• Google Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23

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

    “After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24

  Patent outcomesUS 6,121,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,121,960
• Carecloud Corporation v. Athenahealth, Inc.All claims unpatentable
  PTAB · Nov 18, 2015 · CBM2014-00143 · APJ Richard E Rice · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 as directed to ineligible subject matter; obviousness was not shown for claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Neither party proposes any change to the interpretations set forth above, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our interpretations. Patent Owner proposes constructions for two additional claim terms— “rule” and “database.” PO Resp. 10. With respect to “rule,” Patent Owner proposes the definition set forth expressly in the Specification, i.e., “a rule is coded logic that evaluates data and then performs an action.” Id. (citing Ex. 1001, 5:59–60). Petitioner does not dispute Patent Owner’s proposed construction of “rule,” and we agree that it is the broadest reasonable interpretation consistent with the Specification. For the claim term “database,” Patent Owner relies on Mr. Goodin’s statement, based on a dictionary definition, that a “database” is a “collection of data with a given structure for accepting, storing, and providing, on demand, data for multiple users.” Id. (citing Ex. 2012 ¶ 44); see Ex. 2015, 21. We note Mr. Goodin’s additional testimony that a POSA “would understand a ‘database’ is a stored collection of data” (Ex. 2012 ¶ 45), and that the Specification “contrasts a database, consisting of stored data, which can be updated on demand, with a set of rules that are hard coded into a software application” (id. ¶ 46, citing Ex. 1001, 6:27–28). Petitioner does not propose a construction for “database” or challenge Mr. Goodin’s testimony, discussed above. Based on the above, we determine that the broadest reasonable interpretation consistent with the Specification of “database” is a stored collection of data that can be updated on demand.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s Declarant, Dr. Bergeron, provides the following definition of a person of ordinary skill in the art (“POSA”): [A] POSA in the 2000 time frame would have had a Bachelor’s degree in computer science or the equivalent, or commensurate industry experience of at least four to five years of experience with computer programming and general knowledge of database technologies and networking or similar fields. A POS[A] in the 2000 time frame would also have at least two years of experience in the healthcare, or healthcare-related, industry. Ex. 1013 ¶ 16. Patent Owner’s Declarant, Dr. Goodin, agrees with Dr. Bergeron’s definition (Ex. 2012 ¶ 41). We agree with and adopt this definition for the purposes of our Final Written Decision.” slip op. at 8

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

    “On this record, we are persuaded that claims 1–20 are directed to the broad concept of scrubbing medical claims before submission, i.e., pre- processing medical claims to identify and correct errors. See Pet. 16; Pet. Reply 3. In particular, the patent claims all require automatically interacting with the completed claim submission by the medical practice management server to correct an error in the completed claim submission, wherein the error is resolved by the medical practice client before processing the completed claim submission, by applying one or more rules from a class of rules associated with the payor server, wherein the one or more rules comprises a new rule, an updated rule, or both received from the payor server. Ex. 1001, 20:12–20 (claim 1), 22:24–32 (claim 18), 23:11–19 (claim 20) (emphases added). Further, the concept of scrubbing medical claims before submission is consistent with the ’116 Patent Specification, which explains: “Given the extent of wasted time and money associated with the process [for filing and processing health insurance claims], there exists a need to manage a medical practice in a more efficient manner and [to] provide insurance claims with fewer or no errors.” Id. at 1:64–67. According to the Specification, “[t]he present invention automatically and repeatedly interacts with an insurance company system and/or applies rules to efficiently manage a medical practice and provide insurance claims with a reduced number of errors.” Id. at 2:3–6. In a preferred embodiment, rules engine 60 applies rules to the claim entry form and thereby “scrubs” the claim before submission. Id. at 13:31–59; see Ex. 1001, 13:33–34, Fig. 3F (“The rules engine 60 ‘scrubs’ the claim (step 390), or examines the claim for claim errors.”); Pet. 28 n.2. Given these disclosures, we are unpersuaded that any specific claim limitations need to be added to the above articulated abstract concept, as we discern that they merely provide support to the abstract concept of scrubbing medical claims before submission. Despite Patent Owner’s arguments to the contrary, we see little difference between scrubbing medical claims before submission and the type of fundamental economic practice considered to be an abstract idea by the Supreme Court in Alice.1 As established by the record, scrubbing medical claims before submission is a practice that existed long before the ’116 Patent. See, e.g., Ex. 1001, 1:31–40; Ex. 1012, 2:27–39; Ex. 1013 ¶¶ 33–34; Ex. 1024,2 107–108; Ex. 1029 ¶¶ 10–12, 14, 27. That the claims recite using a database of updated rules, multiple computers, and a claim edit screen, for scrubbing medical claims before submission, does not render the claims any less abstract. See Intellectual Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that “while the claims recite budgeting using a ‘communication medium’ (broadly including 1 In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. 134 S. Ct. at 2356. The Supreme Court also determined that “[l]ike the risk hedging in Bilski [Bilski v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” 134 S. Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice, and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice., 134 S. Ct. at 2357. 2 Bringing Health Care Online: The Role of Information Technologies, U.S. Congress, Office of Technology Assessment (Sept. 1995). the Internet and telephone networks), that limitation does not render the claims any less abstract”). We conclude, therefore, that Petitioner has demonstrated that the ʼ116 Patent claims, like the claims in Alice, are directed to an abstract idea, namely, scrubbing medical claims before submission.” slip op. at 14

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

    “For reasons that parallel those articulated by the Federal Circuit in Intellectual Ventures I, we determine, contrary to Patent Owner’s arguments, that claims 1–20 of the ’116 Patent do not incorporate an inventive concept. See Alice, 134 S. Ct. at 2355; Intellectual Ventures I, 792 F.3d at 1368–70. Rather, the steps and limitations in the claims, whether considered individually or as an ordered combination, amount to a mere instruction to implement the abstract idea on a computer. See Alice, 134 S. Ct. at 2358. Like the claims at issue in Alice and Intellectual Ventures I, the ’116 Patent claims all recite generic computer elements (servers, rules, database, interactive screen, etc.) performing generic computer tasks such as storing rules in a database, receiving data, performing automated operations, and transmitting data. See, e.g., Ex. 1001, 20:2–42 (claim 1); see Alice, 134 S. Ct. at 2359; Intellectual Ventures I, 792 F.3d at 1368, 1370; Ex. 1001, 4:27–57 (servers), 5:60–61 (rule), 5:66–6:8 (rules database), 14:62–65 (interactive screen); Ex. 1013 ¶¶ 54, 56, 57, 62; Ex. 1029 ¶¶ 22– 27; Ex. 2011, 158:23–159:5; Ex. 2024, 94:4–17. Patent Owner’s argument, on page 76 of the Response, that the claims” slip op. at 21

  Patent outcomesUS 7,617,116 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · Graham
  Patents in suitUS 7,617,116
• Kinik Company v. Chien-Min SungAll claims unpatentable
  PTAB · Nov 4, 2015 · IPR2014-01523 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–12 and 17–19 are unpatentable as anticipated by Chou or obvious over Puthanangady and Chou; claims 8, 9, and 12 are also obvious over Chou and An.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Generally, a preamble is not construed as a limitation. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). In particular, when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” the preamble is not considered a limitation. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Accordingly, we begin from the general premise that “CMP pad dresser” is not limiting, and from there we determine that the deletion of “CMP pad dresser” from each of independent claims 1 and 12 would not affect the rest of the claim. For the reasons set forth herein, we are unpersuaded by Patent Owner that we should deviate from these principles.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner

    “independent claim 11 requires that they be performed in that order. Patent Owner’s assertions are misplaced. There is no question that, grammatically, the bonding step is recited before the coupling step. It is the general rule, however, that “[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d at 1342 (citing Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). Perhaps Patent Owner is asserting that grammatically reciting the steps in an order is an actual order for claim construction purposes. We disagree because the converse would make superfluous Interactive Gift Express, supra. In all patent claims, individual steps must be written grammatically in some sequence. Unless there is something in the claim language itself, however, that would denote a specific sequence of steps relative to each other, no order is presumed. To that end, the sequence of the two “disposing” steps of independent claim 11 are illustrative. The second “disposing” step recites “disposing a second monolayer of superabrasive particles on the metal support layer on a side opposite the first monolayer.” By logic, this second “disposing” step requires that the first “disposing” step of “disposing a first monolayer” have occurred. Otherwise, it is impossible to perform the second “disposing” step. By contrast, Patent Owner has not identified, and we are unable to determine, that there is any express language in either the “bonding” step or the “coupling” step that requires one be performed before the other.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Regarding the testimony of Dr. Sung, in analogous contexts, the Federal Circuit has held repeatedly that in order to guard “against courts being deceived by inventors who may be tempted to mischaracterize the events of the past through their testimony,” the law requires corroboration of a putative inventor’s credible testimony, the sufficiency of which is measured under a “rule of reason” standard. Gen. Elec. Co. v. Wilkins, 750 F.3d 1324, 1330 (Fed. Cir 2014) (citing Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374 (Fed. Cir. 2009)); see also Bell & Howell Document Mgmt. Prod. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997) (“the testimony of an inventor . . . concerning claim construction . . . often is self-serving, after-the-fact attempt to start what should have been part of his or her patent application”). To that end, while Patent Owner cites paragraphs 26 and 27 of Dr. Sung’s Declaration in support of their claim construction position here, they do not cite to any corroborative evidence. Furthermore, the content of those paragraphs are largely conclusory. For example, the Declaration asserts that “if a rigid support is also present on one side of the tool but not on the other side, the benefits of the substantially similar distribution of superabrasive particles cannot be achieved and the warpage of the tool will not be mitigated.” Ex. 1012 ¶ 26. The aforementioned assertion does not further analyze why the benefits could not be achieved and the warpage mitigated, and implicit in asserting that the warpage would not be mitigated is that even without the rigid support, some warpage would occur. Yet, there is no analysis as to how much warpage is or is not acceptable, and how the rigid support would take the warpage beyond that acceptable level. A similar analysis is applicable to the Declaration’s assertion that “[a]n attempt to couple the rigid support before the monolayers are bonded to the metal support layer would result in a disk that would be inoperative for CMP pad dressing.” Ex. 1012 ¶ 27. Accordingly, we determine that Dr. Sung’s testimony is entitled to little weight on this issue.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “superabrasive particles of the second monolayer are positioned to have substantially the same distribution as the superabrasive particles of the first monolayer,” as recited in independent claim 1, because Petitioner’s sole evidentiary support is Figures 3A–3D and 5A–5D of Chou, and Chou does not add any additional disclosure concerning the alignment of the particles in Figures 3A–3D and 5A–5D. More specifically, Patent Owner asserts Chou does not enable one of ordinary skill to implement the disclosures of Figures 3A–3D and 5A–5D without undue experimentation. We disagree. After considering the entire record, we are unpersuaded that arriving at the alignment of particles disclosed in Figures 3A–3D and 5A–5D would have involved undue experimentation, for the reasons set forth below. Patent Owner asserts that the text of Chou is silent as to how the alignment of particles in Figures 3A–3D and 5A–5D was achieved, and asserts that Dr. Blanchard agrees with them. We agree to an extent, as Chou does disclose that it is desirable to distribute the abrasive particles evenly over both surfaces to prevent deformation (Ex. 1004 ¶¶ 9, 39), albeit the text of Chou does not disclose any specifics as to what would be considered “even.” Even if this factor, however, was given full weight, it is still insufficient to persuade us that undue experimentation would have been required, especially where Figures 3A–3D and 5A–5D disclose the exact alignment of particles recited in the aforementioned limitations of independent claim 1. Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“a drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference”).” slip op. at 19

  Patent outcomesUS 8,777,699 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,777,699
• Square, Inc. v. Unwired Planet LLCAll claims unpatentable
  PTAB · Oct 30, 2015 · IPR2014-01165 · APJ Michael W Kim · IPR · Final written decision

  Claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 are unpatentable as obvious over Othmer and Goldberg; anticipation by Manz was not shown.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner

    “the wireless device to determine its current location data and reporting the current location data of the wireless device . . . in accordance with a set of location update instructions,” the express language does not assist us definitively in deciding whether “set of location update instructions” must influence the recited “determine.” Although under a most natural reading, it appears that “set of location update instructions” is applicable to the entire claim limitation, which would include the “determine” operation, it is plausible that under a broadest reasonable construction, the recited “set of location update instructions” is only required to influence the immediately adjacent “reporting” operation. When we consult the Specification, however, we conclude that the broadest reasonable construction, in view of the Specification, is that “set of location update instructions” must influence the recited “determine” operation. For example, the Specification in the “Brief Summary of the Invention” section discloses that “[l]ocation data for the wireless device is obtained in accordance with the set of instructions. The location data is provided to a notification server.” Ex. 1001, 3:28–30. As the second sentence corresponds to the recited “reporting” operation, the set of instructions in the first sentence would only apply to what would correspond to the recited “determining” operation. In another example, the Specification discloses that “[a]t step 320, the mobile device executes the algorithm to determine its location by a location determination method indicated in the algorithm and provides the corresponding location data to the notification server.” Ex. 1001, 9:3–6. In the Decision on Institution, we preliminarily determined that “set of location update instructions” is broader than, and thus encompasses, algorithms, and after reconsidering anew the basis for our preliminary construction, we determine that our previous determination was correct. Dec. 7–9. Here, the exemplary algorithm clearly applies to the location determination method, with the “reporting” operation only performed subsequently. See Ex. 1001, 3:16–20; 5:1–10. Indeed, we are unable to identify any portion of the Specification where any set of instructions or algorithm is shown definitively as not influencing the “determine” operation. Accordingly, we interpret the claims to require that the “set of location update instructions” must influence the recited “determine” operation.” slip op. at 7

  • Skill levelSkill level board ownOther

    “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, 405 (2007). The parties agree that a person of ordinary skill in the art would have had “a Bachelor of Science degree in Electrical/Computer Engineering or Computer Science (or related subjects) plus relevant academic or professional experience.” See PO Resp. 11 (citing Ex. 2013 ¶ 22; Ex. 2011, 24:17–25:15). Based on the record presented, including our review of the ’359 patent and the types of problems and solutions described in the ’359 patent and cited prior art, we concur with the parties’ assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 12

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “improper because Goldberg is non-analogous art to the ’359 patent. Specifically, Patent Owner asserts that the claimed invention is directed to providing notifications to a wireless device, while Goldberg is a communication link that merely transmits location data. We disagree with Patent Owner. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, the preambles of independent claims 1 and 8 recite that they are directed to notifying wireless devices of an event. Furthermore, contrary to Patent Owner’s assertion that Goldberg is a communication link that merely transmits location data, Goldberg expressly discloses transmitting commands from a base station to a watson device. Ex. 1006, 4:34–40, 13:26–35. We are persuaded that Goldberg is analogous art to the claimed invention under either prong. Moreover, as discussed at oral hearing, location determination is unquestionably a major part of the claimed invention, for example, by express recitations in the independent claims of “current location data” and “location update instructions.” Patent Owner agrees that Goldberg is directed to location determination. See Tr. 50:11–52:14. At a minimum, we determine that this satisfies the second prong of the analogous arts analysis, namely, that both the claimed invention and Goldberg are directed to problems associated with location determination.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “A person of ordinary skill in the art would have been motivated to combine Othmer with Goldberg to result in an improved mobile communications device that reports its location according to configuration provided by a remote server. (Ex. 1011, ¶ 156–157, 158–159). Each reference is directed to a system for determining, communicating, and storing the locations of mobile communications devices in a network of devices, so the references are in the same field of endeavor and the problems encountered by designers of such devices would overlap. (Ex. 1011, ¶ 160). Goldberg discusses a device and protocol for communicating the information necessary to track mobile devices in the network, while Othmer focuses on an application that is achievable with such a configuration (displaying location-based content in a “ticker” on the mobile device). (Ex. 1011, ¶ 161–164). Both disclosures teach tracking the location of mobile devices, so the incorporation of Goldberg’s infrastructure techniques (including its discussion of altering the reporting frequency of the mobile devices) into Othmer’s practical application (mobile location-aware tickers) would predictably result in an improved wireless device, with each reference contributing its known properties and advantages. (Ex. 1011, ¶ 165). Othmer contains an express teaching that “positioning techniques known in the art,” including the techniques described in Goldberg, can be used in its system. (Ex. 1005, ¶ 51, Ex. 1011, ¶ 166). Moreover, Goldberg expressly discloses that its “watson” device can use a location determination in the form of GPS system and a communication means in the form of a cellular telephone (Ex. 1006, 3:53-56, 4:8-11), which are precisely the examples given in Othmer as the hardware to implement its ticker system. (Ex. 1005, ¶ 33, 30, Ex. 1011, ¶ 167). Accordingly, the hardware building blocks of the two systems are the same, further evidencing that Othmer’s system could be readily be adapted to incorporate Goldberg’s hardware considerations without substantial modification. (Ex. 1011, ¶ 168, 170). A person of ordinary skill could have used Goldberg’s location transmission techniques in Othmer’s ticker system to provide an enhanced alert distribution system, with an expectation of success. (Ex. 1011, ¶ 169, 171). Accordingly, the combination of Othmer and Goldberg is proper.” slip op. at 12

  Patent outcomesUS 8,275,359 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,275,359
• EMC Corporation / EMC International U.S. Holdings, Inc. et al. v. Clouding Corp.All claims unpatentable
  PTAB · Oct 22, 2015 · IPR2014-01217 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53 are unpatentable as anticipated by Schilit.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “First, independent claim 1, for example, recites the open-ended transitional phrase “comprising” in conjunction with all of the recited steps, including “receiving a data access request.” See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”). Thus, the recitation of “receiving a data access request” (e.g., “we want the Elvis song ‘Jailhouse Rock’”) does not preclude receiving additional data access requests (e.g., “we request .wav files”) or having steps performed in response to both requests (e.g., returning “Jailhouse Rock” in the .wav file format). Second, other language in each independent claim is consistent with our claim construction set forth above. For example, a subsequent step recited in independent claim 1 and also subject to the open-ended transitional phrase “comprising” is “obtaining the requested data.” While the requested data must be obtained in response to the previously recited “data access request,” it does not follow that the requested data must be obtained only in response to the same recited “data access request,” and cannot also be obtained in response to other, additional data access requests. Obtaining data in response to other data access requests, in addition to the one particular data access request, is not excluded by the claim language at issue. Third, the specification is consistent also with the construction proposed by Petitioner, which we agree with and adopt. For example, the Summary of the Invention section of the specification mentions accommodating multiple data access requests. Ex. 1001, 4:5–8 (“In preferred embodiments, the proxies, agents, and DMS are not located within the WID, but instead are accessed by sending one or more request messages from the WID.”). In another example, the embodiments in the specification, such as Figure 3 cited by Patent Owner, disclose performing the obtaining, determining, and returning steps in response to one data access request. There is no indication, however, that other embodiments are excluded, and, indeed, the specification nowhere disclaims other embodiments. Moreover, the specification actually indicates the contrary of Patent Owner’s position by stating, “[t]he foregoing description of a preferred embodiment is for purposes of illustrating the present invention, and is not to be construed as limiting thereof.” Ex. 1001, 18:36–38; see also Ex. 1001, 4:49–56 (“As will be obvious to one of ordinary skill in the art, these flowcharts are merely illustrative of the manner in which the associated aspects of the present invention may be implemented, and changes may be made to the logic that is illustrated therein (for example, by altering the order of operations shown in some cases, by combining operations, etc.) without deviating from the inventive concepts disclosed herein.”).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “evidence relied on by Petitioner and Patent Owner, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53 are anticipated by Schilit. The Petition sufficiently accounts for each of the elements in these claims. For example, independent claim 1 recites “receiving a data access request from a pervasive device” and “obtaining the requested data.” Schilit discloses that an m-link program accesses a server to retrieve a document identified by a user-selected URL. Ex. 1005, 5:32–34. Independent claim 1 also recites “determining what data manipulation operations are available for the obtained data, as well as a location of each available data manipulation operation” and “returning the determined data manipulation operations and locations to the pervasive device.” Schilit discloses that, in response to receipt of a user-identified URL, a list of situations, or content-appropriate services, such as reading, printing, or faxing, for that user-identified URL, are located on a database (Ex. 1005, 10:1–4) and provided to a mobile device display. Ex. 1005, 5:48–49, Fig. 6C.” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Patent Owner can at best show only a tangential relationship between additional data access requests and the above-quoted language from the specification. Given the need in a disclaimer for clarity, deliberateness, and precision using “words or expressions of manifest exclusion or restriction,” in order to show that this tangential relationship rises to the level of a disclaimer, Patent Owner would need to show that the correlation between additional data access requests and bandwidth and battery life is so undisputedly negative, that one of ordinary skill could not have helped but come to the conclusion that any action that would negatively impact bandwidth and battery life, such as additional data access requests, are precluded by the claim. In support of this implication, Patent Owner cites the Declaration of Dr. Scott M. Nettles, which recites the following: There is no method corresponding to claim 1 that is described in the ’481 patent that involves or suggests more than one data access request. Indeed, such methods would run contrary to the goals of the patentee to reduce power consumption at the mobile device while also simplifying its operation. The method of claim 1 requires one send and one receive at the pervasive device. And in fact, those sends and receives would have been needed just to communicate. As discussed above, a person of ordinary skill would have understood that this minimal scheme was desirable to conserve resources. Ex. 2001 ¶ 30. This paragraph constitutes the entirety of Patent Owner’s factual support for its position in this regard. In response, Petitioner relies on the Declaration of Dr. Benjamin Goldberg to support its position that one of ordinary skill in the art would have understood that, in certain circumstances, using multiple data access requests is commensurate with preserving bandwidth and battery life, for example, and, most notably, when obtained data is in response to multiple requests, but also when a request for a large data file is broken up into multiple smaller requests to preserve the possibility that the rest of the data won’t be sent. Reply 3–4 (citing Ex. 1022 ¶¶ 22–28).1 Accordingly, when we consider that Patent Owner’s position is based on a tangential extrapolation from the specification supported by minimal factual support from Dr. Nettles, we are more persuaded by Petitioner’s reasoning and response, which is supported by the more robust Declaration of Dr. Goldberg, the contents of which we have considered and determine are more credible than those of Dr. Nettles’s Declaration.” slip op. at 11

  Patent outcomesUS 6,925,481 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,925,481
• EMC Corporation / EMC International U.S. Holdings, Inc. et al. v. Clouding Corp.All claims unpatentable
  PTAB · Oct 22, 2015 · IPR2014-01218 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–24 are unpatentable as anticipated by Schilit.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “First, independent claim 1, for example, recites the open-ended transitional phrase “comprising” in conjunction with all of the recited steps, including “receiving a data access request.” See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”). Thus, the recitation of “receiving a data access request” (e.g., “we want the Elvis song ‘Jailhouse Rock’”) does not preclude receiving additional data access requests (e.g., “we request .wav files”) or having steps performed in response to both requests (e.g., returning “Jailhouse Rock” in the .wav file format). Second, other language in each independent claim is consistent with our claim construction set forth above. For example, a subsequent step recited in independent claim 1 and also subject to the open-ended transitional phrase “comprising” is “obtaining the requested data.” While the requested data must be obtained in response to the previously recited “data access request,” it does not follow that the requested data must be obtained only in response to the same recited “data access request,” and cannot also be obtained in response to other, additional data access requests. Obtaining data in response to other data access requests, in addition to the one particular data access request, is not excluded by the claim language at issue. Third, the specification is consistent also with the construction proposed by Petitioner, which we agree with and adopt. For example, the Summary of the Invention section of the specification mentions accommodating multiple data access requests. Ex. 1001, 4:9–12 (“In preferred embodiments, the proxies, agents, and DMS are not located within the WID, but instead are accessed by sending one or more request messages from the WID.”). In another example, the embodiments in the specification, such as Figure 3 cited by Patent Owner, disclose performing the obtaining, determining, and returning steps in response to one data access request. There is no indication, however, that other embodiments are excluded, and, indeed, the specification nowhere disclaims other embodiments. Moreover, the specification actually indicates the contrary of Patent Owner’s position by stating, “[t]he foregoing description of a preferred embodiment is for purposes of illustrating the present invention, and is not to be construed as limiting thereof.” Ex. 1001, 18:43–45; see also Ex. 1001, 4:53–60 (“As will be obvious to one of ordinary skill in the art, these flowcharts are merely illustrative of the manner in which the associated aspects of the present invention may be implemented, and changes may be made to the logic that is illustrated therein (for example, by altering the order of operations shown in some cases, by combining operations, etc.) without deviating from the inventive concepts disclosed herein.”).” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “tangential relationship rises to the level of a disclaimer, Patent Owner would need to show that the correlation between additional data access requests and bandwidth and battery life is so undisputedly negative, that one of ordinary skill could not have helped but come to the conclusion that any action that would negatively impact bandwidth and battery life, such as additional data access requests, are precluded by the claim. In support of this implication, Patent Owner cites the Declaration of Dr. Scott M. Nettles, which recites the following: There is no method corresponding to claim 1 that is described in the [’621] patent that involves or suggests more than one data access request. Indeed, such methods would run contrary to the goals of the patentee to reduce power consumption at the mobile device while also simplifying its operation. The method of claim 1 requires one send and one receive at the pervasive device. And in fact, those sends and receives would have been needed just to communicate. As discussed above, a person of ordinary skill would have understood that this minimal scheme was desirable to conserve resources. Ex. 2001 ¶ 30. This paragraph constitutes the entirety of Patent Owner’s factual support for its position in this regard. In response, Petitioner relies on the Declaration of Dr. Benjamin Goldberg to support its position that one of ordinary skill in the art would have understood that, in certain circumstances, using multiple data access requests is commensurate with preserving bandwidth and battery life, for example, and, most notably, when obtained data is in response to multiple requests, but also when a request for a large data file is broken up into multiple smaller requests to preserve the possibility that the rest of the data won’t be sent. Reply 3–4 (citing Ex. 1022 ¶¶ 23–28).1 1 In reply to Patent Owner’s assertions on this issue, Petitioner cites Schilit for disclosing that it, too, is directed to “minimiz[ing] transmissions over relatively low-bandwidth wireless communications.” Reply 17 (citing Ex. 1005, 11:11–13). Accordingly, as Schilit discloses additional data access requests, Schilit provides Accordingly, when we consider that Patent Owner’s position is based on a tangential extrapolation from the specification supported by minimal factual support from Dr. Nettles, we are more persuaded by Petitioner’s reasoning and response, which is supported by the more robust Declaration of Dr. Goldberg, the contents of which we have considered and determine are more reasonable than those of Dr. Nettles’s Declaration.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “evidence relied on by Petitioner and Patent Owner, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1–24 are anticipated by Schilit. The Petition sufficiently accounts for each of the elements in these claims. For example, independent claim 1 recites “receiving a data access request from a pervasive device” and “obtaining the requested data.” Schilit discloses that an m-link program accesses a server to retrieve a document identified by a user-selected URL. Ex. 1006, 5:32–34. Independent claim 1 also recites “determining what data manipulation operations are available for the obtained data; and providing references to the determined data manipulation operations to the pervasive device.” Schilit discloses that in response to receipt of a user-identified URL, a list of situations or content-appropriate services for that user-identified URL, such as reading, printing, or faxing, are located on a database (Ex. 1006, 10:1–4) and provided as links on a mobile device display. Ex. 1006, 5:48–49, Fig. 6C. The correspondence of Schilit’s disclosure to independent claim 1 is even clearer for the phone number and address functions of Figure 6A. For example, independent claim 1 recites “receiving a data access request from a pervasive device” and “obtaining the requested data.” Schilit discloses that an m-link program accesses a server to retrieve a document identified by a user-selected URL. Ex. 1006, 5:32–34. Independent claim 1 also recites “determining what data manipulation operations are available for the obtained” and “providing references to the determined data manipulation operations to the pervasive device.” Schilit provides a link for a telephone number identified in the user-identified URL (e.g., “(650) 813-7765” as shown Figure 6A of Schilit) in response to receipt of a user-identified URL. Schilit displays the link listed as the telephone number identified in the user-identified URL on a mobile device display. The link is configured such that when the user selects the link, the device dials the telephone number displayed on the mobile device. Ex. 1006, 8:14–18, Fig. 6A. Thus, as distinguished from the embodiment of Figure 6C of Schilit, one request for a user-selected URL results in both obtained data from the user-selected URL (e.g., “(650) 813-7765” as shown in Figure 6A of Schilit) and data manipulation operations (e.g., the link is configured such that when the link is selected the telephone number displayed on the mobile device is dialed). The same analysis applies to the address link (e.g., “FX Palo Alto Laboratory”), the selection of which brings up a map of the address listed in identified in the user-identified URL. Ex. 1006, 8:22–35, Fig. 6A.” slip op. at 15

  Patent outcomesUS 7,254,621 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,254,621
• Motorola Mobility LLC v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–4 and 18 are unpatentable: claims 1 and 2 are anticipated by Boehm, and the challenged claims are obvious over the instituted combinations.

  RulingsFinal written decision

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

    “To remove Boehm as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Boehm; or (2) a conception before the filing date of the Boehm patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). Under either approach, however, it must be proven that conception occurred prior to November 4, 2002. See id. “Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known.” Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). Furthermore, “[t]he conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). Objective evidence that corroborates an inventor’s testimony regarding the conception of the invention is required “because of the danger in post-hoc rationales by an inventor claiming priority.” Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1065 (Fed. Cir. 2005). The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This approach, however, “does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “We agree with Patent Owner that Petitioner’s proposed construction does not take into account properly the “managing the data path” claim language, even given that Petitioner construes only the limitation “a Local Area Network (LAN) routing system” rather than the entire phrase. In any event, we decline to adopt Petitioner’s proposed construction because it erroneously equates a LAN routing system to “a local area network or equivalent circuitry.” We do not view a LAN routing system as being equivalent to a LAN itself or circuitry “equivalent” to a LAN, which Petitioner has not described. We also decline to adopt Patent Owner’s proposed construction, which is not supported adequately. Specifically, Patent Owner does not explain sufficiently why managing the data path necessarily is accomplished “by controlling client devices’ access to the Internet and by controlling access to the client devices from the Internet.” Patent Owner asserts that the Specification of the ’771 patent describes managing the data path “by controlling the client devices’ access to the Internet, such as by requiring authentication before permitting access” and preventing “unauthorized access in the opposite direction by ‘allow[ing] all client devices 30 to share a single external Internet address.’” PO Resp. 5–6 (citing Ex. 1001, 4:1–14); see also Tr. 43:10–14 (stating the Specification “talks about managing as controlling the client devices’ access to the Internet, things like authentication, and controlling access to client devices from the Internet, like sharing a single Internet address”). The Specification, however, does not describe “managing the data path” explicitly, and we are not persuaded that the “managing the data path” claim language necessarily includes the authentication and sharing functions described in the cited passages. As such, Patent Owner’s reliance on the cited passages in its construction seeks to improperly read limitations from the Specification into the claim. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). Dr. Tewfik testifies that “[i]n computer networking, routing systems allow data to be exchanged between networks by forwarding data to a recipient device in one network from a sending device in another network.” Ex. 2004 ¶ 10. Dr. Tewfik further testifies that, “[i]n the ’771 patent, the LAN routing system is the LAN [R]outer 16,” and the LAN routing system allows data to be exchanged between the short-range local network and the Internet. Id. ¶ 11. This testimony is not dissimilar to Dr. Roy’s testimony that a LAN routing system “routes (i.e. communicates) data between a client device that is accessible via a short-range wireless interface and the Internet that is accessible [via] a long range Internet access interface.” Ex. 1012 ¶ 18. Thus, Dr. Tewfik and Dr. Roy essentially are in agreement that a routing system directs (i.e., exchanges, routes, or communicates) data between networks. This meaning is consistent with the Specification of the ’771 patent, which describes LAN Router 16 as “direct[ing] traffic from the access point 12 to the Internet 20 via the fixed WAN interface 18.” Ex. 1001, 3:33–34. Therefore, applying the broadest reasonable interpretation of the claims in light of the Specification, we interpret the phrase “a Local Area Network (LAN) routing system managing the data path between said wireless access point and said Internet access interface” to mean “a system that directs data between a local area network and the Internet by managing the data path between a wireless access point and an Internet access interface.”” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “3. “stand-alone system” In the Decision on Institution, we interpreted “stand-alone system” to mean “a system capable of operating independently of any other system.” Dec. on Inst. 8–9. The parties do not dispute this interpretation (PO Resp. 10; Pet. Reply 13), and we see no reason to modify this interpretation in light of the record developed at trial. Accordingly, we adopt this interpretation for this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Regarding claim 1, Petitioner argues that Boehm discloses (1) the recited short-range, high-speed wireless access point in the form of wireless access point 325; (2) the recited long-range, wireless Internet access interface in the form of interchangeable network interface 350; and (3) the recited LAN routing system in the form of router 330. Pet. 13. Petitioner also argues that Boehm discloses the recited stand-alone system without the need to access an external service controller server, because Boehm discloses “performing DHCP and network address translation locally rather than by requiring an external server accessible via a long-range network connection to do so.” Id. at 13, 16. With respect to claim 2, Petitioner argues that Boehm discloses using 802.11b wireless communication technology. Id. at 16 (quoting Ex. 1005 ¶ 21).” slip op. at 21

  Patent outcomesUS 7,382,771 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,382,771
• Motorola Mobility LLC v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00500 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40 are unpatentable as anticipated by Payne and Putz.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are unpersuaded that the “by” terms identified by Patent Owner should be accorded anything other than their ordinary and customary meaning, which in the context of the relevant claim limitations, is a computer’s performance of a given action. Regarding Patent Owner’s arguments concerning the Specification, Patent Owner concedes that the term “discretion” appears neither in the claims nor in the Specification. Tr. 43:22–25. Instead, Patent Owner would have us infer “discretion” based on an allegedly clear and unmistakable disavowal of “pull” communications in the Specification. As an initial matter, we are unpersuaded that there is a sufficiently definitive relationship between “pull” communications and “discretion” to infer that a disavowal of “pull” communications requires the inclusion of the term “discretion” in a proper construction of “by.” Moreover, we are unpersuaded that disclosure of exemplary “pull” communications in the Background section and use of “push” communications in a non-limiting embodiment of the Specification, without more, constitutes a clear and unmistakable disavowal of “pull” communications, especially where the referenced embodiment in the Specification actually may refer to “pull” communications.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther

    “In the Decision to Institute, we determined that the term “displaying the message and the data from the predetermined location” did not require express construction. Dec. 12–13. Regarding the “means” terms, Petitioner in its Petition proposed that the several terms containing “means” in claims 21 and 28 qualify as terms under 36 U.S.C. § 112, sixth paragraph.2 Pet. 6– 7. We determined that the various “means” terms of claim 21 and 28 were means-plus-function elements under § 112, ¶ 6, and adopted Petitioner’s construction of the terms “means for creating,” “means for transmitting,” “means for receiving,” and “means . . . for decoding,” and Patent Owner’s construction of “means for displaying.” Dec. 12. Neither party now proposes a different construction of these terms. We note that, in the Petition and Preliminary Response, the parties represented that the “means” terms constructions proposed to the Board were also proposed and agreed upon in the district court case. Pet. 6; Prelim. Resp. 6–7. We have reviewed our analysis in the Decision to Institute, and have determined, on the record presently before us, that application of the district court standard does not change our construction of the various terms reciting “means” set forth in the Decision to Institute. Dec. 9–12. Based on the complete record now before us, we see no reason to alter our earlier constructions, and maintain these constructions for this Final Written Decision.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Although the ultimate determination of whether a document is a printed publication is a question of law, it is a question that is closely based on the underlying facts and circumstances surrounding the disclosure of a document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-bycase basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 23

  Patent outcomesUS 5,790,793 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 5,790,793
• Motorola Mobility LLC v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00501 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 7, 9–12, and 16–18 were held unpatentable; claims 4–6, 8, 13–15, and 19–21 were patentable because the cited art did not disclose the required transmission behavior.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “With respect to entitlement to any earlier effective priority date, a party must identify, specifically, the disclosure in ancestral applications “which do not share the same disclosure,” and which allegedly show § 112 support for the relied-upon priority date. See, e.g., Polaris Wireless, Inc. v. TruePosition, Inc., Case IPR2013-00323, slip. op. at 29 (PTAB Nov. 15, 2013) (Paper 9). To link the Ayyagari Provisional with Ayyagari ’508, Petitioner relates the claims of the ’392 patent to Ayyagari ’508, and then, separately, relates the claims of the ’392 patent to the Ayyagari Provisional. This triangulation does not meet Petitioner’s burden of showing that Ayyagari ’508 is entitled to the earlier filing date of the Ayyagari Provisional. Specifically, while the cited portions of the Ayyagari Provisional and Ayyagari ’508 may each disclose a certain claim limitation, the disclosures may be in different embodiments or contexts such that the cited portion of the Ayyagari Provisional does not provide an adequate ancestral basis for the cited portion of Ayyagari ’508. Petitioner should not expect the Board to search the record and cull the evidence necessary to support Petitioner’s arguments. Amazon.com, Inc. v. Personalized Media Comm., LLC, Case IPR2014-01533, slip op. at 6 (PTAB April 20, 2015) (Paper 16); cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Petitioner has not, in its case-in-chief, linked the Ayyagari Provisional disclosure with the Ayyagari ’508 disclosure in a sufficient manner to meet its burden. Petitioner has not shown that Ayyagari ’508 is entitled to a priority date any earlier than its actual filing date of February 22, 2001.” slip op. at 8

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “explain the alleged reduction to practice embodied in Exhibit F. In evaluating a Patent Owner’s reliance on a declaration, we take into consideration whether Petitioner has had an opportunity to cross-examine the declarant. Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014- 00360, slip op. at 4 (PTAB December 3, 2014) (Paper 39). If Patent Owner does not produce a declarant for cross-examination, we will give that declaration little to no weight. See Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., Case IPR2013-00576, slip op. at 3 (PTAB Sept. 5, 2014) (Paper 36). Petitioner, upon requesting deposition availability for Mr. Wentink, was informed by Patent Owner that “[w]ith respect to Mr. Wentink, Patent Owner does not believe it is required, under the rules, to produce Mr. Wentink for deposition.” Ex. 1017 (corrected), 1. No further explanation of Patent Owner’s interpretation of the rules, or regarding availability of Mr. Wentink for deposition, is before us. Although we have no reason to question Dr. Tewfik’s credentials, his value as a witness is compromised heavily by his distance from and post hoc evaluation of the circumstances of the alleged reduction to practice of the invention. Patent Owner is correct that it was not required, under the rules, to make Mr. Wentink available for cross-examination. Under these circumstances, however, we accord Mr. Wentink’s declaration little weight.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Although the ultimate determination of whether a document is a printed publication is a question of law, it is a question that is closely based on the underlying facts and circumstances surrounding the disclosure of a document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-bycase basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 16

  • ExcludeMotion to exclude, deniedMixed

    “The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013) (Paper 15); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39). Patent Owner’s objections to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017 go more to the weight that the information disclosed therein should be afforded, rather than to its admissibility. It is within our discretion to assign the appropriate weight to be accorded to the information in Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). We, thus, decline to exclude Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. Moreover, we agree with Petitioner that Exhibits 1010, 1013, and 1014 are evidence that properly responds to arguments made by Patent Owner in its Response. Resp. to Mot. to Excl. 11, 12–14; 37 C.F.R. § 42.23. Regarding Exhibit 1006, we are persuaded by Petitioner’s arguments that the testimony of Mr. Worstell (Ex. 1010) authenticates Exhibit 1006. Resp. to Mot. to Excl. 7–8. Similarly, we are persuaded that Exhibit 1010, paragraphs 13–15, reflect testimony based on Mr. Worstell’s personal knowledge and should not be excluded. Accordingly, the Motion to Exclude is dismissed as to paragraphs 23 and 59 of Exhibit 1008, paragraph 6 of Exhibit 1019, and Exhibit 1016, and denied as to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017.” slip op. at 31

  Patent outcomesUS 7,136,392 mixed
  § 102 anticipation
  Patents in suitUS 7,136,392
• Hulu, LLC v. Intertainer, Inc.All claims unpatentable
  PTAB · Jun 12, 2015 · CBM2014-00052 · APJ Jennifer M Meyer · CBM · Final written decision

  Claims 1–3, 5, 8, 10, 11, and 13–15 are unpatentable: claims 1–3, 5, 8, 10, 11, 13, and 14 as anticipated by Chen, and claim 15 as obvious over Chen and Hartanto.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “in view of the Specification of the ’246 patent, requires the link program be limited to a single program. The claim language itself does not indicate a single program is required. Further, we see no language in the Specification, and Patent Owner has not pointed us to any such language, that indicates clearly or persuades us that the claims should be limited as such. The only” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded also that Chen’s disclosure of pausing the video and displaying the linked page on the computer, in response to clicking a hot-link, discloses the claimed “creating a link program adapted to both: (a) interrupt streaming of the video at the remote storage medium . . . and (b) access ancillary content . . . .” Pet. 16–17 (citing Ex. 1003, 4:5–10, 4:21–25, 4:28–40, 7:30–33; Ex. 1008 ¶ 16); see also Ex. 1003, 2:11–17 (“The [HyperVideo Authoring] tool allows one to prepare video clips with the hot-link information and then to link them with other types of media.”); id. at 5:55–6:26 (discussing “[c]reation of hot video content”). As discussed above, Patent Owner admitted, during prosecution of the ’884 application, “the fact that [a] computer performs the disclosed functions when a user interacts with an interface link necessarily requires that there is a link program.” Ex. 1002, 60, 83 (emphases added). We are persuaded additionally that Chen’s disclosure of encoding the embedded hyperlinks in the video (e.g., inserting the hot-link information into frames in the video), and identifying incoming data as a “hot” video such that a hot video decoder may display the “hot” video, including the video, audio, and hot-link information, corresponds to the claimed steps of “associating the link program with the video” and “providing the link program over the network.” Pet. 17–19 (citing Ex. 1003, 4:4–10, 5:56–6:39, 6:48–7:2; Ex. 1008 ¶ 18). We are persuaded further that Chen’s disclosure of transmitting a signal to the URL, from which the video is being streamed, to request delivery of a linked html file (containing instructions to display text or multimedia content), in response to a user clicking on a hot-link, corresponds to the claimed step of “receiving an indication of an interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:20–25; Ex. 1008 ¶ 19). We are persuaded also that Chen’s disclosure of having the URL, from which the video is being streamed, pause the video, in response to a user clicking on a hot-link, while the text or multimedia content is being displayed, corresponds to the claimed step of “interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:28–34; Ex. 1008 ¶ 16). We are persuaded additionally that Chen’s disclosure of allowing the user to resume the video corresponds to the claimed step of “continuing the streaming of the video over the network from the point in time when the streaming of the video was interrupted.” Pet. 19 (citing Ex. 1003, 4:38–40; Ex. 1008 ¶ 20).” slip op. at 12

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

    “under 35 U.S.C. § 103 as obvious based on Chen and Hartanto. Pet. 28–30. Claim 15 recites that the network includes a wireless network. Ex. 1001, 10:43–44. Petitioner contends that use of wireless networks as a mechanism for the transmission of videos was well known in the art prior to the filing date of the ’246 patent, and provides declaration evidence that one of skill in the art would have understood the network for data transfer could be a wireless network. Pet. 28–29; Ex. 1008 ¶ 24. Petitioner cites Hartanto as an example of disclosure of wireless networks used with video transmission. Id. Petitioner further contends that the combination of using a wireless network connection as the network in Chen would have yielded a predictable result. Pet. 29–30; Ex. 1008 ¶ 24. We determine that Petitioner’s analysis and evidence is persuasive. Patent Owner does not argue specifically the patentability of claim 15 based on any limitations other than those discussed above with respect to independent claim 1. See PO Resp. 33. After reviewing the entire record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 15 of the ’246 patent would have been obvious to a person of ordinary skill in the art7 over Chen and Hartanto.” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We note, as a general matter, that although the claims in the ’592 reexamination may be similar, they are not identical to the claims of the ’246 patent. Further, Patent Owner has not filed a Motion to Exclude Dr. Bove’s testimony. In any case, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See Gnosis S.p.A. v. S. Alabama Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In rendering our decision, we have assigned weight to the evidence as appropriate in view of the entire record before us.” slip op. at 17

  Patent outcomesUS 8,479,246 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,479,246

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