- Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 24, 2023 · IPR2021-01294 · APJ Sheila F Mcshane · IPR · Final written decision
The Board held all challenged claims 1–25 unpatentable under the asserted obviousness grounds and denied Patent Owner’s contingent motions to amend.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Snap proposes that a person of ordinary skill in the art at the time of the ’599 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of content presentation and context-based systems/processes.” Snap Pet. 3 (citing Snap IPR, Ex. 1002 ¶¶ 30–32); Snap IPR, Ex. 1022 ¶ 32. Snap further asserts that additional “education can supplement practical experience and vice versa.” Id. In the Decision on Institution, we determined that Snap’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’599 patent. Snap Inst. Dec. 6–7. For this proceeding, Patent Owner and Dr. Martin apply this level of skill in the art. Snap PO Resp. 11–12; Snap IPR, Ex. 2003 ¶¶ 48–50. Accordingly, for the reasons given in the Decision on Institution, we adopt Snap’s proposed level of ordinary skill in the art. Snap Inst. Dec. 6–7.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Dr. Martin also provides consistent testimony on this issue. Snap IPR, Ex. 2003 ¶¶ 81–82. Put simply, the Specification’s disclosure is that the set of rules for multiple content packages includes an expected response, and actions are then performed based on whether an expected response is or is not provided. Moreover, as Dr. Almeroth testifies, neither the claims nor the Specification use the term “unexpected response”—rather the Specification only identifies an “expected response.” Snap IPR, Ex. 1022 ¶ 42. Accordingly, the disclosures in Table 1 and the Specification support Dr. Almeroth’s testimony that a person of ordinary skill would have understood that “the claimed ‘determin[e/ing]’ limitation requires what it plainly recites: ‘determin[e/ing] whether the received response matches the expected response[]’. . . . [i]t does not require an unexpected response not known to the system.” Snap IPR, Ex. 1022 ¶ 51.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“time,’ ‘type of location,’ and other contextual information to automatically determine whether users would like to undertake learning activities.” Twitter Pet. Reply 18 (citing Twitter IPR, Ex. 1005, 2 3, 5 (“A check . . . to see if the information from the database corresponds with the location sensor (i.e. a check on whether the learner is really keeping his/her schedule).”), Fig.1; Twitter IPR, Ex. 1025 ¶ 49; Twitter IPR, Ex. 1003 ¶¶ 85, 157–162, 238, 435, 451, 517; Twitter Pet. 20–21). Accordingly, the evidence of record support that Yau teaches that context triggers the display of a content piece, such as an exercise/test/quiz. Patent Owner also argues that Twitter asserts that PALLES’ content piece is “‘exercise[s],’ ‘test[s],’ and/or ‘MP Quiz[zes],’” but also contends that Yau’s “formal assessment” is the claimed content piece. Twitter PO Resp. 32. Patent Owner argues that “Twitter points back to its limitation 12.1 PALLAS evidence for the purported ‘content piece’” and also does not mention Yau for limitation 12.5 and 12.6 and “only conclusorily states that ‘PALLAS in view of Yau renders obvious triggering an exercise/test/quiz.’” Id. Patent Owner’s arguments overlook Twitter’s assertion, with Dr. Turnbull’s supporting testimony, that a person of ordinary skill in the art would have understood that Yau’s formal assessments are “tests with answers for comparing against learner’s responses to assess knowledge/performance/skill (contrasting with ‘un-assessed’ exercises whose responses are unchecked).” Twitter Pet. 43; Twitter IPR, Ex. 1003 ¶ 154. Further, Patent Owner overlooks Petitioner’s assertion that it is implementing PALLAS’s context-triggerbased content display using Yau’s teachings of displaying assessments/questions based on context. Twitter Pet. 43. Patent Owner also asserts that in the PALLAS-Yau combination, Twitter does not explain how a person of ordinary skill in the art would have combined the prior art in the manner Petitioner alleges. Twitter PO Resp. 42. Patent Owner argues that “PALLAS says nothing about forcing quizzes, tests, or exercises on its users without the users asking for such exercises,” and a person of skill would understand that the combined system still requires that a student select a learning activity and that PALLAS’s system should be unobtrusive because learners “may have small time slots to engage in learning.” Id. (citing Twitter IPR, Ex. 2013 ¶ 168; Twitter IPR, Ex. 1004, 54). Patent Owner further contends that “Twitter’s conclusory, hindsight-driven statements” do not suffice and PALLAS teaches away from the modifications suggested by Twitter. Id. at 42–43 (citing Twitter IPR, Ex. 2013 ¶ 144). Patent Owner argues that because a learner may not have time to complete a test, a person of ordinary skill in the art would not be motivated to change PALLAS to trigger exercises/tests/quizzes based on location or time. Id. at 43 (citing Twitter IPR, Ex. 2013 ¶¶ 142–144). The evidence of record does not support Patent Owner’s arguments.” slip op. at 115
- ScopeMotion to amend, grantedGranted
“2. Enlarging Scope of Claims Patent Owner asserts that it proposes narrowing limitations in direct response to the grounds of unpatentability involved in this proceeding. See, e.g., Snap Mot. 3–4. Facebook argues Patent Owner is “improperly attempting to enlarge the scope of the original claims.” Facebook Pet. Opp. 1. Facebook asserts, “[i]f ‘an expected response’ means one or more expected responses, therefore, determining whether the received response ‘matches the expected response’ means that the received response must match [all of] the one or more previously-recited expected responses in the content package.” Id. at 3 (emphasis omitted). Facebook then argues “the term ‘predefined response’ is broader than ‘expected response,’” because “an ‘expected response’ does not include any conceivable or possible response; it is a response that is expected.” Id. at 4–5 (emphasis omitted). Twitter argues that “‘predefined response’ is broader than ‘expected response’ because a ‘predefined response’ can include any possible response as long as that response has been somehow defined in advance.” Twitter Pet. Opp. 2. We consider the amendments in view of the claim as a whole. Although the term “one predefined response” may be broader than “an expected response,” we also consider the amended portion “wherein the received response is expected if the received response matches one or more of the at least one predefined response,” and “the received response is unexpected if the received response does not match any of the at least one predefined response.” Unless the response had been predefined within the content package, any “received response” could not be considered “expected” under the claims, and the additional clause requires a match of the response with the predefined response to be deemed “expected.” This equates to an equivalent scope to the original claim. This is consistent with Dr. Martin’s testimony, which we credit, that he is not aware of a situation where the substitute but not original claims are infringed because “[t]he substitute claims would only be satisfied when a ‘predefined response’ in the substitute claims is an ‘expected response’ in the original claims.” Facebook IPR, Ex. 2023 ¶ 59.” slip op. at 136
Patent outcomesUS 8,489,599 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · GrahamPatents in suitUS 8,489,599 - Freedom To Operate, Inc. v. Compass Pathfinder LimitedInstitution deniedPTAB · Jun 22, 2022 · PGR2022-00018 · APJ Tina E Hulse · PGR · Institution
The Board denied institution on claims 1–23 because Petitioner did not show it was more likely than not that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“post-grant review may not be instituted “unless . . . the information presented in the petition . . ., 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.” Upon considering the arguments and evidence presented by the parties, we determine Petitioner has not demonstrated that it is more likely than not that any of the claims challenged in the Petition are unpatentable.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityNot reached
“G. Remaining Arguments Patent Owner also argues we should deny the Petition for failure to identify all real parties-in-interest in the Petition. Prelim. Resp. 31–44. Because we determine that Petitioner has not sufficiently established that in this Decision.” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had an advanced degree (i.e., a Master’s degree with two or more years of experience, or a Ph.D.) in inorganic or organic chemistry, chemical engineering, pharmacology, or a related discipline” and “would be familiar with medicinal chemistry or pharmaceutical chemistry, and with analytical methods to characterize and differentiate solid forms of compounds, (‘DSC’) and thermogravimetric analysis (‘TGA’).” Pet. 27 (citing Ex. 1106 ¶ 38). Petitioner further contends that “[a]lternatively, one of ordinary skill could have less education and approximately five or more years of relevant experience.” Id. Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. See generally Prelim. Resp. Absent opposition from Patent Owner, we adopt Petitioner’s definition because it is consistent with the level of ordinary skill in the art reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner’s proposed construction, as it is most consistent with the intrinsic evidence. The claim language makes clear that “Polymorph A” is “characterized by” the specific peaks set forth in the claims. Ex. 1101, claims 1, 8, 16. Thus, regardless of the alleged conventional definition of a “polymorph,” urged by Petitioner, the inventors are entitled to act as their own lexicographers to define “Polymorph A” according to the recited peaks on the XRPD diffractogram. See Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1361 (Fed. Cir. 2007) (“When a patentee defines a claim term, the patentee’s definition governs, even if it is contrary to the conventional meaning of the term.”). That the Specification consistently refers to “Polymorph A” as a proper noun and describes Polymorph A as “characterized by” the recited peaks in an XRPD diffractogram further highlights the inventors’ clear intent to act as their own lexicographer. See, e.g., Ex. 1101, 4:4–5:36; Merck & Co. v. Teva Pharms. USA, 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts away from their ordinary meaning, he must clearly express that intent in the written description.”). Finally, we agree with Patent Owner that the prosecution history of the parent ’257 patent is relevant to the construction of the claims of the ’259 patent, which is a continuation of the ’257 patent. Prelim. Resp. 6 (citing Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1350 (Fed. Cir. 2019) (“Statements made during prosecution of a parent application are relevant to construing terms in a patent resulting from a continuation application if such statements relate to the subject matter of the claims being construed.”)). During prosecution of the parent ’257 patent application, the examiner rejected original claim 1 as indefinite because it did not define “Polymorph A,” and required one to “refer to the specification to determine what is Polymorph A.” Ex. 2133, 7. Patent Owner then amended the claims to define Polymorph A by adding the specific XRPD peaks recited in claim 1. Ex. 2134, 2; see also id. at 6. Thus, we find the intrinsic evidence supports Patent Owner’s proposed construction.” slip op. at 9
Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,954,259 - Freedom To Operate, Inc. v. Compass Pathfinder LimitedInstitution deniedPTAB · Jun 22, 2022 · PGR2022-00012 · APJ Tina E Hulse · PGR · Institution
The Board denied institution of PGR on claims 1–23 because Petitioner did not show it was more likely than not that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . ., 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.” Upon considering the arguments and evidence presented by the parties, we determine Petitioner has not demonstrated that it is more likely than not that any of the claims challenged in the Petition are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had an advanced degree (i.e., a Master’s degree with two or more years of experience, or a Ph.D.) in inorganic or organic chemistry, chemical engineering, pharmacology, or a related discipline” and “would be familiar with medicinal chemistry or pharmaceutical chemistry, and with analytical methods to characterize and differentiate solid forms of compounds, particularly XRPD, but also including differential scanning calorimetry (‘DSC’) and thermogravimetric analysis (‘TGA’).” Pet. 28 (citing Ex. 1006 ¶ 35). Petitioner further contends that “[a]lternatively, one of ordinary skill could have less education and approximately five or more years of relevant experience.” Id. Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. See generally Prelim. Resp. Absent opposition from Patent Owner, we adopt Petitioner’s definition because it is consistent with the level of ordinary skill in the art reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner’s proposed construction, as it is most consistent with the intrinsic evidence. The claim language makes clear that “Polymorph A” is “characterized by” the specific peaks set forth in claim 1. Ex. 1001, claim 1. Thus, regardless of the alleged conventional definition of a “polymorph,” urged by Petitioner, the inventors are entitled to act as their own lexicographers to define “Polymorph A” according to the recited peaks on the XRPD diffractogram. See Honeywell Int’l, Inc. v. Universal Avionics a claim term, the patentee’s definition governs, even if it is contrary to the conventional meaning of the term.”). That the Specification consistently refers to “Polymorph A” as a proper noun and describes Polymorph A as “characterized by” the recited peaks in an XRPD diffractogram further highlights the inventors’ clear intent to act as their own lexicographer. See, e.g., Ex. 1001, 4:4–5:36; Merck & Co. v. Teva Pharms. USA, 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.”). Finally, during prosecution of the ’257 patent application, the examiner rejected original claim 1 as indefinite because it did not define “Polymorph A,” and required one to “refer to the specification to determine what is Polymorph A.” Ex. 1060, 7. Patent Owner then amended the claims to define Polymorph A by adding the specific XRPD peaks recited in claim 1. Ex. 1062, 2; see also id. at 6. Thus, we find the intrinsic evidence supports Patent Owner’s proposed construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Having considered the parties’ respective arguments and evidence, we find Patent Owner has the better position. Although we agree with Petitioner that some degree of experimental error should be factored into the specific peaks of a diffractogram, the claim language already does so by expressly reciting a variance of “±0.1°2θ.” See Ex. 1001, claim 1. Construing the claims to include an additional degree of variance would effectively read out the “±0.1°2θ” limitation of the claims. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”). Moreover, we note that the express recitation of a specific variance distinguishes the ’257 patent claims from the claims of the Astrazeneca cases cited by Petitioner, which did not recite such a variance. See Pet. 11–12. In addition, the Specification consistently refers to a variance of ±0.1°2θ whenever it refers to peaks on a diffractogram. See generally Ex. 1001, 3:58–5:24. Petitioner acknowledges that the claims recite a range of peak locations, but argues that the Specification “does not explain the basis for the claimed range.” Pet. 10. Petitioner, however, does not explain why the Specification would need to explain that basis, particularly if a person of ordinary skill in the art would understand that ±0.1°2θ is an acceptable variance for XRPD.” slip op. at 13
Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,947,257 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - Emerson Electric Co. v. Sipco, LLCAll claims unpatentablePTAB · Jan 16, 2018 · CBM2016-00095 · APJ Joni Y Chang · CBM · Final written decision
Claims 1, 7, 9, 16, and 17 are unpatentable under § 101 and § 103(a) over Tymes; unpatentability under § 112, ¶ 1 was not shown.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Upon consideration of the parties’ contentions, we are not persuaded by Patent Owner’s arguments, as they conflate “power” with “transmission range”—the claim term recites “low-power,” not “low-transmission range.” We agree with Petitioner that Patent Owner’s proposed construction would import improperly a limitation into the claims, and we credit Mr. James T. Geier’s testimony (Ex. 1038 ¶¶ 34−39) as it consistent with the other evidence of record before us. We address below each of Patent Owner’s arguments in turn. First, Patent Owner argues that “the claim language itself indicates that the claimed low-power transceiver transmits low-power signals,” citing the language of claim 2, “wherein the low-power signal comprises a logical IP address.” PO Resp. 12 (citing Ex. 1001, 14:60–61). However, “the low-power signal” does not necessarily require a transceiver to transmit signals having a limited transmission range. Patent Owner does not explain meaningfully, or provide persuasive evidence to show, how a “low-power signal” is necessarily related to the transmission range of a transceiver. Consistent with the plain and ordinary meaning of the term, “a low-power transceiver” refers to a transceiver that consumes less power, e.g., by transmitting and receiving low power signals. Ex. 1038 ¶¶ 34−39.” slip op. at 23
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“However, Patent Owner’s arguments are not commensurate in scope with the claims. The purported problems that arose with the development of networks hosting wireless device—unlawful interruption of that data, interference, and contention—are addressed by using an extremely low-power transmitter. Ex. 1001, 5:65−6:11. As discussed above, the challenged claims recite a generic “low-power transceiver,” not an extremely low-power transmitter. Additionally, the alleged problem of transforming data to a different protocol is addressed by an unclaimed feature, as the ’842 patent itself recognizes that the invention is not necessarily limited to certain protocol or requires a protocol conversion. Id. at 13:55−14:5. Moreover, the challenged claims do not requires a protocol conversion or recite a device for converting data from one protocol to a different protocol. Rather, they recite generically a “network of addressable devices.” Patent Owner’s argument that the claims are “directed to an improvement in communication technology between remote devices that are accessible by wireless communication and a central location via a circuit interface” is unavailing. Significantly, the claims are not directed to a new type of transceiver, interface circuit, or controller to establish a communication link between a remote device and the central location. Instead, the claims are directed to transmitting data between locations using conventional or generic computer components. The challenged claims essentially recite a device for communicating information that comprises: (1) a low-power transceiver for transmitting or receiving data; (2) an interface circuit for communicating with a central 33 location; and (3) a controller for establishing a communication link. The Specification confirms that these features were known in the art. Ex. 1001, 5:23–25, 6:62–64 (“As is well known by those skilled in the art, a variety of transducers can perform this functionality adequately.”), 10:13–15 (“[T]he controller 256 may be a general purpose microprocessor or microcontroller.”), 10:21–23 (“The interface 258 within the transceiver 270 is designed to interface with this typical/standard telephone circuitry 263.”), 10:23–26 (“The specific implementation of the circuitry of [interface] 258 will be appreciated by persons skilled in the art and need not be described in detail herein.”). Indeed, the FCC Bulletin also confirms that low-power wireless transmitters were “used virtually everywhere,” noting that “[c]ordless phones, baby monitors, garage door openers, wireless home security systems, keyless automobile entry systems and hundreds of other types of common electronic equipment rely on such transmitters to function.” Ex. 2001, 1. Moreover, the ’842 patent itself recognizes that the communication link between the remote device and central location can be established by initiating a phone call over a telephone line that is part of the public-switched telephone network. Ex. 1001, 2:34−38. There is no dispute that such a communication link was known in the art. Id. at 10:21−26.” slip op. at 33
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“38 For the foregoing reasons, we are persuaded that Petitioner has demonstrated sufficiently that claims 1, 7, 9, 16, and 17 of the ’842 patent are directed to a patent-ineligible abstract idea. Whether the challenged claims lack a patent-eligible inventive concept Turning to the second step in the analysis, we look for additional elements that can “transform the nature of the claim” into a patent-eligible application of an abstract idea. That is, we determine whether the claims include an “inventive concept,” i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2357. The additional elements must be more than “well-understood, routine, conventional activity.” Mayo, 768 S. Ct. at 1297−98. Here, Petitioner argues that claims 1, 7, 9, 16, and 17 are unpatentable because they are “directed only to an abstract idea with nothing more added than generic computing components and ‘well-understood, routine, conventional activity’ previously performed in the field (both individually and as an ordered combination in the claims).” Pet. 23–24 (citing Mayo, 132 S. Ct. at 1294). According to Petitioner, the challenged claims “recite the concept of establishing a communication route between two points ‘as performed by a generic computer,’ without disclosing any ‘novel or unusual’ improvement to ‘the functioning of the computer itself’ or any ‘advance in computer technology that makes the performance of [routine] functions more effective.” Id. at 24 (citing Alice, 134 S. Ct. at 2358–60). 39” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“As Petitioner notes (Pet. 66−68; Ex. 1003 ¶¶ 353−366), Tymes discloses “an improved, low-cost, low-power, data communication network in which a number of remote terminal units are able to send packets of data to a central station, and . . . to receive acknowledge signals and data from the central station.” Ex. 1005, 2:36−56 (emphasis added). Tymes describes that the central station includes a number of base stations connected to a central computer. Id. at 3:21−25. As shown in Figure 1, the network includes base stations 12−14, each of which “is coupled by an RF link to a number of remote units.” Id. at 4:61−5:44. The RF link is used for sending “data packets from the remote terminals to the base stations and return.” Id. at 3:48−51 (emphasis added), 6:66–7:2. In fact, Tymes teaches that the “advantage of this type of RF data link is that a band may be used which does not require site licensing by the F.C.C.” Id. at 3:55−59. Contrary to Patent Owner’s assertion that “low-power” refers to only the remote terminals, Tymes describes a low-power network that includes base stations. As Petitioner also notes (Pet. 66–67, n.38), Tymes teaches an “indoor” limited range network and an RF data link “usable without site licensing under F.C.C. regulations, so that the expense and delays incident to such licensing are eliminated or minimized.” Ex. 1005, 2:36–56. Significantly, Tymes discloses that the optimum frequency is in the 902−928 MHz range 54 for the RF transceivers in the base stations. Id. at 6:66–7:2, 13:58–61, 18:1−3. The FCC limits the power for unlicensed transmitters, and the power limit under the FCC regulations is less than or equal to one watt for the disclosed 902–928 MHz range. Ex. 1010, 217; Ex. 1017, 7:9–11, 31–34. Mr. Geier testifies that an ordinarily skilled artisan “would have understood that an indoor communications network as taught by Tymes requires only a limited range (e.g., 1 mile or less (the length of a storage facility)), so that high-powered transceivers would be unnecessary and disfavored,” and that such an artisan “would have considered a transmission of 1 Watt to be a ‘low-power’ transmission, with a limited range of approximately 1 mile.” Ex. 1003 ¶¶ 358−359. Mr. Geier also testifies that such an artisan would have had a reason to use low-power transceivers in the base stations so that they are usable indoors without licensing under the FCC regulations. Id. We credit Mr. Geier’s testimony as it is consistent with Tymes’ teachings and other evidence. Ex. 1005, 2:36–56, 6:66–7:2, 13:58−61, 18:1−3, Figs. 1, 3, 10; Ex. 1010, 21; Ex. 1017, 7:9−11, 29−34 (explaining that “unlicensed systems using conventional modulation techniques attain ranges on the order of 500−1000 feet” (emphasis added)).” slip op. at 54
Patent outcomesUS 8,908,842 unpatentableClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Phillips · KSR · GrahamPatents in suitUS 8,908,842 - Google Inc. v. Patrick ZuiliAll claims unpatentablePTAB · Apr 24, 2017 · CBM2016-00008 · APJ Stacey G White · CBM · Final written decision
Claims 1, 5, 9, and 11 are unpatentable under § 101 and obvious over IAB 1 and IAB 2; claims 5 and 11 are also obvious over IAB 1, IAB 2, and Laurent.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“a first code on the server side computing device . . . sending said first code to said at least one device over a communication network. PO Resp. 144. According to Patent Owner, Petitioner “inconsistently pointed [] to cookies as constituting a first code,” and Patent Owner alleges that this is insufficient because claim 1 does not discuss cookies. Id. at 146. Patent Owner contends that Petitioner has equated code generation with cookies and that is improper because cookies are used only to store the code after it has been generated. Id. We do not agree with Patent Owner’s analysis. Petitioner’s declarant, Stephen Gray, asserts that “[c]ookies are set by servers that store the cookie in the client. That cookie is then transmitted back from the client to the server upon subsequent accesses by the user to the origin server that set the cookie.” Ex. 1006 ¶ 60. Gray opines that one of ordinary skill in the art would have known that “when a user clicks a cookie-enabled website, a cookie is generated on the server and this cookie is stored on the client computer along with all of the information.” Ex. 1006 ¶ 105. We find that this comports with IAB 1’s description of measuring the number of visits to a web site by using a “Unique Cookie with Heuristic.” Ex. 1004, 5. IAB 1’s server stores “a small piece of information with a browser.” Id. IAB 2 notes that “[t]he web server responds to the user browser by checking for an existing cookie and creating one if one does not exist.” Ex. 1005, 27 (emphasis added). As described in the IAB references, cookies are designed to be unique to each browser, or if possible, the cookies should be unique to each user. Ex. 1004, 5, Ex. 1005, 21–22, 27. We find that these disclosures from IAB 1 and IAB 2 would have taught one of ordinary skill in the art the claimed first code.” slip op. at 32
- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“analyze patentability using the broadest reasonable construction of the claims in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Neither party makes an explicit claim construction argument in the proceeding. See generally PO Resp., Reply. For purposes of this Final Written Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (citation omitted). Thus, we must determine whether the claims are directed to “longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. What we are presented with is a system for marking the occurrence of two events and making a determination about the validity of the second occurrence based on the time elapsed between occurrences. We find that this is a longstanding business practice as exemplified by Petitioner’s pharmacy example. See Pet. 47. Patent Owner asserts that the ’057 patent is different from the sort of fraud detection that may be performed by a pharmacist because the challenged claims are “able to handle millions of clicks in real time whether from the same or different users.” PO Resp. 90. We do not agree. The claims recite only two data points, a time associated with click one and a time associated with click two. Thus, a pharmacist comparing the dates or times for two prescription requests is performing the same comparison as the one recited in the claims. There is no requirement in the claims that the system be able to handle millions of data points. Further, there is no discussion of the determination being made in real time and to the contrary the specification states that “by observing a metric like the number of clicks for a given period of time, be it a short time or a longer period, such as a day or a week, the system can automatically determine if certain clicks are illegitimate.” Ex. 1001, 2:64‒3:2. In addition, while the claims recite the creation of codes and encoded codes none of this is used by the claimed method to perform its determination. That data merely is sent from one place to another while the system marks the time associated with a click. The only information used in the determination is the time of the two clicks. The claims are not directed to improving the function of the computer or its associated software; instead, they are directed to using a computer to perform a well-known business task. See Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). Therefore, we are persuaded that the challenged claims are directed to a longstanding economic task and not to an improvement to the computer functionality itself. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). For all of the foregoing reasons, we find that Petitioner has established that claims 1, 5, 9, and 11 are directed to an abstract idea.” slip op. at 23
Patent outcomesUS 8,671,057 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · EnfishPatents in suitUS 8,671,057 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentablePTAB · Mar 24, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Final written decision
Claim 6 is unpatentable under § 103 over Higgins and Metcalfe and over Furukawa; the contingent motion to amend with substitute claim 30 is denied.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“implementation of communications systems and controlling these systems (or similar types of systems) through the use of computer technology.” Ex. 1001 ¶ 33. Patent Owner’s declarant, Dr. Samuel H. Russ (“Dr. Russ”) stated that, a person of ordinary skill in the art relevant to the ’956 patent would have had a bachelor’s degree in digital electronics, electrical engineering, computer engineering, computer science, and two to five years of post-degree experience in a similar field. Ex. 2018 ¶ 27. Thus, the parties’ assessments of the level of ordinary skill in the art are roughly equivalent. Based on our review of the ’956 patent, the types of problems and solutions described in the ’956 patent and cited prior art, and the testimony of Petitioner’s declarant and Patent Owner’s declarant, we adopt Patent Owner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“instructed that “claims should always be read in light of the specification and teachings in the underlying patent.” PO Resp. 12 (emphasis omitted) (quoting Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). Furthermore, the specification “is the single best guide to the meaning of a disputed term.” Translogic Tech., 504 F.3d at 1257 (quoting Phillips, 415 F.3d at 1315). Accordingly, we must construe the term “module” for claim 6 of the ’956 patent in light of the disclosure in the ’956 patent specification regarding “modules.” In accordance with the ’956 patent specification, there are various types of modules, such as program modules, object modules, and data modules; thus, the general term “module” cannot be construed to be limited to one of these types of modules. Patent Owner acknowledges that the ’956 patent specification discloses a “data module” as a type of “module.” PO Resp. 15 (citing Ex. 1003, 248:58–249:30). Patent Owner fails, however, to persuasively explain how the disclosed “data module” would meet its proposed definition of a “module” being “a discrete unit of a larger computer program . . . .” For example, it is unclear how a “data module” containing the “particular cost-of-a-trimmed-pork-belly-unit” (Ex. 1003, 189:4–9) constitutes a discrete unit of larger computer program. Patent Owner fails to cite any disclosure in the specification of the ’956 patent that restricts a “module” to be “a discrete unit of a larger computer program.” Although the specification of the ’956 patent does not limit modules to be a discrete unit of a larger computer program, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Ex. 1003, 186:10–17, 188:35–37, 188:59–61. For example, with respect to one embodiment of the data module, the ’956 patent specification discloses that “[e]xecuting the information of said intermediate generation set causes computer, 73, also to generate a particular associated data module.” Id. at 188:59–61. Similarly, with respect to one embodiment of the object module, the ’956 patent specification discloses that “computer, 73, compiles the information of said instance and places the resulting so-called ‘object module’ at particular memory.” Id. at 188:35–37. Likewise, with respect to one embodiment of the program module, the ’956 patent specification discloses that computer 73 compiles “formula-and-item-of-this-transmission information into a machine language program module; and . . . link[s] said module to other program modules.” Id. at 186:10–17. Accordingly, we are persuaded to modify our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Dec. to Inst. 8) to incorporate being executed by a computer to perform a specific function. Therefore, we construe the term “module,” in view of the specification of the ’956 patent, as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” We note that a discrete unit of digital data can be a set of commands or instructions that can be executed and/or processed to perform a specific function.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“subscriber specific action in respect to said problem or interest.” Petitioner argues that the “recommending” limitation not be assigned patentable weight as printed matter. Pet. 6 (citing In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) and MPEP § 2111.05). In Kao, the Federal Circuit determined that the printed matter doctrine applied because there was “no functional relationship” between the disputed limitations (Kao, 630 F.3d 1073), but here the “recommending” step in claim 6 requires outputting the “subscriber specific action” in “video, audio, or print.” Therefore, we are not persuaded by Petitioner that the printed matter doctrine is applicable to the “recommending” step in claim 6. Patent Owner argues, regarding this “recommending” step, the term “recommend” should be construed to mean “to suggest a choice or a course of action.” PO Resp. 19.4 In support of its proposal, Patent Owner cites two dictionary definitions of the term “recommend.” PO Resp. 20 (citing Exs. 2006, 2007). The first definition, from Cambridge Dictionaries, defines “recommend” as “to suggest that someone or something would be good or suitable for a particular job or purpose, or to suggest that a particular action should be done.” Ex. 2006, 1. The second definition, from the American College Dictionary, defines “recommend” as “to advise a person, etc. to do something.” Ex. 2007, 3. The specification of the ’956 patent uses the term “recommended” to describe a proposed planting plan for minimum cost and maximum revenue: When accessed, the instructions of said module cause a microcomputer, 205, to analyze any given crop planting plan and generate information of a recommended planting plan and growing method that minimizes the expense of insect and other crop pest damage given maximum revenue. Ex. 1003, 275:11–16. We determine the dictionary definitions of “recommend” comport with the use of that term in the specification ’956 patent and with the ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech, 504 F.3d at 1257. Therefore, we are persuaded by Patent Owner’s proposed definition. Accordingly, we construe the claim 6 limitation of “recommending in outputted video, audio, or print subscriber specific action in respect to said problem or interest” to mean “suggesting a 4 We note that claim 6 does not include the term “recommend” but recites “recommending.” choice or a course of action in outputted video, audio, or print subscriber specific action in respect to said problem or interest.”” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“teach the claim 6 step of “generating at least a portion of a module including said selected generally applicable information.” PO Resp. 33. Specifically, Patent Owner argues that the proposed combination fails to teach generating a module that is a “discrete unit of a larger computer program that is executed and/or processed to perform a specific function,” in accordance with Patent Owner’s proposed construction of “module.” Id. As discussed above, we do not adopt Patent Owner’s construction of “module” but construe “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” Petitioner proposes that the generation of an Ethernet packet according to Metcalfe would result in a “module including said selected generally applicable information” to communicate the trade information disclosed in Higgins from a branch computer to a work station. Pet. 28–29 (citing Ex. 1001 ¶¶ 75–78, 89, 95– 96; Ex. 1007, 3:1–3; Ex. 1009, 395). Petitioner argues that this packet is generated at the branch computer before it is transmitted to the work stations. Ex. 1001 ¶¶ 94, 96. In view of Higgins’s disclosure of regarding the processing of the trade information, including the stock symbol, prices of the stock, and volume traded (Ex. 1007, 4:45–49, 2:24–47), to generate a price limit alert to be displayed on the work station CRT in Higgins (Ex. 1007, Fig. 2), we determine that Higgins in view of Metcalfe teaches or suggests “generating at least a portion of a module including said selected generally applicable information,” wherein a “module” is construed to mean “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 21
Patent outcomesUS 7,864,956 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · GrahamPatents in suitUS 7,864,956 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentablePTAB · Mar 22, 2016 · IPR2014-01534 · APJ Georgianna W Braden · IPR · Final written decision
Claim 9 is unpatentable as obvious over either Monat or Calo; the motion to amend with substitute claim 22 is denied because Patent Owner did not establish its patentability under § 101.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Based on our review of the ’587 patent, the types of problems and solutions described in the ’587 patent and cited prior art, the testimony of Petitioner’s declarant, and the testimony of Patent Owner’s declarant, we find that a person of skill in the art relevant to the ’587 patent would have had a Bachelor of Science in Electrical Engineering or a closely related field and at least two to five years of post-degree experience in a similar field. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“explicitly the term “incomplete processor instructions,” and the embodiments in Examples Nos. 93 and 10, as discussed by Patent Owner, do not use or recite the term “incomplete processor instructions.” See Ex. 1002, 183:1–220:21. In fact, the term is not used in the specification except in claims 9 and 10. Although, the embodiments in Examples Nos. 9 and 10 as cited by Patent Owner are instructive, we are unpersuaded by Patent Owner’s argument that claim construction should only be guided by those examples and not by the specification in its entirety, especially in light of the patent applicant’s statements during the prosecution the ’587 patent discussed above. Rather, the disclosure in the ’587 patent teaches embodiments that use the word “incomplete” to refer to commands, signals or other instructions that are not yet in the form in which they will be transmitted to a subscriber station. See id. at 28:34–49. Specifically, the specification discloses that “[i]n a system that communicates information only in words that are multiples of eight, a signal whose information is represented in twenty-one” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“claimed invention and any commercial success or industry praise. Patent Owner also failed to demonstrate a long-felt but unmet need for the claimed invention. We, thus, find that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over Monat. f. Conclusion of Analysis Regarding Monat For the foregoing reasons, and weighing the evidence as a whole, Petitioner has proven by a preponderance of the evidence that Monat teaches all elements of challenged claim 9 of the ’587 patent. We determine the record supports Petitioner’s contentions as summarized above and adopt the supported contentions as our own. Furthermore, we conclude that understanding Monat’s teachings as it applies to claim 9 would have been within the level of ordinary skill in the art, as evidenced by the prior art of record. We, therefore, determine that claim 9 would have been obvious at the time of the invention, and thus, is unpatentable under 35 U.S.C. § 103.” slip op. at 45
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Media, Patent Owner has done little more than cite to the declaration of Mr. Gerald Holtzman, which lists licenses and their respective sales revenue. See PO Resp. 50–51 (citing Ex. 2008). The cited testimony of Mr. Holtzman only details the revenues for each license and does not establish whether the licensing program was successful because of the merits of the claimed invention, the merits of other patented inventions, or for other economic reasons, such as to avoid litigation or because of prior business relationships. See Ex. 2008 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294 (affirming Board’s finding that evidence of existence of licenses was insufficient to overcome prima facie case of obviousness). Additionally, Mr. Holtzman’s testimony lists patent family licenses and revenue, but does not discuss the merits of any of the challenged claims as they relate to any particular license for the ’587 patent in the portfolio of licenses. See PO Resp. 50 (citing Ex. 2008). We, therefore, find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’587 patent and the taking of the noted licenses. Although, Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2008 ¶ 14), he does not address whether litigation had been threatened against other licensing parties. Furthermore, evidence of $350M in licensing revenue alone is not enough to show commercial success, because Patent Owner must relate that figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“Declining to find evidence of commercial success because ‘[a]though [the inventor’s] affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.’”). We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’587 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, Patent Owner’s evidence of licensing fails to establish commercial success. Accordingly, we give little weight to Patent Owner’s argument that its licensing program is evidence that the claims are not obvious.” slip op. at 41
Patent outcomesUS 7,827,587 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Markman · KSR · GrahamPatents in suitUS 7,827,587 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01533 · APJ Georgianna W Braden · IPR · Final written decision
Claims 2, 3, 9–13, 18, 24, 49, 52, and 53 are unpatentable as obvious over Powell and Guillou; the motion to amend substitute claims 56–67 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“We agree with Petitioner’s position. Particularly, we credit the testimony of Petitioner’s witness, Mr. Anthony J. Wechselberger, who explains that Campbell, Block, and Furukawa teach “force” or “automatic” tuning of a receiver, i.e., “sending a signal that forces a receiver to tune to a particular channel” and that such technology was well-known in 1981. Ex. 1035 ¶¶ 122–125. Patent Owner and Patent Owner’s expert, Dr. Weaver, also acknowledged that Furukawa teaches that a television system in which a signal is received from a central facility that causes the television to tune to a different channel. Mot. 15 (stating that “Furukawa describes the operation of a spot channel wherein a television set receiving any channel may be forced by a central facility to receive a spot channel”); PO Reply to Opp. 3 (discussing prior art “disclosure of the ‘automatic channel tuning’ feature which [Patent Owner] has already acknowledged in Furukawa”); Ex. 1038, 137:11–24, 140:16–21, 145:1–11. Patent Owner’s witness testified that “[a] person of ordinary skill in the art before 1981 would have known that you could send a signal to a properly equipped and responsive television and make it change channels.” Ex. 1038, 136:19–24. Additionally, other references (i.e., Hartung and Cogswell) that disclose “automatic channel tuning” are cited in the prosecution history of the ’749 patent. PO Reply to Opp. 3 (citing Exs. 1045, 1046). According to Patent Owner, these references describe “the state of the art.” Id. Thus, we are satisfied that “automatic channel tuning,” as taught by Campbell, Block, and Furukawa, was known to a person of ordinary skill in the art at the time of the invention of the ’749 patent. Although Patent Owner argues that applying such “automatic channel tuning” to digital television systems (rather than using analog television systems) would have been difficult and that one of ordinary skill in the art would not have been motivated to use such technology to change channels and to send encrypted digital data (Mot. 20–23; PO Reply to Opp. 10–11), we are not persuaded given the state of the art as shown by Guillou, discussed in detail previously. Guillou discloses the decryption of digital data (Ex. 2014 ¶ 85) and explains that such technology “could be applied to other systems without difficulty for the man skilled in the art, and notably to the CEEFAX or ORACLE systems or the VIEWDATA or PRESTEL systems” (Ex. 1022, 21:23–28). The Ceefax, Oracle, Viewdata, and Prestel systems are analog systems that send signals over television channels or telephone lines. Therefore, we are satisfied that a person of skill in the art would have had reason to use “automatic channel tuning” and apply digital encryption technology in order to “transmit messages to a receiver station on a first communication channel that, when processed by the receiver station, causes the receiver station to connect [to] a communication channel different from the first channel to receive encrypted programming or data.” Accordingly, we find that Patent Owner has not demonstrated the patentability of proposed substitute claims 56–62.” slip op. at 37
- BurdenUnpatentable
“We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). Rather, “the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” See id. (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Thus, Patent Owner’s contentions regarding backward compatibility are not persuasive and fail to show that a skilled artisan would have been discouraged from combining the teachings of the cited references in the manner claimed.” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable
“We are not persuaded. In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were a less costly alternative to defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added) (citation omitted). Moreover, our reviewing court has held that “without a showing of [a] nexus, ‘the mere existence of . . . licenses is insufficient to overcome the conclusion of obviousness.’” In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (quoting Iron Grip Barbell, 392 F.3d at 1324). Like the applicant in Antor Media, Patent Owner has done little more than cite to the declaration of Mr. Gerald Holtzman, which lists licenses and their respective sales revenue. See PO Resp. 52 (citing Ex. 2018). The cited testimony of Mr. Holtzman only details the revenues for each license and does not establish whether the licensing program was successful because of the merits of the claimed invention, the merits of other patented inventions, or for other economic reasons, such as to avoid litigation or because of prior business relationships. See Ex. 2018 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294 (affirming Board’s finding that evidence of existence of licenses was insufficient to overcome prima facie case of obviousness). We find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’749 patent and the taking of the licenses. Although Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2018 ¶ 14), he does not address whether litigation had been threatened against other licensing parties. Furthermore, evidence of $350M in licensing revenue alone is not enough to show commercial success, because Patent Owner must relate that figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”); see also In re Huang, 100 F.3d at 140 (“Declining to find evidence of commercial success because ‘[a]though [the inventor’s] affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.’”). We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’749 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, Patent Owner’s evidence of licensing fails to establish commercial success. Accordingly, we give little weight to Patent Owner’s argument that its licensing program is evidence that the claims are not obvious.” slip op. at 26
Patent outcomesUS 7,805,749 unpatentable§ 101 eligibility§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,805,749 - Intermix Media, LLC v. Bally Gaming, Inc.Institution deniedPTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution
The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptNot shown unpatentable
“Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7
§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 5,816,918
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.