• Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentable
  PTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision

  Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22

  Patent outcomesUS 11,333,007 mixed
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,333,007
• Meta Platforms, Inc. v. Sitnet, LLCAll claims unpatentable
  PTAB · Sep 8, 2025 · IPR2024-00530 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious; the Board denied the contingent motion to amend proposing substitute claims 17–32.

  RulingsFinal written decision

  • Expert testimonyOther

    “iv. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Gage teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Gage. v. Independent claim 8 Independent claim 8 recites a method of “providing situation related information to a situation authority via a situational network,” wherein the method comprises “receiving, by a participant device, a roll call query soliciting a reply related to a status of a participant based on the participant being determined, by the situation authority, to be geographically proximate to the situation,” “receiving, by the participant device, a selection of a status response from the participant,” and “sending the status response to the central authority, wherein the status response is included in a roll call list.” Ex. 1001, 34:46–57. Petitioner generally refers to its contentions with respect to claim 1. Pet. 34–36. In particular, Petitioner contends that Gage teaches a subscriber device that communicates a status indicator to the disaster response system through a subscriber status reporting system that implements a “situational network” configured for use during disasters. Id. at 34 (citing Ex. 1005 ¶¶ 19, 25). Petitioner additionally contends that Gage’s “disaster response system” is a “situation authority” because the disaster response system detects an occurrence of a disaster affecting a region, receives and aggregates information related to the disaster, and then provides the information to various participants in the network. Id. (citing Ex. 1005 ¶¶ 8–9, 21, 36, 45; Ex. 1003 ¶ 104). With respect to the “situational network” limitation, Patent Owner” slip op. at 39

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “1. “situational network” (claims 1, 8, 13) Patent Owner points out that the district court has already construed” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “viii. Ground 1 Conclusion In light of the above analysis, we determine that Petitioner’s evidence” slip op. at 46

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “c. Conclusion on Petitioner’s Patentability Challenges based on Obviousness for Proposed Substitute Claims For the above reasons, we determine that Petitioner has shown by a preponderance of evidence that the subject matter of proposed substitute claims 17–32 would have been unpatentable. IV. CONCLUSION9 For the foregoing reasons, we conclude that Petitioner has shown by a” slip op. at 82

  Patent outcomesUS 9,877,345 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 9,877,345
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Jul 18, 2024 · IPR2023-00539 · APJ James P Calve · IPR · Final written decision

  The Board held original claims 1–18 and 20–22 unpatentable over the asserted obviousness grounds, denied the revised motion to amend, and held substitute claims 23–43 ineligible and unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “f. Conclusion We determine that Petitioner has established by a preponderance of” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “2. Motivation to combine a. Petitioner’s contentions Petitioner contends that a skilled artisan would have combined the teachings of LeFebvre and Barone to monitor the condition of railcar wheels and bearings using sensors connected over a wireless mesh network and to analyze collected data to determine if a wheel bearing failure is imminent and issue an alert to the locomotive or central station. Pet. 42–43 (citing Ex. 1007, code (57), Abstr., ¶¶ 45, 86, 201–220; Ex. 1003 ¶¶ 157–162). b. Patent Owner’s arguments Patent Owner does not contest these assertions regarding a motivation to combine LeFebvre and Barone. See generally PO Resp.; Sur-reply. c. Conclusion We determine a skilled artisan would have combined the teachings of” slip op. at 51

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “(4) Conclusion We determine that Patent Owner has demonstrated that the inventors” slip op. at 59

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “(4) Conclusion We determine that the above-described lack of clarity in the meaning” slip op. at 72

  Patent outcomesUS 9,981,673 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Enfish · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 9,981,673
• Entain Corporate Services Ltd. / MGM Resorts International et al. v. Gan (UK) LimitedAll claims unpatentable
  PTAB · Feb 29, 2024 · IPR2023-00027 · APJ James P Calve · IPR · Final written decision

  Original claims 11–18, 21, and 22 and proposed substitute claims 23–39 were held unpatentable; the revised motion to amend was granted in part and otherwise denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “For reasons discussed below, we grant in-part Patent Owner’s RMTA and cancel original claims 1 and 3–10. We otherwise deny Patent Owner’s RMTA to enter revised substitute claims 23–31, which non-contingently amend original claims 1 and 3–10, and we deny Patent Owner’s RMTA to enter revised substitute claims 32–39, which contingently amend original claims 12–14, 16–18, 21, and 22.” slip op. at 3

  • ExcludeMotion to exclude, deniedOther

    “V. PETITIONER’S MOTION TO STRIKE Because our findings and determinations do not rely on the paragraphs of Dr. Shamos’ declaration that Petitioner’s Motion to Strike seeks to strike, we dismiss Petitioner’s Motion to Strike as moot.” slip op. at 104

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Having reviewed the arguments and evidence, we determine Petitioner has shown, by a preponderance of the evidence, that original claims 11–18, 21, and 22 of the challenged claims of the ’296 patent are unpatentable.” slip op. at 3

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionUnpatentable

    “We determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are unpatentable. Specifically, we determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are not eligible for patenting under 35 U.S.C. §§ 101, and claims 23–39 are unpatentable under prior art asserted under 35 U.S.C. § 103 as discussed below. See Opp. RMTA 4–6, 8–28.” slip op. at 3

  Patent outcomesUS 8,821,296 unpatentable
  § 101 eligibility§ 103 obviousnesscites Alice · Berkheimer · Enfish · Electric Power
  Patents in suitUS 8,821,296
• 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
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 7,864,956
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Markman · KSR · Graham
  Patents in suitUS 7,827,587
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · 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 · Graham
  Patents in suitUS 7,805,749
• Riverbed Technology, Inc. v. Silver Peak Systems, Inc.Other
  PTAB · Jun 9, 2015 · IPR2014-00245 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–24 were canceled; substitute claims 25–48 were denied because Patent Owner did not show patentability over the prior art, and claims 39–45 and 48 also failed § 101.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7–8 (PTAB June 11, 2013) (Paper 26, “Idle Free”) (informative); Toyota Motor Corp. v. American Vehicular Scis. LLC, Case IPR2013-00419, slip. op. at 4–5 (PTAB Mar. 7, 2014) (Paper 32, “Toyota”). For the reasons explained below, we conclude that Patent Owner has not met its burden with respect to claims 25–48.” slip op. at 10

  • ScopeDecided for patent owner

    “As discussed above, the claims do not require encrypting data before transmitting that data as part of the store instruction. Accordingly, we decline to import into the claims a limitation based on a specific embodiment in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). We decline to read the exemplary disclosure of encrypting the data before transmitting it with the store instruction into the broadest reasonable interpretation of “data.”” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “3. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “appliance to generate encrypted received data” and “store the encrypted received data in the second memory device,” recited in proposed substitute claim 25 and similarly recited in the other proposed substitute independent claims. See Reply 4–5. We agree with Patent Owner that McCanne does not disclose explicitly that its receiving TA is configured to “encrypt the original data received with the store instruction . . . to generate encrypted received data” and “store the encrypted received data in the second memory device.” See id. at 5. Thus, we are not persuaded that McCanne anticipates the proposed substitute claims, as asserted by Petitioner, because McCanne fails to describe each and every element as set forth in the proposed substitute claims, either expressly or inherently. See Opp. 8–12; Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 26

  § 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,392,684
• Riverbed Technology, Inc. v. Silver Peak Systems, Inc.Other
  PTAB · Dec 30, 2014 · IPR2013-00402 · APJ Justin T Arbes · IPR · Final written decision

  The Board canceled claims 1–12 and granted the motion to amend for substitute claims 13 and 15, but denied it for claims 14 and 16–18 based on unmet amendment and eligibility requirements.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “In a motion to amend, the patent owner bears the burden of proof to demonstrate patentability of its proposed substitute claims over the prior art and, thus, entitlement to the claims. Idle Free at 7. This does not mean that the patent owner is assumed to be aware of every item of prior art known to a person of ordinary skill in the art. However, the patent owner should explain in its motion why the proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record but known to the patent owner: A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims. Id. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art even without reliance on any particular item of prior art. Id. at 7–8; Toyota at 4–5. The petitioner then has the opportunity, in its opposition, to argue any deficiency in the patent owner’s motion and “come forward with specific evidence and reasoning, including citation and submission of any applicable prior art,” to rebut the patent owner’s position on patentability. Idle Free at 8.” slip op. at 16

  • ScopeMotion to amend, grantedGranted

    “1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 13 as a substitute for claim 4, claim 14 as a substitute for claim 3, claim 15 as a substitute for claim 8, claim 16 as a substitute for claim 7, claim 17 as a substitute for claim 12, and claim 18 as a substitute for claim 11. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’226 patent. See Mot. 8–9. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 11

  • 112 supportGranted

    “2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundDecided for patent owner

    “Patent Owner argues that it would not have been obvious to incorporate the technique of Spring into a network data de-duplication system, as recited in the proposed substitute claims, because Spring “had very limited practical application in the network memory context.” Mot. 12. Patent Owner’s position is supported by the statement in McCanne ’376 that due to Spring’s small cache and first-in first-out replacement policy, “the efficacy of [Spring’s] approach is limited to detecting and exploiting communication redundancies that are fairly localized in time.” Ex. 1003 ¶ 20; see Mot. 12. The proposed substitute claims, which identify sync points from which forward and backward memory comparisons are performed, are not limited to only recently transmitted data. Patent Owner also asserts that the specific combination of “fine and coarse filtering of hash values” and “forward and backward memory comparison” limitations recited in the proposed substitute claims represents a practical solution to the “tradeoff” that exists with data de-duplication systems, and is not solved by any of the prior art of record. Mot. 12–13. Specifically, Patent Owner states that there is a “tradeoff” between the size of an index and the likelihood that an indexed segment will be matched. Id. Spring uses a small fixed-size cache and small packets, and, thus, works best for only recently transmitted data. Id. By contrast, according to Patent Owner, the proposed substitute claims provide a practical solution to the tradeoff by operating at the byte-level and using a combination of fine and coarse filters to identify sync points from which forward and backward memory comparisons are performed. Id. Patent Owner’s explanations regarding the prior art and why the proposed substitute claims allegedly would not have been obvious are supported by the record and are persuasive. We also note that although Petitioner addresses the “fine and coarse filtering of hash values” limitations in its Opposition (arguing that they are taught by Hsu), Petitioner does not argue that Hsu—or any other reference— teaches or suggests the “forward and backward memory comparison” limitations. Nor does Petitioner propose any specific combination of references that allegedly would have rendered obvious the proposed substitute claims as a whole. Thus, Patent Owner’s assertions regarding key aspects of the prior art, such as Spring, essentially are unrebutted.” slip op. at 23

  § 101 eligibility§ 103 obviousness
  Patents in suitUS 8,312,226

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.