- 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 - Metacluster LT, Uab v. Bright Data Ltd.InstitutedPTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution
Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . 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). Upon consideration of the arguments and evidence, we determine 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 ’034 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,272,034 - HP Inc. / SAP America, Inc. v. Big Baboon, Inc.Institution deniedPTAB · Jun 28, 2016 · CBM2016-00020 · APJ Trenton A Ward · CBM · Institution
The Board denied institution because Petitioner did not show that claims 15 and 20–34 were more likely than not unpatentable under § 101 or any of the three § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons that follow, Petitioner failed to establish that it is more likely than not that at least one of the challenged claims is unpatentable. Therefore, we deny the Petition.” slip op. at 2
- BurdenDenied
“We believe the same is true in this matter. Petitioner fails to identify specific documentary evidence indicating that the claim element “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” would have been obvious to a person of ordinary skill in the art at the time of the ’275 patent. At best, Petitioner provides a string cite to nine different documents, without pointing to any particular page or disclosure in any of those documents, as allegedly illustrating an “industry-wide push to Web-enable,” and provides a string cite to eight different paragraphs of testimony from Dr. Greenspun, as allegedly indicating why a skilled artisan “would have seen a strong need to provide Web-enabled system administration capabilities for the R/3 system described in R/3 Online and R/3 Book.” See Pet. 63–64 (citing Exs. 1017– 1021, 1023, 1026, 1027, 1030; Ex. 1032 ¶¶ 58–60, 85–86, 110–112). Petitioner, however, fails to identify with specificity which documentary evidence indicates that it would have been common knowledge to provide a Web interface for system administration of the system described by R/3 Online and the R/3 Book and, thus, that claim 15 would have been obvious to an ordinarily skilled artisan based on combining this alleged common knowledge with the system described by R/3 Online and R/3 Book. The Board, and Patent Owner, are left to speculate as to which particular evidence Petitioner is relying on. See Pet. 12, 42; 37 C.F.R. §§ 42.304(b)(4)–(5) (a petition must “specify where each element of the claim is found in the prior art” and identify “specific portions of the evidence that support the challenge”), 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). In view of this deficiency, we determine that Petitioner fails to articulate sufficient reasoning to support its assertion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, based on the record before us, we determine that Petitioner fails to demonstrate that it is more likely than not that independent claim 15, and claims 20–34 dependent therefrom, would have been obvious over R/3 Online and R/3 Book.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner urges the Board to construe two claim phrases. First, Petitioner urges us to construe the claimed “end-to-end, business-to-business, e-commerce business automation software for automation business functions across multiple business domains” to mean “[s]oftware that, using a computer network, at least partially automates business functions relating to two or more businesses and from two or more business domains (such as products, payments, and financial performance).” Pet. 19. Second, Petitioner urges us to construe the claimed “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” to mean “producing a software configuration in which modules can be enabled or disabled by (1) changing the configuration parameters of a web server program or (2) using a Web browser to change configuration parameters of software running on a server.” Pet. 21. Patent Owner does not offer any proposed constructions of claim terms in its Preliminary Response. For the reasons explained below, in this case determining the scope of the terms proffered by Petitioner is not necessary to determine whether Petitioner has met the standard for institution of a covered business method patent review, and we decline to adopt the constructions sought by Petitioner. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“Claim 15 (the only claim substantively addressed by Petitioner), however, does not recite any “gathering” steps, and Petitioner does not explain sufficiently how the limitations of claim 15 are directed to the concept of “gathering” information. For example, claim 15 merely recites “providing . . . business automation software, “identifying multiple modules of the software,” and producing a “software configuration.” Additionally, claim 15 requires producing a “workscope/workflow structured display of complex database records,” which constitutes “an integrated decision-making environment for a particular business function.” Thus, the method of claim 15 does not expressly require that information be gathered across “multiple business domains.” Rather, claim 15 requires providing “business automation software” to produce a “structured display” of “records” pertaining to a “business transaction,” such that the display constitutes an “integrated decision-making environment for a particular business function.” Thus, even if Petitioner is correct that “gathering information from across a business and using the information to make decisions” by itself is an abstract idea, Petitioner’s analysis does not address sufficiently the specific language of claim 15 and explain why claim 15 is directed to that idea. See Pet. 27. Similarly, dependent claims 20–34 are not directed to “gathering information,” and Petitioner provides no analysis of the language of the dependent claims. In light of the above, we determine that Petitioner has failed to establish the first step of the Mayo framework; i.e., Petitioner fails to identify sufficiently an abstract idea to which claim 15 is directed.8 Petitioner combines its arguments under § 101 against dependent claims 20– 34 with its arguments against claim 15 and fails to provide any additional arguments for these dependent claims. See Pet. 25 (arguing that the “sixteen challenged claims of the ’275 patent are likewise unpatentable under §101”). Therefore, we similarly determine that Petitioner fails to establish the first step of the Mayo framework with respect to dependent claims 20–34. Based on the foregoing, we determine Petitioner has failed to establish, based on the record presented, that claims 15 and 20–34 are more likely than not directed to patent ineligible subject matter under 35 U.S.C. § 101. 8 We need not decide whether claim 15 is directed to a different abstract idea, and only determine that Petitioner has not shown sufficiently that claim 15 is directed to the alleged abstract idea that Petitioner proposes in the Petition.” slip op. at 19
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · MayoPatents in suitUS 6,343,275
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.