- PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See 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)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - PTAB · May 10, 2024 · IPR2024-00200 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted grounds, finding a reasonable likelihood of prevailing based on the Hays obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use the following two-part framework in determining whether to exercise our discretion under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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 explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 65–69). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 65–69). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’056 patent and the asserted prior art, except that we change qualifier “at least” to “about” to avoid including experience levels that exceed the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction Neither party proposes any claim terms for construction. On this record, we determine that no terms need express construction to determine whether we should institute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (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” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,117,056 - PTAB · May 10, 2024 · IPR2024-00171 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“proceeding if the challenge to the patent is based on matters previously presented to the Office. 35 U.S.C. § 325(d) states, in pertinent part, “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use the following two-part framework in determining whether to exercise our discretion under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons discussed above and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that claim 1 is unpatentable as obvious over the teachings of Hays.7” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “Hays is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., its publication date, which notably, is after the June 26, 2007 priority date of the ’958 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” Prelim. Resp. 41–44. We disagree with Patent Owner’s statutory interpretation. Hays is a printed publication, having been published on May 1, 2008, as Patent Owner acknowledges. See Ex. 1005, code (43); see also Prelim. Resp. 41 (acknowledging publication date). On this record, we are persuaded by Petitioner’s contention that Hays is prior art under pre-AIA 35 U.S.C. § 102(e), having been filed “by another . . . in the United States before the invention by the applicant for patent.” See Pet. 8. Thus, Petitioner asserts a permissible ground of unpatentability by arguing that claims 1–14 are unpatentable under 35 U.S.C. § 103(a) “on the basis of prior art consisting of patents or printed publications” (35 U.S.C. § 311(b)), specifically based on Hays, which is prior art and a printed publication.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction Neither party proposes any claim terms for construction. On this record, we determine that no terms need express construction to determine whether we should institute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (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))). Nevertheless, we note two issues of claim interpretation for the parties to consider. First, the parties may wish to address the interpretation of the phrase “pre-selected in-game advertising” during the trial for the reasons discussed below in §§ II.E.2 and II.F.1. Second, the parties may wish to address the interpretation of the subject matter of dependent claims 5 and 12 reciting “wherein the message is pre-selected by the server based on a model type associated with the mobile communication device, a service subscription associated with the mobile communication device, or a service provider for the service subscription associated with the mobile communication device.” In particular, the parties may wish to address what it means to be “pre-selected” in this context.” slip op. at 8
Claim construction§ 102 anticipationDiscretionary denialcites KSRPatents in suitUS 10,617,958 - PTAB · May 10, 2024 · IPR2024-00209 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“focuses on a high-level comparison of the references. See Prelim. Resp. 14– 19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. Instead, Patent Owner must demonstrate that the references relied on in the Petition are substantially the same in all material respects to the prior art the Examiner actually relied on. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”).” slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“We disagree with Patent Owner’s statutory interpretation. Ho is a printed publication, having been published in January 2008, as Patent Owner acknowledges. See Ex. 1004, code (43) (publication date of January 17, 2008); see also Prelim. Resp. 45 (acknowledging publication date). On this record, we are persuaded by Petitioner’s contentions that Ho is prior art under 35 U.S.C. § 102(e), having been filed “by another . . . in the United States before the invention by the applicant for patent.”11 See Pet. 7 (“For purposes of this Petition, Petitioner uses a June 26, 2007 priority date” for the ’662 patent); see also Ex. 1004, code (22) (filing date of July 12, 2006). Thus, Petitioner asserts a permissible ground of unpatentability” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“claim 115 and that a person having ordinary skill in the art would combine the relevant teachings of Ho and Aoki. See Pet. 17–26, 30. With the exception of “hot spot” and “hot spot information,” which we discussed above in Section II.G.3(a), at the present time Patent Owner does not dispute that Ho teaches those limitations. See Prelim. Resp. 26–35. After reviewing Petitioner’s arguments and information regarding the limitations identified above, including the Zagal Declaration, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that Ho teaches limitations 1(pre), 1(a), (1)(b)(1), 1(d), and 1(e) and that a person having” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - PTAB · Apr 30, 2024 · IPR2024-00132 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’202 patent. Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is instituted as to claims 1–9 of the ’202 patent on all of the grounds set forth in the Petition; and” slip op. at 34
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Petitioner. The prior Board decision observed that Willis discloses sending advertising content based on physical geographic location but does not teach “checking what updated video-game content to send based on one of the factors including a type of the mobile 3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1 Patent Owner contends that Dr. Zagal’s Declaration “simply parrots the Petition” and, thus, should not be entitled to any weight. Prelim. Resp. 28– 33. The testimony quoted by Patent Owner (Prelim. Resp. 30–32) includes citations to the prior art to support the opinions set forth and, thus, “disclose[s] the underlying facts or data on which the opinion is based” (37 C.F.R. § 42.65(a)). See Ex. 1003 ¶¶ 95, 103, 118, 165–166 (citing Ex. 1005 ¶¶ 25, 51; Ex. 1008 ¶¶ 5, 6, 123, 127). We decline, at this stage of the proceeding, to discount Dr. Zagal’s testimony in its entirety and will give that testimony the appropriate weight on the points for which it is offered.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,731,202 - Netflix, Inc. v. VL Collective IP LLCInstitutedPTAB · Jan 12, 2024 · IPR2023-00891 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–22 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
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(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with streaming multimedia.” Pet. 12. Petitioner adds that “[a] lack of experience could be remedied with additional education (e.g., a master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years).” Id. (citing Ex. 1003 ¶ 30). Patent Owner does not propose a different level. Prelim. Resp. 13–14 (asserting that “[f]or present purposes, this Preliminary Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill.”). Petitioner’s proposal is consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Bederson, and we adopt it for purposes of 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“C. Claim Construction The Board uses “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner applies the plain and ordinary meaning of all claim terms and contends that no claim terms require specific construction to resolve the unpatentability issues presented herein.” Pet. 21. Patent Owner proposes certain constructions, but at this juncture, it is not necessary to construe any term explicitly for purposes of this Decision. See Prelim. Resp. 13–27; 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))).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“With respect to the claim term “content-related . . . data segments,” the specification states that “the term “content-related” is understood to mean that first and second data segments have a syntactical meaning . . ., such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Ex. 1001, 4:9–22 (emphasis added).7 We agree with Patent Owner that the emphasized sentence defines the term “content-related.” Prelim. Resp. 14– 15.8 However, for reasons similar to those discussed in the final written decision in IPR2022-01086, Paper 37 at 15–19, we determine that the “content-related” data segments do not support Patent Owner’s proposal, 7 The ellipses represents omission of the phrase “within the respective data file” because, as discussed above, we need not decide if the preamble (which introduces the data files) is limiting with respect to requiring data files. As discussed below, Petitioner’s showing includes relying on separate data files in Comps. 8 We also recognize that whether two segments have “syntactical meaning” between them may be somewhat subjective as discussed in the analysis of Petitioner’s challenges below. namely “data segments ordered in a file such that they will present the file’s contents in their intended presentation order when rendered sequentially.” See Prelim. Resp. 14; IPR2022-01086, Paper 37 at 15–18. Contrary to Patent Owner’s arguments, the “syntactical meaning” as disclosed in the specification does not require “a sequential, chronological nature” specified by the content relationship, because claims 1 and 9 separately recite that feature by requiring “outputting . . . the content-related first data segments and the content-related second data segments according to their chronological sequence.” See Prelim. Resp. 17 (agreeing that “[i]ndependent claims 1 and 9 require outputting the data segments “sequentially” and “according to their chronological sequence.”). Claim 22 recites a similar feature, namely, “sequentially outputting, by a device for synchronizing content-related data, in a chronological sequence, each of the assigned content-related first data segments and the assigned content-related second data segments.”” slip op. at 9
Claim 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
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.