internal content provider modules 1416 which interface with applications 416.” Pet. Reply 8 (quoting Ex.1001, 33:25–30). Petitioner further notes that Dr. Lippmann explains, “the ’805 patent does not appear to ascribe any specific meaning to the term ‘uniform format’ and the passage does not limit the scope of this term to require a plurality of uniform formats.” Pet. Reply (quoting Ex. 1020 ¶ 13).” slip op. at 22

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Patent Owner’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., (125 F.4th 1120, 1132 (Fed. Cir. 2025)) held that Title 35 U.S.C. sections “311(b) and 102(e)(1) permit IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” (emphasis added). Accordingly, we conclude both Melnychenko and Choi are prior art for the purpose of this IPR pursuant to 35 U.S.C. § 311(b) under the holding of Lynk Labs.” slip op. at 6

  Patent outcomesUS 10,419,805 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,419,805
• LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentable
  PTAB · May 19, 2025 · IPR2024-00354 · APJ St John Courtenay III · IPR · Final written decision

  Claims 1, 2, 6–11, and 14–18 are unpatentable as obvious; claims 3–5, 12, and 13 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Patent Owner’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., (125 F.4th 1120, 1132 (Fed. Cir. 2025)) held that Title 35 U.S.C. sections “311(b) and 102(e)(1) permit IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” (emphasis added). Accordingly, we conclude both Melnychenko and Choi are prior art for the purpose of this IPR pursuant to 35 U.S.C. § 311(b) under the holding of Lynk Labs.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Relying upon the declaration testimony of Dr. Lippman, Petitioner contends that an ordinarily skilled artisan for the ’805 patent “would have been someone knowledgeable about and familiar with the television display technology that is pertinent to the ’805 patent. A POSITA would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 18–20). In its Preliminary Response Patent Owner indicated it “adopts Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for the purposes of [its] Preliminary Response.” Prelim. Resp. 28. We note Patent Owner does not dispute or otherwise disavow Petitioner’s definition of a POSITA in its Response or Sur-reply. See generally PO Resp.; PO Surreply. level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10

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

    “We disagree with Patent Owner. Id. We see nothing in the preamble 1.0, or “receiving” step 1.1.1, or “wherein” clause 1.1.2 that defines a data format prior to organizing step 1.2.1, and we decline to read limitations from the specification into the claim, i.e., a “pre-defined format” being defined prior to organizing step 1.2.1, as argued by Patent Owner. 5 PO Resp. 20. Preamble 1.0 is silent regarding any mention of a data format: “A method of providing content for a television (TV), the method comprising: . . . .” Although step 1.1.1 requires “receiving, by a processor, data relevant to one or more scheduled events from one of a corresponding subservice of a plurality of subservices,” at best this merely requires a type of data that is “relevant to one or more scheduled events” and does not require a particular data format to be used for “data relevant to one or more scheduled events,” nor the “pre-defined” format argued by Patent Owner. PO Resp. 20–21. (emphases added). Nor do we read step 1.1.2 as defining a particular data format used by the three recited types of subservices: “[1.1.2] wherein the plurality of subservices comprises a video-on-demand (VOD) subservice, electronic programming guide (EPG) subservice, and a media subservice.” 5 We emphasize that patentability is based upon the claims. “It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). according to a pre-defined format corresponding to each of the plurality of subservices.” (emphases added). However, we find Patent Owner’s contention unavailing that the term “pre-defined format” recited in step 1.2.1 requires three different data model pre-defined formats because claim 1 is silent regarding the argued term “different.” See PO Sur-reply 9 (regarding Patent Owner’s response to the question of “whether element [1.2.1] and the term ‘pre-defined format’ requires three different data models.” Patent Owner responds: “For the above reasons, they do.”). Moreover, we note the term “data model” is not introduced until subsequent “wherein” clause 1.2.2, which merely requires that “the predefined format comprises one of a VOD data model, an EPG data model and a media data model.” (emphasis added).” slip op. at 20

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

    “Regarding the claim 1 term “uniform format” Petitioner replies that Patent Owner “does not dispute that the prior art teaches a ‘uniform format’” in step 1.2.4. Pet. Reply 8 (citing generally PO Resp.). Therefore, Petitioner argues “for the purposes of this proceeding, the term “uniform format” does not require express construction.” Pet. Reply 8 (citing Nidec (Fed. Cir. 2017)). Nevertheless, at the Board’s request (Dec. 29), Petitioner proceeds to address the scope of the claim 1 term “uniform format.” Pet. Reply 8. Petitioner notes that the ’805 patent uses the term “uniform format” in column 33: “The data models provide uniform formats for the respective subservices (i.e., VOD subservice 1420, EPG subservice 1424, and media subservice 1428) and/or the internal content provider modules 1416 which interface with applications 416.” Pet. Reply 8 (quoting Ex.1001, 33:25–30). Petitioner further notes that Dr. Lippmann explains, “the ’805 patent does not appear to ascribe any specific meaning to the term ‘uniform format’ and the passage does not limit the scope of this term to require a plurality of uniform formats.” Pet. Reply (quoting Ex. 1020 ¶ 13). In its Sur-reply, Patent Owner notes that “Petitioners do not appear to” slip op. at 22

  Patent outcomesUS 10,419,805 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,419,805
• LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentable
  PTAB · May 19, 2025 · IPR2024-00694 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1, 4–6, 11, 14–16, 21, and 22 are unpatentable over the stated obviousness grounds; claims 2, 3, 12, and 13 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the final record before us, we determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Lippman, LG argues the following: [a] Person of Ordinary Skill in The Art . . . in August of 2012 would have been someone knowledgeable and familiar with the interactive media guide arts that are pertinent to the ’040 patent. A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa.” slip op. at 13

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

    “under 35 U.S.C. § 311(b) because they were not published before the ’040 patent’s priority date of August 17, 2012. PO Resp. 13–14. Multimedia referenced a case pending at the Federal Circuit, Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., as pertinent to addressing whether applications for patent published after the priority date of the challenged patent are permissible “printed publications” in IPRs. Id. Multimedia’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., clarified that inter partes review challenges may be based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. 125 F.4th 1120, 1127 (Fed. Cir. 2025). As such, both Choi and Kim are prior art pursuant to 35 U.S.C. § 311(b).” slip op. at 16

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

    “Turning to rationale to combine, LG contends that it would have been obvious to a person of ordinary skill in the art to implement Kim’s EXTERNAL DEVICE card object 1380 to include Choi’s specific symbols representing external devices connected to the input ports of smart TV 100 to inform the user which external devices are actually connected to the smart TV versus those that are not connected. Pet. 42–44 (citing Ex. 1005, Fig. 19 (modifying card object 1380); Ex. 1003 ¶ 137); see also id. at 14 (arguing the same). LG argues this proposed combination is merely combining prior art elements (i.e., Choi’s specific symbols representing external devices connected via input ports, with Kim’s EXTERNAL DEVICE card object 1380) according to known methods to yield the predictable result of “informing the user which external device is connected to an input port.” Id. at 45; see also id. at 14–15 (arguing the same). LG also argues that this proposed combination represents the use of a known technique (i.e., Choi’s specific symbols representing external devices connected via input ports) to improve a similar device (i.e., Kim’s smart TV 100) in the same way (i.e., “to inform the user which external device is connected to an input port”). See id. at 45 (citing Ex. 1003 ¶ 130); see also id. at 15 (arguing the same). LG asserts that there would have been a reasonable expectation of success in making this proposed combination because both Kim and Choi disclose “similar televisions” with “external devices connected via an input port,” and implementing Kim with Choi’s thumbnail icons that have specific symbols representing input ports would have been “a matter of routine software programming.” Id. at 15 (citing Ex. 1003 ¶ 61).” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “Limitation [2.1] requires identifying a user associated with the “received indication,” which is the selection of a home key button or go-tohome button to invoke the home screen, as alleged by LG. See Pet. Reply 20–21. Both Kim and Lee-2 allow a distinct procedure wherein a user can login, but LG has not explained persuasively how these distinct procedures are associated with Kim’s home key button such that a user is identified through its selection. For example, Lee-2’s Favorite Channel List (Figure 39B) is displayed based on the user’s selection of the favorite channel object 2019 on a home screen, but not related to the user’s selection of the home key button to invoke the home screen. See Ex. 1010, 41:41–43 (“Referring to FIG. 39B, upon selection of the favorite channel object 2019 [in FIG. 39A], a favorite channel list screen including a favorite channel list is displayed fullscreen.”).” slip op. at 62

  Patent outcomesUS 9,510,040 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,510,040
• LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentable
  PTAB · May 19, 2025 · IPR2024-00351 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1, 4–6, 11, 14–16, 21, and 22 are unpatentable as obvious; claims 2, 3, 12, and 13 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “6. Whether Choi and Kim Are Printed Publications Pursuant to 35 U.S.C. § 311(b) Multimedia contends that Choi and Kim are not printed publications under 35 U.S.C. § 311(b) because they were not published before the ’040 patent’s priority date of August 17, 2012. PO Resp. 13–14. Multimedia referenced a case pending at the Federal Circuit, Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., as pertinent to addressing whether applications for patent published after the priority date of the challenged patent are permissible “printed publications” in IPRs. Id. Multimedia’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., clarified that inter partes review challenges may be based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. 125 F.4th 1120, 1127 (Fed. Cir. 2025). As such, both Choi and Kim are prior art pursuant to 35 U.S.C. § 311(b).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the final record before us, we determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Lippman, LG argues the following: [a] Person of Ordinary Skill in The Art . . . in August of 2012 would have been someone knowledgeable and familiar with the interactive media guide arts that are pertinent to the ’040 patent. A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 8–9 (citing Ex. 1003 ¶¶ 18–20). In its Response, “Patent Owner accepts the Petitioner’s definition of the POSITA” and Multimedia and its expert, Dr. Surati, “find that definition to be reasonable.” PO Resp. 7 (citing Ex. 2011 ¶¶ 43, 44). Accordingly, we adopt LG’s assessment of the level of skill in the art because it is consistent with the ’040 patent and the asserted prior art.” slip op. at 13

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

    “Based on the final record, including the parties’ contention that no claim term requires express construction, there is no readily discernible controversy between the parties that requires us to construe any claim terms, and thus we do not construe any claim terms except as discussed below with respect to limitation 1.6. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “highlighted when a user selects this content source in some manner. Ex. 1001, 30:27–51. At that juncture, after a user selects the content source and it is highlighted, the content source is then associated with the first content information, “801 – CNXN,” which is displayed on the right panel of Figure 15B. See id. We do not understand the ’040 patent as requiring the display “801 – CNXN” to cause the corresponding highlighting of Live TV 1504A as suggested by Multimedia. The claim language requires the two elements “being associated with”5 one another, but it does not require that one element’s display (first content information) causes the highlighting of the other element (content source). Our view is supported by the only description of highlighting a content source found in the specification of the ’040 patent. In regard to Figure 15B, the specification describes that “global panel 1404 may include one or more sources represented by icons and text, or shortcuts, 1504A-E.” Ex. 1001, 30:27–28. The specification describes how highlighting the source is user directed: Global panel 1404 may additionally indicate a source that is selected or highlight [sic] using indicator 1512; for example, indicator 1512 may comprise a box positioned around Live TV 5 As the Federal Circuit has explained, “the plain meaning of associating relates to a mere commonality.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1306 (Fed. Cir. 2014), overruled by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (on unrelated grounds). 801 CNXN. Although illustrated as a box, other methods or configurations which provide for icon selection and/or identification may be used. For example, instead of a box, indicator 1512 may comprise adjusting the background of an icon and text, such as 1504A for example, such that the color, shade, or hue is different. Id. at 30:41–49 (emphasis added). Highlighting, as the specification describes, occurs when a user selects a source using indicator 1512 and that source is boxed or differentiated by color or shading. Id. The specification, in relation to Figure 15C, further describes a user moving indicator 1512 to another source such that the “the content or a preview of the content may be displayed in active content area 1408.” Id. at 32:9–17 (“For example, FIG. 15C illustrates an image or video associated with Skyfalls being displayed in content area 1408.”). Thus, the specification is clear that the highlighting function results from user selection of the source and the corresponding association of the first content information with that source flows from that user selection. See also id. at 2:30–31 (describing a purpose of the ’040 patent as “an Intelligent TV with intuitive user interfaces and with seamless user interaction capability”), 32:35–43 (“[t]he user . . . move[s] the focus box”). This supports our understanding that the claim language does not require that the display of first content to cause the highlighting of a displayed source identifier.” slip op. at 29

  Patent outcomesUS 9,510,040 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,510,040
• Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentable
  PTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.

  RulingsFinal written decision

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

    “disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12

  Patent outcomesUS 8,378,875 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,378,875
• BMW Of North America, LLC / General Motors, LLC v. Arigna Technology Ltd.Some claims unpatentable
  PTAB · Feb 23, 2023 · IPR2022-00641 · APJ Garth D Baer · IPR · Final written decision

  Claims 4, 6, and 7 are unpatentable: claim 4 is anticipated by Torii, and claim 6 is obvious over Torii and Hebinuma; claims 1–3, 5, 8, and 9 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “These formulations are similar. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and 8 US 6,413,822 B2, Jul. 2, 2002 (Ex. 1033, “Williams99”). supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). However, our decision would be the same under either formulation.” slip op. at 6

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

    “B. CLAIM CONSTRUCTION Petitioner and Patent Owner offer different constructions for a single claim term—“penetrating.” See PO Resp. 19; Pet. Reply 1. However, the parties’ differing constructions do not impact our unpatentability analysis. Therefore, we decline to construe this term. We find no claim terms require express construction to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Rather, as explained above, Petitioner relies on the top portion of Torii’s electrode 13 as the claimed source electrode, and the bottom portions as the claimed conductive portions. That is, even if Patent Owner is correct that the claimed source electrode and conductive portions must be distinct structures, that does not undermine Torii’s disclosure because Petitioner relies on distinct portions of Torii’s larger, single-hashed element labeled electrode 13. Because Petitioner does not rely on the same structure, i.e., the entire electrode 13 of Torii, for each of two distinct claim elements, our conclusion does not conflict with the Federal Circuit’s holding in Becton. See Becton, 616 F.3d at 1254 (holding that a single hinge structure could not be both the claimed spring means and the claimed separate hinged arm); id. at 1255 (noting that “[i]f the hinged arm and the spring means are one and the same, then the hinged arm must be ‘connected to’ itself,” which is “a physical impossibility”) (emphasis added). Instead, we agree with Petitioner that this case is more analogous to Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011), where the court held the front half of a cutting box satisfied a “cutting box” limitation, and its rear half satisfied a separate “dust collection structure” limitation. See id.; Pet. Reply 3. Like Powell, which “divided the cutting box” into two portions that each met a single claim limitation, Petitioner argues that one portion of Torii’s electrode 13 (the top portion, colored red by Petitioner) discloses the source electrode, and the remaining portions of Torii’s electrode 13 (the bottom portions, colored pink by Petitioner) discloses the conductive portions. See Powell, 663 F.3d at 1231. In Powell, the claim required “[the] cutting box interior [to be] in fluid communication with [the] dust collection structure,” and the court found that this requirement did not require that the two elements “be wholly separate structures.” Id. at 1229, 1231–32. Similarly, we determine that the requirement that the source electrode and conductive portions are electrically connected does not require that these be wholly separate structures. For these reasons, we agree with Petitioner that together, the top portion of Torii’s electrode 13 discloses the source electrode and the bottom portions of Torii’s electrode 13 disclose the conductive portions recited in claim 4.” slip op. at 14

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

    “We agree with Petitioner that Hebinuma teaches the oval trenches recited in claim 6. See Ex. 1027, Fig. 9. In addition, we agree that Petitioner’s proposed combination would have been obvious because it amounts to no more than a simple substitution of one known element for another, i.e., Hebinuma’s elliptical trenches for Torii’s rectangular ones. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, with the analysis outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination would have been obvious to one skilled in the art. See id. at 418. Patent Owner raises several arguments in contesting Petitioner’s obviousness challenge, none of which we find persuasive. For example, we disagree with Patent Owner that Torii and Hebinuma are not analogous art because a skilled artisan “would not have looked to Hebinuma to improve on Torii.” PO Resp. 72–76. The ’867 patent, Torii, and Hebinuma are all in the same field of “power semiconductor device[s] having a trench gate structure.” Ex. 1001, 1:5–8; Ex. 1027 ¶¶ 1–3; Ex. 1030 ¶¶ 1–4. Thus, Torii and Hebinuma are analogous to the ’867 patent. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We also disagree with Patent Owner’s argument that one skilled in the art would not have had a reasonable expectation of success because Hebinuma’s oval-shaped trenches were “substantially more challenging” than Torii’s “well-known and well-studied” rectangular-trench solution. PO Resp. 77 (citing Ex. 2013 ¶¶ 128–130). Instead, we agree with Petitioner that one skilled in the art could reasonably expect success because the change “requires only minor changes to the photolithography mask” (Pet. 72; see Ex. 1002 ¶ 364), and because both Torii and Hebinuma expressly teach different trench shapes (see Ex. 1030 ¶ 116 (teaching that “the corner portion of the aperture . . . may be rounded”); Ex. 1027 ¶ 49 (teaching that “the contact trench Tc can be formed under similar conditions . . . with the exception of changing the patterning shape”)).” slip op. at 17

  Patent outcomesUS 8,247,867 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Enfish · KSR
  Patents in suitUS 8,247,867
• BMW Of North America, LLC / General Motors, LLC v. Arigna Technology Ltd.Some claims unpatentable
  PTAB · Feb 23, 2023 · IPR2022-00631 · APJ Garth D Baer · IPR · Final written decision

  Claims 4, 6, and 7 are unpatentable: claim 4 is anticipated by Torii, and claim 6 is obvious over Torii and Hebinuma; claims 1–3, 5, 8, and 9 were not shown unpatentable.

  RulingsFinal written decision

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

    “petition in IPR2022-00631 (challenging the same claims of the ’867 patent on the same grounds), and a motion for joinder (seeking to join this proceeding as a petitioner). BMW of N. Am., LLC v. Arigna Tech. Ltd, IPR2022-00631 (PTAB Mar. 8, 2022), Papers 1, 2 (petition), 4 (motion for joinder). We granted institution in IPR2022-00631 and granted BMW’s motion for joinder. Paper 28 (PTAB Sept. 1, 2022). Similarly, General Motors LLC (“GM”) filed a petition in IPR2022-00641 (challenging the same claims of the ’867 patent on the same grounds), and a motion for joinder (seeking to join this proceeding as a petitioner). General Motors, LLC v. Arigna Tech. Ltd., IPR2022-00641 (PTAB Mar. 8, 2022), Papers 2 (petition), 3 (motion for joinder). We granted institution in IPR2022-00641 and granted GM’s motion for joinder. Paper 29 (PTAB Sept. 1, 2022). VW and Patent Owner then reached a settlement and this proceeding was terminated only as to VW. Paper 30 (PTAB Sept. 9, 2022). Accordingly, we refer to BMW and GM, collectively, as “Petitioner.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “These formulations are similar. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and 8 US 6,413,822 B2, Jul. 2, 2002 (Ex. 1033, “Williams99”). supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). However, our decision would be the same under either formulation.” slip op. at 6

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

    “B. CLAIM CONSTRUCTION Petitioner and Patent Owner offer different constructions for a single claim term—“penetrating.” See PO Resp. 19; Pet. Reply 1. However, the parties’ differing constructions do not impact our unpatentability analysis. Therefore, we decline to construe this term. We find no claim terms require express construction to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We disagree with Patent Owner’s argument because it mischaracterizes Petitioner’s reliance on Torii. Petitioner does not rely on a single structure as disclosing both the claimed source electrode and conductive portions. Rather, as explained above, Petitioner relies on the top portion of Torii’s electrode 13 as the claimed source electrode, and the bottom portions as the claimed conductive portions. That is, even if Patent Owner is correct that the claimed source electrode and conductive portions must be distinct structures, that does not undermine Torii’s disclosure because Petitioner relies on distinct portions of Torii’s larger, single-hashed element labeled electrode 13. Because Petitioner does not rely on the same structure, i.e., the entire electrode 13 of Torii, for each of two distinct claim elements, our conclusion does not conflict with the Federal Circuit’s holding in Becton. See Becton, 616 F.3d at 1254 (holding that a single hinge structure could not be both the claimed spring means and the claimed separate hinged arm); id. at 1255 (noting that “[i]f the hinged arm and the spring means are one and the same, then the hinged arm must be ‘connected to’ itself,” which is “a physical impossibility”) (emphasis added). Instead, we agree with Petitioner that this case is more analogous to Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011), where the court held the front half of a cutting box satisfied a “cutting box” limitation, and its rear half satisfied a separate “dust collection structure” limitation. See id.; Pet. Reply 3. Like Powell, which “divided the cutting box” into two portions that each met a single claim limitation, Petitioner argues that one portion of Torii’s electrode 13 (the top portion, colored red by Petitioner) discloses the source electrode, and the remaining portions of Torii’s electrode 13 (the bottom portions, colored pink by Petitioner) discloses the conductive portions. See Powell, 663 F.3d at 1231. In Powell, the claim required “[the] cutting box interior [to be] in fluid communication with [the] dust collection structure,” and the court found that this requirement did not require that the two elements “be wholly separate structures.” Id. at 1229, 1231–32. Similarly, we determine that the requirement that the source electrode and conductive portions are electrically connected does not require that these be wholly separate structures.” slip op. at 13

  Patent outcomesUS 8,247,867 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Enfish · KSR
  Patents in suitUS 8,247,867
• BMW Of North America, LLC / General Motors LLC v. Arigna Technology Ltd.Some claims unpatentable
  PTAB · Feb 23, 2023 · IPR2021-01321 · APJ Garth D Baer · IPR · Final written decision

  Claims 4, 6, and 7 are unpatentable: claim 4 is anticipated by Torii, and claim 6 is obvious over Torii and Hebinuma; claims 1–3, 5, 8, and 9 were not proven unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “These formulations are similar. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and 8 US 6,413,822 B2, Jul. 2, 2002 (Ex. 1033, “Williams99”). supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). However, our decision would be the same under either formulation.” slip op. at 6

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

    “B. CLAIM CONSTRUCTION Petitioner and Patent Owner offer different constructions for a single claim term—“penetrating.” See PO Resp. 19; Pet. Reply 1. However, the parties’ differing constructions do not impact our unpatentability analysis. Therefore, we decline to construe this term. We find no claim terms require express construction to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Rather, as explained above, Petitioner relies on the top portion of Torii’s electrode 13 as the claimed source electrode, and the bottom portions as the claimed conductive portions. That is, even if Patent Owner is correct that the claimed source electrode and conductive portions must be distinct structures, that does not undermine Torii’s disclosure because Petitioner relies on distinct portions of Torii’s larger, single-hashed element labeled electrode 13. Because Petitioner does not rely on the same structure, i.e., the entire electrode 13 of Torii, for each of two distinct claim elements, our conclusion does not conflict with the Federal Circuit’s holding in Becton. See Becton, 616 F.3d at 1254 (holding that a single hinge structure could not be both the claimed spring means and the claimed separate hinged arm); id. at 1255 (noting that “[i]f the hinged arm and the spring means are one and the same, then the hinged arm must be ‘connected to’ itself,” which is “a physical impossibility”) (emphasis added). Instead, we agree with Petitioner that this case is more analogous to Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011), where the court held the front half of a cutting box satisfied a “cutting box” limitation, and its rear half satisfied a separate “dust collection structure” limitation. See id.; Pet. Reply 3. Like Powell, which “divided the cutting box” into two portions that each met a single claim limitation, Petitioner argues that one portion of Torii’s electrode 13 (the top portion, colored red by Petitioner) discloses the source electrode, and the remaining portions of Torii’s electrode 13 (the bottom portions, colored pink by Petitioner) discloses the conductive portions. See Powell, 663 F.3d at 1231. In Powell, the claim required “[the] cutting box interior [to be] in fluid communication with [the] dust collection structure,” and the court found that this requirement did not require that the two elements “be wholly separate structures.” Id. at 1229, 1231–32. Similarly, we determine that the requirement that the source electrode and conductive portions are electrically connected does not require that these be wholly separate structures. For these reasons, we agree with Petitioner that together, the top portion of Torii’s electrode 13 discloses the source electrode and the bottom portions of Torii’s electrode 13 disclose the conductive portions recited in claim 4.” slip op. at 14

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Patent Owner raises several arguments in contesting Petitioner’s obviousness challenge, none of which we find persuasive. For example, we disagree with Patent Owner that Torii and Hebinuma are not analogous art because a skilled artisan “would not have looked to Hebinuma to improve on Torii.” PO Resp. 72–76. The ’867 patent, Torii, and Hebinuma are all in the same field of “power semiconductor device[s] having a trench gate structure.” Ex. 1001, 1:5–8; Ex. 1027 ¶¶ 1–3; Ex. 1030 ¶¶ 1–4. Thus, Torii and Hebinuma are analogous to the ’867 patent. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We also disagree with Patent Owner’s argument that one skilled in the art would not have had a reasonable expectation of success because Hebinuma’s oval-shaped trenches were “substantially more challenging” than Torii’s “well-known and well-studied” rectangular-trench solution. PO Resp. 77 (citing Ex. 2013 ¶¶ 128–130). Instead, we agree with Petitioner that one skilled in the art could reasonably expect success because the change “requires only minor changes to the photolithography mask” (Pet. 72; see Ex. 1002 ¶ 364), and because both Torii and Hebinuma expressly teach different trench shapes (see Ex. 1030 ¶ 116 (teaching that “the corner portion of the aperture . . . may be rounded”); Ex. 1027 ¶ 49 (teaching that “the contact trench Tc can be formed under similar conditions . . . with the exception of changing the patterning shape”)).” slip op. at 18

  Patent outcomesUS 8,247,867 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Enfish · KSR
  Patents in suitUS 8,247,867
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-00810 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable as anticipated by Silberschatz; Petitioner did not show claims 4 and 8 unpatentable because Silberschatz does not disclose allocating or de-allocating a specific telecommunications resource.

  RulingsFinal written decision

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

    “In this case, the ’637 patent discloses multiple embodiments of telephony and telecommunication resources being allocated and de-allocated, but during prosecution, the applicant removed the modifying limitation of “telecommunication”3 leaving only the term “resource” in the issued claims. Compare Ex. 1004, 60–69 (Application No. 09/072,436) with Ex. 1002, 44–47. The claims, thus, recite “resource” and do not recite “telecommunications resource” nor do they recite “computer resource.” The lack of a limiting term modifying “resource” indicates a scope broader than the scope encompassed by a “resource” that is limited to only a “telecommunications resource” or “computer resource.” Moreover, the Examiner characterized the claims of the application that issued as the ’637 patent as “broader in scope than the claims [in] the parent patent.” Ex. 1002, 95. The Applicant did not dispute the Examiner’s characterization of the claims. Id. at 107. Although the ’637 patent discloses embodiments using “resources,” the ’637 patent does not define explicitly the term “resource.” Therefore, we look to the ordinary meaning of the term as would be understood by one of 3 The term “telecommunication” was recited in the proposed claims of earlier-filed parent Application No. 09/072,436. The ’637 patent claims priority to patent Application No. 09/072,436. See Ex. 1002, 1. ordinary skill in the art. A technical dictionary, IEEE Dictionary4, defines “resource” as “[a]ny capability that must be scheduled, assigned, or controlled by the underlying implementation to assure non[-]conflicting usage by processes.” Id. at 976. As shown by the dictionary definition, one of ordinary skill in the art would understand “resource” is not limited to a telecommunications resource or a computer resource.5 Thus, the ordinary meaning of “resource” is consistent with the term’s use in the ’637 patent, which readily interchanges the term “resources” with “components” and “capability” in the context of computer telephony resources. Ex. 1001, 1:27–29. For example, in one embodiment in the ’637 patent, the telecommunication “resource” is a telephony line card that is coupled to a telephone. Id. at 9:12–15. In other embodiments, the telecommunication “resources” are components or ports coupled via a data bus to a central processing unit system, a data port system, a video system, a network system, a storage controller, and a high speed communication system. Id. at 8:1–27, 10:64–11:10, 11:14–22. In every embodiment in the ’637 patent, 4 IEEE 100: The Authoritative Dictionary of IEEE Standards Terms: Seventh Edition (Standards Information Network, IEEE Press ©2000) (Ex. 3001) (hereinafter “IEEE Dictionary”). 5 Petitioner’s Declarant, Dr. Forys, testified on cross-examination that a person of ordinary skill in the art would have telecommunications experience because all of the embodiments in the ’637 patent are directed to telecommunications. Ex. 2002, 47:2–14. Based on this testimony, Patent Owner argues that the ’637 patent would be understood by a person of ordinary skill in the art in the context of a telecommunications systems. PO Resp. 8–9. We agree the ’637 patent may have been understood in the context of a telecommunications system, however, that does not indicate that a skilled artisan would have understood “resource” to have been limited to only a telecommunications resource. resources are a component or capability of a system that is managed (i.e., identified, allocated, de-allocated) by some module in the service kernel. Id. at 9:27–39, 10:10–14, 10:64–11:10, 11:14–22. Accordingly, we do not agree with Patent Owner’s position, because” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Dr. Forys, opines that a person of ordinary skill in the art relevant to the ’637 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field and one year to two years of industry experience in telecommunications.” Ex. 1003 ¶ 32. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner’s Declarant, Dr. Akl, offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’637 patent. PO Resp. 9–10; Ex. 2003 ¶ 42. Based on our review of the ’637 patent, the types of problems and solutions described in the ’637 patent and cited prior art, and the testimony of Petitioner’s Declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We do agree with Patent Owner’s argument, however, with regards to dependent claims 4 and 8, which require the return of “the allocated telecommunications resources to control of the management module.” Ex. 1001, 21:52–22:6, 22:44–52; see supra, Section II.A.3. Petitioner has not indicated a disclosure in Silberschatz that demonstrates the allocation or de-allocation of a specific telecommunications resource. Therefore, we determine that Petitioner has failed to meet its burden to show Silberschatz anticipates dependent claims 4 and 8.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner’s position, because Petitioner identifies CPU time as a specific resource that is requested (Pet. 23–24), allocated (id. at 25), used (id. at 25), and de-allocated (id. at 26). We credit the testimony of Dr. Forys, who explains how and where Silberschatz discloses each element of the challenged claims. See Ex. 1003 ¶¶ 64–80. Specifically, Dr. Forys testifies regarding the request, allocation, use, and de-allocation of a single type of resource (e.g., CPU time), thereby meeting the limitations of the challenged claims. Id. ¶¶ 74–80. Although Patent Owner correctly points out that Petitioner discusses multiple types of resources, we do not agree that Petitioner discusses or applies the disclosure of Silberschatz inconsistently, because Petitioner at least consistently identifies CPU time as a resource requested, allocated, used, and de-allocated.” slip op. at 21

  Patent outcomesUS 7,324,637 mixed
  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 7,324,637
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00046 · APJ Michael W Kim · CBM · Final written decision

  Claims 1, 4–6, 10, and 14 are unpatentable as anticipated by Paul; claims 7–9 and 11 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “we determine the meaning of the claims for purposes of this decision. In a covered business method patent review, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below in accordance with these principles.” slip op. at 7

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

    “subscriber according to the incentive program.” Petitioner contends that the express definitions of terms set forth in the “Definitions” section of the ’055 patent are the proper constructions of those terms. Pet. 10. We agree. Accordingly, we accept those definitions as proper constructions of “incentive” and “incentive program.” Furthermore, through their assertions concerning standing, Petitioner asserts that “incentive” and “incentive program” are financial in nature. We agree. Pet. 6–7. The ’055 patent repeatedly, and almost exclusively, discloses “incentive” and “incentive program” in a financial context. For example, the ’055 patent discloses that cash incentives are provided on debit cards or as cash distributions. Ex. 1001, 2:28–29. In another example, incentives are disclosed as “payments,” “payouts,” and “distributions.” Ex. 1001, 2:51, 6:34–45, 7:31–34, 8:3–6. In a further example, incentive programs are disclosed as having financial budgets and accounts that are debited until depletion. Ex. 1001, 6:41–45, 7:18–20, 8:50–56. Accordingly, we construe “incentive” and “incentive program” as being financial in nature.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude that Petitioner has failed to show that the Ratsimor paper is a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”). The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 19

  Patent outcomesUS 8,438,055 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 8,438,055

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.