• Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 8,489,599
• Cambridge Associates, LLC v. Capital DynamicsAll claims unpatentable
  PTAB · Aug 31, 2015 · CBM2014-00079 · APJ Donna M Praiss · CBM · Final written decision

  Claims 1–17 are unpatentable under § 101 because they claim an abstract mathematical correlation implemented with generic computer functions.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We agree with Petitioner that Digitech is instructive guidance concerning claims to “a process that employs mathematical algorithms to manipulate existing information to generate additional information.” Digitech, 758 F.3d at 1351 (citing Parker v. Flook, 437 U.S. at 595) (concluding such claims are ineligible subject matter). Like the ’196 patent claims, the process claim in Digitech did not recite expressly mathematical formulae or equations. It claimed, in prose, generating two data sets by taking existing information, such as measured chromatic stimuli, spatial stimuli, and device response characteristic functions, and organizing the information into a new form called a device profile. Digitech, 758 F.3d at 1350–51. The method claim was determined to be an abstract idea “because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine.” Id. at 1350. The absence of expressly recited mathematical formulae or equations in the claim carried no significance in determining whether the claims as a whole were directed to the abstract idea. See also Alice, 134 S. Ct. at 2356–57 (noting that no special significance was given to the fact that one of the claims in Bilski reduced hedging to a mathematical formula). In sum, because we agree with Petitioner that the challenged claims involve determining a mathematical correlation, like the claims in Digitech, we conclude that the first step in the Alice/Mayo test is met for claims 1–17.” slip op. at 12

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “The fact that a claim relies on a method that is implemented on a computer does not, by itself, demonstrate that the claim is patent eligible. Rather, a challenged claim, properly construed, must incorporate enough meaningful limitations to ensure that what is claimed is more than just an abstract idea, and is not a mere “drafting effort designed to monopolize [an abstract idea] itself.” Mayo, 132 S. Ct. at 1297. In order for a machine to impose a meaningful limitation on the scope of a method claim, it must play “a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Claims that recite a method of doing business on a computer, and do no more than merely recite the use of the computer for its ordinary function of performing repetitive calculations, are not patent eligible. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1278–79 (Fed. Cir. 2012) (finding computer used for its most basic function, the performance of repetitive calculation, does not impose a meaningful claim limitation). We are persuaded that Petitioner has shown by a preponderance of the evidence that the extent to which a computer aids the performance of the claimed invention is no more than the ordinary function of common computer software programs, such as the Microsoft Excel spreadsheet used by Patent Owner’s expert. Reply 7 (citing Ex. 1012, 153:15–154:21). Patent Owner’s argument that the computer technology required by the ’196 patent claims “is integral to meeting the requirements of accuracy, precision and timeliness” (PO Resp. 27 (citing Ex. 2004 ¶ 96)) focuses on a specific commercial application of the patent claims “[i]n the private equity world” (id. (citing Ex. 2004 ¶¶ 86–95)). We are not persuaded by Patent Owner’s arguments because they presume particular mathematical computation methods not required by the claims, and reinforce that the nature of the invention is a patent ineligible mathematical algorithm. For example, Patent Owner contends that when presented with a problem to solve at his deposition, Petitioner’s expert, Dr. Robinson, inaccurately computed a real rate of return on an investment because he used quarterly compounding rather than daily compounding. Ex. 2004 ¶ 87. According to Mr. Reyes, Patent Owner’s expert, “daily cashflow (as opposed to monthly or quarterly) has been recognized as a requisite compounding frequency as far back as the 1960s.” Id. at ¶ 91. Such mathematical computations, even if required by the claims, are not sufficient to transform the claims into patent eligible subject matter.” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–17 of the ’196 patent are unpatentable under 35 U.S.C. § 101. Because our determination does not rely on the deposition testimony subject to Patent Owner’s Motion to Exclude, we dismiss the motion as moot.” slip op. at 2

  • Expert testimonyOther

    “We are persuaded that Petitioner has shown by a preponderance of the evidence that the extent to which a computer aids the performance of the claimed invention is no more than the ordinary function of common computer software programs, such as the Microsoft Excel spreadsheet used by Patent Owner’s expert. Reply 7 (citing Ex. 1012, 153:15–154:21). Patent Owner’s argument that the computer technology required by the ’196 patent claims “is integral to meeting the requirements of accuracy, precision and timeliness” (PO Resp. 27 (citing Ex. 2004 ¶ 96)) focuses on a specific commercial application of the patent claims “[i]n the private equity world” (id. (citing Ex. 2004 ¶¶ 86–95)). We are not persuaded by Patent Owner’s arguments because they presume particular mathematical computation methods not required by the claims, and reinforce that the nature of the invention is a patent ineligible mathematical algorithm. For example, Patent Owner contends that when presented with a problem to solve at his deposition, Petitioner’s expert, Dr. Robinson, inaccurately computed a real rate of return on an investment because he used quarterly compounding rather than daily compounding. Ex. 2004 ¶ 87. According to Mr. Reyes, Patent Owner’s expert, “daily cashflow (as opposed to monthly or quarterly) has been recognized as a requisite compounding frequency as far back as the 1960s.” Id. at ¶ 91. Such mathematical computations, even if required by the claims, are not sufficient to transform the claims into patent eligible subject matter.” slip op. at 16

  Patent outcomesUS 7,698,196 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,698,196

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.