- Apple Inc. v. Memoryweb, LLCSome claims unpatentablePTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision
Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9
- Skill levelOther
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96
Patent outcomesUS 11,017,020 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,017,020 - PTAB · May 31, 2023 · IPR2023-00171 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7–9, 14, and 20 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 1. Petitioner asserts that its stipulation is the same as the one in Sotera. Id. at 1–2. Patent Owner does not dispute that Petitioner adopts the identical stipulation from Sotera but argues it “cannot cure the fact that [Fintiv] Factors 2, 3, 5 and 6 all remain heavily in favor of denying institution.” See PO Prelim. Sur-Reply 3. factors help the Board assess the potential for conflicting decisions and duplicative efforts when there is a PTAB proceeding held in parallel to district-court litigation. See Interim Procedure 1–2. But here, Petitioner’s Sotera stipulation ensures the grounds that the Board resolves will differ from those considered in the parallel district-court litigation. See id. at 7–8. This eliminates the potential for conflicting decisions and duplicative efforts. See id. Thus, in light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Id. at 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION As explained above, we determine that Petitioner has established a reasonable likelihood of prevailing in its challenge to at least claim 1 of the ’130 patent. Thus, we institute an inter partes review of all challenged claims on all asserted grounds. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review is instituted with respect to all claims and all grounds of unpatentability raised in the Petition;” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’130 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 5 (citing Ex. 1003 ¶ 23). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’130 patent.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Declaration, Exhibit 1002, in part because the Declaration merely copies the Petition. Prelim. Resp. 22. This argument finds support in our recent decision in Xerox. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (precedential). In Xerox, we denied institution and held a declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning. Although we agree that the Petition and supporting evidence or reasoning. For the reasons explained below, at this stage, we are persuaded that the Petition and Ding Declaration are sufficiently supported by the disclosures from Kwak. The weight given to the Ding Declaration is not dispositive for any disputed issue.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,736,130 - PTAB · May 17, 2023 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Institution
The Board instituted review of claims 1–7 and 24–31 on all petition grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the record before us, and having not yet heard from Patent Owner, we determine that Petitioner, for purposes of instituting an inter partes review, has adequately accounted for all the features required by claims 1–7 and 24–31. See Pet. 27–73. III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“and 24. Petitioner contends that, to the extent “smartlink module” is limiting, a person of ordinary skill in the art would understand that it means “a device that includes (1) a processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70).8 Petitioner also contends that such meaning is consistent with the disclosure of the ’792 patent. Id. at 12–13. For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “smartlink module.” Petition also contends that a person of ordinary skill in the art “would understand the ‘module’ [in dependent claims 2–7 and 25–31] to be referring to the ‘smartlink module’ [in their respective independent claims].” Pet. 13 (citing Ex. 1002 ¶¶ 68, 78). We also accept that understanding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - Linkedin Corporation v. Ebuddy Technologies B.V.All claims unpatentablePTAB · May 15, 2023 · IPR2022-00177 · APJ Jason M Repko · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Odell and Daniell; claims 7–16 are unpatentable as anticipated by Odell.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“(b) High- and Low-Level Networks We also determine that the evidence favors the conclusion that the” slip op. at 37
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“D. Anticipation: Odell 1. Claims 7 and 12 Claims 7 and 12 recite similar limitations, except that claim 7 recites a” slip op. at 76
- ExcludeMotion to exclude, deniedMixed
“FURTHER ORDERED that Patent Owner’s Motion to Exclude Evidence is denied in part and dismissed in part as moot; and” slip op. at 100
Patent outcomesUS 9,584,453 unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,584,453 - Linkedin Corporation v. Ebuddy Technologies B.V.All claims unpatentablePTAB · May 15, 2023 · IPR2022-00176 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1–11 are unpatentable as anticipated by Odell and as obvious over Odell alone or with Daniell.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“A Motion to Exclude “must identify the objections in the record in order and must explain the objections.” 37 C.F.R. § 42.64(c). Here, Patent Owner never filed or served any objections to Exhibits 1021, 1027, or 1028. On that basis, we deny Patent Owner’s Motion as to those exhibits. Also, we do not rely on the content of Exhibits 1022–1026 or 1030 in reaching our decision on the patentability of the challenged claims. Thus, we dismiss as moot the Motion as to Exhibits 1022–1026 and 1030. See Consolidated Trial Practice Guide,5 79–80 (Nov. 21, 2019) (“In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.”). Even so, we note that Patent Owner’s Motion does not satisfy the requirements of 37 C.F.R. § 42.64(c) because it does not “identify the objections in the record.”” slip op. at 112
- Skill levelDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 11
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“distinguish among business relationships between IM services, or importantly, one that is rooted in the ’395 patent. See PO Resp. 7–8; PO Sur-Reply 7–10. Rather, treating the IM services together based on common ownership would appear to contradict the ’395 patent’s describing them as distinct services. See Ex. 1001, 3:52–55; see also Ex. 1001, 8:18–32. For the foregoing reasons, we disagree with Patent Owner that a “messaging service provider” as recited in the claims is the entity that provides the instant messaging service (PO Resp. 7–8), and assign little weight to Dr. Surati’s testimony on this point (Ex. 2006 ¶¶ 114–118). Instead, we find persuasive Petitioner’s proposed meaning for “messaging service provider” and underlying arguments discussed above, namely, that this term means the computer system or platform providing a distinct messaging service (and not which company at any given time might own that system or platform), and credit the testimony of Mr. Willis in this regard (see Ex. 1040 ¶ 27 (“Two different homes in two different cities and rented to two different families are not one house, even if they are owned by the same investor.”); see also Ex. 1040 ¶¶ 23–33).” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“stores the aggregated contact list in a non-transitory computer readable medium at the web server.” So, we see no reason to construe the term “contact aggregation engine” itself to require network storage. Rather, Patent Owner’s network-storage argument supports the conclusion that “contact aggregation engine” is defined by the functions expressly recited in the claim. See PO Sur-Reply 11. slip op. at 22
Patent outcomesUS 8,510,395 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,510,395 - 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 - PTAB · Apr 4, 2023 · IPR2022-01598 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–2, 6, 8–11, 15, 17, and 18 are anticipated by Kannan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“4. Analysis As already noted, Becton, Dickinson factors (a), (b), (d) all support a finding that the Kannan Publication was presented to the Office by listing the Kannan Publication in an IDS and the European Report. The first prong of the Advanced Bionics framework is satisfied.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The PTAB will weigh this factor against exercising discretion to deny institution under Fintiv if the median time-to-trial is around the same time or after the projected statutory deadline for the PTAB’s final written decision.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Interim Procedure for Discretionary Denials”). Because our projected statutory deadline is around the same time as the median time-to-trial here, we weigh this factor as weighing against exercising discretion to deny institution. Factor 3. Investment in the parallel proceeding by the court and the parties. slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we therefore conclude preliminarily that Petitioner has sufficiently shown that Kannan discloses limitation 1.a.” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s arguments and evidence as to the short comings of a single code block do not preclude a code block from being the recited “transmission block.” As a result, even if a single code block transmission block is problematic as to transmission or receiving transmission blocks, there is no explanation of why that fact makes a difference in our legal analysis of the scope of this claim term. We leave this issue for the parties to explore during trial. Based on the record before us, we preliminarily determine that the “transport block” of Kannan falls within the scope of the recited “transmission block,” because a transport block can be a transmission block in some scenarios. See Ex. 2001 ¶¶ 46, 48–49. Furthermore, the “transport block” may include a single code block. Moreover, we preliminarily determine that the “code block” of Kannan falls within the scope of the recited “transmission block.” This issue is subject to further development during trial.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 10,594,443 - 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 - Google LLC v. Parus Holdings, Inc.InstitutedPTAB · Nov 7, 2022 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–26, finding a reasonable likelihood of prevailing on the Wise–Dasan obviousness grounds and the Wise–Dasan–Uppaluru ground for claim 26.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony—“throughout the Petition”—for the understanding of a person of ordinary skill in the art as “baseless” because “the expert declaration does nothing more than repeat the unsupported attorney argument in the Petition.” Prelim. Resp. 28. Although we agree with Patent Owner’s general characterization that Mr. Lipoff largely repeats most of the Petition verbatim and that such testimony is of less probative value than more elaborative testimony, we disagree with Patent Owner’s implication that we should therefore summarily discount Mr. Lipoff’s testimony. See id. (“This type of copy-and-paste analysis has no probative value and is therefore unhelpful.”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1002 ¶ 77. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Mr. Lipoff, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314
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.