- PTAB · Nov 22, 2024 · IPR2024-00723 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’384 patent on all grounds of unpatentability presented.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hunleth are natural extensions of Kim that provide additional details about user interface design and generation, and that it would have been obvious for one of ordinary skill in the art to use the teachings of the other references on Kim’s apparatus for details regarding the selection of a CP provider, with predictable results and a reasonable expectation of success. Id. at 19–21 (citing Ex. 1003 ¶¶ 112–119). Additionally, Petitioner argues that the combination uses metadata to provide a user interface appropriate to the type of content selected by a user that would have been made by one of skill in the art, and that the user would have had a reasonable expectation of success in this combination. Id. at 55 (citing Ex. 1003 ¶¶ 185–186, 197–200). At this time, Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth. Nor, at this time, does Patent Owner rebut Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. reasonable likelihood that it will prevail in showing one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, and Hunleth, and would have used the relevant teachings of these references to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the preliminary record, no claim construction of “digest view” has been requested, and to the extent Patent Owner indirectly presents a claim construction argument, we decline to read the exemplary description of a digest view in the ’384 patent specification into limitations 1.6 and 1.7. Rather, in our view, the plain language of claim 1 controls because it recites that a digest view “presents information about a set of the VOD content that are associated with a series,” as recited in limitation 1.6. Ex. 1001, 56:55– 57. We find that Petitioner has sufficiently shown on this record that each of the TechnoBuffalo 1:03 view, the TechnoBuffalo 1:09 view, and the MissingRemote 1:54 view teaches or suggests the presentation of series,” as recited. Patent Owner agrees that the TechnoBuffalo 1:03 view is a digest view. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the VOD content that are associated with a series,” as required by claim 1 for a digest view. Additionally, even if we were to adopt Patent Owner’s proposed strictures on “digest view,” the TechnoBuffalo 1:03 view constitutes a digest view under such a construction, as, for example, the “synopsis of entire season” on that view teaches the presentation of information about a set of the VOD content that are associated with the series. Ex. 1003 ¶ 164 (cited at Pet. 41); see Prelim. Resp. 15 (acknowledging that this view is a digest view). The Petition does not assert that the proposed combination would result in a system in which either the TechnoBuffalo 1:03 or the TechnoBuffalo 1:09 view would be displayed upon the selection of a series (as Patent Owner asserts, Prelim. Resp. 19), but rather that the TechnoBuffalo 1:03 view is taught as being presented in TechnoBuffalo as a result of a series selection and, that, “[a]lternatively,” one of ordinary skill would have made the design choice to display the TechnoBuffalo 1:09 view as a direct result of the selection of a series. Pet. 42–43; Ex. 1003 ¶ 167.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). At present, Patent Owner does not dispute this definition. Prelim. Resp. 9–10. The definition proposed by the Petitioner appears to be consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition for the purpose of this Decision.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,578,384 - Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00722 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because it could not determine with reasonable certainty the scope of “a different user interface device” to assess the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After considering the determinations in the District Court Order, we agree with the district court that we cannot ascertain with reasonable certainty the scope of the claim term “a different user interface device.” See Ex. 2001, 25 (the district court explaining that “‘user interface device’ in the claim and in view of the intrinsic evidence, as emphasized by counsel’s 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated . reasonable certainty those skilled in the art about the scope of the invention.”). As the district court found, the ’168 patent specification uses the term “user interface device” inconsistently, for example, describing “four different user interface devices” in a navigation bar including the “movies user interface device 2204” in Figure 22A. Id. at 23 (citing Ex. 1001, 45:19–20, 45:27–29). Additionally, the specification appears to describe user interface devices with reference to the rows in Figure 22B, and other parts of the specification also describe selectable interface elements as “user interface device[s].” Ex. 1001, 45:33–37 (cited at Ex. 2001, 23–24), 41:31– 45, 46:67–47:2, 47:18–21, 48:18–20. Still further, the specification appears to describe a menu as a type of user interface device. Id. at 49:3–5 (cited at Ex. 2001, 24), 51:17–19 (same). In addition to these citations from the District Court Order, we note that the term “user interface device” is used when describing a user selecting a specific year from a display of years provided on a user interface: “If user selection 1460 is selected by the user using a user interface device, a new user interface presentation is provided.” Id. at 40:39–46 (emphasis added). On the record before us, we agree with the district court that, based on the ambiguity in the specification, “it is indiscernible what subset of the user interface, if any, is the user interface device.” Ex. 2001, 24. Therefore, we conclude that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability.” slip op. at 13
- BurdenNot reached
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
Claim constructioncites KSR · GrahamPatents in suitUS 9,232,168 - Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00922 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were obvious over Larson and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given, we determine Petitioner has not has not shown that the asserted prior art teaches or suggests limitation [1.7]. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Larson and Cai. a) Conclusion—Claim 1 For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“comprise the background knowledge art, with very little substantive explanation. In our view, this string-citation, without more substantive explanation, does not satisfy Petitioner’s obligation to explain why a person of ordinary skill in the art would have modified Larson based on the background knowledge in the art to account for limitation 1.7.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“For purposes of this proceeding, Patent Owner “agrees to use Petitioner’s definition” for a person of ordinary skill in the art. Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’823 patent specification and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “each claim term in the Challenged Claims” should “be given its plain and ordinary meaning,” and “that no specific construction of any claim term is required.” Pet. 17–18. Patent Owner “agrees with Petitioner that, for this proceeding and the grounds presented by Petitioner, no claim term requires construction.” Prelim. Resp. 12. For purposes of this Decision, no claim terms require express construction.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,446,823 - PTAB · Oct 28, 2024 · IPR2024-00714 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Valve would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user.” Prelim. Resp. 13 (citing Ex. 2001 ¶ 33). Patent Owner also argues that formal education could substitute for practical experience, and vice versa. Id. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’907 patent. See, e.g., Ex. 1001, 1:14–62. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision because it is sufficiently persuasive to meet Petitioner’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we disagree with Patent Owner that the term defining in claim 1 requires that the recited position and range information must be user-modifiable. Although claims 8 and 15 (not claim 1) recite a “program comprising instructions for . . . defining position and range information,” nothing in these claims explicitly requires that this program has any interaction with a user. Ex. 1001, 14:24–25, 14:64–65. Also, although the ’907 patent disclosure refers to computer architecture components for rendering a haptic effect within a boundary range, Patent Owner has not pointed to any disclosure in the ’907 patent suggesting that range settings must be user-modifiable. The ’907 patent does refer to “trigger data” that is “based on user input data,” but this trigger data appears to be collected by firmware, suggesting that the user’s involvement in creating trigger data consists of simply pulling or pushing the triggers of the controller. See Ex. 1001, 7:1–6, 8:10–16 (trigger data is “received from [the] controller . . . by peripheral firmware”), 8:58–65 (trigger data is obtained from potentiometers in the controller and sent to peripheral firmware), Fig. 3 (showing “[t]rigger data” 323 as part of peripheral firmware 320). Further, the ’907 patent discloses that the primary and secondary ranges at least “may be fixed or variable.” Ex. 1001, 5:29–30. This suggests that an embodiment in which all the range information is fixed (i.e., unalterable by a user) would be within the scope of the claimed invention. As to Patent Owner’s argument that defining would exclude something that is pre-defined, Patent Owner provides no evidence of this in the ’907 patent, its prosecution history, or extrinsic evidence. We find the proposition that something “pre-defined” is not “defined” illogical, and we” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,627,907 - PTAB · Sep 25, 2024 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–6, 14–16, and 19 on all asserted grounds, finding a reasonable likelihood Valve would show at least one claim unpatentable based on Pratt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). A claim is unpatentable under § 103 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 the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 21. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Valve’s proposed level of skill for this Decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION In an IPR, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This generally includes “construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither party argues that we should construe any particular claim terms explicitly. Pet. 8; Prelim. Resp. 21. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of claim language is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,175,738 - PTAB · Sep 5, 2024 · IPR2024-00270 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 15–20 based on the asserted obviousness grounds over Hankins alone and Hankins with Kommula.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ordinary and customary meaning. 37 C.F.R. §42.100(b). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes any term for claim construction. Petitioner provides discussions of the “State of the Art” for the terms “communication tunnels” and “selection of communication paths by controller.” Pet. 15–18. The term “tunnel” appears in challenged independent claim 15. The term “selection of communication paths by controller” does not appear in the challenged claims. On this record, we are not directed to any claim construction issue. Unless otherwise indicated in this Decision, we do not need to construe any claim term at this time, and we apply the plain and ordinary meaning of all claim terms, as would have been understood by a person of ordinary skill in the art, in the context of the ’595 patent.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“been familiar with using cloud based resources offered on top of regular Internet connections to provide virtual networks and the formation of tunnels and the associated protocols as demonstrated by the prior art references and description in the [Petition].” Pet. 14 (citing Ex. 1003 ¶ 55; Pet. 15–18). Petitioner further alleges a person of ordinary skill in the art would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience; or by obtaining a Master’s degree in computer science, but having only one year of experience; or by having no formal education but experience in storage systems of at least four years. Id. at 14–15 (citing Ex. 1003 ¶ 56). Patent Owner does not propose a level of ordinary skill in the art. See Prelim. Resp. Petitioner’s proposal is supported by the Reddy Declaration and is consistent with the ’595 patent and the asserted prior art. Accordingly, we apply Petitioner’s articulation.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, Petitioner’s first argument is sufficient for us to preliminarily determine “the path between controller 350 and tunnel server 360” is a tunnel. Petitioner sufficiently shows that a person of ordinary skill in the art would have understood what constitutes a tunnel as including the path described in the Petition. Specifically, the Petition cites evidence, quoted by Patent Owner, showing” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,108,595 - PTAB · Sep 5, 2024 · IPR2024-00497 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that Cisco would prevail on the challenged obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(“end-to-end tunnels” of limitation 1.3). As discussed below, even accepting that Chen does not teach the “end-to-end tunnels” of limitation 1.3, Hankins is not “the same or substantially the same” as Chen. General statements made by Patent Owner about what allegedly is “substantially the same” are not sufficient to show that Hankins is substantially similar to Chen. Petitioner relies on Hankins as teaching limitation 1.3 and the Examiner relied on Chen as teaching the ‘communication path’ recited in claim 1 prior to being amended to include limitation 1.3. Compare Ex. 1002, 150 (arguing patentability based on amendment to application claim 1) and Pet. 32 (arguing limitation 1.3 taught by Hankins). The question is not whether both references are relied on for the same limitation, but instead whether the teachings of the two references are the “same or substantially the same.” See Advanced Bionics, Paper 6 at 10 (factors (a), (b), (d)). In this case, Patent Owner has not shown substantial similarity between the two references.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have a working knowledge of techniques for transmitting data via a VPN and establishing tunneling links. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and four years of experience; or by obtaining a Master’s degree in computer science, but having only one to two years of experience; or by having no formal education but experience in storage systems of at least eight years. Pet. 16–17 (citing Ex. 1003 ¶ 53). Patent Owner does not propose a level of ordinary skill in the art. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Reddy and is consistent with the ’505 patent and the asserted prior art. Accordingly, we apply Petitioner’s articulation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The ’505 patent does not define “end-to-end tunnels.” The ’505 patent explains that “tunnels” link one LAN to another through routers or equivalent edge devices. Ex. 1001, 2:48–50. The ’505 patent further explains that communication paths between endpoint devices “may comprise 7 Iyer et al., US 2010/0275017 A1, published October 28, 2010 (Ex. 1007, “Iyer”). one or more intermediate tunnels connecting each endpoint device to one or more intermediate access point servers and one or more control servers.” Id. at 4:5–8. End point devices may be connected “with one or more multiple SRV_AP servers through one or more multiple concurrent tunnels.” Id. at 20:18–20. The description of the ’505 patent is consistent with Petitioner’s “State of the Art” as it relates to “tunnels.” Patent Owner’s reliance on Figures 32 and 33 is an impermissible reading of limitations from the specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily) (internal quotations and citation omitted). We preliminarily determine that the term “end-to-end tunnels” means communication paths connecting endpoint devices to one or more intermediate access point servers and one or more control servers. Ex. 1001, 4:5–8. Stated differently, the “end-to-end tunnels” connecting endpoint devices may include intermediate access point servers or control servers.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,630,505 - PTAB · Aug 13, 2024 · IPR2024-00557 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–8, 11, 12, and 15–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Immersion argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’067 patent. Prelim. Resp. 50–56 (discussing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co- 1 Banerjee et al., US 2017/0108930 A1, published Apr. 20, 2017 (Ex. 1011). 2 Meglan et al., US 2012/0045742 A1, published Feb. 23, 2012 (Ex. 1012). 3 Rogers et al., US 2017/0354864 A1, published Dec. 14, 2017 (Ex. 1010). pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board addressed nearly exactly the same arguments and issues raised by Immersion here. We adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.”). Therefore, we do not discretionarily deny the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 12. The parties’ proposed levels of ordinary skill appear to be substantially similar, are both supported by testimonial evidence, and appears to be consistent with the asserted prior art and the types of problems and solutions in the ’067 patent. See, e.g., Ex. 1001, 1:7–53. At this stage, we discern no difference in the outcome of this decision from choosing one over the other. We adopt Valve’s proposed level of skill for this decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms explicitly. Pet. 7–9 (citing Ex. 1001, 3:1–4, 5:60–62; Ex. 1003 ¶¶ 77– 80; Ex. 1006, 4–5); Prelim. Resp. 13. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of any claim term is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(g) Conclusion as to claim 1. For the above reasons, we determine that Valve has shown, sufficiently at this stage, that Banerjee discloses all the limitations of claim 1, or at least that a person of ordinary skill in the art would have had reason, in view of Banerjee, to combine features, including a sensor, as recited in claim 1. We therefore determine that Valve is reasonably likely to prevail in showing that claim 1 is unpatentable under §§ 102 or 103 based on Banerjee. 3. Other Claims Because Valve has shown a reasonable likelihood of prevailing with respect to claim 1 as discussed above, we will institute on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,665,067 - PTAB · Aug 6, 2024 · IPR2024-00556 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Astala and Shahoian and over Keely and Kolmykov-Zotov.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“II. DISCRETIONARY DENIAL Patent Owner argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’507 patent. Prelim. Resp. 43–49 (discussing Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co-pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board was faced with substantially similar arguments and issues raised by Patent Owner here; we adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts”). Therefore, we do not discretionarily deny the Petition.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’507 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both proposed levels of skill appear to be substantially similar and reasonable in view of the disclosures in the ’507 patent and asserted prior art. At this time, we would discern no difference in outcome from choosing one over the other. We adopt Petitioner’s proposed level of skill for purposes of this Decision because it appears to be a reasonable definition and Petitioner bears only a “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“time interval has elapsed.” Prelim. Resp. 18. We disagree that the claims preclude any particular combination of events, so long as the three conditions are satisfied in the process of determining of a press. The claim does not specify or limit the ways in which the three conditions need to be satisfied to determine a press, and Patent Owner offers no claim construction analysis that would so limit the claims. In sum, we agree with Petitioner at this stage that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already states: that “determining a press” is defined as the satisfaction of the three claimed conditions. Claim 1 does not set out any further requirements. Thus, we do not see the need to construe the claim beyond its plain language. We do not explicitly construe any terms in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claims. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,749,507 - PTAB · Aug 6, 2024 · IPR2024-00508 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–18, 21–24, and 26–29 on all petitioned grounds after finding a reasonable likelihood that claim 1 is anticipated by or obvious over Rosenberg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s analysis persuasively demonstrates a reasonable likelihood of success of showing that the subject matter of claim 1 is unpatentable. That Rosenberg varies, or modulates, its haptic effect based on the input signal, and specifically the degree to which the input signal represents a value close to a target value, persuades us on this record that Rosenberg describes the recited “modulating” limitation. On whole, reviewing the Petition and the evidence cited therein, we determine that Petitioner has established a reasonable likelihood that claim 1 is anticipated by, or would have been obvious in view of, Rosenberg.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSA) would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction. Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our view, on this record, the first construction is too narrow. It adds limitations from the specification that are not found in the claims, namely, the term “continuous” or “continuously.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.”) (internal quotation marks omitted). There is no requirement that the claims must recite all the features of the specification, and we are not persuaded on this record that the claim requires this absent word. The second potential construction offered by Petitioner states that it “would not require the ‘new input’ mapping to the modulated haptic signal to be received immediately after earlier input that was mapped to a haptic signal.” Pet. 22. Petitioner states that the second construction would cover situations where an input sensor is mapped to a haptic signal but later new inputs are not mapped to a haptic signal, and then even later new sensor input is mapped to a haptic signal. Id. Petitioner does not provide further explanation, and it is not clear to us on this record what the construction would be. Instead, the second potential construction merely seems to be an example of a situation in which Petitioner asserts the claim limitation would be met. In sum, we do not adopt either of Petitioner’s proposed constructions. We do not offer our own construction at this time, however, because we believe that construing the claim limitation is unnecessary for the purpose of institution. Instead, we will focus on the plain language itself, “modulating the haptic signal when new input is received,” when reviewing Petitioner’s prior art grounds. We do not explicitly construe any terms in this Decision at this time” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,116,546
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.