- Ironsource Ltd. v. Digital Turbine Inc.All claims unpatentablePTAB · Mar 12, 2024 · PGR2022-00053 · APJ Iftikhar Ahmed · PGR · Final written decision
Claims 1–22 are unpatentable under collateral estoppel; revised substitute claims 23–37 are allowed because Petitioner did not prove them unpatentable.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“The party seeking to invoke collateral estoppel must show: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against who collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google, 54 F.4th at 1381 (quoting In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)). Collateral estoppel may also operate to bar re-litigation of common issues in actions involving different but related patents. Mycogen Plant Science, Inc. v. Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001) (citing Amgen, Inc. v. Genetics Inst., Inc., 98 F.3d 1328, 1329–32 (Fed. Cir. 1996); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1136 (Fed. Cir. 1985)). We are persuaded that each of the four Google requirements is satisfied and, accordingly, agree with Petitioner that the challenged claims of the ’256 patent are unpatentable in light of our Final Written Decision in PGR2021-00096.” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). But “failing to account for the specific requirements of the claims” is what Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the focus of the claims” is captured by a single claim element (f3) not only ignores that that limitation recites performing two specific software tasks simultaneously—which we are not persuaded is an abstract idea—but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:12–41; Revised MTA 24–25. That is, under Step 2A of the Guidance, we are neither persuaded that limitation f3, which Petitioner points us to, recites an abstract idea (Prong 1), nor that the other limitations recited in the independent claims fail to integrate the alleged abstract idea into a practical application (Prong 2). Petitioner characterizes the claims as directed to multitasking, which Petitioner describes as an example applied to improve a user experience, i.e., as related to organizing human activity. Pet. 29. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See Guidance, 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity). The claimed invention may result in multitasking on the device, but the background instead of directing the user to an app store, thereby maintaining user experience with the foreground application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps—invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large). Petitioner thus fails to establish sufficiently that the claims are directed patent ineligible subject matter under Step 2A of the Guidance.” slip op. at 52
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“When the application package 172 has been received by the client system 130, the App Manager 180 may extract or retrieve a set of requested permissions 174 from the application package 172, and present a request to the user for asking for approval to perform operations corresponding to the requested permissions, e.g., opening files, accessing contact information, accessing a camera on the client device 130, and so on. . . . In particular embodiments, when the requested permissions 174 have been requested, and a response specifying a set of accepted permissions 176 has been received from the user, the set of accepted permissions 176 may be compared to the set of requested permissions 174. If the sets are the same, then the installation process may continue, and the App Manager 180 may invoke an installer 182 to install the application package 172. Ex. 1003, 8:67–9:22 (emphasis added). That is, the set of permissions to be checked are obtained by the App Manager once the download of the application package to be installed is initiated. See id. at 8:59–61 (“when the download is initiated by a request sent from the client system 130 to the server 162, the server 162 may send the requested object, e.g., the download page 168 or the application package 172, back to the client system 130”). And these permissions relate to operations that the installed applications may perform, e.g., opening files, accessing contact information, accessing a camera on the client device. Id. at 9:6–7. These permissions may also indirectly determine whether the installation client can install that app. See id. at 9:33–38. There is no suggestion in Pasha, however, that these permissions have anything to do with the host application, i.e., the second software application. said second software application is eligible to use capabilities of the installation client.” RMTA 25; see also Ex. 1001, 15:11–14 (“The installation client, upon receiving an instant install link, checks the eligibility of the caller and if identified as eligible continues the process of downloading the app.”). Pasha does not teach or suggest checking eligibility of its host application in any way or at any point. Moreover, as Patent Owner points out, Pasha’s App Manager performs the eligibility check after it downloads the app package, further supporting that Pasha’s eligibility check has nothing to do with the host application.9 Dr. Almeroth testifies that “Pasha discloses the App Manager 180 confirming that it has obtained the required permissions, which, in [his] opinion, a [person of ordinary skill in the art] would understand may include inter alia that the ‘second software application’ (e.g., the host application invoking the app manager) is eligible to use its capabilities.” Ex. 1035 ¶ 68. Dr. Almeroth fails to cite any supporting evidence or provide any technical reasoning to support his statement. Id. Because we find no basis in the record for Dr. Almeroth’s conclusion, we give little weight to this testimony.” slip op. at 40
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Almeroth testifies that “Pasha discloses the App Manager 180 confirming that it has obtained the required permissions, which, in [his] opinion, a [person of ordinary skill in the art] would understand may include inter alia that the ‘second software application’ (e.g., the host application invoking the app manager) is eligible to use its capabilities.” Ex. 1035 ¶ 68. Dr. Almeroth fails to cite any supporting evidence or provide any technical reasoning to support his statement. Id. Because we find no basis in the record for Dr. Almeroth’s conclusion, we give little weight to this testimony. 9 During oral argument, Petitioner pointed us to disclosure in Pasha that teaches that the permission dialog may be displayed to the user at different points in the download process. Tr. 47:24–48:8 (citing Ex. 1003, 22:21–42). As Patent Owner pointed out, this disclosure was not relied up on by Petitioner in its papers and is new evidence. Id. at 51:19–22; Paper 46, 4. Petitioner’s argument based on this new evidence is therefore forfeited. But even if we were to consider the cited disclosure from Pasha, it still only suggests that permissions need to come from the server after the download process has been initiated, and are therefore, unrelated to the host application. See Ex. 1003, 22:46–49 (“the requested permissions may be downloaded prior to downloading the application or may be extracted from the application package”). 24, 2022) (precedential) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”) (quoting 37 C.F.R. § 42.65(a)). As the Board explained in Xerox, such expert testimony “is particularly problematic in cases where, like here, expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art.” Id. (citing Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1361–62 (Fed. Cir. 2016)).” slip op. at 41
Patent outcomesUS 11,157,256 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Berkheimer · Enfish · PhillipsPatents in suitUS 11,157,256 - PTAB · Aug 11, 2023 · PGR2023-00013 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 on all asserted grounds; the Board found it more likely than not that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A post-grant review may be instituted only if “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons below, Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’286 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 9
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. “Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b), which is identical to 35 U.S.C. § 326(b)). Although rare circumstances may necessitate two petitions, “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Id. To help the Board determine whether multiple petitions are necessary, the Trial Practice Guide further instructs a petitioner filing multiple petitions challenging the same patent to explain “the differences between the petitions, why the issues addressed by the differences are material, and why identifies one petition that satisfies petitioner's burden under 35 U.S.C. § 314(a).” CTPG 59–60. Additionally, the Trial Practice Guide instructs the patent owner to “clearly proffer any necessary stipulations,” where the patent owner asserts that “the differences identified by the petitioner are directed to an issue that is not material or not in dispute.” Id. at 61. The patent owner may, for example, “seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.” Id. In light of the particular facts before us, we decline to exercise our discretion to deny the Petition pursuant to 35 U.S.C. § 324(a) on the basis of the filing of two parallel petitions. In particular, we recognize that the two petitions do not include duplicate attacks on the basis of unpatentability over prior art, but rather break the issues into two distinct parts—prior-art based unpatentability challenges, in PGR2023-00012, and 35 U.S.C. §§ 101 and 112 challenges here. The usual considerations of fairness, timing, and efficiency do not weigh in favor of exercising our discretion to deny institution. In particular, the petitions were filed concurrently, which means that Petitioner did not gain a timing advantage that might otherwise occur if the petitions were filed serially. Additionally, the proceedings can be coordinated, and a similar or common schedule can be adopted. To the extent that Patent Owner argues (see Prelim. Resp. 55–56) that Petitioner was attempting to avoid providing a single stipulation that (upon institution) Petitioner will pursue neither section 103 grounds on certain art, as per the stipulation offered in PGR2023-00012, nor section 101 and 112 grounds as per the stipulation here (see Pet. 49), discretionary denial of this Petition would not provide such a stipulation. Because we institute both here and in is equivalent to our best understanding of Patent Owner’s desired stipulation “tak[ing] into account” the two Petitions. Accordingly, based on the particular facts and circumstances before us, we decline to exercise our discretion to deny the instant Petition under § 324(a) on the basis of the Petitioner’s filing of multiple petitions.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Conclusion We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 23
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · Enfish · Phillips · NautilusPatents in suitUS 11,328,286 - PTAB · Aug 11, 2023 · PGR2023-00012 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 and all asserted grounds after finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“On this record, and for the purposes of institution, we agree that Petitioner has sufficiently shown that the information presented on the interface of the card device is not described in the ’891 provisional as being limited to use in an in-store merchant card reader facility. The ’891 provisional describes the card “connect[ing] to a personal computer” for use in generating payment information for online purchases. Ex. 1012 ¶ 17. While Patent Owner argues that the description in the ’891 provisional of “uniquely generat[ing] a credit card number” means a use “unique from that used for in-store transactions,” this description echoes the general description of the use of the card to provide “a unique credit card number . . . for each transaction.” Compare Ex. 1012 ¶ 14, with id. ¶ 17.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Because the trial in the district court litigation, under any of the parties’ proposed approaches, appears likely to begin several months before our deadline to reach a decision, this factor weighs in favor of discretionary denial.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We address the meaning of several claim terms below and determine that no additional claim construction is needed for purposes of this Decision.” slip op. at 23
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,328,286 - Ironsource Ltd. v. Digital Turbine Inc.InstitutedPTAB · Mar 17, 2023 · PGR2022-00053 · APJ Iftikhar Ahmed · PGR · Institution
The Board instituted PGR on claims 1–22 under § 101, § 102(a) over Pasha, and § 103 over Pasha, Pasha and Yamada, and Pasha and Molinet.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted unless it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition demonstrates it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons below, we find the plain and ordinary meaning of “invoke” or “invoking” to be to call or activate, as proposed by Petitioner. slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“to mean “to shift user interaction on the device,” and we disagree with Patent Owner that the claim term requires the shifting to take place without requiring a user interaction. We begin with the language of the independent claims. Claim 1 recites “redirect said device to an app store for downloading said first software application on said device.” Ex. 1001, 21:38–40. The claim language, therefore, does not recite any requirement relating to user interaction during the redirect.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“3. Other Claim Terms We determine that we do not need to expressly construe any other terms in order to determine whether to institute. The parties are reminded claim terms will be based on the complete record developed during trial.” slip op. at 17
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · PhillipsPatents in suitUS 11,157,256 - Ironsource Ltd. v. Digital Turbine Inc.All claims unpatentablePTAB · Jan 4, 2023 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Final written decision
Claims 1–18 are unpatentable; the contingent motion to amend proposing claims 19–36 is denied, and the parties’ motions to exclude are denied in part and granted in part.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleUnpatentable
“3. Analysis On the full record developed during trial, we are persuaded by Patent Owner’s argument. Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element (f3) not only ignores that that limitation recites performing two specific software tasks simultaneously—which we are not persuaded is an abstract idea—but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. That is, under Step 2A of the Guidance, we are neither persuaded that limitation f3, which Petitioner points us to, recites an abstract idea (Prong 1), nor that the other limitations recited in the independent claims fail to integrate the alleged abstract idea into a practical application (Prong 2). Petitioner characterizes the claims as directed to multitasking, which Petitioner describes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See Guidance, 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings . . . , and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances”). The claimed invention may result in multitasking on the device, but the claims are directed to downloading and installing an application in the background instead of directing the user to an application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps—invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large). Petitioner thus fails to establish sufficiently that the claims are directed patent ineligible subject matter under Step 2A of the Guidance. We also agree with Patent Owner that the challenged claims are somewhat similar to those that the Federal Circuit held patentable in DDR Holdings. The claims there were directed to a method of generating a composite webpage that combined visual elements of a host website with content from a third-party, e.g., by combining the logo, background color, and fonts of the host website with product information from a merchant. DDR Holdings, 773 F.3d at 1248. When a user clicked on a link on the host website, the system would construct the composite web page comprising a look and feel description from the host website along with content based on product information from the merchant’s product catalog. Id. at 1250. The court held those claims were not directed at an abstract idea because they addressed the problem of retaining website visitors that, absent the claimed invention, would be instantly transported away from a host’s website after clicking on an advertisement and activating a hyperlink. Id. at 1257.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“1. Independent Claim 1 a) “A mobile device configured for running software applications, comprising:” Petitioner contends that Pasha discloses computer system 600, which” slip op. at 38
- 112 supportMotion to amend, deniedDenied
“4. Support in the Original Disclosure A motion to amend may not present substitute claims that introduce new subject matter. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii) (“A motion to amend may be denied where . . . [t]he amendment seeks . . . introduce new subject matter.”). “Normally, a claim element without support in the original disclosure (i.e., the application as originally filed) merits a rejection under 35 U.S.C. § 112 for lack of written description support.” Lectrosonics, Paper 15, 7. Accordingly, a motion to amend must set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim.” Id.” slip op. at 74
- ExcludeMotion to exclude, grantedGranted in part
“CTPG at 73–74. Accordingly, Rule 42.23(b) prohibits filing of new evidence other than deposition transcripts of the cross-examination of any reply witness with a sur-reply. Patent Owner does not argue that the opinions presented in paragraphs 4–13 of Dr. Mao’s declaration are within the scope of §42.23(b). See generally PO MTE Opp. Nor do we find it in the interests of justice to allow this evidence in the case file. Accordingly, we grant in part Petitioner’s Motion to Exclude paragraphs 4–13 of Exhibit 2013 pursuant to 37 C.F.R. § 42.23(b).22” slip op. at 90
Patent outcomesUS 10,782,951 unpatentable§ 101 eligibility§ 102 anticipationcites Alice · Enfish · Phillips · KSR · GrahamPatents in suitUS 10,782,951 - Unified Patents, LLC v. Dolby Laboratories Licensing CorporationNo claims unpatentablePTAB · Jun 15, 2022 · IPR2021-00275 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 7, and 8 were not shown unpatentable because they were entitled to the April 23, 2012 priority date, making the asserted references unavailable as prior art.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Alleged RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja at 32. As in SharkNinja and AIT Remand, the alleged unnamed RPIs here have a relationship with the petitioner. SharkNinja at 16; AIT Remand at 20–21. Unlike in AIT Remand, however, neither Petitioner nor any of the Alleged RPIs were sued. SharkNinja at 2; AIT Remand at 24–26; Pet. Reply 28 (asserting that “[n]o one, including no [Petitioner] member, has challenged the patent, and, to [Petitioner’s] knowledge, no one has been sued or threatened with suit on it,” and that thus, “no alleged RPI is estopped under §315(e) and/or time-barred under §315(b), the framework’s driving policy considerations”) (citing AIT Remand at 2, SharkNinja at 32). Patent Owner does not dispute this. See, e.g., Paper 5 (Patent Owner’s Mandatory Notices), 2; PO Resp. 17–37. Accordingly, we determine that neither issues of time bar nor issues of estoppel are implicated. Under the Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., the Board’s jurisdiction to consider a petition does not require an identification of all RPIs in a petition. IPR2015-00739, Paper 38 at 5–6 (PTAB Mar. 4, 2016) (precedential); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of an issue that is not jurisdictional.”). The Federal Circuit has held that § 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (reiterating the Board’s aim to achieve a “just, speedy, and inexpensive resolution” of inter partes review proceedings and citing Lumentum’s holding that jurisdiction is maintained even where a petition does not identify all real parties in interest). In the present proceeding, there is no allegation that Petitioner’s exclusion of the Alleged RPIs should result in termination of the proceeding for any reason other than for the alleged failure of jurisdiction. See PO Resp. 21. Additionally, there is no allegation or evidence that any of the Alleged RPIs is barred or estopped from this proceeding, or that Petitioner purposefully omitted any of the Alleged RPIs to gain some advantage in our forum. Therefore, we decline to make the requested determination.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Alleged RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja at 32. As in SharkNinja and AIT Remand, the alleged unnamed RPIs here have a relationship with the petitioner. SharkNinja at 16; AIT Remand at 20–21. Unlike in AIT Remand, however, neither Petitioner nor any of the Alleged RPIs were sued. SharkNinja at 2; AIT Remand at 24–26; Pet. Reply 28 (asserting that “[n]o one, including no [Petitioner] member, has challenged the patent, and, to [Petitioner’s] knowledge, no one has been sued or threatened with suit on it,” and that thus, “no alleged RPI is estopped under §315(e) and/or time-barred under §315(b), the framework’s driving policy considerations”) (citing AIT Remand at 2, SharkNinja at 32). Patent Owner does not dispute this. See, e.g., Paper 5 (Patent Owner’s Mandatory Notices), 2; PO Resp. 17–37. Accordingly, we determine that neither issues of time bar nor issues of estoppel are implicated.” slip op. at 4
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“Alleged RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja at 32. As in SharkNinja and AIT Remand, the alleged unnamed RPIs here have a relationship with the petitioner. SharkNinja at 16; AIT Remand at 20–21. Unlike in AIT Remand, however, neither Petitioner nor any of the Alleged RPIs were sued. SharkNinja at 2; AIT Remand at 24–26; Pet. Reply 28 (asserting that “[n]o one, including no [Petitioner] member, has challenged the patent, and, to [Petitioner’s] knowledge, no one has been sued or threatened with suit on it,” and that thus, “no alleged RPI is estopped under §315(e) and/or time-barred under §315(b), the framework’s driving policy considerations”) (citing AIT Remand at 2, SharkNinja at 32). Patent Owner does not dispute this. See, e.g., Paper 5 (Patent Owner’s Mandatory Notices), 2; PO Resp. 17–37. Accordingly, we determine that neither issues of time bar nor issues of estoppel are implicated.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“With the exception of the date applied, the two definitions appear, on the whole, consistent. Petitioner specifies the qualifications that one of ordinary skill in the art would have had as of July 2016, whereas Patent Owner’s declarant ties the qualifications to April 2012. The record provides no reason that the differences between the two definitions are attributable to the dates provided. We adopt Petitioner’s proposed level of ordinary skill in the art, which we determine would apply at all relevant times. This level of skill comports with the teachings of the ’577 patent and the asserted prior art. Our analysis would be the same if we applied the level of skill described by Patent Owner’s declarant at all relevant times.” slip op. at 13
Patent outcomesUS 10,237,577 not shown unpatentable§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,237,577 - Ironsource Ltd. v. Digital Turbine Inc.InstitutedPTAB · Jan 6, 2022 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Institution
Instituted PGR on claims 1–18 under § 101, claims 1, 3–12, and 14–18 under § 102(a) over Pasha, and the listed § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted unless it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition presents information demonstrating it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“For the purposes of this Decision, we agree with Petitioner. Figure 7 of the ’951 patent shows the Downloader & Installer Module as a module within the “installation client,” not as the installation client itself. Ex. 1001, 14:4–45 (discussing “installation client 700” and its various modules); Fig. 7 (showing Download & Installer 720 as part of Installation Client 700). The ’951 patent states: Installation client 700 is represented as several modules performing separate functions. The division of functionality demonstrated in FIG. 7 is illustrative, and not intended to be limiting. Other embodiments of an installation client may organize the various functions performed by the installation client 700 in a different manner. Id. at 14:6–12. Accordingly, the proper construction of the term “installation client” does not limit the number or arrangement of components” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). But “failing to account for the specific requirements of the claims” is what Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element not only ignores that that limitation recites installing software, which we are not persuaded is an abstract idea, but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. Nor are we persuaded by Petitioner’s characterization of the claims as directed to multitasking, which Petitioner characterizes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings except in rare circumstances”). Although the claimed invention may result in multitasking on the device, the claims are directed to downloading and installing an application in the background instead of directing the user to an app store, thereby maintaining user experience with the foreground application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps— invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (finding claims that address the problem of retaining website visitors after clicking on an advertisement hyperlink not directed to an abstract idea). Accordingly, based on the current record, we question whether Petitioner establishes sufficiently that the claims are directed to a judicial exception under Step 2A of the Guidance. Nevertheless, because Petitioner has shown that it is more likely than not that challenged claims are unpatentable under 35 U.S.C. §§ 102, 103 (see infra §§ III.F–I), we include this ground in the instituted post-grant review. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to embracing all challenges included in the petition”).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As discussed above (supra Section II.C.1), at this preliminary stage, we do not construe “installation client” so narrowly as to limit the number or arrangement of components required to meet that claim element. Also, as discussed above (id.), the specification of the ’951 patent supports that multiple modules performing separate functions may comprise the installation client. Therefore, based on our review and consideration of the current record, we are not persuaded by Patent Owner’s argument that Pasha fails to disclose the claimed installation client. Petitioner’s arguments are inconsistent across the Petition. The Petition clearly alleges that “the App Manager 180 and Installer 182 disclose the claimed ‘installation client for downloading and installing applications on said device.’” Pet. 58. Petitioner’s description of Pasha’s App Manager is consistent with Pasha’s disclosure itself. For example, although Pasha discloses that “the host application 132 may use an App Manager component 180 and an Installer component 182,” it also states that “[t]he App Manager 180 may control portions of the application download and install process.” Ex. 1003, 17:22–26; Pet. 38. Pasha further discloses that “[t]he App Manager 180 [itself] may perform at least a portion of one or more of the steps 310–350 of FIG. 3,” i.e., including the step of “[i]nstalling the downloadable application on the computer system from the application package by executing program code having permission to install applications.” Ex. 1003, 17:35–36, Fig. 3. Patent Owner’s argument that Pasha’s “App Manager does not have the role of installing software applications,” is therefore contrary to Pasha’s disclosure. Also, Petitioner’s reasoning and evidentiary underpinnings here are based not so much on modifying Pasha, as Patent Owner suggests, as explaining how one of ordinary skill in the art would have understood Pasha’s disclosure. Between its App Manager and Installer, Pasha discloses the claimed functionality of the “installation client,” but, similar to the ’951 patent, Pasha teaches flexibility between the use of those components to implement the claimed functionality. For the purposes of institution, we are unpersuaded that Petitioner fails to meet its threshold burden of showing anticipation under Net MoneyIN. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (explaining that a reference need not always as it teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination). Based on our review of the current record, we therefore determine that the information presented supports sufficiently, for the purpose of institution, Petitioner’s assertion that Pasha discloses this limitation.” slip op. at 26
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · PhillipsPatents in suitUS 10,782,951 - Unified Patents Inc. v. KCG Technologies LLCAll claims unpatentablePTAB · Feb 10, 2021 · IPR2019-01536 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–13 are unpatentable as obvious; the revised motion to amend is denied because proposed substitute claims 14–26 are unpatentable as obvious or indefinite.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“We agree with Petitioner. Proposed substitute claim 24 recites “the handheld device” without antecedent basis. This lack of antecedent basis renders proposed substitute claim 24 indefinite, as we noted in our Preliminary Guidance. Pet. Opp. to RMTA 25; Prelim. Guidance 8 (“Proposed substitute claim 24 also recites ‘the handheld device’ and also suffers from the lack of antecedent basis). Despite having the opportunity to correct its error and amend proposed substitute dependent claim 24 when independent claim 14 was amended to remove the recitation of “a handheld device,” Patent Owner did not do so in its Contingent Revised Motion to Amend. RMTA 31. Proposed substitute claim 24 is indefinite because the claim “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021)13; see MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020). This is because “the handheld device” is only recited in proposed substitute claim 24, and the proposed substitute claim fails to inform one skilled in the art the scope of invention related to synchronizing “data on the handheld device” “in the virtual smart phone.” Because proposed substitute claims 25 and 26 depend from proposed substitute claim 24, we similarly agree with Petitioner that claims 25 and 26 also are indefinite for lacking an antecedent basis for the term “handheld device.” Pet. Opp. to RMTA 25. Accordingly, we determine Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 24–26 are unpatentable under 35 U.S.C. § 112 as indefinite.” slip op. at 40
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). When the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). A claim preamble also is limiting if the preamble is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc., 182 F.3d at 1305. We disagree with Patent Owner. Specifically, we do not agree that limitations in the body of the claims require the preamble to serve as an antecedent basis nor do they derive essential structure from the preamble. Rather, all of the elements recited in the body of claim 1 comprise a “virtual smart phone.” That is, we do not discern, and Patent Owner fails to persuasively point us to, any structure imparted by the preamble’s recitation of a “virtual smart phone.” See Pet. Reply 1–2. We similarly do not agree that the without the term “virtual smart phone” there would be no understanding of the “emulating” or “handheld device” limitations. Rather, the recited “software application executing on the processor” limitation provides the structure and meaning for the “emulating” of the “handheld device” features. Furthermore, we agree with the Petitioner that there is no evidence in the record that the prosecution history requires that the preamble is limiting, and the claims were distinguished during prosecution based on the recitation of a “virtual” smart phone. Id. at 2–3. Accordingly, we do not agree with Patent Owner that the preamble is limiting. slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“on the process to . . . emulate features of a handheld device.” Ex. 1001, 12:58–60 (emphasis added). Patent Owner argues that the term “‘emulate’ has a meaning in the art that is common and understood to mean ‘to imitate.’” PO Resp. 18. Patent Owner provides a dictionary definition to support its contention. Ex. 2004 (defining “emulate” as “to imitate in an effort to equal or surpass”). Patent Owner contends the use of “emulate” in claim 1 comports with its commonly understood meaning as “to imitate,” as does the use of the term “emulate” in the written description. Pet. 18–20 (citing Ex. 1001, 1:66–2:3, 2:6–3:5, 12:54–13:2 (claim 1)). Petitioner argues that the term “emulate” should be given its plain and ordinary meaning and does not contest Patent Owner’s construction of the term “emulate” as “to imitate.” Pet. 6–7; Pet. Reply 7. Petitioner, however, contests Patent Owner’s application of that construction to the asserted prior art. Pet. Reply 4–7 (citing Ex. 1034 ¶¶ 24–26). Petitioner specifically argues that Patent Owner implies that “(1) the imitation must be an exact duplicate in display and manner of input . . . or (2) the imitation relates only to the display and touch screen aspects.” Pet. Reply 4–5. In support of its position that Patent Owner’s interpretation of “to imitate” improperly narrows the meaning of “emulate,” Petitioner contends the written description discloses “less than full replication as emulation” and “controlling the handheld device th[r]ough control of a projected image using a variety of control input mechanisms provides emulation.” Pet. Reply 5–6 (citing Ex. 1001, 2:2–5, 3:57–61, 4:63–66, 6:24–42). Petitioner also notes that the dictionary definition Patent Owner proffered indicates that an exact duplication is not required. Pet. Reply 7 (“The complete definition of emulate [as] ‘to imitate in an effort to equal or surpass.’ Ex. 1004, 3”). We conclude that a preponderance of evidence supports the construction of the term “emulate” to mean “to imitate,” without any further restriction such as exact duplication or only display or touch screen aspects. Accordingly, we construe the term “emulate” as “to imitate.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at or before the priority date of the ’955 patent “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in the field of automotive information systems.” Pet. 6 (citing Ex. 1002 ¶¶ 38–39); Ex. 1034 ¶ 14 (Petitioner’s expert reiterating the same level of ordinary skill in the art). Patent Owner does not propose an ordinary level of skill in the art. We agree with and adopt the level of ordinary skill in the art as articulated by Petitioner.” slip op. at 10
Patent outcomesUS 9,671,955 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,671,955 - Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentablePTAB · Aug 14, 2017 · CBM2016-00034 · APJ Barbara A Benoit · CBM · Final written decision
Claims 1–24 are unpatentable under § 101; claims 1–3 and 5 are also anticipated by Riach, and specified claims are obvious over combinations of Riach, Graf, Gustin, and Anderson.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“For these reasons, we determine that claim 20—its focus and its” slip op. at 37
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“For the foregoing reasons, we conclude that claim 20 is directed to an” slip op. at 52
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“encompasses Riach’s process that copies a portion (but not all) of the original check image data to produce the required modified check image data. Accordingly, we agree that the portion of Riach on which Petitioner relies discloses step (b) of claim 1 that requires, among other limitations, the modified check image data not include at least some visual feature data included in the check image data. Pet. 30 (relying on Ex. 1008, 5:16–30, Figs. 4, 7).” slip op. at 73
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 89
Patent outcomesUS 7,314,163 unpatentable§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Enfish · Electric Power · Phillips · GrahamPatents in suitUS 7,314,163 - Ultratec, Inc. v. Captioncall, L.L.C.Institution deniedPTAB · Feb 22, 2017 · PGR2016-00037 · APJ Barbara A Benoit · PGR · Institution
The Board denied institution on all challenged claims because the petition did not show that any claim was more likely than not unpatentable under § 101 or § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1–23 of U.S. Patent No. 9,197,745 B1 (Ex. 1001, “the ’745 patent” or “the challenged patent”). Paper 1 (“Pet.”). Patent Owner, CaptionCall, L.L.C., filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). After considering the Petition and the Preliminary Response, we determine that the information presented in the Petition does not demonstrate it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.200(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable construction standard in inter partes review9). Consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for “message” recited in claims 2, 4–8, and 12 and for “module” recited in claims 2–6 and 8. Pet. 9–11. Patent Owner challenges Petitioner’s proposed claim constructions as overly narrow. Prelim. Resp. 8–9. We determine, however, that no claim terms need express construction for this decision.” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“We agree with Patent Owner (Prelim. Resp. 12) that claim 1, as a whole, is directed to an apparatus that facilitates voice communication and captioned text communication using a relay for hearing-impaired users over one or more communications networks and, under specified circumstances— when captioning has been enabled by the hearing-impaired user and the system determines that an attempted connection has failed—automatically reconnects to a captioning communication service. In other words, the claim is directed to a communication device that automatically reconnects to a captioning communication service following an unwanted interruption to the 12 captioning communication service in certain circumstances. See Ex. 1001, 1:13–16 (describing the field of the disclosure as relating to a communication device that automatically reconnects to the captioning communication service “following an unwanted interruption to the captioning communication session”). We determine that claim 1 as a whole is not directed to redialing a telephone as “callers have performed for as long as there have been telephones.” See Pet. 20. Moreover, the claim is directed to an apparatus having communication elements and a processor, and requires two connections and captioning, which, taken as a whole, distinguish claim 1 from a conventional telephone and further supports our determination that the claim merely involves, but is not directed to, the concept of reconnection or redialing. Moreover, looking at the elements individually, claim 1 requires communication elements coupled with a processor configured to able to connect a communication device and connect with a captioning session over two connections. Claim 1 recites a function—“automatically connect with the captioning communication service through a second connection to establish a captioning communication session during the voice communication session responsive to a determination that an attempted connection to the captioning communication service failed during a time in which a caption select option has been enabled by the hearing-impaired user, wherein the attempted automatic connection through the second connection is not made during a time in which the caption select option has been 13 disabled by the hearing-impaired user”—which requires more than “redialing” a telephone. See Prelim. Resp. 11–12. Specifically, the claimed apparatus only performs the “automatically connect” function if three conditions are met: (i) responsive to a determination that an attempted connection to the captioning communication service failed (ii) during a time in which a caption select option has been enabled by the hearing-impaired user, and (iii) “the attempted automatic connection through the second connection is not made during a time in which the caption select option has been disabled by the hearing-impaired user.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“excerpts from Parker as purportedly describing aspects of the automatically reconnect limitation. Id. at 40–42. Petitioner does not assert that either the Ultratec User Guide or Parker alone would have conveyed to one of ordinary skill in the art the automatically connect function with the three conditional limitations (id.), nor is such an assertion required under 35 U.S.C. § 103. Petitioner is required under 35 U.S.C. § 103, however, to explain how the combination of the references would have conveyed to one of ordinary skill 25 in the art the recited automatically connect function with its three conditional limitations. Petitioner has not provided such an explanation, much less adequate analysis by Mr. Zatkovich or factual support as to how one of ordinary skill in the art would understand the separate disclosures of the references to teach the automatically connect limitations. Specifically absent from the Petition is any discussion as to how Petitioner’s combination of references would have conveyed to one of ordinary skill in the art the limitations of automatically connecting under the required conditions—the failed attempt limitation, the when-enabled limitation, and the when-not-disabled limitation. Petitioner’s combination relies on Parker’s reconnection function to establish a lost persistent connection, but Parker’s reconnection function does not do so conditionally, much less under the specific conditions required by claim 1. Petitioner does not explain how the combination of Parker’s unconditional reconnection function would be understood by one of ordinary skill in the art to retry conditionally based on whether the Ultratec User Guide’s caption button was enabling captioning and had not been disabled by the caption telephone user. Furthermore, Petitioner contends that “adding an auto-retry and/or auto-reconnect feature as in Parker to a captioned telephone device as disclosed in [the Ultratec User Guide and Engelke] would amount to simply adding a known technique to a known system, wherein the technique operates in the same way as it was already known to operate and dos not have any unpredictable result.” Pet. 34. As such, Petitioner’s combination 26 expressly relies on Parker’s auto-retry and/or auto-reconnect feature “as in Parker,” which is an unconditional retry in the event of a lost connection. In sum, neither reference by itself describes the automatically reconnect limitation and Petitioner fails to articulate how one of ordinary skill in the art would have understood the claimed automatic reconnect in view of the cited disparate disclosures from the references. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner asserts in a conclusory manner that the combination of a teaching of a button to enable or disable captioning with a teaching of automatic reconnection unrelated to whether captioning is enabled or disabled would have conveyed to one of ordinary skill in the art the automatic reconnection limitation. Petitioner fails to provide adequate explanation or factual support. This flaw of the Petition is particularly problematic when the threshold for institution is “more likely than not,” as here, rather than the threshold of “a reasonable likelihood” required to institute an inter partes review. Compare 35 U.S.C. § 324(a), with 35 U.S.C. § 314(a).” slip op. at 25
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSRPatents in suitUS 9,197,745
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.