- Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only 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))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20
Patent outcomesUS 8,605,794 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - PTAB · Dec 6, 2023 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–16 over all asserted grounds, finding a reasonable likelihood of prevailing on at least claim 1 over Zhao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–16 of the ’980 patent on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the above level of ordinary skill. See generally, Prelim. Resp. Patent Owner rather asserts, “[f]or present purposes, [the] Preliminary Response establishes that institution should be denied even under Petitioners’ preferred definition of the level of ordinary skill.” Prelim. Resp. 16. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). At this stage, we do not need to construe any term.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Engineering and Science Library at Carnegie Mellon University by September 23, 2002, and was publicly accessible in the ProQuest repository by June 25, 2002. Pet. 5 (citing Ex. 1013, 3; Ex. 1014, 3). Patent Owner contends that the Petition improperly incorporates by reference Exhibits 1013 and 1014, because the Petition does not discuss particular evidence from these exhibits. Prelim. Resp. 28. Exhibit 1013 is a declaration from Jessica Brenner, who has a Ph.D. and Masters in Library and Information Science. Ex. 1013 ¶ 4. Dr. Brenner testifies that the stamped cataloging data of Zhao is September 16, 2002, and that Zhao would have been publicly accessible within one week, by September 23, 2002. Id. ¶¶ 8–9. Exhibit 1014 is a declaration from Carl Mageski, who is a Technical Support Analyst employed by ProQuest. Ex. 1014 ¶ 2. Mr. Mageski testifies that he reviewed ProQuest’s records regarding Zhao and determined that the full text of Zhao was available on June 25, 2002. Id. ¶ 8. On this record, we are sufficiently persuaded that the testimonies of Dr. Brenner and Mr. Mageski show a reasonable likelihood that Zhao was publicly accessible on September 16, 2002.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,436,980 - PTAB · Dec 6, 2023 · IPR2023-00923 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–28 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VII. ANALYSIS A. Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (2019) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Furthermore, Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“To resolve this controversy, we turn to the decision in Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019). In Hulu, the Board issued a decision denying institution of an inter parties review because the Board found that a petitioner failed to sufficiently show that a reference qualified as a printed publication. Id. at 2. The Board’s Precedential Opinion Panel (POP) ordered a review on rehearing to address the issue of what is required for a petitioner to establish that an asserted reference qualifies as a “printed publication” at the institution stage. Id. The POP determined that the statutory “reasonable likelihood” standard for institution applies to the issue of whether a reference is a printed publication. Id. at 13. The POP “explained that it is a higher standard than mere notice pleading, but, . . . it is lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. In Hulu, Patent Owner argued that “the reasonable likelihood standard is satisfied only when a petitioner presents its ‘case in chief’ in the petition, including all evidence that will be used in any instituted review, with a few limited exceptions.” Id. at 11. The POP, however, determined that “[w]hile the petitioner must submit evidence sufficient to meet the reasonable likelihood standard, some limited opportunities exist for the petitioner to present new evidence later, including: (1) in a reply to a patent owner preliminary response; (2) in a reply to the patent owner response; and (3) in a motion to file supplemental information.” Id. at 14. The POP explained that, for example, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Id. at 15. The POP also explained that, if a patent owner does not challenge the reference’s status as a printed publication, the petitioner may move to submit the declaration through the supplemental information process. Id.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner contends that Basturk teaches away from providing authentication as an application protocol on an application layer because Basturk discloses that the presence of application level security features does not necessarily imply the security of delivery, which shows the need for security at the transport layer. Prelim. Resp. 43–53. However, Basturk discloses that application level security features are provided by application level security. Ex. 1006, 3. For example, Basturk discloses guaranteeing integrity by signing the data before passing it to the transport level. Id. at 3– 4. Basturk further discloses “a method to transform any transport protocol into a ‘secure’ version, equipped not only with the new security features discussed above, but providing, at least as options, the standard application level security features.” Id. at 5. At this stage, we are sufficiently persuaded that Basturk teaches providing standard application level security features such as authentication. Patent Owner contends that on-the-fly processing as taught by Basturk is not enabled by the use of a trailer. Prelim. Resp. 52–55. Basturk discloses computing signatures as data transmission proceeds, to achieve the goals of avoiding slowing down the regular flow of data, and allowing the possible off-load of signature computations. Ex. 1006, 7, 12. Basturk discloses that the signature of an outgoing packet is computed after data encryption, which complies with the requirement that the signature is computed “on-the-fly.” Id. at 14. Dr. Houh testifies that computing the signature “on-the-fly,” as data is being transmitted, provides the benefits of faster data transmission, reduced jitter, and reductions in computing power. Ex. 1003 ¶ 64. Dr. Houh testifies that calculating the signature of Handley’s RTP packet “on-the-fly” and placing the signature at the end of the packet as taught by Basturk yields the benefit of transmitting data while computing the signature, which minimizes latency as taught by Basturk. Id. ¶ 85. At this stage, we are sufficiently persuaded that a person of ordinary skill would have placed the authentication information of Handley’s RTP packet at the end of the packet as taught by Basturk to yield the benefits of faster data transmission, reduced jitter, and reductions in computing power. Accordingly, for purposes of this Decision, we are persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Handley and Basturk.” slip op. at 20
- Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner
“Dr. Houh further testifies that, given the remaining choices of placing the authentication data at the beginning or the end of the payload data, a person of ordinary skill would have recognized that placing the authentication data at the end of the payload data would reduce latency because this allows the packet to be transmitted while the authentication data is calculated. Ex. 1003 ¶ 178. To support this testimony, Dr. Houh relies on other protocols that use integrity checks, such as the Frame Check Sequence located at the end of an Ethernet Frame. Id. (citing Ex. 1014). We are sufficiently persuaded at this stage, based on Dr. Houh’s testimony and supporting evidence, that a person of ordinary skill would have placed the authentication data at the end of the whole RTP packet payload as claimed. Further, on this record, given the choice between placing authentication data at the beginning, middle, or end of the packet, we are sufficiently persuaded that it would have been obvious to place the authentication data at the end. See KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”); Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1340 (Fed. Cir. 2020) (Reversing the Board’s determination of lack of motivation, stating that “because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art, and were the only two identified, predictable solutions for transmitting a map and” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,266,682 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - Netflix, Inc. v. Videolabs, Inc.InstitutedPTAB · Oct 3, 2023 · IPR2023-00628 · APJ Jeffrey S Smith · IPR · Institution
Instituted IPR of claims 1–14 on all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–14 of the ’790 patent on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Reasons to Combine the Teachings of Mehta and Schläpfer Petitioner contends a person of ordinary skill would have had reason to combine the teachings of Mehta and Schläpfer because both references concern distributing digital contents to mobile devices over a wireless network. Pet. 66. Petitioner also contends Mehta provides a motivation to look to Schläpfer because Mehta “recognizes the issue of resource constraints on mobile devices and contemplates taking steps to address those constraints.” Pet. 67 (citing Ex. 1003 ¶¶ 10, 12). Petitioner contends that a person of ordinary skill would have combined Mehta’s MAS with Schläpfer’s teachings of limited screen space of mobile devices and limited bandwidth of the mobile network, and an application descriptor and associated attributes. Id. at 66 (citing Ex. 1009, 11). Mr. Wechselberger testifies that a person of ordinary skill in the art would have provided a single description of each supported application of Mehta in order to accommodate the viewing capabilities of the requesting device as taught by Mehta, such as limited screen space and signal processing capabilities of the mobile device as taught by Schläpfer. Ex. 1002 ¶¶ 106–108. Petitioner argues that a person of ordinary skill would have had a reasonable expectation of success in combining the teachings of Mehta and Schläpfer because the two references rely on Java for distributing digital content to mobile devices and refer to the specific J2ME edition of Java. Pet. 68. Petitioner also contends that a person of ordinary skill would have known that a provisioning model includes a corresponding set of provisioning attributes and descriptors. Pet. 68–70. For purposes of this Decision, we are persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Mehta and Schläpfer.” slip op. at 26
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,233,790 - Apple Inc. v. Mullen Industries LLCInstitutedPTAB · May 15, 2023 · IPR2023-00115 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–14 and 73–92 on every asserted ground, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“teaching of a “group database” in which “users can define a group of specific users that have access to [position] information” (Ex. 1041, 11:63– 65) are relevant to Sheha’s teachings regarding mobile devices, which Sheha describes as similar to landline devices (Ex. 1041, 12:4–7). Further, Sheha describes “the calling local mobile device has privacy settings” and can choose not to reveal its position or enable position transfer “at anytime,” which reasonably suggests that privacy settings can be changed. Ex. 1041, 5:9–20. Sheha also describes that “users can define a group of specific users that have access” to position information “by utilizing a group database.” Id. at 11:63–66. Thus, we preliminarily find that Petitioner’s arguments are supported sufficiently by the cited portions of the asserted art. We further preliminarily find that Patent Owner’s arguments do not undermine Petitioner’s showing based on the preliminary record at this juncture of the proceeding. After consideration of the contentions and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently that Sheha teaches element [1.e] for purposes of institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of hardware and software functionalities of the prior art Petitioner contends satisfies limitations [1.f] and [73.f]. Separate from the Petition’s analysis of these limitations, Petitioner addresses the alleged motivation to combine Enzmann and Tobin, McNulty, and Bedingfield in subsection of the Petition titled “Motivation to Combine Sheha and Enzmann with McNulty, Degnbol, Lelievre, Curbow, Tobin, and/or Bedingfield.” Pet. 19–22. Regarding McNulty, Petitioner states in part, “[t]he additional features described in McNulty would easily be applied using the hardware of . . . Enzmann with at most minor software modifications.” Pet. 20. Regarding Tobin, Petitioner states a person of ordinary skill “looking to improve Enzmann’s functionality would have been motivated to also output typical mapping elements such as directions, distance, and location markers, as described in Tobin.” Pet. 22. Regarding Bedingfield, Petitioner states that a person of ordinary skill “would have been motivated to improve location information delivery in . . . Enzmann’s system by also computing travel times via different modes, as described in Bedingfield.” Pet. 23. Petitioner’s motivation statements appear directed to whether a person of ordinary skill could have combined the teachings of the references, rather than to whether a person of ordinary skill would have combined the teachings to arrive at the claimed invention. Further, it is not clear on the current record which features from McNulty, Tobin, or Bedingfield Petitioner contends would have been combined with Enzmann to arrive at limitations [1.f] and [73.f]. Although Tobin at least mentions providing directions, at this stage, we question the sufficiency of Petitioner’s showing for the Enzmann grounds.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party presents any explicit claim constructions. Pet. 9; see generally Prelim. Resp. At this stage, we determine it is unnecessary to expressly construe any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only 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 8
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,234,117 - Facebook, Inc. / Expedia, Inc. et al. v. Express Mobile Inc.All claims unpatentablePTAB · Mar 1, 2023 · IPR2022-00790 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 2, 5–7, and 11 are unpatentable under § 103 as obvious over the cited combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose an alternative assessment, and we note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. Having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition above, as we did initially in the Institution Decision, as it is consistent with the ’755 patent and the asserted prior art.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“term ‘device-independent code’ has been construed by a district court to mean ‘code that is not specific to the operating system, programming language, or platform of a device.’” Id. at 12 (citing Ex. 2021, 15–16; Ex. 2022, 10). Petitioner does not challenge this construction or offer a competing construction, but does disagree with Patent Owner’s application of this construction, as discussed further herein. As the parties do not disagree with the District Court’s construction, we adopt it for use in this proceeding. We address Petitioner’s arguments about the application of the construction in the course of the validity analysis. We determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only 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 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We determine, based on the full record of the proceeding, that Petitioner has submitted sufficient evidence to establish that Anderson was publicly accessible before the critical date of the challenged patent, and, thus, Petitioner has established that the reference qualifies as a printed publication. In particular, the face of Anderson bears a copyright date of 2006, a publication date of May 2006, an ISBN (“International Standard Book Number”), and identifies an established publisher (Prentice Hall). Ex. 1003, 4. See Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date 8 References to page numbers for this exhibit are to the page numbers as provided by Petitioner on the exhibit. of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”). Dr. Hall-Ellis testifies that Exhibit 1003 is a true and correct copy of the selected pages from the book as held by the Library of Congress, and also attests that the book was publicly available by or shortly after June 28, 2007, because by that date it had been received, cataloged, and indexed at the Library of Congress and made part of the Online Computer Library Center’s (“OCLC’s”) bibliographic database. Ex. 1015 ¶¶ 43, 49; see id. ¶ 28 (describing OCLC).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Simply put, as Petitioner notes, the “localhost” technique disclosed in Anderson allows a single computer to execute both the “server-side” and “client side” functionality of a Java application—a common technique for development of networked applications to simplify implementation and testing. See Reply 20 (citing Ex. 1021 ¶ 48 & n.2). Petitioner further contends that “[c]ontrary to Patent Owner’s suggestions, there is nothing unusual about using the same computer in Anderson to execute both the ‘server-side’ Java servlets (via the JVM) and the ‘client-side’ web browser that accepts user input and displays search results.” Id. at 20. Patent Owner does not respond to this argument in its Sur-reply. We agree with Petitioner. Anderson discloses using the “localhost” technique to run the Java application on the same machine used to create the application. See Ex. 1003, 77 (“You use localhost if you’re running the application server on your own machine; otherwise, use the Internet address or host name where the server is running.”); 303 (describing “localhost:24848” as “the application server host machine and port”); Ex. 1021 ¶ 48 (Dr. Madisetti testifying that “Anderson describes using the same machine – ‘localhost’ – to run the GoogleSearch Java application and display its output in a web browser”). Dr. Madisetti testifies that “the term ‘localhost’ refers to a host name that [is] used with a request in order to refer back to the same (local) computer making the request; when a computer issues a request sent to ‘localhost,’ in other words, it is issuing a request to itself.” Ex. 1021 ¶ 48. Dr. Madisetti’s testimony relies on and is consistent with the Microsoft Computer Dictionary’s entry for the term “localhost,” which is as follows: localhost n. The name that is used to represent the same computer on which a TCP/IP message originates. An IP packet sent to localhost has the IPR address 127.0.0.1 and does not actually go out to the Internet. Ex. 1022, 316; see Ex. 1021 ¶ 48. Thus, Dr. Madisetti explains, “[t]he ‘localhost’ host name” allows “a single computer to perform the functions of both ‘client’ and ‘server’ for a particular application,” “is a standard technique for developing networked applications or for executing them locally,” and is “disclosed in Anderson” and “common and well-known to persons of ordinary skill in the art.” Ex. 1021 ¶ 48. Neither Patent Owner nor Dr. Almeroth provide persuasive contrary evidence showing why Petitioner’s arguments concerning the “localhost” technique are incorrect.” slip op. at 57
Patent outcomesUS 9,063,755 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,063,755 - Facebook, Inc. / Expedia, Inc. et al. v. Express Mobile Inc.All claims unpatentablePTAB · Mar 1, 2023 · IPR2022-00785 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 2, 5–7, and 11 are unpatentable under § 103 as obvious over the cited combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose an alternative assessment, and we note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. Having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition above, as we did initially in the Institution Decision, as it is consistent with the ’755 patent and the asserted prior art.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“term ‘device-independent code’ has been construed by a district court to mean ‘code that is not specific to the operating system, programming language, or platform of a device.’” Id. at 12 (citing Ex. 2021, 15–16; Ex. 2022, 10). Petitioner does not challenge this construction or offer a competing construction, but does disagree with Patent Owner’s application of this construction, as discussed further herein. As the parties do not disagree with the District Court’s construction, we adopt it for use in this proceeding. We address Petitioner’s arguments about the application of the construction in the course of the validity analysis. We determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only 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 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We determine, based on the full record of the proceeding, that Petitioner has submitted sufficient evidence to establish that Anderson was publicly accessible before the critical date of the challenged patent, and, thus, Petitioner has established that the reference qualifies as a printed publication. In particular, the face of Anderson bears a copyright date of 2006, a publication date of May 2006, an ISBN (“International Standard Book Number”), and identifies an established publisher (Prentice Hall). Ex. 1003, 4. See Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date 8 References to page numbers for this exhibit are to the page numbers as provided by Petitioner on the exhibit. of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”). Dr. Hall-Ellis testifies that Exhibit 1003 is a true and correct copy of the selected pages from the book as held by the Library of Congress, and also attests that the book was publicly available by or shortly after June 28, 2007, because by that date it had been received, cataloged, and indexed at the Library of Congress and made part of the Online Computer Library Center’s (“OCLC’s”) bibliographic database. Ex. 1015 ¶¶ 43, 49; see id. ¶ 28 (describing OCLC).” slip op. at 12
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“unavailing. Dr. Almeroth testifies that Chapter 22 of Ambrose-Haynes encourages the use of ColdFusion, citing various statements from Chapter 22. Ex. 2020 ¶ 75 (citing Ex. 2034, 2 (“We will use a combination of ColdFusion and ASP to handle all communication.”), 10 (“[W]e will look at how ColdFusion can issue SOAP Requests.”), 13 (describing how to “use ColdFusion to read the contents of the SOAP Response and act upon it”), 27 (describing that “ColdFusion Server . . . sends a request to a web server over HTTP”), 29 (explaining how to “interact with this .NET web service via the ColdFusion language”)). These statements, however, merely encourage the use of ColdFusion; they do not discourage or discredit the use of Java. Similarly, Dr. Almeroth points to Chapter 25’s statement that the ColdFusion platform includes “an easy to use, flexible, web application development tool,” but again this merely encourages the use of ColdFusion without discouraging or disparaging Java. Ex. 2020 ¶ 75 (citing Ex. 1006, 54). Thus, we find that Dr. Almeroth’s conclusion that Ambrose-Haynes teaches away from using Java in the context of web services is not supported by the portions of the reference he cites. Accordingly, we give that testimony little weight. Additionally, we find that Dr. Madisetti’s testimony that “Ambrose-Haynes does not teach away from using Java” and “simply recognizes that Java and ColdFusion can be alternatives to each other” to be credible and supported by the disclosures of the reference. Ex. 1021 ¶ 52.” slip op. at 62
Patent outcomesUS 9,063,755 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,063,755 - Facebook, Inc. / Expedia, Inc. et al. v. Express Mobile Inc.All claims unpatentablePTAB · Mar 1, 2023 · IPR2021-01455 · APJ Aaron W Moore · IPR · Final written decision
The Board held claims 1, 2, 5–7, and 11 unpatentable as obvious under § 103 over the cited combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose an alternative assessment, and we note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. Having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition above, as we did initially in the Institution Decision, as it is consistent with the ’755 patent and the asserted prior art.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“term ‘device-independent code’ has been construed by a district court to mean ‘code that is not specific to the operating system, programming language, or platform of a device.’” Id. at 12 (citing Ex. 2021, 15–16; Ex. 2022, 10). Petitioner does not challenge this construction or offer a competing construction, but does disagree with Patent Owner’s application of this construction, as discussed further herein. As the parties do not disagree with the District Court’s construction, we adopt it for use in this proceeding. We address Petitioner’s arguments about the application of the construction in the course of the validity analysis.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only 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 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We determine, based on the full record of the proceeding, that Petitioner has submitted sufficient evidence to establish that Anderson was publicly accessible before the critical date of the challenged patent, and, thus, Petitioner has established that the reference qualifies as a printed publication. In particular, the face of Anderson bears a copyright date of 2006, a publication date of May 2006, an ISBN (“International Standard Book Number”), and identifies an established publisher (Prentice Hall). Ex. 1003, 4. See Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date 8 References to page numbers for this exhibit are to the page numbers as provided by Petitioner on the exhibit. of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”). Dr. Hall-Ellis testifies that Exhibit 1003 is a true and correct copy of the selected pages from the book as held by the Library of Congress, and also attests that the book was publicly available by or shortly after June 28, 2007, because by that date it had been received, cataloged, and indexed at the Library of Congress and made part of the Online Computer Library Center’s (“OCLC’s”) bibliographic database. Ex. 1015 ¶¶ 43, 49; see id. ¶ 28 (describing OCLC).” slip op. at 12
Patent outcomesUS 9,063,755 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,063,755
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.