• Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.No claims unpatentable
  PTAB · Apr 10, 2019 · IPR2018-00012 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable as obvious over WD4-v2, Lin, and Zhou II because Petitioner failed to establish that Zhou II was a publicly accessible printed publication.

  RulingsFinal written decision

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

    “The determination of whether a document is a printed publication involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. See Medtronic, 891 F.3d at 1380; In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A document is considered a printed publication if it 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 [could] locate it.” Acceleration Bay, LLC v. Activation Blizzard Inc., 908 F.3d 765, 774 (Fed. Cir. 2018); SRI Int’l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Indexing a reference is not “a necessary condition for a reference to be publicly accessible,” but it is one among various factors that may bear on public accessibility. In re Lister F.3d 1307, 1311 (Fed. Cir. 2009); see also Acceleration Bay, 908 F.3d at 774 (stating “where indexing is concerned, . . . the ultimate question is whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it”).” slip op. at 12

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

    “For the foregoing reasons, we conclude that Petitioner has not persuasively shown that a person interested and ordinarily skilled in the subject matter, exercising reasonable diligence, could have located Zhou II on the JCT-VC website, and thus, has not shown that Zhou II was publicly accessible by virtue of its uploading onto the JCT-VC website.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a B.S. degree in electrical engineering, or equivalent thereof, and at least three to four years of experience in the relevant field, which includes video coding technology, or an M.S. degree in electrical engineering and at least two to three years of experience with video coding technology. More education can supplement practical experience. Pet. 8 (citing Ex. 1002 ¶¶ 21–22). Patent Owner contends that a person of ordinary skill in the art would have had credentials that “reflect a practical understanding of the design considerations and challenges associated with the video coding technology at issue in the ’855 patent,” such as “an engineering degree and three or more years of actual industry experience.” PO Resp. 20. The parties’ proposals do not differ in any significant way. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported explicitly by the testimony of Mr. Bross and is commensurate with the level of ordinary skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner, in its Reply, presents evidence and argument for the first time that Zhou II was disseminated at the sixth JCT-VC meeting in Torino in July, 2011 because it was “presented and discussed” during the meeting. Reply 16–17 (citing Ex. 1057, 23, 97) (emphasis added). This argument is an entirely new theory of public accessibility and exceeds the proper scope of a reply. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition or patent owner’s response.”).” slip op. at 20

  Patent outcomesUS 8,654,855 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,654,855
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 29, 2017 · IPR2016-00963 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because Lin was not established as a publicly accessible printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Dr. Karger’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 8

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

    “Our analysis does not end there, however, because “public accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 25–26. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 27–28; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 73–74; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 17; Ex. 1004; Ex. 2030. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 5 with claim 25, claim 8 with claim 26, and claim 10 with claim 27, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 22

  Patent outcomesUS 6,829,634 not shown unpatentable
  § 102 anticipationcites KSR · Graham
  Patents in suitUS 6,829,634
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 29, 2017 · IPR2015-01964 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because Lin was not established as a publicly accessible printed publication; the contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 25–26. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13

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

    “of record through the prism of the Federal Circuit’s case law regarding public accessibility of references, we conclude that Petitioner has not met its burden of showing Lin was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art could have located it exercising reasonable diligence. Therefore, we conclude Lin is not a printed publication under 35 U.S.C. § 102(a) that can be used to challenge the patentability of the claims in the ’634 patent in this proceeding. 3. Analysis of the Asserted Unpatentability Grounds Both of the asserted grounds at issue in this trial rely on Lin for teaching limitations of the challenged claims. See Pet. 14–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 10, 15, and 18 are anticipated by Lin or that claims 1–18 are unpatentable as obvious over Lin.” slip op. at 22

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

    “of record through the prism of the Federal Circuit’s case law regarding public accessibility of references, we conclude that Petitioner has not met its burden of showing Lin was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art could have located it exercising reasonable diligence. Therefore, we conclude Lin is not a printed publication under 35 U.S.C. § 102(a) that can be used to challenge the patentability of the claims in the ’634 patent in this proceeding. 3. Analysis of the Asserted Unpatentability Grounds Both of the asserted grounds at issue in this trial rely on Lin for teaching limitations of the challenged claims. See Pet. 14–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 10, 15, and 18 are anticipated by Lin or that claims 1–18 are unpatentable as obvious over Lin.” slip op. at 22

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 5 with claim 25, claim 8 with claim 26, and claim 10 with claim 27, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 22

  Patent outcomesUS 6,829,634 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,829,634
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 23, 2017 · IPR2016-00935 · APJ William M Fink · IPR · Final written decision

  Claims 1–12 and 16–17 were not shown unpatentable because Lin was not established as a publicly accessible printed publication, and each asserted ground relied on Lin.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “under 35 U.S.C. § 102 “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). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A reference will be 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. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).” slip op. at 10

  • Strike new argumentNew argument disregardedGranted

    “We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 82–83; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2022. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 60. Patent Owner filed such a paper (Paper 64), and Petitioner filed a responsive paper (Paper 66). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 1 with claim 18, claim 7 with claim 19, and claim 8 with claim 20, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 23

  • ExcludeNot reached

    “E. Motions to Exclude Petitioner seeks to exclude certain paragraphs of Exhibits 2026 and Exhibit 2027. Pet. Mot. Exc. 4–6. Because we do not rely on the cited evidence in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude as moot. Patent Owner seeks to exclude the following exhibits on evidentiary grounds: Karger Declarations (Exs. 1019, 1024, and 1025), Little Declaration (Ex. 1004), Butler Affidavit (Ex. 1042), Bennett Declaration (Ex. 1026), and Lin (Ex. 1004, Ex. B). PO Mot. Exc. 4–12. Even considering this evidence, we have determined Petitioner has not met its burden of showing Lin was a printed publication. Patent Owner also seeks to exclude Exhibits 1002, 1005, 1008–1015, 1017, 1023, 1025–1029, 1030– 1033, 1042–1043, and 1048–1051 on evidentiary grounds. Id. at 12–15. We have not relied on any of these exhibits in this Final Written Decision. For these reasons, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 23

  Patent outcomesUS 6,714,966 not shown unpatentable
  § 102 anticipationcites KSR · Graham
  Patents in suitUS 6,714,966
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 23, 2017 · IPR2015-01951 · APJ William M Fink · IPR · Final written decision

  Claims 1–12 and 16–17 were not shown unpatentable because Lin was not established as a prior art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not discern substantial differences in the parties’ proposed descriptions of the level of ordinary skill in the art. Both require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 7

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

    “accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 29–30. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 82–83; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2022. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 60. Patent Owner filed such a paper (Paper 64), and Petitioner filed a responsive paper (Paper 66). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Finally, we accord little weight to the opinions of Dr. Karger and Dr. Bennett that, based on the evidence cited by Petitioner, Lin was publicly accessible. See Ex. 1024 ¶ 80; Ex. 1026 ¶ 33. Whether a reference qualifies as a printed publication is a legal conclusion, based on underlying factual determinations, Blue Calypso, 815 F.3d at 1348, and the opinions rendered by Dr. Karger and Dr. Bennett are not based on sufficient facts or the relevant case law regarding public accessibility of references.” slip op. at 22

  Patent outcomesUS 6,714,966 not shown unpatentable
  § 102 anticipationcites KSR · Graham
  Patents in suitUS 6,714,966
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 23, 2017 · IPR2016-00933 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–12 and 16–19 were not shown unpatentable because Lin was not established as a prior art printed publication, defeating both obviousness grounds.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “under 35 U.S.C. § 102 “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). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A reference will be 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. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 78–79; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2030. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 58. Patent Owner filed such a paper (Paper 62), and Petitioner filed a responsive paper (Paper 64). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 21

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 1 with claim 20, claim 7 with claim 21, and claim 8 with claim 22, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 24

  • ExcludeOther

    “E. Motions to Exclude Petitioner seeks to exclude certain paragraphs of Exhibits 2026 and Exhibit 2027. Pet. Mot. Exc. 4–6. Because we do not rely on the cited evidence in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude as moot. Patent Owner seeks to exclude the following exhibits on evidentiary grounds: Karger Declarations (Exs. 1019 and 1024), Little Declaration (Ex. 1004), Butler Affidavit (Ex. 1042), Bennett Declaration (Ex. 1026), and Lin (Ex. 1004, Ex. B). PO Mot. Exc. 4–12. Even considering this evidence, we have determined Petitioner has not met its burden of showing Lin was a printed publication. Patent Owner also seeks to exclude Exhibits 1002, 1005, 1007–18, 1021, 1023, 1025, 1030–33, 1035, and 1049–51 on evidentiary grounds. Id. at 4–7, 12–15. We have not relied on any of these exhibits in this Final Written Decision. For these reasons, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 24

  Patent outcomesUS 6,701,344 not shown unpatentable
  § 102 anticipationcites KSR · Graham
  Patents in suitUS 6,701,344
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 23, 2017 · IPR2015-01970 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–12 and 16–19 were not shown unpatentable because Lin was not established as a prior art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Dr. Karger’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 8

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

    “not a “necessary condition for a reference to be publicly accessible”; rather, it is one of a variety of factors that may be useful in determining whether a reference was publicly accessible. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). Furthermore, “indexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media.” Voter Verified, 698 F.3d at 1380. Nevertheless, the Federal Circuit has confirmed recently that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing . . . is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” Blue Calypso, 815 F.3d at 1349. Moreover, “[i]ndexing by subject matter offers meaningful assurance that an ordinarily skilled artisan, exercising reasonable diligence, will be able to locate a particular reference . . . .” Id.; see also Cronyn, 890 F.2d at 1161 (theses indexed by author not “indexed in a meaningful way”).” slip op. at 17

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

    “4. Analysis of the Asserted Unpatentability Grounds Both of Petitioner’s asserted grounds rely on Lin for teaching limitations of the challenged claims. See Pet. 26–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 1– 11 and 16–19 are unpatentable as obvious over Lin or that claims 1–12 and 16–19 are unpatentable as obvious over DirectPlay and Lin.” slip op. at 23

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 1 with claim 20, claim 7 with claim 21, and claim 8 with claim 22, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 24

  Patent outcomesUS 6,701,344 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,701,344
• Google Inc. v. Network-1 Technologies, Inc.No claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00343 · APJ Kevin F Turner · IPR · Final written decision

  The Board held claims 1–3, 6–14, 18, 19, 21–27, and 29–37 not shown unpatentable because Conwell did not disclose a non-exhaustive search and Ghias and Philyaw did not teach one.

  RulingsFinal written decision

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

    “exhaustive, as required by independent claims 1, 13, and 25. PO Resp. 23– 32. Patent Owner argues that Conwell teaches identifying a match using a look-up table, but the process is not disclosed to be non-exhaustive. Id. at 24 (citing Ex. 1009, 3:43–44, 5:59–61, Fig. 3; Ex. 2005 ¶¶ 364–366). Patent Owner additionally argues that “[w]hile there are ways to search the lookup table disclosed in Conwell using a non-exhaustive approach, Conwell does not disclose any such non-exhaustive approach.” Id. at 26 (citing Ex. 2005 ¶ 369). We agree that Conwell does not explicitly disclose that the look-up is performed non-exhaustively. Further, Patent Owner argues that Conwell also does not inherently disclose using the look-up table to conduct a non-exhaustive search. Id. at 27–31. Patent Owner continues that “Conwell provides no details as to how the exact-match search between the hashed identifier of the work to be identified and the hashed identifiers in the reference database is actually performed.” Id. at 29 (citing Ex. 1009, 3:43–62). Patent Owner argues that Conwell details how its database is maintained, but does not provide specific disclosures as to how the database is searched. Id. at 31–32. We also agree that Conwell does not inherently disclose that the look-up is performed nonexhaustively.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “As Patent Owner points out, the second search of the identified matches is performed exhaustively of Works A, C, D, and E. Tr. 40–43 (citing Ex. 1010 7:4–9; Ex. 2005 ¶ 288; Ex. 2006, 325:12–21, 336:12–22). If viewed as separate and independent searches, both would be exhaustive of the data set being searched, and if viewed as a single search, all of the initially input records of the data set (i.e., Works A–E) would be searched by that single search, making it exhaustive. As such, we agree that Ghias does not teach or suggest a non-exhaustive search, as recited in the independent claims. Petitioner responds that Ghias’s subsequent searches are non- exhaustive (Reply 13–14), but we have addressed the same in the prior paragraph, not finding it to be persuasive. Petitioner also argues that the queries from the “first” and “second” searches need not be the same, and in fact would likely be different, such that the results for the first query could exclude non-matches from the results, where those non-matches would be matches for the second query, so that the subsequent search for the second query would not consider these excluded references. Id. at 14. We are not persuaded, however, as the search would still be exhaustive to the dataset provided to the search algorithm. As discussed above, we construe “non-exhaustive search” as “a search that locates a match without a comparison of all possible matches.” We are not persuaded that simply because a search does not seek matches outside of its input records would make that search non-exhaustive; that would make every search non-exhaustive, because it is, by definition, limited to the records input or available to the search algorithm. Petitioner also argues that Ghias discloses that its string matching algorithms operate faster than a brute force search (Reply 14–15), but we are persuaded, as discussed above, that this disclosure is related to comparing a work with a single record in the database, and not with respect to all of the records in the database. Petitioner also argues that Ghias discloses that performance may be improved by “packing all the songs into one file,” whereby the non-exhaustive searching within a record would apply to all of the concatenated record, making the search of the records non-exhaustive. Id. at 15. With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “i.e., exhaustive and non-exhaustive, and that “one would have envisaged a ‘non-exhaustive’ search as the predominant form of ‘database query,’” such that Conwell discloses the elements of the claims in substance. Reply 11–12 (citing Ex. 2005 ¶ 371; In re Gleave, 560 F.3d 1331, 1334, 1337–38 (Fed. Cir. 2009)). We do not agree. Instead, we find persuasive the testimony of Dr. Karypis that exhaustive methods may be employed to perform the database lookup in Conwell, and that Conwell does not disclose any non-exhaustive approach. Ex. 2005 ¶¶ 367–369. Although Petitioner alleges that Dr. Karypis’s declaration “is replete with attorney argument presented in the guise of expert testimony,” and thus entitled to little weight (Reply 19), we find no fault with his specific review and interpretation of Conwell, and we are persuaded that it demonstrates that the lookup processes in Conwell need not be non-exhaustive.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “With respect to this latter argument, we agree with Patent Owner that this represents a “new theory” of the ground than that established in the Petition. Paper 24, 1–2. Compare Pet. 47–48, with Reply 14–15. We will not consider such new arguments for the purposes of this decision. See 37 C.F.R. § 42.23(b); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 14

  Patent outcomesUS 8,640,179 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,640,179
• Google Inc. v. Network-1 Technologies, Inc.No claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00347 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 15–17, 21–28, 31–33, 38, 51, and 52 were not shown unpatentable because Ghias and Iwamura did not disclose the claimed non-exhaustive search.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “For these reasons, we are not persuaded that Ghias discloses “a non- exhaustive search identifying a neighbor,” as recited in independent claim 15. Claims 16, 17, 21–23, 28, 31, and 51 depend from claim 15. Therefore, Petitioner has not demonstrated that Ghias discloses each and every limitation of claims 15–17, 21–23, 28, 31, and 51. Accordingly, Petitioner has not shown by a preponderance of the evidence that Ghias anticipates 15–17, 21–23, 28, 31, and 51 of the ’988 patent.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. at 13 (U.S. June 20, 2016). In our Institution Decision, we construed “a non-exhaustive search” to mean “a search that locates a match without a comparison of all possible matches.” Dec. 7. We disagreed with Petitioner’s view that a search that conducts a comparison with all possible matches is nevertheless non-” slip op. at 5

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

    “For these reasons, we are not persuaded that Ghias discloses “a non- exhaustive search identifying a neighbor,” as recited in independent claim 15. Claims 16, 17, 21–23, 28, 31, and 51 depend from claim 15. Therefore, Petitioner has not demonstrated that Ghias discloses each and every limitation of claims 15–17, 21–23, 28, 31, and 51. Accordingly, Petitioner has not shown by a preponderance of the evidence that Ghias anticipates 15–17, 21–23, 28, 31, and 51 of the ’988 patent.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “With respect to its contention that claims 22, 24–26, and 52 would have been obvious over Ghias, Petitioner does not present any additional analysis of the recited “non-exhaustive search” beyond that addressed above in connection with claim 15. Therefore, for the same reasons, Petitioner has not shown by a preponderance of the evidence that claims 22, 24–26, and 52 are unpatentable for obviousness over Ghias.” slip op. at 13

  Patent outcomesUS 8,010,988 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,010,988
• Google Inc. v. Network-1 Technologies, Inc.No claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00348 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–3, 6, 8–14, 18, 19, 21–27, 29, and 30 were not shown unpatentable because neither Conwell nor Ghias and Philyaw disclosed the claimed non-exhaustive neighbor search.

  RulingsFinal written decision

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. at 13 (U.S. June 20, 2016). In our Institution Decision, we construed “a non-exhaustive . . . search” to mean “a search that locates a match without a comparison of all possible matches.” Dec. 7. We disagreed with Petitioner’s view that a search that conducts a comparison with all possible matches is nevertheless non-exhaustive if it does not compare all data within all possible matches. Id.” slip op. at 6

  • Skill levelOther

    “demonstrate by a preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “two species—exhaustive and non-exhaustive—and a skilled artisan “would have envisaged a ‘non-exhaustive’ search as the predominant form of ‘database query.’” Pet. Reply 11 (citing Ex. 2005 ¶ 371). Therefore, according to Petitioner, Conwell discloses a non-exhaustive search in substance. Id. (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). We do not agree. Instead, we find persuasive the testimony of Dr. Karypis that the database look-up in Conwell may use exhaustive methods, and Conwell does not disclose any non-exhaustive approach. Ex. 2005 ¶¶ 367– 69. Although Petitioner alleges that Dr. Karypis’s declaration is entitled to little weight because it “is replete with attorney argument presented in the guise of expert testimony,” Pet. Reply 19, we are persuaded that his analysis of Conwell demonstrates that the look-up processes disclosed in Conwell need not be non-exhaustive. For these reasons, we are not persuaded that Conwell discloses “a non-exhaustive neighbor search,” as recited in independent claims 1, 13, and 25. Claims 2, 3, 6, 8–12, 14, 19, 21–24, 26, and 30 each depend from one of the independent claims and thus also include this limitation. Therefore, Petitioner has not demonstrated that Conwell discloses each and every limitation of claims 1–3, 6, 8–14, 19, 21–26, and 30. Accordingly, Petitioner has not shown by a preponderance of the evidence that Conwell anticipates claims 1–3, 6, 8–14, 19, 21–26, and 30 of the ’441 patent.” slip op. at 11

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

    “recitation of claim limitations. Pet. Reply 9. Further, Petitioner contends, at the time the ’441 patent was filed, “it was at least ‘probable’ that one skilled in the art would use a non-exhaustive lookup to conduct a database query.” Id. However, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Even if it would have been trivial to perform the look-up in Conwell using a non-exhaustive process, such a possible application does not demonstrate that Conwell expressly or inherently discloses a non-exhaustive search, as is required for anticipation.” slip op. at 10

  Patent outcomesUS 8,656,441 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,656,441

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.