• Resmed, Inc. v. New York UniversityAll claims unpatentable
  PTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

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

    “awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27

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

    “We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50

  Patent outcomesUS 9,427,539 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,539
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCInstitution denied
  PTAB · Oct 13, 2023 · IPR2023-00665 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 9 was anticipated by Malladi or that claims 1–6 and 9–14 were obvious over Malladi-based combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In order to reach item 846, the UE must first perform step 820, which says “Decode the PDCCH for possible assignment.” Ex. 1005, Fig. 8. In order to decode a PDCCH, the PDCCH must first be detected. Additionally, the [0, 0] code which is sent in step 846 of Malladi Figure 8 also shows that the PDCCH was detected but improperly decoded. Malladi Figure 6 “shows four formats for fixed-size CQI and ACK information.” Ex. 1005 ¶ 16. In each of those formats, [0, 0] means “Missed PDCCH.” Ex. 1005, Fig. 6. Malladi further explains, in a detected, but incorrectly decoded such that the control information is missed: “[T]he UE incorrectly decodes the PDCCH and misses the control information.” Ex. 1005 ¶ 61 (emphasis added). In summary, the portions of Malladi describe a situation where a PDCCH was detected but incorrectly decoded, leading to a situation where the control information was missed/not received by the UE. In other words, Petitioner has not sufficiently shown, based on the current record, that Malladi discloses “when the user equipment fails to detect the physical downlink control channel corresponding to the transmitted data in the sub-frame which transmits the data” as recited in claim 9. Accordingly, Petitioner has not shown a reasonable likelihood of” slip op. at 16

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

    “Ex. 1001, 4:18–31 (highlighting added). The yellow highlighted language above describes a situation in which the UE “fails to detect.” The paragraph goes on with the disjunctive “or” (red) followed by a second situation where the UE “fails to receive the data” (light blue). See Ex. 1001, 4:18–31. The use of the disjunctive “or” implies that the failing to detect is different than failing to receive. Indeed, if the ’881 patent considered the fails to receive the same as fails to detect, there would be no need to list both items. However, the language recited in claim 9 only recites “fails to detect,” thus indicating that fails to receive is not encompassed by the claim. Thus the issue is whether Malladi discloses a UE that fails to detect or fails to receive. Based on the current record, Petitioner has not sufficiently shown that Malladi discloses a UE that fails to detect as recited in claim 9.” slip op. at 15

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

    “Claim 1, like claim 9, recites substantially the same limitation discussed in the preceding section. Compare limitations [9.pre-1] and [9.c] (Ex. 1001, 12:55–58 and 13:18–20) with limitation [1.e] (Ex. 1001, 11:44– 47). Petitioner argues that “[t]he Malladi-TDTech combination discloses claim element[] . . . 1.e for substantially the same reasons Malladi discloses claim element[] . . . 9.c, . . . which recite the same or substantially the same features.” Pet. 53 (omission relate to other claim limitations). Petitioner further argues that the difference between Malladi and the Malladi-TDTech combination are “immaterial” for this limitation. Pet. 54. Stated differently, Petitioner does not argue that TDTech cures the deficiency associated with limitation [1.e]. deficiency associated with limitation [9.c]. Pet. 57. Nor does Petitioner argue that any of the other references it relies on relate to limitation [1.e] or [9.c]. See Pet. 58–71. Accordingly, for the reasons discussed in the previous section, Petitioner has not shown a reasonable likelihood of showing that the subject matter of claims 1–6 and 9–14 would have been unpatentable based on Malladi and TDTech, either alone or in combination with additional references. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art “would have had at least an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Petitioner further argues that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Patent Owner argues that “[b]ecause the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 15. and undisputed by Patent Owner, we adopt Petitioner’s proposed formulation and apply it in our obviousness evaluations below.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,881
• Duration Media LLC v. Rich Media Club LLCInstituted
  PTAB · Aug 30, 2023 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board instituted inter partes review of claims 1–10 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable as obvious over Badros alone or with Harkins.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review requires that “the information presented in the petition filed under section 311 and any response filed under 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). Determining whether a reasonable likelihood has been met has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition, and for the reasons explained below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “Petitioner proposes the term ‘render’ should be construed as expressly defined by the applicant’s lexicography in the ’329 patent claims and specification to mean ‘the process of requesting and loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser.’” Id. (quoting Ex. 1001, 7:15–19). The cited portion of the ’329 patent is accurately quoted but it is not clear on the current record whether the ’329 patent defines “render” as requiring both the requesting and loading of content or merely just the loading of content that has been requested. In multiple other instances, including the claims themselves, “render” is used exclusively in reference to the loading of content and not the requesting of it. See, e.g., Ex. 1001, 7:9– 10 (referring to “a pre-defined area of the ad content display page where the content is to be rendered”), 8:19 (referring to “content that was already rendered on the page”), 9:11–15 (“Content is only rendered on an ad content display page to a viewer when and/or to the extent that the pre-defined ad content display page triggering area is within, or within a pre-defined distance outside of, the viewer’s browser screen dimensions and scrolling position.”), 69:3–4 (claim 1 reciting “wherein the browser is further configured to render the replacement advertisement in the predefined area”). For purposes of this Decision, we apply the following construction for render: loading content so that it may be viewed, heard or otherwise perceived by a viewer communicating electronically using a browser. slip op. at 7

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

    “Petitioner proposes “[t]he term ‘replacement advertisement’ should be construed to mean ‘a new ad/content rendered in place of a previous ad/content’ as used in the context of the ’329 patent claims and specification.” Pet. 10. Petitioner supports its proposed construction with the following disclosure by the ’329 patent: “The billboard module may also cease rendering or send additional requests to the ad dispatcher server to select a new ad/content to render in the billboard module, say if the billboard was in view for a pre-determined period of time, or has been scrolled outside the viewer’s browser window dimensions.” Pet. 10 (quoting Ex. 1001, 12:65–13:3). For purposes of this Decision, we apply Petitioner’s proposed construction for replacement advertisement.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “discussed limitations, Petitioner also proposes that we construe “th[e] ‘in response to’ limitation [of claim 1 as] non-limiting because it requires a condition precedent that need not ever occur.” Pet. 34–35 (same). We are not persuaded and reject this proposed construction. The full limitation at issue recites: (b) in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time, causing a communication to be sent to one or more dispatcher servers. Ex. 1001, 68:59–63. As properly construed on the present record, the “in response to” language modifies the recited step of “causing a communication to be sent to one or more dispatcher servers” such that the step must be “in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time.” In short, “causing a communication” is a required step of the method of claim 1.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,443,329
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCInstituted
  PTAB · Aug 3, 2023 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Institution

  Instituted inter partes review of claims 1–15 and 17–18 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner

    “4. Analysis We are not persuaded to deny institution based on Section 325(d). Although Li was previously presented to the Office under part 1 of Advanced Bionics, as Petitioner acknowledges, Kim was not. Even were we to discount Li because of Section 325(d), the challenge here is not based solely on Li. Some grounds rely on Kim. See Pet. 3. Kim differs from Li and the Kim and Li combination was not previously considered. These differences provide a separate basis for the challenge presented here. Kim was not presented to the Examiner during prosecution.” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner

    “Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 3. Petitioner asserts that its stipulation is consistent with the one in Sotera. Id.” slip op. at 17

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “For the reasons set forth above, Petitioner has shown a reasonable likelihood that claim 1 would have been anticipated by Li.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention of the ’430 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology. More education can supplement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. 33–35. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,448,430
• Amazon.Com, Inc. v. Jawbone Innovations, LLCInstituted
  PTAB · Jul 12, 2023 · IPR2023-00216 · APJ Jason M Repko · IPR · Institution

  The Board instituted inter partes review of claims 1–9 based on a reasonable likelihood that claim 1 is anticipated by Powers.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “To institute an inter partes review, we must determine “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). For the reasons discussed in this Decision, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2

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

    “At this stage of the proceeding and on this current record, Petitioner’s assertion is sufficient. Id. In particular, Powers arranges the three microphones in a horizontal line. Ex. 1003, 41. Power also explains that those signals are combined in a delay-and-subtract approach. Id. This is illustrated in the Petition’s annotated version of Power’s 2a, showing the delays (T1, T2, T3) and the subtract units combining the signals. See Pet. 19. Thus, at this stage and on this record, Petitioner has shown that Powers discloses “receiving acoustic signals at a physical microphone array and in response outputting a plurality of microphone signals from the physical microphone array,” as claimed. In reaching our conclusion, we credit Dr. Stern’s testimony about the microphone array and the signals because it is consistent with Powers. See Ex. 1002 ¶¶ 46–48.” slip op. at 9

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

    “III. ANALYSIS A. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that no claim terms require construction. Pet. 17. Patent Owner did not file a Preliminary Response. At this stage, no terms are in controversy. Thus, we do not construe any terms in this decision.” slip op. at 7

  • Expert testimonyPetitioner expert creditedOther

    “In reaching our conclusion, we credit Dr. Stern’s unrebutted testimony about the output. See Ex. 1002 ¶ 57. Thus, at this stage and on this record, Petitioner has shown that Powers discloses generating output signals, as recited in claim 1. See Pet. 22–23.” slip op. at 12

  Claim construction§ 102 anticipation
  Patents in suitUS 8,280,072
• Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentable
  PTAB · Jun 30, 2023 · IPR2022-00164 · APJ Jason M Repko · IPR · Final written decision

  LinkedIn did not prove claims 1–3 and 6–10 unpatentable on any asserted Eaton- or Kim-based anticipation or obviousness ground.

  RulingsFinal written decision

  • ExcludeOther

    “In its Motion to Exclude, Patent Owner seeks to exclude Petitioner’s Exhibits 1017–1020, 1022–1026, 1030, 1032, 1033, 1034, and 1036. Mot. 1. Even without excluding any of these exhibits, Petitioner has not proven that any challenged claims are unpatentable. Thus, we dismiss Patent Owner’s Substitute Motion to Exclude as moot.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s alternative definition that “a PHOSITA[3] would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. Patent Owner does not propose an alternative definition. See generally PO Resp.; Sur-reply. Thus, in this decision, we apply Petitioner’s proposed definition, without the alternative qualifier about “equivalent additional formal education . . . or work experience.” See Pet. 6. We determine that Petitioner’s definition is supported by the testimony of Dean Willis. Ex. 1004 ¶¶ 32–35.” slip op. at 6

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

    “B. Claim Construction We need only construe terms that are in controversy and only to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We need not construe any terms to resolve the issues in this case.” slip op. at 6

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We credit Dr. Rajeev Surati’s testimony6 (Ex. 2020 ¶ 2053) on this issue over Dean Willis’s testimony (Ex. 1004 ¶¶ 211–13) because Dr. Rajeev Surati’s testimony is more consistent with Kim’s disclosure and Dean Willis’s Declaration lacks an adequate explanation. Thus, Petitioner has not shown that Kim discloses the associating step.” slip op. at 16

  Patent outcomesUS 8,230,135 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,230,135
• Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentable
  PTAB · Jun 30, 2023 · IPR2022-00165 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–3 and 6–10 were not shown unpatentable because Eaton and Kim each failed to disclose the claimed array and alternative-title limitations, and the obviousness grounds did not cure those deficiencies.

  RulingsFinal written decision

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

    “alternative” or “alternative title.” Neither party contends that “alternative” or “alternative title” is a term of art with an art recognized meaning. In plain English, “alternative” as an adjective designates something that is another option, another choice. Dictionary.com (accessed June 23, 2022), https://www.dictionary.com/browse/alternative (Ex. 3002) (“affording a choice of two or more things, propositions, or courses of action,” “(of two things, propositions, or courses) mutually exclusive so that if one is chosen the other must be rejected: The alternative possibilities are neutrality and war.”). The specification of the ’179 patent also consistently uses the word “alternative” to mean something in lieu of or in place of another choice. For instance, the ’179 patent describes: Advantageously, data associated with the event can also (or in the alternative) be provided to the title provisioning engine 616. Ex. 1001, 8:15–17 (distinguishing “also” from “alternative”). A given event may cause the title provisioning engine 616 to rewrite the entire title array 618 with title strings associated with the most recent events. Alternatively, a given event may cause the title provisioning engine 616 to append title strings to the end of the title array 618. Id. at 8:24–28 (using “alternative” in mutually exclusive context). slip op. at 12

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

    “During oral hearing, counsel for Petitioner clarified that the index to an array may start from “0” rather than “1” and that the index also need not be a number. Tr. 18:13–19:19. With that clarification, counsel for Patent Owner indicated that there no longer is any dispute with regard to the meaning of “array.” Tr. 61:14–25. Accordingly, we have no need to construe the term “array.” 4. “event” The term “event” is recited in independent claim 1. The specification” slip op. at 14

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

    “reproduced above, are “event messages / strings 300 (shaded in green).” Pet. 30 (citing Ex. 1006 ¶ 31). But the cited evidence does not support that assertion. Paragraph 31 of Eaton describes the referenced column simply as “associated event 300.” Ex. 1006 ¶ 31. Further, even if the column stores associated event messages, Petitioner cites nothing to show that the associated messages in server memory column 300 are the event presence notification messages discussed above in the context of limitation 1[ii]. Alternatively, Petitioner relies on Eaton’s Figure 6 embodiment. Pet. 31. Petitioner asserts (id.) that in the Figure 6 embodiment server memory 160 stores an array of event notifications, referencing an annotated version of Eaton’s Figure 6, reproduced below: Figure 6 is a block diagram of an alternate embodiment of a server memory for use within a server of the instant message communication system, and Petitioner has shaded the EVENT AN–NN column green and the words “SERVER MEMORY” red. Ex. 1006 ¶ 19. Petitioner asserts that both the TOPIC N column 540 and the EVENT AN-NN column 670 as the stored event notifications. Pet. 31 (citing Ex. 1006 ¶¶ 56–58). But the assertion is not supported by the cited evidence. Paragraphs 56–58 of Eaton do not indicate that either topic entries 540 or event entries 670 are the event presence notification messages discussed above in the context of limitation 1[ii]. In its Reply, Petitioner asserts that event presence notification message EPNM “is associated with the character strings labelled Topics [1]- [N], and using ‘Topic N’ as the example, it is tied to ‘Event[s] AN-NN’ (representing the ‘events’ from the plurality of events 180 discussed in Claim 1[i]).” Reply 22. Even assuming that there is an association, Petitioner still has not shown that EPNM is any of Topics [1]-[N] in Figure 6. Similarly, Petitioner has not shown that EPNM is any of Event [1]-[N] in Figure 2.” slip op. at 26

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “’179 Patent as provided above in Ground 1. To the extent that there are arguably any meaningful differences between those claims and Eaton’s disclosures, those differences would have been trivial and obvious modifications to make for a PHOSITA.” Pet. 49. This conclusory assertion of obviousness does not specifically identify any difference between the claimed invention and Eaton, and does not provide any reasoning or rational underpinning to support the assertion. Conclusory assertions of obviousness are insufficient to satisfy Petitioner’s burden of proof. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Petitioner asserts that to the extent that Eaton discloses various, “distinct” embodiments, it would have been obvious to one with ordinary skill in the art to combine Eaton’s teachings into a single system. Pet. 49. Petitioner also asserts that one with ordinary skill in the art “would understand that Eaton discloses possible configurations and/or operations of the same system, and to the extent that it is argued or found otherwise, the functions would have been entirely obvious to combine for [one of ordinary skill in the art] given Eaton’s express disclosures.” Id. It is uncertain what distinct embodiments are referred to by Petitioner. However, even assuming that the disclosures of Eaton’s embodiments, already discussed by Petitioner, are properly combinable, there still remains the deficiencies, discussed above in the alleged anticipation of claim 1 by Eaton, relating to the step of storing the event notification in an array, the step of providing the event notification from the array to a process executed by a processor, and the step of providing an alternative title from the array to the process. Accord Inst. Dec. 57.” slip op. at 33

  Patent outcomesUS 8,402,179 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,402,179
• Apple Inc. v. Memoryweb, LLCNo claims unpatentable
  PTAB · Jun 30, 2023 · IPR2022-00032 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–12 were not shown unpatentable over A3UM, Belitz, and Rasmussen because the obviousness challenge relied on an unsupported account of A3UM’s Places view and an inadequate combination rationale.

  RulingsFinal written decision

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

    “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “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, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art in 2011 (or 2014) would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 9 (citing Ex. 1003 ¶¶ 41–43). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 10. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 18. We continue to find that the skill level identified by Petitioner (Pet. 9) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 31

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

    “C. Claim Construction Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do no need to construe any terms to resolve the issues in this case.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “size version of the selected image in the Places view. PO Resp. 55 (citing Ex. 2025 ¶¶ 156–157). Patent Owner’s argument is adequately supported by Dr. Surati’s testimony. Ex. 2025 ¶¶ 156–157. We credit Dr. Surati over Dr. Terveen on this issue because Dr. Surati’s testimony is consistent with the teachings in A3UM. See id.; Ex. 1003 ¶ 186. Specifically, the Petition and Dr. Terveen’s declaration rely on page 251 of A3UM to support the assertion that the Places view displays the original digital image in the Viewer. See Pet. 50; Ex. 1003 ¶ 186. The cited part of A3UM provides an overview of the Viewer. Ex. 1005, 251. A screenshot showing the Viewer and Browser is reproduced below. Id. The screenshot shows a Viewer displaying the image selected in the Browser. Id. The Browser displays several thumbnail images. Id. The Viewer displays a larger detailed view of the selected thumbnail image. Id. Dr. Surati testifies that this part of A3UM is not describing the Places view. Ex. 2025 ¶ 159. According to Dr. Surati, “clicking the thumbnail in the Browser in the Places view does not cause the Places view map to be replaced with a full size image corresponding to the selected thumbnail image.” Id. ¶ 156. Dr. Surati’s testimony (id. ¶¶ 155–157) is adequately supported by” slip op. at 38

  Patent outcomesUS 9,552,376 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,552,376
• Apple Inc. v. Memoryweb, LLCSome claims unpatentable
  PTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision

  Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.

  RulingsFinal written decision

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

    “2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30

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

    “e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96

  Patent outcomesUS 11,017,020 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 11,017,020
• Google LLC v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand

  Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.

  RulingsRemand decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23

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

    “We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28

  • ExcludeMotion to exclude, deniedMixed

    “III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29

  Patent outcomesUS 7,069,560 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,069,560

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.