- PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - Netflix, Inc. v. Robocast, Inc.Institution deniedPTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution
The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,155,451 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24
- Skill levelOther
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,937,822 - Toshiba Tec Corporation / Toshiba America Business Solutions, Inc. v. K.Mizra, LLCInstitution deniedPTAB · Mar 2, 2023 · IPR2022-01426 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because none of the asserted anticipation or obviousness grounds showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’400 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Critically, though, Figures 4 and 6 of Kitaoka I do not depict the document platen, and Petitioner does not address how Kitaoka I satisfies the disputed claim language. To the contrary, Patent Owner argues, and we agree, that Figure 1 of Kitaoka I depicts the document platen extending beyond the document holder, as illustrated in Patent Owner’s annotated version of Figure 1 of Kitaoka I, reproduced below. Figure 1 of Kitaoka I (annotated) Patent Owner’s annotated version of Figure 1 of Kitaoka I depicts “pressing plate white sheet 90” (document holder) shaded in red and “contact glass 21b” (platen) in green. Prelim. Resp. 17. As evidenced by Figure 1 of Kitaoka I, the cited platen extends laterally beyond the cited document holder, such that Kitaoka I does not disclose “the document holder being positioned so as to extend over the whole length and breadth of the document platen,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in showing that any of claims 1–4 is anticipated by Kitaoka I.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Petitioner does not specifically argue that the disputed limitation would have been an obvious modification of Kitaoka II and Kitaoka I. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in showing that any of claims 1–4 are unpatentable in view of Kitaoka II and Kitaoka I. 5. Remaining Grounds Petitioner additionally asserts that dependent claim 4 is unpatentable in view of Tsutsui and Kitaoka I or in view of Tobinaga and Kitaoka I. Pet. 72–73. None of Petitioner’s arguments regarding these combinations addresses the deficiencies noted above regarding base claim 1. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail with respect to Petitioner’s challenge to claim 4 as unpatentable in view of Tsutsui and Kitaoka I or in view of Tobinaga and Kitaoka I.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,570,400 - Facebook, Inc. / Expedia, Inc. et al. v. Express Mobile Inc.All claims unpatentablePTAB · Mar 1, 2023 · IPR2022-00790 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 2, 5–7, and 11 are unpatentable under § 103 as obvious over the cited combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose an alternative assessment, and we note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. Having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition above, as we did initially in the Institution Decision, as it is consistent with the ’755 patent and the asserted prior art.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“term ‘device-independent code’ has been construed by a district court to mean ‘code that is not specific to the operating system, programming language, or platform of a device.’” Id. at 12 (citing Ex. 2021, 15–16; Ex. 2022, 10). Petitioner does not challenge this construction or offer a competing construction, but does disagree with Patent Owner’s application of this construction, as discussed further herein. As the parties do not disagree with the District Court’s construction, we adopt it for use in this proceeding. We address Petitioner’s arguments about the application of the construction in the course of the validity analysis. We determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We determine, based on the full record of the proceeding, that Petitioner has submitted sufficient evidence to establish that Anderson was publicly accessible before the critical date of the challenged patent, and, thus, Petitioner has established that the reference qualifies as a printed publication. In particular, the face of Anderson bears a copyright date of 2006, a publication date of May 2006, an ISBN (“International Standard Book Number”), and identifies an established publisher (Prentice Hall). Ex. 1003, 4. See Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date 8 References to page numbers for this exhibit are to the page numbers as provided by Petitioner on the exhibit. of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”). Dr. Hall-Ellis testifies that Exhibit 1003 is a true and correct copy of the selected pages from the book as held by the Library of Congress, and also attests that the book was publicly available by or shortly after June 28, 2007, because by that date it had been received, cataloged, and indexed at the Library of Congress and made part of the Online Computer Library Center’s (“OCLC’s”) bibliographic database. Ex. 1015 ¶¶ 43, 49; see id. ¶ 28 (describing OCLC).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Simply put, as Petitioner notes, the “localhost” technique disclosed in Anderson allows a single computer to execute both the “server-side” and “client side” functionality of a Java application—a common technique for development of networked applications to simplify implementation and testing. See Reply 20 (citing Ex. 1021 ¶ 48 & n.2). Petitioner further contends that “[c]ontrary to Patent Owner’s suggestions, there is nothing unusual about using the same computer in Anderson to execute both the ‘server-side’ Java servlets (via the JVM) and the ‘client-side’ web browser that accepts user input and displays search results.” Id. at 20. Patent Owner does not respond to this argument in its Sur-reply. We agree with Petitioner. Anderson discloses using the “localhost” technique to run the Java application on the same machine used to create the application. See Ex. 1003, 77 (“You use localhost if you’re running the application server on your own machine; otherwise, use the Internet address or host name where the server is running.”); 303 (describing “localhost:24848” as “the application server host machine and port”); Ex. 1021 ¶ 48 (Dr. Madisetti testifying that “Anderson describes using the same machine – ‘localhost’ – to run the GoogleSearch Java application and display its output in a web browser”). Dr. Madisetti testifies that “the term ‘localhost’ refers to a host name that [is] used with a request in order to refer back to the same (local) computer making the request; when a computer issues a request sent to ‘localhost,’ in other words, it is issuing a request to itself.” Ex. 1021 ¶ 48. Dr. Madisetti’s testimony relies on and is consistent with the Microsoft Computer Dictionary’s entry for the term “localhost,” which is as follows: localhost n. The name that is used to represent the same computer on which a TCP/IP message originates. An IP packet sent to localhost has the IPR address 127.0.0.1 and does not actually go out to the Internet. Ex. 1022, 316; see Ex. 1021 ¶ 48. Thus, Dr. Madisetti explains, “[t]he ‘localhost’ host name” allows “a single computer to perform the functions of both ‘client’ and ‘server’ for a particular application,” “is a standard technique for developing networked applications or for executing them locally,” and is “disclosed in Anderson” and “common and well-known to persons of ordinary skill in the art.” Ex. 1021 ¶ 48. Neither Patent Owner nor Dr. Almeroth provide persuasive contrary evidence showing why Petitioner’s arguments concerning the “localhost” technique are incorrect.” slip op. at 57
Patent outcomesUS 9,063,755 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,063,755 - Facebook, Inc. / Expedia, Inc. et al. v. Express Mobile Inc.All claims unpatentablePTAB · Mar 1, 2023 · IPR2022-00785 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 2, 5–7, and 11 are unpatentable under § 103 as obvious over the cited combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose an alternative assessment, and we note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. Having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition above, as we did initially in the Institution Decision, as it is consistent with the ’755 patent and the asserted prior art.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“term ‘device-independent code’ has been construed by a district court to mean ‘code that is not specific to the operating system, programming language, or platform of a device.’” Id. at 12 (citing Ex. 2021, 15–16; Ex. 2022, 10). Petitioner does not challenge this construction or offer a competing construction, but does disagree with Patent Owner’s application of this construction, as discussed further herein. As the parties do not disagree with the District Court’s construction, we adopt it for use in this proceeding. We address Petitioner’s arguments about the application of the construction in the course of the validity analysis. We determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We determine, based on the full record of the proceeding, that Petitioner has submitted sufficient evidence to establish that Anderson was publicly accessible before the critical date of the challenged patent, and, thus, Petitioner has established that the reference qualifies as a printed publication. In particular, the face of Anderson bears a copyright date of 2006, a publication date of May 2006, an ISBN (“International Standard Book Number”), and identifies an established publisher (Prentice Hall). Ex. 1003, 4. See Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date 8 References to page numbers for this exhibit are to the page numbers as provided by Petitioner on the exhibit. of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”). Dr. Hall-Ellis testifies that Exhibit 1003 is a true and correct copy of the selected pages from the book as held by the Library of Congress, and also attests that the book was publicly available by or shortly after June 28, 2007, because by that date it had been received, cataloged, and indexed at the Library of Congress and made part of the Online Computer Library Center’s (“OCLC’s”) bibliographic database. Ex. 1015 ¶¶ 43, 49; see id. ¶ 28 (describing OCLC).” slip op. at 12
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“unavailing. Dr. Almeroth testifies that Chapter 22 of Ambrose-Haynes encourages the use of ColdFusion, citing various statements from Chapter 22. Ex. 2020 ¶ 75 (citing Ex. 2034, 2 (“We will use a combination of ColdFusion and ASP to handle all communication.”), 10 (“[W]e will look at how ColdFusion can issue SOAP Requests.”), 13 (describing how to “use ColdFusion to read the contents of the SOAP Response and act upon it”), 27 (describing that “ColdFusion Server . . . sends a request to a web server over HTTP”), 29 (explaining how to “interact with this .NET web service via the ColdFusion language”)). These statements, however, merely encourage the use of ColdFusion; they do not discourage or discredit the use of Java. Similarly, Dr. Almeroth points to Chapter 25’s statement that the ColdFusion platform includes “an easy to use, flexible, web application development tool,” but again this merely encourages the use of ColdFusion without discouraging or disparaging Java. Ex. 2020 ¶ 75 (citing Ex. 1006, 54). Thus, we find that Dr. Almeroth’s conclusion that Ambrose-Haynes teaches away from using Java in the context of web services is not supported by the portions of the reference he cites. Accordingly, we give that testimony little weight. Additionally, we find that Dr. Madisetti’s testimony that “Ambrose-Haynes does not teach away from using Java” and “simply recognizes that Java and ColdFusion can be alternatives to each other” to be credible and supported by the disclosures of the reference. Ex. 1021 ¶ 52.” slip op. at 62
Patent outcomesUS 9,063,755 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,063,755 - Facebook, Inc. / Expedia, Inc. et al. v. Express Mobile Inc.All claims unpatentablePTAB · Mar 1, 2023 · IPR2021-01455 · APJ Aaron W Moore · IPR · Final written decision
The Board held claims 1, 2, 5–7, and 11 unpatentable as obvious under § 103 over the cited combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not propose an alternative assessment, and we note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. Having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition above, as we did initially in the Institution Decision, as it is consistent with the ’755 patent and the asserted prior art.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“term ‘device-independent code’ has been construed by a district court to mean ‘code that is not specific to the operating system, programming language, or platform of a device.’” Id. at 12 (citing Ex. 2021, 15–16; Ex. 2022, 10). Petitioner does not challenge this construction or offer a competing construction, but does disagree with Patent Owner’s application of this construction, as discussed further herein. As the parties do not disagree with the District Court’s construction, we adopt it for use in this proceeding. We address Petitioner’s arguments about the application of the construction in the course of the validity analysis.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We determine, based on the full record of the proceeding, that Petitioner has submitted sufficient evidence to establish that Anderson was publicly accessible before the critical date of the challenged patent, and, thus, Petitioner has established that the reference qualifies as a printed publication. In particular, the face of Anderson bears a copyright date of 2006, a publication date of May 2006, an ISBN (“International Standard Book Number”), and identifies an established publisher (Prentice Hall). Ex. 1003, 4. See Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date 8 References to page numbers for this exhibit are to the page numbers as provided by Petitioner on the exhibit. of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”). Dr. Hall-Ellis testifies that Exhibit 1003 is a true and correct copy of the selected pages from the book as held by the Library of Congress, and also attests that the book was publicly available by or shortly after June 28, 2007, because by that date it had been received, cataloged, and indexed at the Library of Congress and made part of the Online Computer Library Center’s (“OCLC’s”) bibliographic database. Ex. 1015 ¶¶ 43, 49; see id. ¶ 28 (describing OCLC).” slip op. at 12
Patent outcomesUS 9,063,755 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,063,755 - PTAB · Feb 24, 2023 · IPR2022-01375 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–4, 6–7, 10–19, 21, and 22 on every asserted ground, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The parties appear to agree that it is the signals from the objects that are “unobstructed.” See Pet. 14–15; Prelim. Resp. 51. There also does not appear to be a substantive difference between the parties’ proposed constructions for “unobstructed”—namely, “without obstructions to signals” versus “unblocked” signals. However, in IPR2022-01376, Patent Owner makes arguments concerning the application of claim 1 of the related ’717 patent, which includes very similar language as claim 1 of the ’182 patent, that indicate a disagreement. IPR2022-01376, Paper 10 at 8–15. More specifically, as we discuss in our Institution Decision in IPR2022-01376, it appears that Patent Owner may be using the term “unblocked” to indicate that there is no material at all between the first and second tags (such as pages or covers of a library book), regardless of whether that material blocks the signals from the tags. IPR2022-01376, Paper 11 at 12–17. As we further discuss in our institution decision in that case, we preliminarily determined that the specification and prosecution history of the ’717 patent does not support Patent Owner’s apparent construction of “unobstructed,” and preliminarily construed “unobstructed” as meaning that there is no structure located between the objects that blocks signals from an object to the extent that the object cannot be detected by the antenna of the interrogation system. IPR2022-01366, Paper 11 at 14–16. We adopt the same preliminary construction of “unobstructed” in this proceeding. The parties may further address this claim construction issue in future briefs during the trial.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). Petitioner asserts that “system” is a recognized nonce word, and argues that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem.’” Pet. 6–7. From this, Petitioner concludes that “sensing subsystem” is governed by § 112 ¶ 6. Id. Patent Owner argues that Petitioner has failed to rebut the presumption and that a person of ordinary skill in the art would recognize “sensing subsystem” as the name of sufficiently definite structure. Prelim. Resp. 38. We agree that Petitioner has not overcome the presumption that § 112 ¶ 6 does not apply. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’”—is conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. Pet. 6–7; cf. Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“What is important is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art.”). Patent Owner points to dependent claims 4 and 5, which depend from” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner, relying on the testimony of Dr. Sharony, contends that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a bachelor’s degree in electrical engineering, computer 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. science, or a related field and significant experience with detection devices, like RFID and metal detectors.” Pet. 6 (citing Ex. 1002 ¶¶ 16, 22). Patent Owner does not offer a definition of the level of ordinary skill at this stage of the proceeding. See Prelim. Resp. Based on the present record, we preliminarily determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’182 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,646,182 - PTAB · Feb 24, 2023 · IPR2022-01377 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–8, 10–12, and 14–22 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’293 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’293 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Sharony, contends that: A person having ordinary skill in the art (“POSITA”) at the time of the alleged invention would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with detection devices, like RFID and metal detectors. Pet. 4–5 (citing Ex. 1002 ¶ 22). Patent Owner, at this stage, does not explicitly address Petitioner’s proposal or propose a different definition of the person of ordinary skill in the art. Based on the present record, we preliminarily determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’293 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The arguments made by the applicant during prosecution indicate that the terms “unshielded” and later “unobstructed” were added to distinguish the claimed subject matter over prior art having a shield that “blocks substantially all interrogation signals” from an object such that the “interrogator will not detect the [object].” See id. at 222. This suggests that “unobstructed” means that there is no structure akin to a shield between the objects that blocks signals to the extent that an object cannot be detected. For purposes of this decision, we preliminarily construe “unobstructed” as meaning that there is no structure located between the objects that blocks signals from an object to the extent that the object cannot be detected by the antenna of the interrogation system. This determination is preliminary. The parties are encouraged to further address this claim construction issue in future briefs during the trial, and preferably with a focus on intrinsic evidence.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Patent Owner argues that Garber does not disclose a user interface in the recited “portable configuration” and, therefore, “does not teach a wholly portable interrogator.” Prelim. Resp. 6–7. Patent Owner argues that “[t]he touchpad in Garber is always located in a separate ‘palm-top’ or hand-held computer that is tethered to the RFID reader,” rather than “in an integrated or attached hand-held arrangement.” Id. at 10. Thus, Patent Owner’s arguments are based, at least in part, on its proposed construction of “portable configuration” as limited to an “integrated” or “attached” configuration. These arguments are unavailing as we, for the reasons discussed above in the claim construction section, do not adopt Patent Owner’s limiting claim construction. Also, we understand Patent Owner to argue that “the user interface [of Garber’s Figure 13] does not include an integrated input device having a tactile sensor.” Id. (citing Ex. 2008 (Kinney Decl.) ¶ 23). On the present record, this argument is unavailing. Even if Patent Owner’s proposed construction of “touchpad” as requiring a tactile sensor is correct (an issue we do not reach at this time), id. at 8–9, neither Patent Owner nor Mr. Kinney explains adequately the basis for the assertion that Garber’s device lacks a tactile sensor. See id. at 10; Ex. 2008 ¶ 23. We determine that Petitioner has demonstrated a reasonable likelihood of showing that Garber discloses “a user interface including a touchpad and a display embodied in a portable configuration with said control and processing subsystem and said antenna.” e. Conclusion as to Independent Claim 1 Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in its challenge to claim 1 as anticipated by Garber. 4. Independent Claim 17 and Dependent Claims 2–8, 12, 14–16, and 18–22 Independent claim 17 recites a method of operating a portable interrogator configured the same as or similar to the apparatus of independent claim 1. See Ex. 1001, 30:52–61. The remaining challenged claims are all dependent claims. For these claims, Patent Owner does not present arguments beyond those regarding independent claim 1 and discussed above. Having considered Petitioner’s arguments and evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in its challenges to claims 2–8, 12, and 14–22 as being anticipated by Garber. E. The Alleged Obviousness of Claims 10 and 11 over Garber and Anderson” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,293 - Unified Patents, LLC v. Robocast, Inc.Institution deniedPTAB · Jan 20, 2023 · IPR2022-01125 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over Henley or Shoham and Richardson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). While the elements must be arranged in the same way as is recited in the claim, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990). Identity of terminology between the anticipatory prior art reference and the claim is not required. Prior art references 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).” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Certain terms recited in the challenged claims were construed during prior litigation of the ’451 patent, i.e., the parent of the challenged ’932 patent. Ex. 1011 (claim construction order in cases involving Microsoft and Apple); Ex. 2009, 5 (clarification of certain claim constructions on summary judgment). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner “does not dispute” such constructions. Pet. 10–13; Prelim. Resp. 6–8. We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1011, 16–17; Pet. 12; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 22, as well as in challenged dependent claim 4, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1011, 2–13; Pet. 11–12; Prelim. Resp. 7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claim 1, as well as challenged dependent claims 2 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1011, 22–23; Pet. 13; Prelim. Resp. 7.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience working with computer networks and the accessing and presentation of networked resources to users in the 1996 timeframe.” Pet. 10 (citing Ex. 1012 ¶ 51). Petitioner adds that “[t]his description is approximate, and a higher level of education or specific skill might make up for less experience and vice-versa.” Id. Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. (citing Ex. 2005 ¶ 28). Both parties support their proposals with testimony by their respective experts. See Ex. 1012 ¶ 51; Ex. 2005 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Expert testimonyPatent owner expert creditedDecided for patent owner
“distinction. See Ex. 2005 ¶ 30 (“Henley discloses a ‘video optimized stream server system 10,’ also referred to as ‘media streamer,’ for use by broadcasters to deliver content to end users, or viewers.”). In particular, Dr. Almeroth observes that, in Figure 1 of Henley, reproduced above, system controller 64 is illustrated graphically as connected to multiple user controls 65, but is shown connected only to a single display 66. Id. ¶ 31. This structure, in combination with Henley’s description of the drawing, leads Dr. Almeroth to conclude that user control 65 “corresponds to a ‘set top box[]’” for an end user, and that system controller 64 corresponds to a separate “‘user interface’ for the operator.” Id. Specifically, Dr. Almeroth points to Henley’s description of system controller 64 as “respond[ing] to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Id.; Ex. 1013, 8:30–32 (emphasis added). Dr. Almeroth also notes Henley’s explanation that “[s]ystem controller 64 is further provided with a user interface and display facility 66 which enables a user to input commands, such as by hard or soft buttons, and other data to enable an identification of video presentations, the scheduling of video presentations, and control over the playing of a video presentation.” Ex. 2005 ¶ 31; Ex. 1013, 8:33–38. These disclosures by Henley support Dr. Almeroth’s conclusion that “[t]his ‘user interface and display facility 66’ is for an operator—not an end user.” See Ex. 2005 ¶ 31. Dr. Almeroth provides additional reasoning to support this conclusion. For example, Henley explains that “[s]ystem controller 64 responds to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Ex. 1013, 8:30–32. In light of this, because an end user would interact with the set-top box shown as user control 65, Dr. Almeroth reasons that “it would make no sense” for display 66 to be for the end user. Ex. 2005 ¶ 32. We agree with this reasoning. In addition, Dr. Almeroth observes that Henley describes two types of interfaces for media streamer 10, a command line interface and a graphical user interface. Id. ¶ 33 (citing Ex. 1013, 18:47–50). Because the command line interface can be used for “batch” functionality, Dr. Almeroth reasons, and we agree, that the command line interface is for broadcast operators, rather than for end users. Id. With respect to the graphical user interface shown in Figure 8, reproduced above, Dr. Almeroth further reasons that a person of skill in the art would understand that it relates to operator controls, rather than end-user controls, because Henley specifically describes it as showing keys “used to operate the media streamer.” Id. ¶ 34; Ex. 1013, 4:5– 6. In other words, according to Dr. Almeroth, “[t]he graphical user interface corresponds to the command line interface.” Ex. 2005 ¶ 34. Dr. Almeroth’s reasoning is compelling. Notably, Figure 8 shows “Batch” button 130 and “Import/Export” button 132 to “move video data into and out of the media streamer.” See Ex. 1013, 19:20–22, 19:30–31. As Dr. Almeroth testifies, these are not functions that a person of ordinary skill in the art would understand to be available for end users, but are appropriate for broadcast operators: “None of these commands are consistent with those that would be available to an end user of, e.g., a set top box or pay-per-view system.” Ex. 2005 ¶ 35. In light of this compelling testimony, we agree with Patent Owner and find that “Henley . . . does not describe . . . the end user’s interface or controls.” See Prelim. Resp. 22.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,965,932
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.