- PTAB · Sep 15, 2023 · IPR2023-00516 · APJ Minn Chung · IPR · Institution
The Board instituted review of claims 1, 2, and 8–13 on all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any 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.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’589 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Melvin, Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the relevant time would have had “a Bachelor’s degree in Electrical Engineering or Computer Science and two years of experience” or “equivalent education, work, or experience in this field.” Pet. 21 (citing Ex. 1003 ¶¶ 31–34). According to Dr. Melvin, “[m]ore education could substitute for experience, and vice versa.” Ex. 1003 ¶ 33. Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’589 patent, the types of problems and solutions described in the ’589 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “construction of terms is unnecessary because it is not dispositive to this case—the art teaches the limitations under any construction under the Phillips standard.” Pet. 21. Patent Owner states that we need not construe any claim term for purposes of this Decision. See Prelim. Resp. 11. Based on the record presented, we need not construe any claim term for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))). C. Asserted Grounds of Unpatentability Based on Lee or the Combination of” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivation to combine the references because “[w]hile Lee does expressly illustrate the ‘circuitry’ that is initialized by the reset signal ϕRST output from its initialization circuit, Iketani illustrates and describes in detail the various circuits, including the control circuit, that receive and are initialized by such an initialization signal.” Pet. 59 (emphasis added) (citing Ex. 1003 ¶ 140). Petitioner further asserts that the proposed combination “amounts to a simple substitution of one component (i.e., Lee’s initialization circuit) for another (i.e., Iketani’s power on reset circuit), and a POSITA would have understood that this substitution would yield predicable results.” Id. at 61 (citing Ex. 1003 ¶ 143).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,589 - PTAB · May 24, 2023 · IPR2023-00120 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4. Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims 1 through 24 of the ’092 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, “Patent Owner agrees to Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’092 Patent as well as the asserted prior art.” See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’092 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Franzon (see Ex. 1004 ¶¶ 34–36), as well as a declaration from Patent Owner’s declarant, Dr. Hassan Zeino, Ph.D. See Ex. 2001 ¶ 24 (“Zeino Declaration”).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“above that Heil’s configuration does not meet the limitation “dedicated I/O channel” because of other types of data purportedly being communicated over the channel, we infer from Patent Owner’s assertion and Dr. Zeino’s statement that the second claim construction issue articulated above is relevant, i.e., whether a “dedicated I/O channel” should be interpreted as a channel that is used exclusively for a certain type of data, i.e., I/O requests. We find that, in contrast to Patent Owner’s and Dr. Zeino’s assertions, the ʼ092 patent provides a somewhat broader description of elements 121 and 122, to wit: “The PC data storage system 131 services a plurality of channel attached host processors 111, 112 using channels 121, 122, and a plurality of network attached host processors 106, 107. . . .” Ex. 1001, 5:10–13 (omitting Dr. Zeino’s proffered words “dedicated I/O” (Ex. 2001 ¶ 27 (emphasis added)). The ʼ092 patent goes on to later describe channels 121 and 122 as “I/O channels.” Ex. 1001, 5:51. We have reviewed the ʼ092 patent and prosecution history, and find no further intrinsic evidence of record, i.e., original disclosure or arguments presented during prosecution, that would provide additional context for the “dedicated I/O channel” limitation. Nonetheless, for purposes of this Decision, we need not determine whether a “dedicated I/O channel” can transmit data other than I/O requests because, as discussed in Section III.E.1 below, Petitioner shows sufficiently that Heil discloses a “dedicated I/O channel” even under the claim construction inferred from Patent Owner’s argument. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (Fed. Cir. 1999))). Thus, based on the current record and purposes of this Decision, we preliminarily construe a “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Under our preliminary claim construction of the phrase “dedicated I/O channel” adopted above, i.e., we interpret “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests. See § III.C, supra. Patent Owner’s declarant states that Petitioner “maps path 115 to 116.5 to 102 as the dedicated I/O channel of element [1.a]” (Ex. 2001 ¶ 17), and opines “[t]his mapping [cannot be made . . . because] Heil specifically notes that the indicated path (i.e., the path including elements 115, 116.5 and 102) is not dedicated” because Figure 1 of Heil shows “one HBA services the I/O requests from CPU1 and CPU2 100” (id.), thus providing “the load sharing benefits of allowing a plurality of HBAs to service the local and remote I/O requests of CPU 1 and CPU 2 100.” Prelim. Resp. at 14. Relying on the Declaration of Dr. Zeino, Patent Owner states “[t]he channel used by the PCI bus bridge 115 and PCI bus 116.5 is used for other communications besides I/O requests, for example arbitrary communications among peer CPUs (Heil, Col. 8, lines 8–18) and thus the PCI bus bridge 115 and PCI bus 116.5 simply cannot be and cannot serve as a dedicated I/O channel.” Prelim. Resp. 15. “[T]he the only path to the Fibre Channel backbone 121 from the host system CPUs 100 and remote system CPUs 135 is over PCI bus bridge 115 and PCI bus 116.5, so PCI bus bridge 115 and PCI bus 116.5 are also used to allow a channel or path for each CPU to be connected to peer CPU’s.” Id. at 16. cited by Patent Owner, below: In the present invention, each CPU within Node 150, Nodes 152, and Node N 151 does [sic] not have direct connectivity to a peer CPU within another node. For example, CPU 1 100 does not communicate directly with CPU N+1 135 in Node N 151. Instead, Node 150, Nodes 152, and Node N 151 are connected via a network communications medium. In the preferred embodiment, a Fibre Channel backbone 121 allows each CPU to be connected to peer CPU’s. One skilled in the art will recognize all node-to-node inter-processor communication can occur on this Fibre Channel backbone 121. Alternatively, the Fibre Channel backbone 121 can be used exclusively for storage communications and inter-processor communications can occur over a separate network.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,154,092 - PTAB · Apr 17, 2023 · IPR2022-01525 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, 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
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any 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.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’526 patent, based on all grounds raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“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, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record, we find that there is a reasonable likelihood that IPUG was publicly accessible before the earliest possible priority date of the ’526 patent, July 24, 2017.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding.” Pet. 9–10. Patent Owner notes that in the related ITC proceeding, the parties agreed that the term “flow identification data” means “identification data that identifies a communication flow.” Prelim. Resp. 6. For purposes of this Decision, we need not construe the term “flow identification data” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Patent Owner asserts that “no other express construction of any term is required to resolve any controversies” at this preliminary stage of this proceeding. Prelim. Resp. 6. Nonetheless, as discussed below in Section III.C.4.f, in the context of its patentability analysis, Patent Owner raises an implicit claim construction argument regarding the claim term “performing a corresponding action” recited in independent claims 1 and 11. See Prelim. Resp. 22–24. Although Patent Owner’s argument raises an issue of claim construction, the issue is closely related to the issue of whether IPUG discloses “performing a corresponding action” recited in claims 1 and 11. Thus, we address this issue in the context of the patentability discussion in Section III.C.4.f below. Apart from this term, no other claim terms need to be construed expressly for purposes of this Decision. See Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Starting with the claim language, claim 1 recites “performing a corresponding action on each packet of the encrypted communication flow.” Ex. 1001, 18:12–14. The claim recites broadly “performing a corresponding action” and does not require, at least not explicitly, any additional action to the traffic after allowing, such as “logging and capturing” or “applying some transformation.” In addition, the claim recites “performing a corresponding action on . . . the encrypted communication flow,” not on decrypted plaintext packet of the allowed traffic. Thus, at least based on the claim language, we are not persuaded at this time “performing a corresponding action” should be limited as Patent Owner contends.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,284,526 - Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18
Patent outcomesUS 9,807,826 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - Bytedance Ltd. / Tiktok Inc. v. Triller, Inc.All claims unpatentablePTAB · Apr 19, 2022 · IPR2021-00099 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Beauregard and Hozumi; the other asserted anticipation and obviousness grounds were not shown.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“synchronizing . . . from a first beginning, the selected audio track at substantially the same time as a second beginning of capturing each video take of the plurality of video takes.” Patent Owner characterizes this term and the “beginning-beginning synchronization requirement.” PO Resp. 24 (emphasis omitted). Petitioner argues that this element “does not require ‘a first beginning’ and ‘a second beginning’ to be at the beginning of the audio track, but rather are a matching point between the audio track and the video clip.” Pet. 17. Patent Owner agrees with what was preliminarily determined in the Institution Decision, i.e., the “beginning-beginning requirement means that the ‘beginning’ of the audio track and the video take occur at the same time.” PO Resp. 18 (citing Inst. Dec. 19 (citing Ex. 1001, 26:63–67, Figs. 6A–6C, Fig. 7A). Thus, according to Patent Owner “the audio track must be playing while the video take is being captured.” Id. at 12 (citing Ex. 2009 ¶ 30). Petitioner argues that applying the plain meaning or Patent Owner’s proposed construction does not change the result and construction is not (Fed. Cir. 2011) (“claim terms need only be construed to the extent necessary to resolve the controversy.”)). We agree with Petitioner, and because applying either the plain and ordinary meaning or Patent Owner’s proposal, which we find is consistent with the plain and ordinary meaning, does not affect our final decision below, no express construction of this term is necessary. The third appearance is for “synchronized” and recites “at least two video takes of the plurality of video takes synchronized with the selected audio track.” Neither party argues any construction for this appearance and we apply the plain and ordinary meaning of “synchronized” as it appears in limitation 1.4. slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Consistent with the preceding, nothing in the Specification precludes a “video take” from being the same as or including a “video clip” or other piece of video. The Specification states that “each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track.” Ex. 1001, 10:24–26 (“each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track”). A “video take” is described as “a plurality of captured video takes synchronized to a selected audio track.” Id. at 11:4–6. Based on this, we find that a person or ordinary skill would have understood the Specification as describing a “video take” as sometimes the equivalent video clip or segment of video. See Ex. 1001, 10:24–26. We agree with Patent Owner that a “video take” is a continuous recording. Petitioner agreed during the ’663 Lawsuit claim construction process that a video take is “continuous.” PO Resp. 14–15 (citing Ex. 2011,6 8 (“agree any stoppages of recording (e.g., pausing) and restarting is not allowed”); Ex. 2012,7 4). Accordingly, we determine that “video take”” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Person of Ordinary Skill in the Art Petitioner alleges: A person of ordinary skill in the art as of the Critical Date of the ’429 Patent (“POSITA”) would have been a person with a working knowledge of digital video and audio technologies. The person would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. TIKTOK-1003, ¶12. Alternatively, the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Id. Pet. 6. Patent Owner does not comment on Petitioner’s proposal or propose an alternative. On this record, we adopt Petitioner’s proposed description of a person of ordinary skill, which is consistent with the disclosure in the ’429 patent and the cited prior art.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As to the reasons supporting the combination, Patent Owner focuses narrowly on the users of the Beauregard system and not what a person of ordinary skill in the art would have understood from the combination of Beauregard and Hozumi. Patent Owner cites no authority for its argument that a lack of “coordination and communication” between Beauregard’s users is required for a person of ordinary skill in the art to have had reason to make the proposed combination. Cf. In re Etter, 756 F.2d 852, 859–60 (Fed. Cir. 1985) (Patent Owner’s arguments regarding use are “basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the stated in the Shamos Declaration are unsupported by facts and thus entitled to little or no weight. See Ex. 2009 ¶ 115; 37 C.F.R. § 42.65(a). Although the references being in the same field of art is not conclusively a reason for a person of ordinary skill to make the combination, it is a factor. KSR, 550 U.S. 401 (“When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.”). As for Patent Owner’s argument about hindsight reasoning (PO Resp. 69), “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, Petitioner provides persuasive evidence that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Hozumi with Beauregard based on the disclosures of Hozumi and Beauregard and the evidence of the knowledge of a person of ordinary skill in the art at the time of the ’429 patent’s filing date. See, e.g., Pet. 53–56; Ex. 1003 ¶¶ 80–82. This is not evidence of hindsight bias. Patent Owner does not identify, and we do not discern, any particular knowledge used by Petitioner in its combination of Beauregard and Hozumi that was gleaned only from the ’429 patent’s disclosure and was not within the level of ordinary skill in the art at the time of the invention. and motivation for combining the teachings of Hozumi with Beauregard is sufficient. See Pet. 53–56.” slip op. at 37
Patent outcomesUS 9,691,429 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,691,429 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830 - Vudu, Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12
Patent outcomesUS 10,313,414 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,313,414 - Unified Patents, LLC v. Oceana Innovations LLCAll claims unpatentablePTAB · Feb 14, 2022 · IPR2020-01463 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–3 are anticipated by Jones, and claims 1–5 are obvious over the combinations stated in the grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees,” i.e., pointing in opposite directions. See Pet. 28. First, the claim language supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” Claim 1 requires that “said third sides are substantially perpendicular to said first side.” Ex. 1001, 6:2–3. Claim 2 depends from claim 1 and requires that “said fifth sides are respectively and substantially perpendicular to said third sides.” Id. at 6:6–8. Thus, claim 2 defines an assembly with (1) third sides “substantially perpendicular” to the first side, i.e., third sides arranged about 90 degrees relative to the first side, and (2) fifth sides “substantially perpendicular” to respective third sides, i.e., fifth sides arranged about 90 degrees relative to respective third sides. In that assembly, the fifth sides are arranged about 180 degrees relative to the first side, and the fifth sides are “angled at 180 degrees” relative to each other. A dependent claim should narrow a base claim by containing a reference to the base claim and “then specify[ing] a further limitation of the subject matter claimed.” 35 U.S.C. § 112 ¶ 4 (2006); see Myco Indus., Inc. v. BlephEx, LLC, 955 F.3d 1, 14 (Fed. Cir. 2020). So if narrower claim 2 encompasses an assembly with fifth sides “angled at 180 degrees” relative to each other, then broader claim 1 also encompasses such an assembly. As an example, claim 1 covers an arrangement where the fifth side on the left has a slight inclination clockwise from horizontal (⸜) and the fifth side on the right has a slight inclination counterclockwise from horizontal (⸝), such that the sides angle upwardly (⸜ ⸝) relative to a centerline. As another example, claim 1 covers an arrangement where the fifth side on the left has a slight inclination counterclockwise from horizontal (⸝) and the fifth side on the right has a slight inclination clockwise from horizontal (⸜), such that the sides angle downwardly (⸝ ⸜) relative to a centerline. Patent Owner does not dispute that claim 1 covers these example arrangements. See Resp. 10–16; see also id. at 47–48, 50–51. Based on the claim language, claim 1 also covers an arrangement intermediate between these example arrangements where the fifth side on the left has no inclination from horizontal (–) and the fifth side on the right has no inclination from horizontal (–), such that the sides point in opposite directions (– –), i.e., the sides are “angled at 180 degrees” relative to each other. Second, the ’678 patent’s specification supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” See Ex. 1001, 3:66–4:19, Figs. 9–10. When describing the receptacle and the complementary plug depicted in Figures 9 and 10, the patent states that “[t]he third sides 373 (483) are substantially perpendicular to the first side 371 (481).” Id. at 4:14–16. The patent also states that “[t]he fifth sides 375, (485) are respectively and substantially perpendicular to the third sides 373 (483).” Id. at 4:18–19. Hence, similar to claim 2, Figures 9 and 10 depict an assembly with (1) third sides “substantially perpendicular” to the first side, i.e., third sides arranged about 90 degrees relative to the first side, and (2) fifth sides “substantially perpendicular” to respective third sides, i.e., fifth sides arranged about 90 degrees relative to respective third sides. Ex. 1001, 4:14–19, Figs. 9–10. In that assembly, the fifth sides are arranged about 180 degrees relative to the first side, and the fifth sides are “angled at 180 degrees” relative to each other. Id. at 4:14–19, Figs. 9–10. Further, when describing the receptacle and the complementary plug depicted in Figures 9 and 10, the ’678 patent states that “[t]he fifth sides 375 (485) are angled away from each other while extending from the fourth sides 374 (484) to the third sides 373 (483).” Ex. 1001, 4:11–13, code (57). Thus, the patent uses “angled away” to encompass “angled at 180 degrees,” i.e., pointing in opposite directions. Third, the ’678 patent’s prosecution history supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” See Ex. 1004, 17, 41–48, 144–51, 153–58; see also Ex. 1010, 2:52–54, 2:66–3:14, 3:46–4:31, Fig. 1. Application claim 1 became patent claim 1. Ex. 1004, 241. As filed, application claim 1 recited “said fifth sides being angled away from each other while extending from said fourth sides to said third sides.” Id. at 17. In the first Office action, the Examiner rejected application claims 1–3 and 7 as anticipated by Nishio. Ex. 1004, 42–44, 48, 144–51. In rejecting application claim 1, the Examiner found that Nishio discloses an assembly with “fifth sides being angled away from each other while extending from the fourth sides to the third sides.” Id. at 43, 145. As explained below, Nishio discloses an assembly with fifth sides “angled at 180 degrees” relative to each other. See Ex. 1010, 2:52–54, 2:66–3:14, 3:46–4:31, Fig. 1; infra § III.G.2(l). Petitioner provides an annotated excerpt from Nishio’s Figure 1 (reproduced below) depicting an assembly with fifth sides “angled at 180 degrees” relative to each other (Pet. 30): Figure 1 is “an exploded perspective drawing of an electrical connector” with “a section cut away.” Ex. 1010, 2:52–54, Fig. 1. The above annotated excerpt from Figure 1 includes two green lines denoting two fifth sides, and the two green lines are “angled at 180 degrees” relative to each other. See Pet. 30. The Applicant did not dispute the Examiner’s finding that Nishio” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. OTHER CLAIM TERMS We determine that no other claim terms require explicit constructions” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. INDEPENDENT CLAIM 1 (a) Preamble [1a] Claim 1’s preamble recites “[a]n electrical connector assembly.” Ex. 1001, 5:9. Petitioner contends that Jones discloses claim 1’s preamble because Jones discloses “a series of electrical connector assemblies each . . . comprising a socket and a corresponding plug.” Pet. 31 (alteration by Petitioner) (quoting Ex. 1007, 1:43–45). Patent Owner makes no arguments specific to claim 1’s preamble. See Resp. 16–28. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Alleged Objective Indicia of Nonobviousness (i) Background Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharm. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by showing that the objective evidence resulted directly from “the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373–74; see In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Thus, the Board employs a two-step analysis in evaluating whether a patentee has established a nexus between the evidence concerning objective indicia of nonobviousness and the merits of the claimed invention. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 32–33 (PTAB Jan. 24, 2020) (precedential). Initially, the Board considers whether the patentee has demonstrated that the “products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. Absent a presumption of nexus, the Board considers whether the patentee has demonstrated “a legally and factually sufficient connection” between the evidence and the claimed invention. See Henny Penny, 938 F.3d at 1332; Lectrosonics, IPR2018-01129, Paper 33 at 33.” slip op. at 81
Patent outcomesUS 6,508,678 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,508,678 - Bright Data Ltd. v. Metacluster LT, UabInstitution deniedPTAB · Dec 1, 2021 · IPR2021-00983 · APJ Debra K Stephens · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines 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” slip op. at 2
- Skill levelSkill level board ownOther
“Patent Owner does not contest Petitioner’s assertion (see generally Prelim. Resp.). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). in light of Petitioner’s definition of the level of ordinary skill in the art, we determine an ordinarily skilled artisan is: an individual who had (1) a bachelor’s degree or equivalent in the field of Electrical Engineering, Computer Engineering, or Computer Science, or in an equivalent field that includes network engineering as a topic of study (hereinafter, “technical study”), plus at least one year of industry technical experience in the computer network field, such as serving as an engineer for an Internet service provider performing network design, development, or configuration tasks, or as a software developer for network communications software or related utility software, or (2) three years of full-time technical experience in the field of electrical engineering, computer engineering, or computer science or in an equivalent field that includes network engineering or network communications software (hereinafter, “technical fields”), or (3) an equivalent combination of academic study in technical study and work experience in the technical fields.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Proxy Rotator’ as ‘a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting’” (Prelim. Resp. 15 (citing Ex. 1001, 5:4–7)). of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting” (id. at 5:4–7). In accordance with the Specification’s “general terminology description,” we construe the term “Smart Proxy Rotator” as a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“construed as “‘the portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider,’ which may be equal to the weight assigned to that particular proxy provider divided by the sum of weights assigned to all proxy providers during the same time period” (Prelim. Resp. 20 (citing Ex. 2003 ¶ 56)). Patent Owner’s definition requiring a “utilization threshold” to be a “portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider” is too narrow. The ’948 Patent does not expressly define the term “utilization threshold,” and, instead, describes utilization thresholds using an example (id. at 8:1–8). The ’948 Patent states [o]ne of the usage examples can be the following: if one provider has a weight equal to 10, and the other provider has a weight equal to 20, the proxy rotator should use the second provider 66.6% of the time and the first provider 33.3% of the time, when no changes to the default providers’ weights have been introduced. These percentages are the utilization thresholds of each provider. threshold is a goal amount of use, not an actual amount of use. A utilization threshold may represent a desired maximum percentage (i.e., proportion), of proxy requests to be referred to a particular proxy provider. Based on the Specification’s use of a “utilization threshold,” we construe the term to mean “a maximum percentage of use assigned to a particular proxy provider that is equal to a weight for the particular proxy provider divided by the sum of respective weights assigned to all proxy providers during the same time period.”” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,601,948 - Juniper Networks, Inc. v. Correct Transmission, LLCInstitution deniedPTAB · Nov 19, 2021 · IPR2021-00984 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted obviousness grounds taught or suggested the claimed responsive fragmentation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and Reply, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one Challenged Claim of the ’669 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we do not institute an inter partes review of the ’669 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and fewer years of design and development experience. Pet. 5–6 (citing Ex. 1003 ¶¶ 59–63). “Patent Owner takes no position with respect to Petitioner’s proposed level of skill.” Prelim. Resp. 37. We regard Petitioner’s proposed definition as reasonable, and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang. Ex. 1003 ¶¶ 59–63.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 6 (“Petitioner construes each term as having its ordinary and customary meaning.”); Prelim. Resp. 11 (“Patent Owner does not propose any claim term departs from its ordinary and customary meaning.”). We do not find that the express construction of any term is necessary for this decision. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“While not showing a teaching away, the above statement in Sourani contrasting stop points and fragmentation does show that one of ordinary skill in the art reading Sourani would know that the stop points in Sourani are not intended to be fragments. Petitioner has not explained sufficiently why, despite this contrast, one of ordinary skill would use fragmentation with the system of Sourani.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,876,669
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.