- Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31
Patent outcomesUS 10,129,825 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,825 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17
Patent outcomesUS 10,524,202 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - Bright Data Ltd. v. Oxylabs, UabNo claims unpatentablePTAB · Jul 15, 2024 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Scoda did not disclose the claimed interception limitation and Hallak did not disclose execution of the removed script after removal.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find that the parties’ agreed upon construction is supported by the record before us and apply it in our patentability analysis below, requiring the embedded script to be removed before that script is executed. We determine that no other claim terms require express construction.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“during trial, we determine that Petitioner has not shown by a preponderance of the evidence that Scoda discloses intercepting a web page sent from a We agree with Patent Owner that portions of Scoda cited in the Petition do not disclose a web page, let alone one sent from a server and addressed to a client browser. See PO Resp. 17; Tr. 73:10–23. Scoda discloses that “[t]he core module 21 is executed by the web content proxy server 12 to determine where to provide the response with the executed JavaScript functionality in the exemplary environment 10, such as to a web browser on one of the client devices 14(1)–14(n).” Ex. 1016 ¶ 55. But this functionality does not refer to a web page from a server. Instead, this discussion is about a HTTP request that comes from a client device and may include one or more hidden JavaScript identifiers. See id. ¶¶ 50–55. The discussion about providing a response to a web browser on a client device refers to a response to the client device’s HTTP request, in the form of an error message, that is sent from the proxy server to client device. Id. ¶ 58. As Patent Owner points out, this is one of the two scenarios presented in Scoda, the other one being that HTTP request is sent to the server. Id.; PO Resp. 36; see also Ex. 2009 ¶ 70. We agree with Patent Owner and Dr. Almeroth that these communications between the client and proxy server or the proxy server and the content server do not disclose the “intercepting” limitation.” slip op. at 19
- Strike new argumentNew argument disregardedDenied
“deficient, Petitioner attempts to change the focus of its argument. Pet. Reply 2–3. Petitioner instead relies on Figure 8 and related discussion as “Scoda’s disclosure of proxy server 12 processing a web page that was sent from a web server.” Id. Scoda, and Petitioner’s argument based on this disclosure is, therefore, an untimely new argument presented in the Reply. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 20
Patent outcomesUS 9,516,091 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 9,516,091 - PTAB · May 23, 2024 · IPR2024-00215 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–10 on all grounds, finding a reasonable likelihood that claim 1 would be obvious over Foster and Hayhurst.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- BurdenDecided for petitioner
“The record at this stage sufficiently supports Petitioner’s argument that Foster’s receiver 430 stores content that it receives. Pet. 65 (citing Ex. 1006 ¶¶ 4, 8, Fig. 8). According to Dr. Rubin’s annotations, receiver 430 can be a personal computer (PC) or set-top box. Ex. 2003 ¶ 83 (labeling the receiver in Figure 16 as such). This is consistent with Foster. Ex. 1006 ¶¶ 49, 51 (describing PC 18 and a set-top box). Foster describes how the receiver stores encrypted content. See id. ¶¶ 8, 79. For example, Foster explains, “Once received, recipient 430 can then synchronously store the encrypted content.” Id. ¶ 79, cited in Pet. 68–69. According to Foster, “The encrypted title key is then attached to the content packet and the header for synchronized transmission to, or storage by a receiver.” Id. ¶ 8 (emphasis added), quoted in Pet. 65. For at least the reason that Foster teaches a PC or at this stage that Foster’s data set is “for storage.” See Pet. 65–66, 80–82. At this stage, we credit Dr. Bhattacharjee’s testimony (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s (Ex. 2003 ¶¶ 108–109) because it is better supported by the current record. In particular, we see no support for Dr. Rubin’s testimony that Foster’s receiver cannot provide long-term storage or is unlike the ’854 patent’s storage devices. See Ex. 2003 ¶¶ 108– 109. For instance, we see little difference between Foster’s PC 18 and the magnetic or optical disk, USB key drive, or other devices that Dr. Rubin claims are long-term storage devices. Ex. 1001, 67:16–19, cited in Ex. 2003 ¶¶ 108–109. PC 18 has “data storage.” Ex. 1006 ¶ 75. Foster explains “optical media” or “magnetic media” are types of data storage. Id. Foster also states that the receiver stores data. Id. ¶ 8. In view of these parts of Foster, we credit Dr. Bhattacharjee’s testimony that Foster’s receiver has data storage (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s testimony that Foster’s devices are unlike those described in the ’854 patent (Ex. 2003 ¶¶ 108–109), at this stage.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 10032 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. Patent Owner does not respond to Petitioner’s assertions or argue for a definition of a person of ordinary skill in the art. See Prelim. Resp. Here, we apply the skill level proposed by Petitioner. Pet. 6.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“key (the encryption operation Petitioner contends would be reordered/repeated).” Id. at 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been pointless: Indeed, a [person of ordinary skill in the art] would recognize that encryption with the alleged external key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged external key (i.e., the session master key) would render the splitting and encryption of the alleged external key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 110–111. Thus, we credit Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) over Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 110–111) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Version. See Pet. 33–35.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,452,854 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Apr 3, 2024 · IPR2023-01442 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under either anticipation ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. In addition, for the reasons stated on the merits of the Petition, we do not reach the question of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a). We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have been an individual who, as of July 18, 2002, the filing date of the ’667 Patent, had either: (1) a Bachelor’s Degree or higher in the field of electrical engineering, computer engineering, or computer science and at least one year of related practical experience; or (2) at least four years of practical experience in data management.” Pet. 9 (citing Williams Decl. ¶¶ 30–31). Patent Owner does not provide a description of the person of ordinary skill or dispute Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes claim constructions for our consideration. Petitioner “gives the claim terms their plain and ordinary meaning in light of the specification and prosecution history as would have been read by a [person of ordinary skill].” Pet. 9. Patent Owner does not comment on claim construction. We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to construe claim terms to resolve the issues in dispute. E. Description of the Prior Art References” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“The Federal Circuit addressed the legal standard for anticipation in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016): “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” 815 F.3d at 1341 (citation omitted) (footnote omitted). C. Level of Ordinary Skill in the Art” slip op. at 7
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,020,667 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13
Patent outcomesUS 10,169,987 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,169,987 - PTAB · Jan 12, 2023 · IPR2022-01090 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–42 and 46–66 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that claims 1–42 and 46–66 would have been obvious over the asserted prior art. See id. at 33–96. Patent Owner raises several objections to Petitioner’s obviousness showing. We address those issues below.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d) because one of the asserted references, Nishitani, “was substantively considered by the Examiner during Supplemental Examination of the ʼ436 Patent.” PO Prelim. Resp. 7–8. In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). For the reasons given below, we are not persuaded to exercise our discretion to deny the Petition based on § 325(d).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“The main concern motivating the General Plastic framework is “the potential for abuse of the review process by repeated attacks on patents” by a petitioner who files “[m]ultiple, staggered petitions challenging the same patent and same claims . . . . using our decisions as a roadmap, until a ground is found that results in the grant of review.” General Plastic, Paper 19 at 17. Here, the potential for abuse is minimal because this is the first time this petitioner has challenged the ’436 patent, and Patent Owner does not allege any connection or relationship between this Petitioner and the previous petitioners that might warrant exercising our discretion to deny institution. PO Prelim Resp. 14–15; Sur-reply 8–9; compare Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9–10 (Apr. 2, 2019) (precedential) (exercising discretion to deny institution based on a different petitioner’s earlier-filed petition where the different petitioners were co- defendants in a related district-court litigation, and where both petitioners were accused of infringing the challenged patent based on the same product incorporating technology licensed from petitioner Valve). In addition, it is reasonable that Petitioner filed its own Petition after the three previous petitions filed by unrelated parties given that “the present litigation dispute between Petitioner and Patent Owner did not begin until March 2021—well after the last of the three prior IPR petitions was filed.” Pet. Reply 10. Thus, this subsequent challenge against the ’436 patent appears to be a result of Patent Owner’s litigation activity, rather than Petitioner’s abuse of the review process. We find the circumstances in this case do not warrant denying the Petition under § 314(a).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther
“required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not dispute Petitioner’s proposed construction in its Preliminary Response. Based on the present record, we agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,078,436 - PTAB · Dec 14, 2022 · IPR2022-01009 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1, 2, 7, 8, 21, 22, 24, 25, 27, and 29 on all petition grounds, finding a reasonable likelihood of success on the Littleworth-Linder-Middlebrook obviousness challenge.
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. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“when there is an early trial date in related litigation as part of assessing all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). The Board evaluates six factors when making this assessment. See Fintiv Order, at 5–6. Further, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Petitioner proposes constructions for two terms, “pitch” and “oblique perspective view.” 1. “Pitch” Petitioner argues that the term “pitch” should be construed to mean either “pitch” or “slope.” Pet. 8. Petitioner asserts that, during prosecution, the applicant stated that “prior versions of the claims ‘use[d] the word “pitch” while other places use the word “slope” and that ‘[t]hese words have the same meaning in the context of these claims, however to avoid confusion, the term “slope” [was] removed and replaced with the word “pitch” throughout to maintain consistency.’” Pet. 8 (citing Ex. 1002, 76– 77). Petitioner further argues that its construction is “supported by the ’961 patent itself which treats the terms interchangeably.” Id. (citing Ex. 1001, 1:52–67, 3:11–19, 4:19–30, 6:5–17, claims 1, 10, 16, 21–22, 24). Patent Owner does not dispute Petitioner’s proposed construction of “pitch” in its Preliminary Response. See Prelim. Resp. Based on the present record, we agree with Petitioner that “pitch” should be construed to encompass “pitch” and “slope.”” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“At the institution stage, the relevant issue is whether the record includes “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, Paper 29 at 13. As Hulu explains, 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.” Id. Hulu additionally observes that, after institution, certain limited opportunities are available for a petitioner to present new evidence in support of its position, including in a motion to file supplemental information under 37 C.F.R. § 42.123. Hulu at 14–16. Based on the present record, we find that there is a reasonable likelihood that Littleworth was publicly accessible before the critical date of the ’961 patent. Petitioner introduces the testimony of Ms. Munford that “I have reviewed Exhibit NEARMAP-1005, “Three-Dimensional Mapping and As-Built Computer Modelling by Analytical Photogrammetry” by R.M Littleworth, D.M. Stirling and J.H. Chandler as published in International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5.” Ex. 1019 ¶ 6. This statement suggests that Ms. Munford reviewed information indicating that Exhibit NEARMAP-1005 was published in the International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5, and is sufficient for purposes of institution. As for Patent Owner’s argument that the 008 field does not show the date when Littleworth was cataloged by the Rochester Institute of Technology library, Petitioner introduces testimony from Ms. Munford that “the 008 field of the MARC record is reserved for denoting the date of creation of the library record itself.” Ex. 1019 ¶ 4. Ms. Munford further testifies that because the date of creation “typically occurs during the process of preparing materials for public access, it is my experience that an item’s MARC record indicates the date of an item’s public availability.” Id. Additionally, Ms. Munford states that because the 008 field “is the only date reflecting the inclusion of said materials within the library’s collection, it is my experience that an item’s 008 field accurately indicates the date of an item’s public availability.” Id. ¶ 5. Patent Owner does not introduce any expert testimony to the contrary, but rather relies on attorney argument about the nature of the 008 and 040 fields of a MARC record. Prelim. Resp. 38– 42. Based on the present record, we determine that the testimony of Ms. Munford provides sufficient evidence for purposes of institution that the 008 field of the MARC record for Littleworth indicates the date that Littleworth was cataloged and made publicly available.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,670,961 - PTAB · Nov 2, 2022 · IPR2022-00735 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR of claims 1–16 on all petitioned grounds, finding a reasonable likelihood that the challenged claims are unpatentable over the asserted obviousness combinations.
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. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“not yet set a date for the claim construction hearing, and the scheduling order indicates that it will not set a trial date until 14 days after its claim construction ruling.” Pet. 51 (citing Ex. 1013). Patent Owner does not dispute this. Prelim. Resp. 40. Therefore, the district court trial will likely occur after our final written decision in this proceeding, and factor 2 (timing of trial) weighs against exercising discretion to deny institution. The litigation also is in a relatively early stage because, the parties appear to have just completed exchanging infringement and invalidity contentions and no claim construction hearing has occurred. Pet. 52–53; Prelim. Resp. 40–41. Therefore, factor 3 (investment in the district court litigation) also weighs against exercising discretion to deny institution. Additionally, because this case is in a relatively early phase, the district court will have the ability to determine whether to stay the District Court Litigation in favor of this IPR (factor 1). Pet. 51–52. Further, because our final written decision will likely occur before trial in the District Court Litigation, the overlap in parties (factor 5) and any overlap in issues (factor 4) does not weigh in favor of exercising discretion to deny institution.. Finally, we determine that the sixth Fintiv factor (other circumstances) is neutral. Accordingly, after considering all the factors, we decline to exercise our discretion to deny institution.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“in this proceeding. Pet. 5. Patent Owner also does not include a section addressing claim construction. See Prelim. Resp. However, in the course of its argument, Patent Owner points to Dr. Forsyth’s statement that “[t]he ’518 patent describes that the oblique images ‘match the perspectives’ from which they ‘were captured,’” and that “[m]atching the perspectives ‘means that image pixels are not aligned on a rectangular grid [on the ground] but are aligned to the perspective that matches the perspective the camera has captured.’” Id. at 19 (citing Ex. 1003 ¶ 15) (emphasis omitted). At this stage, Patent Owner does not appear to dispute Dr. Forsyth’s statement. Id. at 19–22. For purposes of this decision, we adopt the understanding set forth by Dr. Forsyth, and interpret the language requiring that oblique images “match the perspectives from which” they “were captured” to mean that “image pixels are not aligned on a rectangular grid on the ground but are aligned to the perspective that matches the perspective the camera has captured.” Ex. 1003 ¶ 15 (brackets omitted). We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention would have had “at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 5 (citing Ex. 1003 ¶ 16). Petitioner further asserts that “[s]uperior education could compensate for a deficiency in work experience and vice-versa.” Id. Patent Owner does not address the level of ordinary skill at this stage of the proceeding. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,593,518 - Major Data Uab v. Bright Data Ltd.InstitutedPTAB · Sep 15, 2022 · IPR2022-00916 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1, 2, 6–11, 13, and 15–24 on all asserted grounds, finding a reasonable likelihood of prevailing and compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Pet. 2. Patent Owner expresses concern, however, that “Major Data was formed as a ‘back-up’ option to continue these IPRs,” and represents that Patent Owner “has not sued Major Data for infringement of any patents and Patent Owner is not aware of any services offered by Major Data.” Prelim. Resp. 3. In its Preliminary Reply, however, Petitioner points out that shortly before Patent Owner filed the Preliminary Response, Petitioner had advised Patent Owner and “confirmed, inter alia, that it is not affiliated with any of the Code200 parties and did not discuss the preparation or filing of IPRs with anyone apart from privileged communications with its own attorneys.” Pet. Prelim. Reply 3. Petitioner avers that “it did not file its IPRs at any another party’s behest.” Id. In its Preliminary Sur-reply, Patent Owner does not directly challenge Petitioner’s representations, but instead “reserves all rights including, e.g., vacatur and sanctions, if any contradictions to Petitioner’s representations should arise.” PO Prelim. Sur-reply 4. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’510 Patent” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Neither party addresses, however, another directive of the Memorandum, which states that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds, if unrebutted at trial, would plainly lead to a conclusion that the challenged claims are unpatentable by a preponderance of the evidence. See infra Sections IV.D–I. Instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’510 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art “would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 16. Petitioner further asserts that a person of ordinary skill would be familiar with “the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. (citing Ex. 1005 ¶¶ 25–27). Patent Owner submits that a person of ordinary skill in the art would have “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 29–30 (citing Ex. 2025 ¶ 18). Patent Owner acknowledges that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. at 30. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’510 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,484,510
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.