- Netflix, Inc. v. VL Collective IP LLCAll claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00891 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–22 are unpatentable, including as anticipated by Comps; the majority finds Comps’s Tracks 1 and 3 example meets the claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and supported by the testimony of Dr. Bederson. See Ex. 1003 ¶¶ 28–30. Dr. Goodrich testifies that “Dr. Bederson and Petitioner offer a slightly different definition of the POSITA, which is similar to my definition” and that his “opinions would not change were” he “to adopt the definition of POSITA offered by Petitioner.” Ex. 2011 ¶ 54. Accordingly, we adopt Petitioner’s proposal, which is materially the same as Patent Owner’s proposal for purposes of this Final Written Decision, as Dr. Goodrich testifies. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“1. content-related data segments Claim 1 recites “content-related . . . data segments.” Patent Owner construes this phrase as “segments of content data that have a syntactical meaning within the respective data file.” PO Resp. 12. As Patent Owner notes, the ’794 patent specification states that “[t]he term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Id. at 12–13 (quoting Ex. 1001, 4:9–22); Ex. 1001, 4:9–22 (second emphasis added). The ’794 specification supports Patent Owner’s position that the emphasized sentence essentially defines the term “content-related . . . data segments.” PO Resp. 13–15. However, as Petitioner argues, nothing in the sentence restricts “content-related data segments” to “content” only, for example, “sampled audio,” instead of also including information relating to the content. See Reply 3 (arguing that “the phrase ‘content data’ appears nowhere in the ’794 patent and was not part of the ‘inventors’ express lexicography’ for ‘content-related . . . data segments,’ as P[atent] O[wner] incorrectly contends”). Petitioner points out that Patent Owner’s reliance on the specification refers to “content-related . . . data segments” and “contentbased data segments.” Id. (emphasis by Petitioner) (quoting Ex. 1001, 4:9– 22). Petitioner also contends that the specification refers to describing data, contradicting Patent Owner’s position that the data segments must include content. Id. at 7 (“[A]ccording to at least one embodiment of the invention, media data, in particular video or audio data, and/or metadata, in particular encoded according to the XML standard, are described by way of the first and/or second data file.”) (emphasis by Petitioner) (quoting Ex. 1001, 3:4– 10). Moreover, as Petitioner argues, “the word ‘data’ should be given its plain and ordinary meaning,” so that “even if the [unrecited] phrase ‘content data’ is included in the Board’s construction . . . . the term ‘content data’ would include any information relating to the content.” Id. at 4. As noted above, both parties point to the specification’s definition of “content-related . . . data segments”: “The term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Ex. 1001, 4:9–22. This passage indicates that data segments are content-related or include content, such as a “speech signal,” and that these segments “have a syntactical meaning” with respect to the source of the signal, such as a speaker. See Inst. Dec. 9 & n.8, 17 (observing that “[t]he term ‘content-related’ is somewhat subjective because there is not much guidance in the ’794 patent specification as to what a ‘syntactical meaning’ encompasses”). In context, one plain meaning of the term “syntax” is “[t]he way in which words are put together to form phrases and sentences.” Ex. 3002 (THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 1305 (1976)). However, as indicated above, the ’794 patent refers to video images and audio sounds with a syntactical meaning, showing that it embraces broader subject matter than the plain meaning of “syntax.” Patent Owner’s argument that the ’794 patent refers to “content-” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“segments.’”). Comps supports Petitioner and states that “two syllables represented by the fields TEXT[1] and TEXT[2] must be presented to the user.” Ex. 1004, 3:39–40 (emphasis added). Accordingly, Petitioner persuasively maps each of these text fields to an “associated one of the content-related first data segments [Nf3 and Nf4, respectively] on the basis of an assignment rule [the SYNCH process],” as claim 1 requires.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“1. Claim 6 Petitioner identifies particular passages in Comps and Wan as teaching or suggesting the subject matter additionally recited in claim 6 and provides reasons for combining the teachings. Pet. 50–51. The record supports Petitioner’s showing. See id. Patent Owner does not provide separate arguments for claim 6. See generally PO Resp. Based on the full record, we determine that Petitioner shows by a preponderance of evidence that Comps and Wan render claim 6 unpatentable. 2. Claims 7, 8, and 22 Claim 7 recites “[t]he method as claimed in claim 1, further” slip op. at 68
Patent outcomesUS 8,605,794 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCAll claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00923 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the asserted combinations of Handley, Basturk, and PacketCable; Judge McKone dissented over the printed-publication findings.
RulingsFinal written decision- Expert testimonyOther
“broadly, how skilled artisans in the cable industry in 1999 shared information, is not based on her expertise and should not be given any weight. See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 592, (1993) (“Presumably, this relaxation [in FED. R. EVID. 702] of the usual requirement of firsthand knowledge—a rule which represents ‘a ‘most pervasive manifestation’ of the common law insistence upon ‘the most reliable sources of information,’ ’ is premised on an assumption that the expert’s opinion will have a reliable basis in the knowledge and experience of his discipline.” (internal citation omitted)); FED. R. EVID. 701 (“If a witness is not testifying as an expert, testimony in the form of an opinion is limited to one that is: (a) rationally based on the witness’s perception.”). I would find that Dr. Hall-Ellis’s opinions are not based either on her expertise or her perception; thus, I would give her opinions no weight. As to matters within her expertise, Dr. Hall-Ellis testified that she searched the Wayback Machine and library cataloging resources (e.g., WorldCat) for PacketCable and did not find it as of December 1, 1999. 25:19–26:8, 36:13–15. She further testified that she has no knowledge of whether or how PacketCable was cataloged, on CableLabs’ website or elsewhere. Id. at 50:5–13, 51:10–52:8. This testimony is credible, as it is within her expertise. Thus, I believe Dr. Hall-Ellis that no sources typically consulted by librarians cataloged or recorded PacketCable in 1999. When her expertise is considered, all Dr. Hall-Ellis has been able to establish is that there is no evidence that PacketCable was stored or cataloged, in 1999, in the places where a librarian was apt to look.” slip op. at 108
- Skill levelOther
“VI. CLAIM CONSTRUCTION We interpret claim terms using “the same claim construction standard” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artUnpatentable
“Conclusion for Reasons to Combine We agree with Petitioner that Basturk teaches generating signatures “on-the-fly” as transmission proceeds in order to avoid slowing down the regular flow of data. Pet. 11 (quoting Ex. 1006, 12). We agree with Petitioner that Handley’s RTP protocol used for video conferences would benefit from Basturk’s protocol for high speed networks in order to provide secure video conferences as taught by Basturk. Id. (citing Ex. 1006, 5; Ex. 1003 ¶ 66). We agree with Petitioner that a person of ordinary skill in the art would have used Basturk’s technique of computing signatures “on-the-fly” with Handley’s internet conferencing architecture to provide the known benefits of transmitting data faster, reducing jitter, and reducing computing power. Id. at 10 (citing Ex. 1003 ¶ 64). We agree with Petitioner that Handley describes the need for providing authentication in a multicast environment, and that Basturk addresses this need as well as provides a solution. Id. at 12–13 (citing Ex. 1005, 13; Ex. 1006, 3; Ex. 1003 ¶ 68). We agree with Petitioner that modifying Handley’s RTP transport protocol to include Basturk’s known authentication method of generating signatures “on-the-fly” while transmitting data is “the mere application of a known technique to a piece of prior art ready for improvement.” Id. at 13 (citing Ex. 1003 ¶ 70); KSR, 550 U.S. at 417. In addition, we find that Dr. Houh’s testimony supports Petitioner’s reasons to combine Handley and Basturk. As discussed above, we find Dr. Houh’s testimony more persuasive than Dr. Stubblebine’s testimony because Dr. Houh’s testimony is supported by and consistent with the disclosures of Basturk and Handley. Dr. Houh testifies that generating a signature “on-the-fly” as data is being transmitted provides the benefits of transmitting data faster, reducing jitter, reducing computing power, and reducing latency in a live transmission. Ex. 1003 ¶ 64. We agree with Dr. Houh and find that a person of ordinary skill in the art, faced with the need to provide a signature at the application layer in Handley’s multimedia conferencing architecture as taught by Handley (Ex. 1005, 2, 13) while minimizing latency as taught by both Handley (Ex. 1005, 13–14) and Basturk (Ex. 1006, 7, 12), would have computed the signature “on-the-fly” as taught by Basturk (Ex. 1006, 7, 12) at the application layer of Handley to yield the benefits of authenticating data while minimizing latency as taught by Basturk. Ex. 1003 ¶¶ 63–70. Dr. Houh testifies that a person of ordinary skill in the art, in order to” slip op. at 40
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for patent owner
“Handley, Ex. 1005, qualifies as a prior art printed publication. I also disagree that Petitioner has shown that PacketCable qualifies as a prior art printed publication. Thus, I would not find that Petitioner has shown, by a preponderance of the evidence, that any claim of the ’682 is unpatentable. Accordingly, I dissent.” slip op. at 92
Patent outcomesUS 7,266,682 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,266,682 - Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2
- Expert testimonyOther
“being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25
Patent outcomesUS 7,436,980 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,436,980 - PTAB · Dec 6, 2023 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–16 over all asserted grounds, finding a reasonable likelihood of prevailing on at least claim 1 over Zhao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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 that follow, we institute an inter partes review as to claims 1–16 of the ’980 patent on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the above level of ordinary skill. See generally, Prelim. Resp. Patent Owner rather asserts, “[f]or present purposes, [the] Preliminary Response establishes that institution should be denied even under Petitioners’ preferred definition of the level of ordinary skill.” Prelim. Resp. 16. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). At this stage, we do not need to construe any term.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Engineering and Science Library at Carnegie Mellon University by September 23, 2002, and was publicly accessible in the ProQuest repository by June 25, 2002. Pet. 5 (citing Ex. 1013, 3; Ex. 1014, 3). Patent Owner contends that the Petition improperly incorporates by reference Exhibits 1013 and 1014, because the Petition does not discuss particular evidence from these exhibits. Prelim. Resp. 28. Exhibit 1013 is a declaration from Jessica Brenner, who has a Ph.D. and Masters in Library and Information Science. Ex. 1013 ¶ 4. Dr. Brenner testifies that the stamped cataloging data of Zhao is September 16, 2002, and that Zhao would have been publicly accessible within one week, by September 23, 2002. Id. ¶¶ 8–9. Exhibit 1014 is a declaration from Carl Mageski, who is a Technical Support Analyst employed by ProQuest. Ex. 1014 ¶ 2. Mr. Mageski testifies that he reviewed ProQuest’s records regarding Zhao and determined that the full text of Zhao was available on June 25, 2002. Id. ¶ 8. On this record, we are sufficiently persuaded that the testimonies of Dr. Brenner and Mr. Mageski show a reasonable likelihood that Zhao was publicly accessible on September 16, 2002.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,436,980 - Apple Inc. v. Mullen Industries LLCInstitutedPTAB · May 15, 2023 · IPR2023-00115 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–14 and 73–92 on every asserted ground, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“teaching of a “group database” in which “users can define a group of specific users that have access to [position] information” (Ex. 1041, 11:63– 65) are relevant to Sheha’s teachings regarding mobile devices, which Sheha describes as similar to landline devices (Ex. 1041, 12:4–7). Further, Sheha describes “the calling local mobile device has privacy settings” and can choose not to reveal its position or enable position transfer “at anytime,” which reasonably suggests that privacy settings can be changed. Ex. 1041, 5:9–20. Sheha also describes that “users can define a group of specific users that have access” to position information “by utilizing a group database.” Id. at 11:63–66. Thus, we preliminarily find that Petitioner’s arguments are supported sufficiently by the cited portions of the asserted art. We further preliminarily find that Patent Owner’s arguments do not undermine Petitioner’s showing based on the preliminary record at this juncture of the proceeding. After consideration of the contentions and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently that Sheha teaches element [1.e] for purposes of institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of hardware and software functionalities of the prior art Petitioner contends satisfies limitations [1.f] and [73.f]. Separate from the Petition’s analysis of these limitations, Petitioner addresses the alleged motivation to combine Enzmann and Tobin, McNulty, and Bedingfield in subsection of the Petition titled “Motivation to Combine Sheha and Enzmann with McNulty, Degnbol, Lelievre, Curbow, Tobin, and/or Bedingfield.” Pet. 19–22. Regarding McNulty, Petitioner states in part, “[t]he additional features described in McNulty would easily be applied using the hardware of . . . Enzmann with at most minor software modifications.” Pet. 20. Regarding Tobin, Petitioner states a person of ordinary skill “looking to improve Enzmann’s functionality would have been motivated to also output typical mapping elements such as directions, distance, and location markers, as described in Tobin.” Pet. 22. Regarding Bedingfield, Petitioner states that a person of ordinary skill “would have been motivated to improve location information delivery in . . . Enzmann’s system by also computing travel times via different modes, as described in Bedingfield.” Pet. 23. Petitioner’s motivation statements appear directed to whether a person of ordinary skill could have combined the teachings of the references, rather than to whether a person of ordinary skill would have combined the teachings to arrive at the claimed invention. Further, it is not clear on the current record which features from McNulty, Tobin, or Bedingfield Petitioner contends would have been combined with Enzmann to arrive at limitations [1.f] and [73.f]. Although Tobin at least mentions providing directions, at this stage, we question the sufficiency of Petitioner’s showing for the Enzmann grounds.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party presents any explicit claim constructions. Pet. 9; see generally Prelim. Resp. At this stage, we determine it is unnecessary to expressly construe any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,234,117 - PTAB · Jan 31, 2023 · IPR2022-01191 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–7 under both asserted grounds, finding a reasonable likelihood of anticipation by Hafeman 670 and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Petitioner. Our binding guidance states that the Board “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Memorandum, 7. Petitioner could not make such a stipulation in district court litigation to which it is not a party. Instead, LG, as the defendant in the LG Litigation and a real party in interest in this proceeding, made such a stipulation, and LG’s stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. Indeed, in advocating for discretionary denial in view of the LG Litigation, Patent Owner argues that “for all intents and purposes, Google and Microsoft are ‘the same party’ as LG in the litigation.” Prelim. Resp. 22. Patent Owner, therefore, effectively treats Petitioner and LG as the same entity to argue for discretionary denial.” slip op. at 10
- Parallel petitionsDecided for petitioner
“In light of the priority dispute with respect to the challenged claims, we determine that two petitions are justified. See Patent Trial and Appeal Board Consolidated Trial Practice Guide6 (Nov. 2019), 59 (“[T]he Board recognizes that there may be circumstances in which more than one petition 6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.”). We also note the that two petitions together present a total of four grounds, and addressing the grounds in the two petitions does not create a substantial burden on the Board or the parties under these circumstances.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“(“POSITA”) would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems.” Pet. 27 (citing Ex. 1003 ¶¶ 95–97). Petitioner also contends that “[s]ignificantly more practical experience could also qualify one not having the aforementioned education as a person of ordinary skill in the art while, conversely, a higher level of education could offset a lesser amount of experience.” Id. At this stage of the proceeding, Patent Owner neither addresses Petitioner’s proposed definition nor proposes a different level of skill in the art. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2021). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Petitioner presents two issues for claim construction. Pet. 23–27. First, Petitioner argues that certain language in each independent claim should be interpreted to require the automatic display of certain information “during or after every boot-up.” Id. at 23–26. Second, Petitioner argues that the return and recovery information recited in the claims is merely printed matter that is not entitled to patentable weight. Id. at 26–27. Patent Owner “takes no position” on Petitioner’s first claim construction argument, and disputes Petitioner’s second argument. Prelim. Resp. 8–12. We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,789,393 - Facebook, Inc. v. Express Mobile Inc.InstitutedPTAB · Mar 18, 2022 · IPR2021-01457 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 11, and 12 on all four asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We are not persuaded that Petitioner’s and Google’s status as defendants in co-pending litigation involving the ’044 patent rises to the type of “significant relationship” described in Valve. In Valve, the Board noted that “Valve and HTC were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, Paper 11 at 10. The Board determined that there was “a significant relationship between Valve and HTC with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Nothing in the present record indicates any such relationship between Petitioner and Google. Rather, they were sued by Patent Owner on the same day—as part of a myriad of similar filings against dozens of other defendants. See Prelim. Resp. 25; see also Paper 3, 1–4 (Patent Owner’s Mandatory Notices listing forty-six lawsuits involving the ’044 patent filed by Patent Owner). The record shows some coordination among numerous defendants in various cases on the issue of claim construction. See Exs. 2005 (Defendants’ List of Proposed Claim Terms and Phrases for Construction), 2006 (email chain discussing claim construction issues in district court). But, as Petitioner argues without refutation by Patent Owner, this is the “type of cooperation [that] is actively encouraged by district courts.” See Reply 2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“discretion under 35 U.S.C. § 325(d) to deny review. Prelim. Resp. 31–32. Patent Owner does not, however, explain how the prior art or the arguments asserted in the Petition are the same or substantially the same as art or arguments previously presented to the Office. See id.; see also 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”). Indeed, Patent Owner acknowledges the lack of overlap. Sur-reply 2 (noting that “there is no overlap in art between the Petition and [the ’711 IPR petition],” but asserting that does “not somehow make this not harassment”). Patent Owner also asserts that Petitioner had “the opportunity to view Patent Owner’s arguments and the Board’s reasons for denial” before it filed the Petition. Id. at 4. Patent Owner is incorrect with regard to the timing of the denial of the ’711 petition, which was denied on October 4, 2021—over a month after the Petition was filed in this matter. The Board’s reasons for denial of the ’711 petition could not have factored into Petitioner’s choice of prior art in the present Petition. We, therefore, also decline to exercise discretion under 35 U.S.C. § 325(d) to deny review.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’044 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not propose an alternative assessment. We note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is consistent with the ’044 patent and the asserted prior art.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,928,044 - Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.Some claims unpatentablePTAB · Mar 11, 2022 · IPR2020-01564 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1, 2, and 4–8 were not shown unpatentable; claim 12 was shown unpatentable as obvious over Elbornsson and Jamal, and over Eklund and Jamal.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the time of the invention “would have at least a Master’s Degree in Electrical Engineering or equivalent field, including studies in designing data converters, and two to five years of relevant experience; or a Ph.D. degree in Electrical Engineering or equivalent field.” Pet. 34 (citing Ex. 1202 ¶¶ 17–18). Patent Owner does not address the level of ordinary skill in the art in its Response. See generally PO Resp. For purposes of this decision, we adopt Petitioner’s formulation because it is consistent with the ’750 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. §42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Only terms that are in controversy need to be construed, and then 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). Patent Owner contends that “random clock,” “offset sensing circuit,” and “sensing” a gain or offset signal need to be construed. PO Resp. 13–17. Petitioner contends that no construction of any term is necessary. Reply 2– 5. The contentions of the parties were addressed in our Final Written Decision for IPR2020-01483, which was mailed on the same day as this Decision. We decline to construe these terms for the reasons given in that Final Written Decision.” slip op. at 9
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“Dr. Raychowdhury testifies that, in Jamal’s technique, “the input is de-correlated from the pseudo random chopping sequence.” Ex. 2206 ¶ 64. Then, inexplicably, Dr. Raychowdhury testifies that “Jamal is unambiguous that ‘C[m] is white, has zero mean, and is uncorrelated with the input signal.’” Id. at ¶ 69. Patent Owner does not explain nor even address Dr. Raychowdhury’s inconsistent testimony. Given the inconsistent positions taken by Patent Owner’s expert, and the lack of explanation from Patent Owner, we give no weight to Dr. Raychowdhury’s testimony.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Even were we to accept Petitioner’s contention, that a ‘“random clock’ can be satisfied by a 1-bit pseudo-random bit sequence,” (Pet. 36), Jamal discloses that the alleged random clock C[m] “is uncorrelated with the input signal.” Ex. 1205, 8. A chopping SHA multiplies the input signal and the uncorrelated random signal C[m], then provides a chopped analog signal to the ADC converter. Id. Petitioner has not persuasively shown that chopping an input signal with an uncorrelated random signal, then providing the chopped signal to a converter as disclosed by Jamal, describes “said random clock configured to decorrelate an input signal provided to said first converter from said random clock” as recited in claim 1. We find that claim 1 is not unpatentable based on Jamal. Because claims 2 and 4–6 depend from claim 1, we find that these claims are also not unpatentable based on Jamal.” slip op. at 15
Patent outcomesUS 6,900,750 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,900,750 - Facebook, Inc. v. Express Mobile Inc.InstitutedPTAB · Mar 3, 2022 · IPR2021-01456 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 11, and 12, finding a reasonable likelihood that the asserted obviousness grounds would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We are not persuaded that Petitioner’s and Google’s status as defendants in co-pending litigation involving the ’287 patent rises to the type of “significant relationship” described in Valve. In Valve, the Board noted that “Valve and HTC were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, Paper 11 at 10. The Board determined that there was “a significant relationship between Valve and HTC with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Nothing in the present record indicates any such relationship between Petitioner and Google. Rather, they were sued by Patent Owner on the same day—as part of a myriad of similar filings against dozens of other defendants. See Prelim. Resp. 28; see also Paper 4, 1–5 (Patent Owner’s Mandatory Notices listing 49 lawsuits involving the ’287 patent filed by Patent Owner). The record shows some coordination among numerous defendants in various cases on the issue of claim construction. See Exs. 2005 (Defendants’ List of Proposed Claim Terms and Phrases for Construction), 2006 (email chain discussing claim construction issues in district court). But, as Petitioner argues without refutation by Patent Owner, this is the “type of cooperation [that] is actively encouraged by district courts.” See Reply 2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“discretion under 35 U.S.C. § 325(d) to deny review. Prelim. Resp. 33–35. Patent Owner does not, however, explain how the prior art or the arguments asserted in the Petition are the same or substantially the same as art or arguments previously presented to the Office. See id.; see also 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”). Indeed, Patent Owner acknowledges the lack of overlap. Sur-reply 2 (noting that “there is no overlap in art between the Petition and [the ’710 IPR petition],” but asserting that does “not tip the scale”). Patent Owner also asserts that “Petitioner had the opportunity to view Patent Owner’s arguments and the Board’s reasons for denial” before it filed the Petition. Id. at 4. Patent Owner is incorrect with regard to the timing of the denial of the ’710 petition, which was denied on October 4, 2021—over a month after the Petition was filed in this matter. The Board’s reasons for denial of the ’710 petition could not have factored into Petitioner’s choice of prior art in the present Petition. We also decline to exercise discretion under 35 U.S.C. § 325(d) to deny review.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’287 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On this record, and especially in the absence of guidance by the parties, we do not view the situation before us as falling within the ambit of Novo. On the one hand, the formatting structure of claim 1 places “a Player” at the same indentation level as several other limitations that appear to be sub-limitations of “an authoring tool configured to.” Petitioner made the same observation before the district court, and argued that “the claim as structured makes no sense if no verb precedes ‘a Player.’” Ex. 2009, 27. On the other hand, however, the punctuation of the claim gives a different impression. In particular, the action-verb sub-limitations following “an authoring tool configured to” are each separated by a comma—whereas the recitation of “a Player” is separated from the previous limitation by a semicolon. In the structure of claim 1, this punctuation suggests that “a Player” is not a sub-limitation of “an authoring tool configured to,” but is instead a component at the same level as an authoring tool. We base this observation on the consistent use of commas in claim 1 to differentiate sublimitations, as opposed to the consistent use of semicolons to separate limitations at a higher level. At this juncture, and on this record, we find this differentiation in punctuation to be a more compelling indication of the hierarchy of the limitations than the relative indentation of the clauses. And, under these circumstances, we find no error satisfying the Novo test to be evident. Rather, we determine that, on its face, claim 1 is subject to a reasonable reading in which no action verb must precede “a Player.” In short, on the record before us, we decline to interpret “a Player,” as recited in claim 1, as something that the authoring tool must “produce.” No further construction is necessary at this stage.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,471,287 - Unified Patents Inc. v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Mar 26, 2018 · IPR2016-01643 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1, 2, 4, 12, and 14 are unpatentable: claims 1, 4, 12, and 14 as anticipated by Karedla, and claim 2 as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing the testimony of Dr. Paul Franzon (“Dr. Franzon”), Petitioner contends that a person of ordinary skill in the art at the relevant time “would have had (i) a B.S. degree in electrical engineering, computer engineering, computer science, or equivalent training, or (ii) approximately two years of experience or research related to computer systems.” Pet. 11 (citing Ex. 1002 ¶ 44). Although Patent Owner does not propose its own skill level, Patent Owner’s declarant, Dr. Frederic T. Chong (“Dr. Chong”), testifies “Dr. Franzon’s formulation of the field of the invention and the level of ordinary skill in the art is sufficiently accurate to resolve all of the issues I analyzed and opined on in this declaration.” Ex. 2006 ¶ 23. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that Petitioner’s proposed skill level is appropriate, and we adopt Petitioner’s articulation of the level of ordinary skill in the art for our analysis below. Ex. 1002 ¶ 44; Ex. 2006 ¶ 23.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Petitioner proposes constructions for the following terms/phrases: “reading extending segment(s) of data”; “files”; “frequency factor(s)”; and “selftuning.” Pet. 15–19. Patent Owner only proposes construction of the term “frequency factor.” PO Resp. 8–29. For our analysis in this Decision, we determine that only “frequency factor” requires express construction.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed requirement of “showing with fair degree of certainty how often each of the corresponding files are requested” excludes the self-tuning embodiments disclosed in the specification from the scope of the claims. Reply 2–3 (citing Ex. 1001, 7:8– 10; Ex. 1017, 29:10–20). Such a result is inconsistent with the claims themselves. For example, dependent claims 7 and 13, which depend, respectively, from claims 4 and 12, expressly recite that the caching methods are “self-tuning,” and, therefore, the scope of the independent claims necessarily encompasses self-tuning. Furthermore, the Federal Circuit has stated “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). The specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. at 1315. In particular, a “claim construction that excludes [an] . . . embodiment [described in the specification] is rarely, if ever, correct and would require highly persuasive evidentiary support.” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (citation omitted). Here, Patent Owner’s construction would exclude not only embodiments disclosed in the specification but also those expressly claimed, as noted above. We agree with Petitioner that the intrinsic evidence in the specification is more instructive than extrinsic evidence such as a dictionary definition of “indicate.” See Phillips at 415 F.3d 1317. Furthermore, claims 4 and 12 do not limit the frequency factor to indicating a count of the number of times each of the corresponding files are requested. Rather, claims 4 and 12 recite frequency factors “indicating how often each of the corresponding files are requested.” Thus, we determine that a frequency factor is not limited to indicating a count but encompasses indicating a relative metric such as “how often.” See Ex. 1017, 39:12–17. Given the use of the word “frequency” in the claim term, the frequency factors must be based to some extent on frequency of access or use. We determine that the broadest reasonable interpretation of “frequency factor” recited in claims 4 and 12, read in light of the specification, including the self-tuning embodiments, encompasses at least “an indicator based on frequency of use or access.”” slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“2. Analysis a. Karedla as prior art Petitioner contends that Karedla is prior art to the ’745 patent under 35 U.S.C. § 102(b). Pet. 4, 19 (citing, e.g., Ex. 1004, 2–3; Ex. 1013; Ex. 1012 ¶ 3). Patent Owner does not challenge in its Response that Karedla is prior art under 35 U.S.C. § 102(b). See generally PO. Resp. We determine that Karedla was published in March 1994. See Pet. 19; Ex. 1004, 1 (“March 1994”), 2 (Library of Congress stamp dated “MAR 22 1994”), 4 (“March 1994”); Ex. 1013 (printout from Library of Congress website identifying publication history and frequency). Accordingly, we find that Karedla is prior art to the ’745 patent, which issued from an application filed September 7, 2001, under 35 U.S.C. § 102(b).” slip op. at 21
Patent outcomesUS 6,775,745 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,775,745
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.