- Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · Nov 9, 2023 · IPR2023-00852 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–15 because Petitioner did not show a reasonable likelihood that Tuan was a prior art printed publication, defeating the asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date” of the ’948 patent (i.e., November 4, 2011). Hulu, Paper 29 at 13 (emphasis added). As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a prior art printed publication. See id. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claims 1–15 would have been obvious over the combination of Nollet, Tuan, and Seo. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Therefore, we do not institute an inter partes review on the asserted ground as to any of the challenged claims. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Importantly, Ms. Munford’s testimony does not indicate that an ordinary artisan could have located Tuan with reasonable diligence. We additionally find that Ms. Munford’s conclusory assertion that Tuan “was made available to the public” in October 2009 (Ex. 1012 ¶ 11; see also Ex. 1015 ¶ 9) is insufficient to establish public accessibility. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 20
- Obviousness (§103) › Analogous artNot reached
“For these reasons, we determine that Petitioner fails to “identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date” of the ’948 patent (i.e., November 4, 2011). Hulu, Paper 29 at 13 (emphasis added). As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a prior art printed publication. See id. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claims 1–15 would have been obvious over the combination of Nollet, Tuan, and Seo.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a combination of a Bachelor’s Degree (or a similar Master’s Degree, or higher degree) in an academic area emphasizing computer science, or a related field, and two or more years of work experience with parallel processing technologies.” Pet. 15 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address the level of ordinary skill in the art in the Preliminary Response. On the present record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’948 patent (see Ex. 1003 ¶ 21), and for purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,150,948 - Docusign, Inc. v. Paul C. ClarkAll claims unpatentablePTAB · Oct 25, 2023 · IPR2022-00923 · APJ Michael T Cygan · IPR · Final written decision
Claim 1 is unpatentable as obvious over Duncan, RFC 793, and RFC 1323; the Board did not reach the alternative Grosser ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time the ’066 patent was filed. Pet. 13. Relying upon the Black Declaration, Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in computer science, or a related field, with at least two years of professional experience working in network engineering. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of computer networks, such as experience developed 2 Patent Owner does not identify any secondary considerations to be considered. See PO Resp. while developing client-server networks, less professional experience is needed to attain the ordinary level of skill. Id. (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s assessment of the level of ordinary skill in the art. PO Resp. 2. Based on the fully developed trial record, we accept the assessment offered by Petitioner and uncontested by Patent Owner as it is supported by the Black Declaration and is consistent with the ’066 patent and the asserted prior art. We apply this assessment in our obviousness analysis below.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“network level or an application level protocol, is inconsistent with the prosecution history. During prosecution, the Examiner pointed to Zarom’s conversion of certain instructions as converting from one network application level protocol to a target application level protocol. Ex. 1002, 49. However, during an interview with Dr. Clark (the applicant), the Examiner agreed with Dr. Clark that Zarom’s teaching was directed to VPN (Virtual Private Network) level protocols, which did not teach the newly 3 Patent Owner seeks to incorporate argument from its Preliminary Response; however, our rules do not permit such incorporation by reference. 37 C.F.R. § 42.6(a)(3). amended “network application level protocol.” Id. at 40. Therefore, we do not adopt Petitioner’s alternative construction. In adopting Patent Owner’s construction, we note that it does not explicitly exclude either a network level protocol or an application level protocol, so long as the protocol “functions at the application level and is intended to transfer data over a network.” Inventor and Declarant Dr. Clark indicated in an interview during prosecution that network application level protocols would include “SSL, SSH, SCP, X.400, SMTP, POP, HTTP, and Telnet.” Ex. 1009 (prosecution history of U.S. Patent Application No. 09/568,215 (“the ’215 application”)), 192; Ex. 1003 ¶ 71. Dr. Black states that SSL (Secure Sockets Layer) is not an application level protocol, although the other listed protocols are application level protocols. Ex. 1003 ¶ 71. We additionally note that, during prosecution of the ’215 application, the ultimate parent of the ’066 patent, Patent Owner stated that “network application level protocol” translation includes translating “http to https.” Ex. 1009, 220. Patent Owner confirmed this statement at oral argument. Tr. 26:15–27:3.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“on the front page of each document, the well-known nature of the standards documents, the statement of Dr. Black that he personally accessed the documents before the critical date and that each was published on the listed date, and the statements of Ms. Ginoza averring that both RFC documents were “indexed and placed in a public repository,” that RFC 793 was reasonably accessible to the public no later than October 1992, and that RFC 1323 was reasonably accessible to the public no later than May 1992. Paper 6, 6–7, Ex. 1020 ¶¶ 4–7; Ex. 1018 ¶¶ 6–12. We determine that the totality of the evidence indicates that Petitioner has shown, by a preponderance of the evidence, that the reference was available to, and able to be located by, persons interested and ordinarily skilled in the subject art on or before the critical date of the ’066 patent. Accordingly, Petitioner has met its burden to show both documents are prior art. 3. Conclusion Based on the fully developed trial record, we determine Petitioner has demonstrated that these references are prior art patents or printed publications under 35 U.S.C. § 102. See Pet. 3, 16; Ex. 1004, codes (22), (43); Ex. 1006, codes (22), (43).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Analysis Upon review of Petitioner’s assertions in its Petition, Petitioner’s Reply, and its supporting evidence, and Patent Owner’s arguments in its Response, Sur-reply, and its supporting evidence, we are persuaded that Petitioner has met its burden to show that the combined teachings of Duncan, RFC 793, and RFC 1323 render obvious the challenged claim. Petitioner provides claim mappings of each individual limitation of the challenged claim to the combined teachings. Pet. 19–33. Patent Owner argues only against Petitioner’s assertions for limitation [1.6]. See PO Resp. For the reasons stated below, we determine that the asserted prior art teaches each limitation of claim 1.” slip op. at 13
Patent outcomesUS 8,695,066 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,695,066 - PTAB · Oct 19, 2023 · IPR2023-00744 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–3 and 5–7 on all petitioned grounds, finding a reasonable likelihood that PayPal would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the preliminary record, we determine that PayPal has shown that there is a reasonable likelihood that it would prevail in challenging at least one of claims 5 and 7 the ’845 patent as unpatentable. We begin our analysis with the principles of law that generally apply to an asserted ground based on anticipation, followed by an assessment of the level of skill in the art, an overview of Tumminaro, and then we address the parties’ contentions with respect to the challenged claims.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Upon reviewing the specification of the ’845 patent, it provides an explicit definition of the claim term “unbanked subscriber.” That is, the specification states that “[a]n ‘unbanked subscriber’ is a subscriber that does not have (or does not have access to) a bank account or credit union account.” Ex. 1001, 12:25–27. By using the verb “is” following “unbanked subscriber,” the specification sets forth an explicit definition for this claim term with reasonable clarity, deliberateness, and precision. At first glance, the construction that PayPal proposes appears consistent with this explicit definition. However, PayPal uses the language “a financial institution account,” whereas the specification uses the language “a bank account or credit union account.” We decline to adopt PayPal’s construction because it does not use the same terminology as the specification to define an “unbanked subscriber.” Because we decline to adopt PayPal’s proposed construction, we need not address Fintiv’s argument as to whether the “financial institution” term added by PayPal’s proposed construction “encompass[es] any institution that provides services to customers who maintain a financial account with the institution,” including “entities that manage debit card accounts (including prepaid debit card accounts)” and “institutions that manage Automated Clearing House (ACH) and/or ATM transactions.” Prelim. Resp. 10.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Chatterjee, PayPal argues the following: [a]s of 2011, a [person of ordinary skill in the art] in the ’845 patent’s field would have [had] a working knowledge of mobile payment systems, including of software development for mobile payment systems. Such a [person of ordinary skill in the art] would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training and approximately two years of work experience in software development in the field of mobile payment systems. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1003 ¶ 37). In the Preliminary Response, Fintiv does not address the level of skill in the art. See Prelim. Resp. Fintiv’s declarant, however, appears to agree with PayPal’s assessment of the level of skill in the art. See Ex. 2001 ¶¶ 28, 29. To the extent necessary, and for purposes of institution, we adopt PayPal’s assessment of the level of skill in the art because it is consistent with the ’845 patent and the asserted prior art.” slip op. at 13
- Expert testimonyPetitioner expert creditedOther
“that would support a finding that Tumminaro’s unbanked users may select from either a pooled account or a reloadable prepaid debit account when transferring funds to a specified recipient. See Pet. 43. As we explain above, Tumminaro’s unbanked user is capable of accessing both a pooled account and a reloadable prepaid debit account. See supra Section II.B.4.a. PayPal’s declarant, Dr. Chatterjee, testifies that, “[w]here a given user has two or more accounts associated, for example, a pooled account and a separate prepaid account such as a . . . prepaid debit card, the user would typically pick one of the multiple accounts to use as a funding source.” Ex. 1003 ¶ 157. We preliminarily credit Dr. Chatterjee’s testimony in this regard because he appears to consider the relevant disclosures of Tumminaro together with the knowledge of a person of ordinary skill in the art. See Paulsen, 30 F.3d at 1480.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,538,845 - PTAB · Jun 14, 2023 · IPR2022-01593 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–19 on all petitioned grounds, finding a reasonable likelihood that Truist would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted
“On June 21, 2022, the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (“Director”) issued a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim 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_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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 ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Truist has provided a Sotera stipulation. Ex. 1028; see also Prelim. Sur-reply 1–2 (USAA acknowledging receipt of the Truist’s Sotera stipulation, and then stating “USAA understands that under the June 21, 2022 Memorandum issued by Director Vidal, such a stipulation is dispositive of the Fintiv analysis”).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2020). Taking into account USAA’s Preliminary Response, Truist’s Preliminary Reply, and USAA’s Preliminary Sur-reply, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Truist would prevail in challenging at least one of claims 1–19 of the ’090 patent as unpatentable. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’090 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“For purposes of this proceeding, Truist contends that “the plain meaning of each claim term can be applied.” Pet. 4 (citing Ex. 1002 ¶ 30 (Declaration of Dr. David Doermann in support of Petition)). For purposes of its Preliminary Response only, “[USAA] does not assert that any claim terms need to be construed” to determine whether the Petition meets the reasonable likelihood threshold standard for institution. Prelim. Resp. 18. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the preliminary record, we are not persuaded by USAA’s argument for two reasons. First, USAA’s argument is not commensurate in scope with the disputed limitation, which merely requires, “when the monitoring criterion is determined to be satisfied, control the image capture device to capture an image depicting the target document in the field of view of the image capture device.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that limitations not appearing in the claims cannot be relied upon for patentability). Based on the arguments and evidence currently before us, we are persuaded that the plain language of this limitation is agnostic as to whether the phrase “control[ling] the image capture device to capture an image” requires automatic or manual image capture.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,818,090 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · May 31, 2023 · IPR2022-01566 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over grounds relying on Tuan, which was not shown to be a printed publication.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“Id. ¶ 11; see id. at pp. 22–30 (Appendix TUAN01). Ms. Munford does not otherwise address Tuan, and Ms. Munford’s conclusory assertion that Tuan “was made available to the public” (id. ¶ 11) is insufficient. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“identify, with particularity, evidence sufficient to establish a reasonable likelihood that Tuan was publicly accessible before the critical date. See Hulu, IPR2018-01039, Paper 29 at 13. As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a printed publication. See id. Each of the grounds presented in the Petition relies on a combination of Kupferschmidt and Tuan (Pet. 2), so we determine that Petitioner has not shown a reasonable likelihood that it will prevail with respect to its assertions that claims 1–8 would have been unpatentable over the proposed combinations of Kupferschmidt and Tuan. As a consequence, we do not institute an inter partes review.” slip op. at 16
§ 102 anticipationcites KSR · GrahamPatents in suitUS 11,036,556 - Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentablePTAB · May 31, 2023 · IPR2022-00162 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–7, 10, and 12 are unpatentable: Harding anticipates and renders claims 1–7 and 12 obvious; the listed combinations render claims 3, 4, 10, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “detent position” In its Petition, DJI argued that the claim term “detent position,” as recited in independent claim 1 of the ’752 patent, should be construed to mean “zero-force position.” Pet. 9. In its Patent Owner Response, Textron cited documentation from the parallel district court case that the parties “agree to construe ‘detent position’ to have its plain and ordinary meaning,” and stated that “there is no dispute between the parties as to the meaning of the term and . . . no explicit construction is necessary.” PO Resp. 8–9 (citing Ex. 2016, 5). Based on the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Based on the fully developed trial record, we agree with DJI that the claim phrase “engaging . . . when both the longitudinal controller and the lateral controller are released” should not be limited to controllers on two separate control sticks. That is, we adopt the plain and ordinary meaning for the phrase “when both the longitudinal controller and the lateral controller are released” and construe this term as encompassing either single control stick or multi-stick control configurations. We begin with a review of the specification of the ’752 patent. See Phillips, 415 F.3d at 1315 (stating that “the specification is ‘the single best guide to the meaning of a disputed term’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The “single stick” aspect of our construction finds support in the specification, which consistently reinforces that the lateral and longitudinal controllers may be embodied by a single control stick. Ex. 1001, 2:55–61, 3:18–29, 5:21–27, 8:27–30, 8:49–57, 9:6–10, 10:44–47. As two examples, the specification refers to when the “pilot moves the control stick,” and in another, the specification references where, “[i]n the preferred embodiment, the first 0.1– 0.2 inch of aircraft stick movement is used to determine whether the stick is in the detent position.” Ex. 1001, 8:49–57, 10:44–47 (emphases added). Textron does not identify explicitly, nor could we find a single instance, where the specification of the ’752 patent references using two control sticks. Furthermore, we agree with DJI that the word “both” recited in dependent claims 6 and 7 does not require two separate control sticks, but rather refers to releasing both the longitudinal and lateral controllers. The crux of Textron’s argument appears to be that, because dependent claims 6 and 7, unlike independent claim 1, require releasing both the longitudinal and lateral controllers to activate a state, they cannot be embodied by a single stick, stating “if the controllers were not separate, how could they be independently released?” PO Resp. 10. Textron’s argument, however, conflates “controllers” and “sticks.” As we discuss above, the specification of the ’752 patent repeatedly teaches having both the longitudinal and lateral controllers be actuated by a single control stick. Textron does not support its argument with evidence from the specification, nor does it support its position that, when dependent claim 6 and 7 refer to “the longitudinal controller” and “the lateral controller,” they are referring to the separate control sticks to actuate these two different controllers. Instead, dependent claims 6 and 7 are agnostic as to whether the longitudinal and lateral controllers are set up to actuate on a single control stick or on multiple control sticks. In summary, we accord the claim phrase “engaging . . . when both the” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1002 ¶¶ 61–62). In its Patent Owner Response, Textron agrees with the level of skill in the art as proposed by DJI, arguing the following: a person of ordinary skill in the art . . . at the time of the invention of the ’752 Patent would have been someone with at least the equivalent of a Bachelor’s degree in mechanical engineering, aerospace engineering, electrical engineering, robotics or similar discipline covering principles of the design or operation of flight controls for helicopters, drones, or other rotary aircraft, as well as one year of experience working on the design, development, implementation, or operation of such technologies. [Textron] also agrees that significant experience could substitute for formal education, and significant education could substitute for work experience. PO. Resp. 4–5. Based on the fully developed record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’752 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Final Written decision, we adopt DJI’s proposed level skill in the art and apply it in our anticipation/obviousness analysis below.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“h. Summary In summary, we have reviewed DJI’s arguments and supporting evidence as to how the teachings of Harding account for all the limitations of independent claim 1, and we agree with and adopt DJI’s analysis. See Pet. 16–28. Accordingly, DJI has demonstrated by a preponderance of the evidence that the subject matter of claim 1 is anticipated by and would have been obvious over the teachings of Harding. 5. Claims 2–5 and 12 DJI also contends that dependent claims 2–5 and 12 of the ’752 patent are unpatentable under §§ 102(b) or 103(a) as anticipated by or rendered obvious over the teachings of Harding. Pet. 28–38. DJI explains how the teachings of Harding account for the subject matter of each dependent claim, and provides reasoning as to why a person of ordinary skill in the art would have been prompted to modify the teachings of this reference. Id. During trial, Textron does not address separately DJI’s arguments and supporting evidence as to how the teachings of Harding account for the additional limitations of dependent claims 2–5 and 12. See PO Resp. 10–32. As one example, claim 2 directly depends from independent claim 1, and further recites “maneuvering the rotary aircraft within the first envelope with a translational rate command, the translational rate command being adapted to control longitudinal flight of the rotary aircraft with movement of the longitudinal controller and lateral flight of the rotary aircraft with movement of the lateral controller.” Ex. 1001, 11:47–53. DJI contends that Harding teaches this limitation because it discloses a translational rate command where ground speed follows the cyclic stick, and that while in TRC, longitudinal movement of the cyclic stick controls longitudinal ground speed and lateral movement of the cyclic stick controls lateral ground speed. Pet. 28–30. DJI cites Harding’s Figure 6, reproduced below.” slip op. at 31
Patent outcomesUS 9,162,752 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,162,752 - ADT, LLC v. Vivint, Inc.All claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00071 · APJ Jameson Lee · IPR · Final written decision
Claims 1, 2, 4, 8–10, and 12 are unpatentable as anticipated by Monroe and obvious over Monroe, Monroe and Fadell, Jin, or Jin and Monroe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“including a “bachelor’s degree in electrical engineering,” that is not a literal test. We know of no precedent from the U.S. Court of Appeals for the Federal Circuit, and Patent Owner has cited none, that requires the stated level of education for the level of ordinary skill in the art to be met literally without considering any equivalence. The inclusion of a statement of formal technical education in the articulated statement facilitates understanding for comparison purposes because, typically, (1) an expert would have a formal technical education, and (2) a formal degree is associated with an ascertainable or known curriculum. Accordingly, Petitioner may show that Mr. Parker possesses at least the level of skill corresponding to that of one who has a bachelor degree in electrical engineering.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“4. “predefined area” The term “a predefined area” is recited in each of independent claims” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“g) Conclusion Petitioner has proven by a preponderance of the evidence that claim 1” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“2. Obviousness over Monroe Alone Petitioner’s arguments for obviousness over Monroe alone for claims 1, 2, 4, 8–10, and 12 are the same as its assertion that Monroe anticipates these same claims. Petitioner states: “As discussed above in [the ground based on anticipation by Monroe], Monroe discloses all the limitations of claims 1, 2, 4, 8, 9, 10, and 12. Thus, the claims can be cancelled on singlereference obviousness grounds as well as anticipation grounds.” Pet. 26. Petitioner cites Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019), for the position that a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim obvious under 35 U.S.C. § 103. Id. Patent Owner presents no arguments to the contrary. We agree that an anticipatory reference can be deemed, pro forma, to render the anticipated claims obvious. All the limitations are disclosed by the single reference and no modification is necessary. Accordingly, for the same reasons discussed above, Petitioner has proven by a preponderance of the evidence that claims 1, 2, 4, 8–10, and 12 would have been obvious over Monroe alone.” slip op. at 52
Patent outcomesUS 10,325,159 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,325,159 - Google LLC v. Sonos, Inc.All claims unpatentablePTAB · Feb 15, 2023 · IPR2021-00475 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–3, 5, 6, 10, 15, 18, and 19 are unpatentable based on anticipation by Maher and obviousness over Maher, Maher and Hooley, Zurek and Levy, or Zurek, Levy, and Hooley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the technology described in the Specification of the ’460 patent and the cited prior art. For purposes of this proceeding, we adopt Petitioner’s undisputed proposed level of ordinary skill in the art and apply it in our anticipation/obviousness analysis below.10” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“equalization setting” recited in claims 1 and 15 should be construed as “an equalization setting for audio playback.” Prelim. Resp. 15–18. We did not adopt Patent Owner’s proposed construction in our Institution Decision and accorded “an equalization setting” its ordinary and customary meaning, without express construction. Dec. on Inst. 10. As noted above, Patent Owner does not reassert its argument regarding claim construction in its Response. See generally PO Resp. For the reasons stated in the Institution Decision, we do not agree with Patent Owner’s proposed construction of “an equalization setting.” See Dec. on Inst. 9–11. And, by failing to renew its claim construction argument in the Response, Patent Owner has waived this argument.11 See Paper 19, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). Based on the fully developed trial record, we determine that claim construction is not disputed and that no claim construction is necessary to make this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on our consideration of the contentions of the parties and our weighing of the related evidence, we determine that a preponderance of the evidence supports a conclusion that Maher discloses in Figure 4 and the related description an embodiment that can be used to practice the methods of Figures 1–3. We disagree with Patent Owner’s arguments that Maher does not describe a method where a device determines equalization settings for an integrated speaker and Patent Owner’s attempt to distinguish claim 1 from Maher and the Maher/Hooley combination on this basis.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Based on our consideration of the contentions of the parties and our weighing of the related evidence, we determine that a preponderance of the evidence supports a conclusion that the combination of Zurek and Levy teaches all the limitations of claim 1 and that a skilled artisan would have been motivated to combine the relevant teachings of Zurek and Levy as recited in claim 1. We disagree with Patent Owner’s argument that combining the teachings of Zurek and Levy as proposed in the Petition would render Zurek inoperable for its intended purpose. More specifically, we do not share Patent Owner’s view that adding Levy’s output processing to Zurek’s system would result in rendering Levy’s input processing inoperable for its intended purpose because we agree with Petitioner that (1) Zurek is not limited to processing voice inputs, and (2) input and output equalization are not mutually exclusive, but rather the underlying acoustic processing is the same.” slip op. at 41
Patent outcomesUS 9,219,460 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,219,460 - ADT LLC / Alarm.Com, Inc. v. Vivint, Inc.All claims unpatentablePTAB · Feb 10, 2023 · IPR2022-00714 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–3 and 6–11 as obvious over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons discussed below, we find the plain and ordinary meaning of “determining a current location of the user” to include determining a physical location of a computing device associated with the user.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“b) Our Analysis For the reasons below, we construe “aggregate presence service” to mean “a service that receives, stores, and provides presence-related information,” and we disagree with Patent Owner that such a service needs to include geographic location information obtained from a location service. The parties agree that that “presence-related information” already includes location information. Patent Owner’s proposal would have us read the requirement of using a location service into the claims, which, as discussed above, we decline to do on the record before us. As with “determining a current location,” discussed in Section III.C.1 above, we see no lexicographic definition or clear intent in the specification defining “aggregate presence service” in the manner that Patent Owner argues. To be sure, the ’739 patent specification does define other terms. See, e.g., Ex. 1001, 4:42–44 (“The term computer readable media as used herein refers to both storage media and communication media.”). But the specification does not define “aggregate presence service” in any way, much less using such express language. The portions of the specification that Patent Owner points us to (PO Resp. 20–22) as defining the claim term fall well short of what is required under Federal Circuit precedent to show a lexicographic definition. In relevant part, all the specification says is that a “doorbell presence application” may provide an “[a]ggregate presence service” with information regarding a user’s location, and that “aggregate presence service 534 updates a presentity store 528 and enables watcher client application 504 to provide the notification to the user.” See Ex. 1001, 7:20–26, Fig. 5; see also id. at 7:40–61, 9:42–61, Figs. 6, 9. There is no disclosure in the specification distinguishing the term “aggregate presence service” from the term “presence service” in a specific way, let alone any other disclosure requiring the use of a location service in the manner that Patent Owner argues. The record therefore does not support Patent Owner’s position.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We determine, on the complete record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding unpatentability of the challenged claims.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
Patent outcomesUS 7,956,739 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,956,739 - Fanduel, Inc. v. Winview Inc.InstitutedPTAB · Jan 31, 2023 · IPR2022-01307 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1, 2, 9, 14–16, 20, 21, 23, 24, 26, 27, 31–33, 40, 41, 43, and 49 on all asserted grounds, finding a reasonable likelihood of anticipation by Vänskä.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. Principles of Law To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). When evaluating a single prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (second and third alteration in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). We analyze this asserted ground based on anticipation with the principles stated above in mind.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“1. Principles of Law To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). When evaluating a single prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (second and third alteration in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). We analyze this asserted ground based on anticipation with the principles stated above in mind.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Rubin, FanDuel argues that “a person of ordinary skill in the art . . . as of June 20, 2005 [(the filing date of the ’356 application)], would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development.” Pet. 13 (citing Ex. 1003 ¶¶ 20, 21). To the extent necessary, we adopt FanDuel’s assessment of the level of skill in the art as it appears consistent with the ’543 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“FanDuel contends that, “[f]or purposes of this proceeding only, [FanDuel] does not believe any claim construction is necessary to resolve this [unpatentability] analysis.” Pet. 12 (citing Ex. 1003 ¶ 41). As we note above, WinView elected not to file a Preliminary Response. Based on the preliminary record, there is no controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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§ 102 anticipationPatents in suitUS 10,721,543
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.