- Servicenow, Incorporated v. Inquisient IncorporatedInstitution deniedPTAB · Jan 16, 2024 · IPR2023-01073 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of success on any challenged claim, including the independent claims’ class-module limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution is issued pursuant to 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“argument does not change Petitioner’s recognition that the ’855 patent describes a data repository as including modules, such that an ordinarily skilled artisan would have understood a “module” to be a portion of a data repository. The ’855 patent includes an extensive discussion of tables and relationships between tables, but does not define the term “module.” In the ’855 patent, the term “module” appears in the claims; “module” also appears” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that, contrary to Petitioner’s assertion, Althoff does not teach the claimed class module, i.e., a module (or table) configured to define at least one class of the plurality of elements (Althoff’s objects 101) and store that class. The claimed “data repository” is the relational database. See Pet. 13. However, Class 301 is part of the object database and is not translated into the relational database. As Patent Owner argues, Althoff teaches that the system “selects a class 101 in the user’s object database 100,” not the relational database. See Prelim. Resp. 27 [in FIG. 1] comprises a set of classes 101.”)). Patent Owner’s contention that there would be no reason to generate a class Class 301 table as Petitioner asserts is also persuasive. See Prelim. Resp. 29–30. As Patent Owner notes, by creating separate tables for each class, e.g., a Component table and a Manufacturer table, Althoff preserves the class information. Id. Patent Owner also argues that Petitioner’s assertions concerning a class Class 301 table fail because “if objects were already stored in a table in the object database, there would be no need for Althoff to build a translator to translate objects into tables.” Id. at 31. For at least the foregoing reasons, we conclude that Petitioner has not shown adequately at this stage of the proceeding that Althoff teaches or suggests limitation 1[c]. Moreover, Petitioner does not allege that Surjanto addresses the above-identified deficiencies of Althoff with respect to that limitation. Thus, we determine that Petitioner has not demonstrated that there is a reasonable likelihood it will succeed in its challenge to claim 1. We need not address the remaining limitations of claim 1 or Patent Owner’s arguments as to why those limitations have not been sufficiently shown. See Prelim. Resp. 34–40.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner’s Contentions Concerning Reasons to Combine Althoff and Surjanto Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Althoff and Surjanto to achieve the well-known benefits of Surjanto’s extensions, which were specifically designed to extend OO databases like Althoff’s to provide the known benefits of XML document support, such as “allow[ing] users to reuse and process textual portions of document contents,” “enabl[ing] collaborative development of documents” and in general “offer[ing] comprehensive content management functionality.” Pet. 8–9 (citing Ex. 1008, 9; Ex. 1003 ¶ 61). be motivated to modify Althoff to include Surjanto’s XCoP extensions because of the well-known benefits of XML document support.” Pet. 9 (citing Ex. 1003 ¶¶ 158–164). Petitioner further identifies Surjanto as disclosing that XCoP allows “users to reuse and process textual portions of document contents.” Id. Patent Owner does not respond to Petitioner’s contention as to combining Althoff and Surjanto. We agree that Petitioner has demonstrated sufficient reasons for combining Althoff and Surjanto.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,224,855 - PTAB · Dec 21, 2023 · IPR2023-01046 · APJ Jean R Homere · IPR · Institution
The Board instituted IPR on claims 1–14 and 16–19 on all asserted grounds, finding a reasonable likelihood of success on the obviousness grounds based on Chalom and Aslan, with Grau or Pace for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a) (2023). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute inter partes review. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. Prelim. Resp. 9. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2001 ¶ 21). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. (citing Ex. 2001 ¶ 21). We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner “agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s decision on institution.” Prelim. Resp. 9. At this stage in the proceeding, and without further argument from the parties, we determine that we do not need to expressly construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review). We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial, as permitted by our rules and binding precedent. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“related fields, in that they disclose similar techniques of using machine learning for image processing (e.g., using image data to train MLAs to correct the gaze of a video-conferencing user). Pet. 41–42 (citing Ex. 1005, 3:21–32; Ex. 1007 ¶ 24). Petitioner also contends both “Chalom and Aslan are at least reasonably pertinent to a problem identified in the ’985 Patent of high accuracy MLAs often consuming more computational resources and being slower to run, as compared to efficient MLAs tending to provide less accurate predictions.” Id. at 42 (citing Ex. 1001, 16:24–30; Ex. 1007 ¶ 45). Thus, “Chalom and Aslan are at least reasonably pertinent to this efficiency- 4 It has been held that where the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement, a holding of obviousness must be based on “an apparent reason to combine the known elements in the fashion claimed.” KSR, 550 U.S. at 417–18. That is, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. Id. at 417–18. versus accuracy problem. Id. (citing Ex. 1005, 1:16–25, 9:48–55, 10:40–60, Fig. 3; Ex. 1007 ¶ 45; Ex. 1001, 16:24–44, 17:14–17; Ex. 1003 ¶ 212). Petitioner shows sufficiently for institution that a POSITA would have been motivated to incorporate Aslan’s teacher-student architecture into Chalom’s image editing and training of its RFC to enhance the overall gains in efficiency and accuracy of the ensuing system. Id. at 42–44 (citing Ex. 1003 ¶¶ 213–222; Ex. 1007 ¶ 44). For purposes of institution, we find that Petitioner’s rationale, which is supported by the testimony of Dr. Karam, is a sufficient demonstration, at this stage, of a motivation to combine the references with a reasonable expectation of success. KSR, 550 U.S. at 417–18. However, we note that Patent Owner’s arguments may have some merit, and encourage the parties to further develop this issue at trial.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,740,985 - PTAB · Dec 7, 2023 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Institution
The Board instituted review of claims 1–26 on both asserted obviousness grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion Regarding Ground 1 Based on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claims 1–26 as unpatentable in view of RFC 3209 and Raz.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of ordinary skill in its Preliminary Response. At this preliminary stage and on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. Inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim constructions. Pet. 4; see generally Prelim. Resp. Based on the current record and without any opposition from Patent Owner, we see no need for express construction of any term at this stage of the proceeding. 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 18
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,118,602 - Uber Technologies, Inc. v. LBT IP II LLCAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00880 · APJ Stephen E Belisle · IPR · Final written decision
Claims 11–16 are unpatentable: claim 11 as obvious over Hashimoto and Hockley; claims 12–14 with Luccketti; and claims 15–16 with Mohi.
RulingsFinal written decision- BurdenDecided for petitioner
“applicable evidentiary standard, Petitioner has the burden to prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2022). “Preponderance of the evidence means the greater weight of evidence, evidence which is more convincing than the evidence which is offered in opposition to it.” United States v. C.H. Robinson Co., 760 F.3d 1376, 1383 (Fed. Cir. 2014) (internal quotations omitted). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’855 patent, the background technical field, the prior art, and Petitioner’s generally unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Mr. Andrews (Ex. 1002 ¶¶ 27, 32–71). Regardless, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). “Petitioner does not believe that any term requires explicit construction to resolve the grounds presented.” Pet. 8. “Patent Owner agrees that none of the terms in the patent require an explicit construction to resolve the dispute between the parties,” and submits that “all of the terms should be given their plain and ordinary meaning in light of the surrounding claim language.” PO Resp. 5. Based upon the parties’ positions here and our consideration of the complete record before us, we conclude that it is unnecessary to interpret expressly any limitations for purposes of rendering our final decision in this case. See Nidec, 868 F.3d at 1017. That said, we note that the parties present various patentability arguments in this case that depend at least in part on attributing a particular interpretation to certain claim limitations. We discuss these interpretations in the context of the relevant limitations in our patentability analysis below in Section III.D.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“Neither Petitioner nor Patent Owner takes a position as to whether the preamble is limiting, nor does Patent Owner dispute that Hashimoto discloses such a “method,” generally. See Pet. 18–19; see generally PO Resp.; PO Sur-reply. Because we find that Petitioner’s cited disclosure from Hashimoto discloses a “method of determining location via a tracking device associated with an individual or an object to be located,” we need not determine whether the preamble is limiting. See Nidec, 868 F.3d at 1017.” slip op. at 19
Patent outcomesUS 7,598,855 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,598,855 - Uber Technologies, Inc. v. LBT IP II LLCAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00926 · APJ John A Hudalla · IPR · Final written decision
Claims 8–10 and 13–15 are unpatentable as obvious over Robert and Curatolo; the Board did not reach the Robert-alone or Girerd grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related positioning techniques.” Pet. 8 (citing, inter alia, Ex. 1002 ¶¶ 27–28, 33). Patent Owner disputes that “two years of that specific work experience is a necessary requirement” for a person of ordinary skill in the art because “more general work experience is sufficient, and may be substituted with education.” PO Resp. 8. Patent Owner nonetheless states that this “distinction . . . is not meaningful or determinative with respect to the issues raised in the petition.” Id. (citing Ex. 2005 ¶¶ 32–34). Patent Owner does not otherwise dispute Petitioner’s definition of the level of ordinary skill in the art. Given Patent Owner’s concession that its criticisms of Petitioner’s proposed level of ordinary skill are not consequential, and based on the evidence before us, we adopt Petitioner’s definition, albeit without the two instances of “at least,” which introduce ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’289 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“d. Conclusion Regarding “first identification code” For the reasons discussed above, we decline to limit the “first identification code” in the manner suggested by Patent Owner, and we instead apply the plain and ordinary meaning to this term. Accordingly, we consider the ordinal “first” in “first identification code” to be a descriptor meant only to distinguish the “first identification code” from other recited identification codes. We also determine that the “identification code” in “first identification code” need not identify any particular device and encompasses, but is not limited to, a user identification code, a stored identification code, and an ESN.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“For these reasons, we are persuaded that the combination of Robert and Curatolo teaches communicating location coordinates to a monitoring station in a “second reply signal” such that the communicating is performed “in part responsive” to verifying “id codes.” See, e.g., Ex. 1002 ¶ 137; Ex. 1012, 5:67–6:3, 10:34–41, 10:60–65, 18:22–25; Ex. 1013 ¶¶ 81–82. Petitioner’s proposed combination of Curatolo’s monitoring station with Robert’s system is rooted in (1) Robert’s teaching of a receive station “tak[ing] any appropriate action, such as notify[ing] the authorities, proceed[ing] to the target location, log[ging] the position in a journal, etc.” after the location of the target is determined (Ex. 1012, 5:67–6:3); (2) Robert’s claim 36, which teaches communicating a target’s location to a “display device being located at a remote station” (id. at 18:22–25); (3) Robert’s disclosed application of monitoring “the location of a person or vehicle (or persons and fleets of vehicles)” (id. at 1:18–22); and (4) Curatolo’s teaching of a monitoring station requesting and receiving the “not limited to the particular invention it is describing.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). location of signaling units on demand and then communicating or displaying that information to an authorized user at a remote receiver (Ex. 1013 ¶¶ 81–82). Mr. Andrews also has put forth unrebutted testimony that an ordinarily skilled artisan would have expected success in combining the references using “commercially available computers and [a] hand-held PDA,” which is supported by Curatolo’s teachings. See, e.g., Ex. 1002 ¶ 140; Ex. 1013 ¶ 75. As such, we find Petitioner’s proposed combination amounts to “the predictable use of prior art elements according to their established functions” for Petitioner’s proposed fleet-vehicle monitoring application. KSR, 550 U.S. at 417.” slip op. at 43
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the comparison provided by Petitioner at Exhibit 1044, and we note that, at the very least, Mr. Andrews provides significant technology background information that is not included in the Petition. See, e.g., Ex. 1002 ¶¶ 33–73. Although Patent Owner criticizes the technology background as “generic points” (PO Sur-reply 1–2), this unrebutted testimony has proven useful for us to understand the parties’ arguments regarding known calculation methods for triangulation, for example. See infra § II.D.4. Thus, we decline to discount Mr. Andrews’s testimony based on certain other similarities with the Petition. Further, we do not read Xerox as requiring us to deny Petitioner’s patentability challenges based simply on the degree of similarity between Petitioner’s papers and Mr. Andrews’s declarations. Rather, in Xerox, the Director affirmed the Board’s decision to give a declarant’s testimony little weight because the testimony merely offered conclusory assertions without underlying factual support and repeated a petitioner’s conclusory assertions. Xerox, Paper 12 at 4–5. In conformity with Xerox, we have accorded appropriate weight to the declarants’ testimony in our analysis based on, inter alia, whether such testimony is supported by underlying evidence.” slip op. at 45
Patent outcomesUS 8,531,289 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,531,289 - ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentablePTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25
Patent outcomesUS 10,930,276 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,930,276 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Oct 18, 2023 · IPR2020-00518 · APJ Ken B Barrett · IPR · Remand
On remand, claim 5 is unpatentable under §103 over Kabemoto, Bauman, and Chaney; the unappealed finding on the Wu-based ground remains unchanged.
RulingsRemand decision- RemandOther
“On March 13, 2023, the Federal Circuit issued a decision reversing certain of the Board’s findings regarding the Kabemoto-Bauman ground and remanded the case to the Board for further proceedings. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th at 1381. Specifically, the court stated that “the Board’s determination that the prior art did not teach the segment-to-segment limitation lacks substantial evidence, and we reverse it,” and that under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), a reason to combine may be established by a showing “that there was a known problem of cache coherency in the art, that Bauman’s secondary cache helped address that issue, and that combining the teachings of Kabemoto and Bauman wasn’t beyond the skill of an ordinary artisan[;] [n]othing more is required [from Petitioner] to show a motivation to combine . . . so we reverse the Board’s finding to the contrary.” Id. at 1379, 1381; see also id. at 1379 (“Intel also argues that the Board’s rejection of its ‘known-technique’ rationale for a motivation to combine lacks substantial evidence. . . . We agree and reverse the Board’s contrary finding.”).” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“architecture.” Ex. 1003 ¶ 66; see Pet. 12. Patent Owner’s declarant, Dr. Murali Annavaram, for purposes of his declaration, adopts Dr. Mazumder’s definition (with the understanding that the referenced master’s degree in electrical engineering includes related fields such as computer engineering). Ex. 2024 ¶ 21. We determine that the definition offered by Dr. Mazumder comports with the qualifications a person would have needed to understand and implement the teachings of the ’908 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Dr. Mazumder’s description of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“term, asserting that every term should be given its ordinary and customary meaning. Pet. 5. Patent Owner similarly does not propose an explicit claim construction for any term. See PO Resp. passim. In their later respective briefs, the parties each argue that the other has, in the context of the Bauman reference, applied an incorrect construction for “interconnect system”— disputing whether a connection between processors must be direct and have data flowing between the processors in two directions. See Pet. Reply 17; PO Sur-reply 12–13. Claim 4 recites “an interconnect system interconnecting each of the separated cache segments with each of the processors, each of the processors with neighboring processors, and each of the separated cache segments with neighboring separated cache segments.” Ex. 1001, 52:66–53:3. The Federal Circuit determined that the three “interconnect system” limitations are not limited to direct connections but also encompass indirect connections. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th at 1379 n.2 (“Even if the Board is right that Intel’s proposed combination relied on Kabemoto’s ‘snoop bus 22’ to teach the segment-to-segment limitation, Kabemoto’s snoop bus 22 does so—just with indirect connections.”). We determine that no other claim terms require express construction.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“That Kabemoto and Bauman address the same problem and that Bauman’s cache was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent. . . . [H]ere, there’s no dispute that using a global, segmented secondary cache “has been used to improve” cache coherency in multiprocessor systems—as in Bauman—and a person of ordinary skill would “recognize that” such a cache “would improve similar” multiprocessor systems—like the one in Kabemoto—by addressing that same cache coherency problem. . . . There’s . . . also no dispute that such a combination would constitute a use of Bauman’s secondary cache “according to [its] established function[ ].” . . . And contrary to the Board’s suggestion, Intel never had to show that replacing Kabemoto’s secondary cache with Bauman’s secondary cache was an “improvement” in a categorical sense. . . . Intel just had to show that Bauman’s secondary cache was a “suitable option” to replace Kabemoto’s secondary cache. . . . It’s enough for [Petitioner] Intel to show that there was a known problem of cache coherency in the art, that Bauman’s secondary cache helped address that issue, and that combining the teachings of Kabemoto and Bauman wasn’t beyond the skill of an ordinary artisan. Nothing more is required to show a motivation to combine under KSR, so we reverse the Board’s finding to the contrary.” slip op. at 25
Patent outcomesUS 9,250,908 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,250,908 - PTAB · Oct 2, 2023 · IPR2023-00568 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–4, 8–15, 19, and 20, finding a reasonable likelihood that at least one claim is unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that the combination of IMU and Okabe teaches each of the limitations of claim 1. We further determine that Petitioner provides an adequate reason why one of ordinary skill in the art would have combined the teachings of IMU and Okabe in the manner asserted by Petitioner, with a reasonable expectation of success. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is unpatentable over the combination of IMU and Okabe.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that the combination of IMU and Okabe teaches each of the limitations of claim 1. We further determine that Petitioner provides an adequate reason why one of ordinary skill in the art would have combined the teachings of IMU and Okabe in the manner asserted by Petitioner, with a reasonable expectation of success. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is unpatentable over the combination of IMU and Okabe.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 23–24). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation and understood how to implement such systems.” Id. (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,182,641 - Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution deniedPTAB · Oct 2, 2023 · IPR2023-00569 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted AEM, IMU-Okabe, or IMU-Okabe-Li ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 27–29). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation and understood how to implement such systems.” Id. at 6 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 46). Patent Owner indicates that it proposes “construction for certain claim language below,” but it does not actually identify any claim language for construction, let alone provide any constructions. Prelim. Resp. 16–17. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a non-linear pathway.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,301,119 - PTAB · Sep 5, 2023 · IPR2023-00154 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success on the IMU–Okabe and IMU–Okabe–Li obviousness grounds and rejecting the § 315(b) time-bar argument.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“district court complaint does not trigger the time bar under § 315(b). Federal Rule of Civil Procedure 10 requires that “an exhibit to a pleading is a part of the pleading for all purposes.” Fed. R. Civ. P. 10(c); see also Rodriguez v. Fla. Dept. of Corrections, 748 F.3d 1073, 1076–77 (11th Cir. 2014) (“Because the Civil Rules require service of all pleadings, it follows that the exhibits to the pleading must also be served, regardless of whether they were filed at the same time.”); Sixta v. Thaler, 615 F.3d 569, 572 (5th Cir. 2010); Ringgold v. Burgett, Inc., No. 2:22-cv-00836, 2022 WL 8044117, at *2 (E.D. Cal. Oct. 17, 2022). Here, Exhibits A–D to the complaint filed in the district court are part of the complaint. See Ex. 1026.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 47). Patent Owner does not propose any claim construction in its Preliminary Response. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“given this laborious, non-graphical process for extracting a frame and creating a subsequent animation of the frame image in IMV6, a [person of ordinary skill in the art] would have been motivated to modify IMV6 (as described in IMU) by at least enabling a user to animate an already-extracted frame image using simpler and more intuitive graphical user commands. Id. at 68–69 (citing Ex. 1002 ¶ 168). Petitioner contends that “Okabe teaches simple and graphical user commands that a [person of ordinary skill in the art] would have found well-suited for implementing a GUI for at least animating an image (e.g., a frame image) in IMV6.” Id. at 69–70 (citing Ex. 1002 ¶ 170). According to Petitioner, “Okabe’s simple and graphical user commands thus enable creating looping animations ‘with less effort than with previous methods’ and ‘markedly reduces the user burden.’” Id. at 70 (citing Ex. 1009, 1–2; Ex. 1002 ¶ 170). Petitioner argues that a person of ordinary skill in the art “would have been motivated to modify IMV6 to include Okabe’s simple and graphical user commands to make the animation process easier, graphical, and less time consuming.” Id. (citing Ex. 1002 ¶ 171).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,621,469
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.