• Google LLC v. Nobots LLCSome claims unpatentable
  PTAB · Nov 29, 2023 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–17 and 20 are unpatentable; claims 18 and 19 were not shown unpatentable, because the asserted grounds failed to establish the required limitations for those claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’008 patent “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 2. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In considering Patent Owner’s explanation, and upon further reflection, we agree with Patent Owner’s reading of the pertinent sentence. In that regard, consistent with the remainder of the Specification of the ’008 patent, it follows that the noted sentence does not alter the contours of “acquired” data to also encompass “passive” data where that premise is entirely absent from other portions of the Specification. Rather, as Patent Owner explains, the sentence is consistent with the understanding that it is “active data” that is connected to the word “acquired” and “passive data” that is connected to the word “available.” See, e.g., id. Patent Owner’s explanation alleviates the ambiguity that was postulated in the Institution Decision. We have considered Petitioner’s views to the contrary (see, e.g., Pet. Reply 21–25) but find them unavailing. In particular, Petitioner does not reconcile its position that, although acknowledging that “acquired data” is defined in the ’008 patent, the term “acquiring” is not so defined and should be regarded as an “individual word” whose meaning is somehow entirely unconnected to “acquired.” See, e.g., Pet. Reply 21. We note, as we did in the Institution Decision, that the ’008 patent states that “acquired data” and “its equivalents and verb forms” is “a type of active data.” See Inst. Dec. 30 (citing Ex. 1001, 3:25–32). We are not persuaded by Petitioner’s view (see, identifiable as a verb form of “acquired.” See PO Sur-reply 8. We determine that, in the context of the ’008 patent, it clearly is. Having considered the competing views of Petitioner and Patent Owner, we conclude that Patent Owner’s construction of the term “acquiring interest data” is consistent with, and supported by, the Specification of the ’008 patent. In that regard, we conclude that, as is advanced by Patent Owner, “acquiring interest data” must encompass the retrieval of some active data.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1–3 and 6–17 are found in Willner. Pet. 9–26. During trial, Patent Owner presented no arguments challenging Petitioner’s proposed ground of unpatentability of claims 1–3 and 6–17 based on Willner. During oral argument, upon questioning, counsel for Patent Owner expressed that “We did not present any arguments on Claims 1 to 3, 6 to 17 on Ground 1.” Tr. 30:3–4. We determine that Petitioner, via its Petition, has established adequately where all the features of claims 1–3 and 6–17 are present in Willner. See Pet. 9–26. Given that determination, and in the absence of any argument during trial challenging Petitioner’s ground of unpatentability based on Willner as to those claims, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–3 and 6–17 are unpatentable under 35 U.S.C. § 102 based on Willner.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Here, we conclude that: (1) the parties’ recognized level of ordinary skill in the art (see Pet. 4; PO Resp. 2); (2) the knowledge of a skilled artisan as set forth by record evidence, including the teachings of Willner and Kitts; and (3) the nature of the problem addressed in both of those references, i.e., click fraud detection, all support a determination that a skilled artisan would have had adequate reasons to combine Willner and Kitts, and would have had a reasonable expectation in doing so. To that end, we find persuasive Petitioner’s arguments in the Petition as to the proposed reasoning to combine Willner and Kitts, and also credit Dr. Lopresti’s supporting testimony. See Pet. 28–29; Ex. 1003 ¶ 118. We are mindful of the contrasting testimony referenced by Patent Owner’s declarant, Dr. Russ. See, e.g., PO Resp. 38 (citing Ex. 2011 ¶¶ 107–110). Dr. Russ testifies that, in his view, there are “practical” and “technical” “considerations” in combining Willner and Kitts that a “POSA would have had to consider in determining whether a reasonable expectation of success exists, none of which are addressed or discussed in the Petition.” See Ex. 2011 ¶¶ 107–110. The example considerations listed by Dr. Russ are reproduced below: 1. How Kitts’ passive data could be collected and stored in conjunction with the mouse vector data already being collected by Willner; 2. How to collectively analyze fundamentally different types of data—Willner’s mouse vector data on one hand, and Kitts’ passive data on the other; 3. How to generate a useful confidence score that is more accurate than the scores already generated by Willner, again taking into consideration that passive data is a fundamentally different type of data than active data; assessment using the complex statistical model of Kitts; and 5. To what extent additional computer hardware would be necessary to enable the combined system to effectively operate and whether such hardware could be reasonably implemented, taking into consideration both cost and feasibility. Ex. 2011 ¶ 108. Those considerations are generally directed to collection and use of” slip op. at 36

  Patent outcomesUS 9,595,008 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,595,008
• Akamai Technologies, Inc. v. Equil IP Holdings LLCInstitution denied
  PTAB · Jul 21, 2023 · IPR2023-00332 · APJ Richard M Lebovitz · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–7 unpatentable: Tso did not disclose the claimed request information, and Samaniego was not prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply Brief, the Preliminary Sur-reply, and the evidence of record, for the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one claim challenged in the Petition. Hence, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in computer systems, computer science, or the equivalent thereof, and at least two years of experience with networked media delivery or related technologies.” Pet. 10 (citing Ex. 1003 ¶¶ 45–46, 48–49). Patent Owner does not dispute Petitioner’s statement of the level of ordinary skill in the art. Prelim. Resp. 8. Petitioner’s definition of a POSITA is consistent with the level of skill disclosed in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We therefore adopt Petitioner’s definition for the purpose of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Tso discloses predetermined “selection criterion may comprise, for example information contained in . . . a data packet received by transcoding server 34.” Ex. 1004, 6:66–7:2. However, contrary to Dr. Madisetti’s testimony,4 the cited disclosure in Tso does not identify the sender of the packet as the network client 12 nor does Tso state that any of the nine disclosed predetermined selection criteria are contained in a data packet. Dr. Madisetti’s statement is conclusory, omitting any reasoning as to why one of ordinary skill in the art would have concluded that the “content characteristics” are received in a data packet from the network client 12, when such information is not explicitly stated in the portion of Tso 4 “The ‘request packet’ sent by the client carries ‘information’ in both its ‘header’ and ‘data portion[s]’ that includes ‘selection criterion,’ which is used to specify what transcoding should be applied to the content. Tso, 6:64- 8:9.” Ex. 1003 ¶ 66 (emphasis added) (footnote omitted). referenced by Dr. Madisetti. We do not accord weight to conclusory expert testimony. See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 n.5, 1360 (Fed. Cir. 2019).” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “As held in Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), only those terms that are “in controversy, and only to the extent necessary to resolve the controversy,” need to be construed. See also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid to inter partes reviews). Here, a construction of “content generation operations” and “transformation operations” is not necessary to resolve the unpatentability issues before us. Consequently, we do not address Petitioner’s proffered claim constructions.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,158,745
• Bio Imaging SAS D/B/A Vilber v. Spectral Instruments Imaging, LLCInstitution denied
  PTAB · Jul 19, 2023 · IPR2023-00449 · APJ Gregg I Anderson · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable, principally because Olympus did not disclose the claimed support structure mounting both the assembly and camera.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “As we determined, the “support structure” requires that it is suitable to support the claimed “excitation light source assembly” and camera. See Section IV.B above. Petitioner points to structure of Figure 1 of Olympus (namely, base 6, shaft 7, bearing 8, C-ring 8b, and associated hardware) that is suitable to support the light source assembly but not the camera. Petitioner argues that “photodetector/CCD camera 24” is discussed in Olympus. See Pet. 35–36 (citing Ex. 1040 ¶¶ 50, 52, 53). But Petitioner does not show the camera is supported by the same structure in Figure 1 that supports the light source assembly. For Figure 22’s embodiment, Petitioner apparently contends the fluorescence detecting unit 28 is the claimed camera. See Pet. 36–37 (citing Ex. 1040 ¶¶ 200–210, Fig. 22 (annotated at Pet. 37); Ex. 1004 ¶ 65). Specifically, Petitioner argues “the embodiment of FIG. 22 (which uses the same reference numerals) light source holding member 9 is fixed and is mounted to a cylindrical fixed shaft 7 and associated hardware to position it with respect to the camera and to maintain them above sample table 1.” Id. at 36 (emphasis added). But Figure 22 and the associated description do not describe a “camera.” See also Prelim. Resp. 17 (citing Ex. 2001 ¶¶ 29–30) (arguing Figure 22’s embodiment does not include a camera). Petitioner does not show that the fluorescent detector is the equivalent of a camera or that, if it is a “camera,” that it is supported by the light source holding member. This missing proof is not met by the Petitioner’s unsupported argument. The Talghader Declaration does not include testimony that the “support structure” mounts the claimed camera, instead pointing out that “[l]ens 5, lens 23, and photodetector/CCD camera 24 are on optical axis 5a.” Pet. 36 (citing Ex. 1004 ¶¶ 64–66). The Talghader Declaration specifically directed to limitation 1.a and the “support structure” term lacks any discussion or analysis of the “support structure” term. See Ex. 1004 ¶¶ 86– 87). Olympus does describe, in Figure 6, a fluorescence detection unit 28. Ex. 1040 ¶¶ 71–72, Fig. 6. However, because both Figure 6 and Figure 1 are described as illustrating the same embodiment, the camera in that embodiment is specifically portrayed in Figure 1, and Figure 6 does not indicate that it is mounted to the support structure. Id. ¶ 216 (page 29) (describing both Figures 1 and 6 as “according to a 1 embodiment”).” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “The ’516 patent describes the support structure by saying that the “excitation light source assembly” is provided with a “suitable support structure 32.” Ex. 1001, 4:24–26. In addition, Figures 2 and 3 are referenced specifically. Id. Later in the Specification it is explained that The support structure 32 is configured to receive camera 36, control system 40, as well as various other components and systems required for operation of the imaging system 12. However, because such various other components and systems that may be required or desired for the operation of the imaging system 12 are not required to understand or practice the present invention, such additional components and systems will not be described in further detail herein. Id. at 6:25–32. We draw two conclusions from the Specification. First, no specific support structure is necessary. Second, the “support structure” is “not required to understand or practice the present invention.” With the preceding in mind, we determine that a “support structure” means a structure that is suitable to support the claimed “excitation light source assembly” and camera.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “C. Legal Standard for Anticipation In order for a prior art reference to serve as an anticipatory reference, it “must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We must analyze prior art references as a skilled artisan would. See Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991), overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (to anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention”). As the Federal Circuit has held: This modest flexibility in the rule that “anticipation” requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). Further, “[a] claim limitation is inherent . . . if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless, 344 F.3d 1186, 1192 (Fed. Cir. 2003).” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the Board must consider whether a person of ordinary skill would have been motivated to combine the prior art to achieve the claimed invention. NuVasive, 842 F.3d at 1381. As the U.S. Court of Appeals for the Federal Circuit found, in quoting from the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007), “because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,” “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir. 2017). slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,901,516
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252
• Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Jul 13, 2022 · IPR2022-00357 · APJ John A Hudalla · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show Fox was a publicly accessible printed publication before the critical date.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “particularity, 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). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and 7 We note that Petitioner does not attempt to establish that Fox was publicly accessible based on other theories such as, for example, actual dissemination. circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Schmidt, Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field.” Pet. 8 (citing Ex. 1003 ¶¶ 32–34). Patent Owner does not offer a different definition, and Patent Owner” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We determine that no aspects of the challenged claims require explicit construction. See, e.g., 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))).” slip op. at 6

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,209,411
• Salesforce.Com, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Jul 13, 2022 · IPR2022-00428 · APJ John A Hudalla · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not establish that Erdogan was publicly accessible before the critical date and thus prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “particularity, 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). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “particularity, 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). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (internal quotation omitted). Evidence of cataloging and indexing can sometimes play a significant role in determining whether a library reference qualifies as a printed publication. See In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing public accessibility, our reviewing court considers whether a reference is “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay, 908 F.3d at 774 (citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in electrical engineering or computer science or related field plus at least two years of professional experience in the field of relational databases and/or user interfaces thereto.” Pet. 7 (citing Ex. 1003 ¶ 36). Patent Owner does not offer a different definition, and Patent Owner contends that Petitioner has not met the “reasonable likelihood” standard for institution even if we were to apply Petitioner’s definition. Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’928 patent and the asserted prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, 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). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). We determine that no aspects of the challenged claims require explicit construction. See, e.g., 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))).” slip op. at 7

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,280,928
• Oneplus Technology (Shenzhen) Co., Ltd. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Mar 8, 2022 · IPR2021-01400 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 4–7, or 13–16 were unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An inter partes review may not be instituted unless “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.” 35 U.S.C. § 314(a). We determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’708 patent is unpatentable. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “at least an undergraduate degree in electrical engineering, or equivalent education, and two years of work experience in the field of battery charging systems, or equivalent work experience or training.” Pet. 18–19 (citing Ex. 1005 ¶ 38). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Joshua Phinney. Ex. 1005 ¶ 38. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. Prelim. Resp. 10. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Petitioner proposes construing the phrase “detecting, by an apparatus, an availability of a charger adapter” in claim 1, and similar phrases in claims 14 and 15, to mean “detecting charging energy (e.g., voltage and/or current) from an adaptor.” Pet. 19–21 (emphasis omitted). Patent Owner does not propose an express construction for any claim terms. Prelim. Resp. 11. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner asserts that Kao’s Figure 4 shows that the tCC calculation “is performed in the constant-current stage.” Pet. 37–38; Ex. 1005 ¶ 87. Petitioner does not support that assertion sufficiently. The evidence of record indicates that Kao’s Figure 4 is a graph that shows what tCC “represent[s],” namely, that tCC is the time for a battery pack “to go from the pre-charge voltage to the charged voltage.” Ex. 1003, 4:49–50, 4:61–63, Fig. 4. But Petitioner does not explain specifically how Figure 4 discloses calculating tCC if the battery charging point is in the constant current phase. See Pet. 37–38; Ex. 1003, 4:49–5:8, Fig. 4; Ex. 1005 ¶ 87. Thus, on this record, Petitioner does not show sufficiently that Kao discloses calculating tCC if the battery charging point is in the constant current phase.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,712,708
• Bank Of America, N.A. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Feb 15, 2022 · IPR2021-01389 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Bank of America did not show that Rhoads anticipates claims 1 and 3–5, failing to establish that document validity is determined using the image.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’278 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7

  § 102 anticipationcites Phillips
  Patents in suitUS 9,031,278
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Oct 5, 2021 · IPR2021-00694 · APJ John D Hamann · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Accordingly, Petitioner has not demonstrated a reasonable likelihood of success in challenging independent claim 1 as being anticipated by Hwang. In addition, the Petition does not present any information with respect to dependent claims 2, 3, 6, 8–10, 12, 13, and 15 that addresses the deficiencies discussed above. Pet. 55–73. Thus, Petitioner has not demonstrated a reasonable likelihood of success in challenging claims 2, 3, 6, 8–10, 12, 13, and 15 as being anticipated by Hwang.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner argues that “[n]o claim terms need to be construed by the Board at this time.” Pet. 23. Patent Owner does not identify any claim terms for construction. Prelim. Resp. 24–25. Accordingly, we determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We find that this sentence from Hwang is unavailing. Simply put, this sentence fails to disclose anything about how Hwang manages a mobile station’s active set with respect to establishing a new link. Ex. 1005 ¶ 30. Instead, this sentence explicitly discloses that a hard handover is used for the uplink synchronous timing procedure, but does not disclose that a hard 9 Patent Owner sometimes argues that “the Petition fails to establish it is more likely than not” that Hwang discloses the disputed limitation. See, e.g., Prelim. Resp. 25. This is not the standard, however, for deciding whether to institute an inter partes review. See 35 U.S.C. 314(a). Rather, we apply here a reasonable likelihood standard in evaluating the Petition. Id. handover is used for establishing a new link. Id. Notably, the sentence Petitioner relies upon is immediately preceded by the following sentence: “[I]n order to improve the method of controlling the handover, a hard handover means of the uplink synchronous timing essentially required in the uplink synchronous transmission scheme should be added together with the related art soft handover method.” Id. (emphasis added). In other words, Hwang discloses using both soft and hard handovers. See, e.g., id. at code (57), ¶¶ 30, 53, 64. Hwang characterizes its use of both soft and hard handovers for its data flow procedure of a preferred embodiment as follows: The data flow shown in F[igure] 7 can be classified into 1) a soft handover procedure for setting the radio link in the target base station 333 as shown in step 501, 2) a hard handover procedure for converting the synchronous mode, and 3) a soft handover procedure for releasing the radio link of the source base station 335 as shown in step 539. Id. ¶ 64. Similarly, the sentence Petitioner quotes from paragraph 30 discloses using Hwang’s hard handover procedure for converting the synchronous mode, and using Hwang’s soft handover procedures for setting and releasing radio links. Compare id. ¶ 30, with id. ¶ 64.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “VI. REMAINING GROUNDS Petitioner argues that the combination of (i) Hwang, Kim, and TS25.301 renders dependent claims 4 and 5 obvious; (ii) Hwang and Kim renders dependent claim 7 obvious; and (iii) Hwang and Miklos renders dependent claims 11 and 14 obvious. Pet. 73–90. For these grounds, Petitioner relies on its showing for independent claim 1 from which claims 4, 5 7, 11, and 14 depend. Id. As we find above, however, the Petition fails to show a reasonable likelihood that Hwang teaches independent claim 1. See supra Section V(B). Petitioner’s showing for the remaining grounds do not cure the deficiencies discussed above. See Pet. 73–90. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of success in challenging these dependent claims as being obvious over these additional grounds.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,489,929
• Hologic, Inc. / Varex Imaging Corp. et al. v. University Of South Florida Board Of TrusteesInstitution denied
  PTAB · Sep 27, 2021 · IPR2021-00656 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 2–6, 9–11, 16, or 17 unpatentable over Stewart or Freedman and Cade.

  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 (35 U.S.C. § 314(a)). Petitioner challenges claims 2–6, 9–11, 16, and 17 as unpatentable under both 35 U.S.C. § 102 and 35 U.S.C. § 103 (Pet. 3). Based on our review of the record, we conclude that Petitioner is not reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a “person of ordinary skill in the art (‘POSITA’) at the time of the alleged invention would have at least three years’ experience developing software for computer workstations, and at least one year of this experience in a clinical environment” (Pet. 8 (citing Ex. 1003 ¶ 27)). 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))). Based on the present record and the disclosure in the ’937 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine the definition offered by Petitioner—as interpreted by the panel— comports with the qualifications a person would have needed to understand and implement the teachings of the ’937 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther

    “We look to the Specification in interpreting the limitation. None of the terms in the above limitation is defined expressly in the ’937 Patent (see generally Ex.1001). The Specification describes, however, “a case may contain single-view or standard four-view mammograms (left and right medio-lateral, ML, left and right cranio-caudal, CC)” (id. at 5:2–5). Thus, the ’937 Patent distinguishes a “case” from a “mammogram” –– a mammogram is one slice of the case, not all the slices of a breast mammography (case). The ’937 Patent further describes an “analysis window,” in which “decimated views 41, 42 of the original images are provided in the upper section [and] . . . the lower part two windows 43, 44 display selected sections . . . at high resolution” (id. at 5:21–25). Thus, the analysis window provides, on one side, a view of an original image (e.g., left CC) in one form (e.g., decimated view 41), and a view of that original image in another form (e.g., high-resolution view 43) (id.; see also id. at Fig. 3). On the other side, the analysis window also provides a view of an original image (e.g., right CC) in one form (e.g., decimated view 42), and a view of that original image in another form (e.g., high-resolution view 44). Based on the record before us, “a mammogram image” is an image that is originally taken (“original image”), i.e., the left or right medio-lateral images, etc. The ’937 Patent further describes “[t]his arrangement enables the physician to keep the overview . . . while looking at the high-resolution sections” (id. at 5:25–28). “The overview images are lower-resolution, reduced-sized images and are displayed in a short-time period” (id. at 7:6– 8). “[A] common practice is to scan through the image in the decimated view but pan in the high-resolution view for a thorough and slow examination of certain regions of interest” (id. at 5:34–38). Thus, the ’937 Patent describes “display[ing] a mammogram image in a different form in each window,” e.g., both a lower-resolution, reduced-size (decimated) view of an original image and a higher-resolution view of that image in a window. Additionally, the ’937 Patent describes real-time grayscale adjustment of the window (id. at 5:39–40). In light of the disclosure of the ’937 Patent, we determine that the limitation “display a mammogram image in a different form in each window with grayscale values, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state” means the original mammogram image is displayed in a different form (i.e., different resolution) in each window “with grayscale values that, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state.” For similar reasons, we determine “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying the forms on the display means, each form displayed within a different sector of the display means,” as recited in claim 3 (Ex. 1001, 9:67–10:3) means the original mammogram image is displayed in a different form within a different sector of the display means. We further determine, “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying a first form on the first monitor and a second form on the second monitor,” as recited in claim 17 (id. at 10:61–65) means the original image is transformed into a plurality of varying-resolution forms, having different set of greyscale values, and displaying a first and a second form on a first and a second monitor, respectively. b) Other terms We determine we do not need to expressly construe any other terms for purposes of this Decision (see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”))).” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner, however, has not shown reasonably where, or how, those cited portions of Stewart disclose different forms of a mammogram image are displayed in multiple respective windows, i.e., “a plurality of windows . . . display[ing] a mammogram image in a different form in each window,” as recited in claim 2. In particular, Petitioner has not reasonably shown, or explained how, either of Stewart’s split screen option or tile mode displays different forms of the original image (see generally Pet.). Nor has Petitioner shown Stewart’s split screen option or tile mode displays those different forms of the original image in respective windows. Petitioner points out (Pet. 29) that Stewart describes the “tile presentation mode maximizes the number of simultaneous images displayed without compromising image quality” (Ex. 1005, 95, Fig. 7). That description, however, discloses displaying multiple (i.e., different) images in multiple windows, rather than displaying different forms of an image in multiple windows. Further, Petitioner contends that Stewart’s “split screen option allows an image set to span either (1) two display monitors, (2) one display monitor, (3) one-half display monitor (two image sets per display monitor), or (4) one-quarter display monitor (four image sets per display monitor)” ((Pet. 28 (quoting Ex. 1005, 95)). That description, however, like the description of tile mode, describes displaying multiple images in multiple windows instead of different forms of an image in multiple windows. For example, the split screen option displays one image split over more than one monitor –– not one image in different forms over more than one monitor. Additionally, although Petitioner contends Stewart describes “images are transformed into different forms having varying resolutions” (Pet. 31 (citing Ex. 1005, 95 (“images are stored with a greater bit depth (12-bits) than they may be displayed (8-bits)”)), that portion of Stewart does not describe that different forms of a mammogram image are displayed in multiple windows. Rather, the cited disclosure in Stewart describes a mammogram image stored in a different form. In particular, the cited description of Stewart discloses an image is stored with “a greater bit depth” than displayed (Ex. 1005, 95). That portion of Stewart does not describe that images are displayed in a plurality of different bit depths, i.e., “a plurality of windows” having “a different form” of a mammogram image “in each window.” Furthermore, Petitioner’s expert declaration of Dr. Bryan P. Bergeron does not explain reasonably how, or show where, the cited portions of Stewart describe displaying different forms of an image in multiple windows. Dr. Bergeron states that, in Stewart, “not only can the initial presentation of images appear in various grayscale values, but also further displays of images can do the same” (Ex. 1003 ¶ 55). Dr. Bergeron further states that “pursuant to the monitor characteristics and the window and level settings for display, images are transformed into forms, which may be shown in various windows, and each having a predetermined illumination state” (id. ¶ 56). Dr. Bergeron’s declaration describes different images being displayed in some particular form, i.e., at some display setting. None of Dr. Bergeron’s statements establish or explain how different forms of an image are displayed in multiple windows on the same monitor.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,630,937

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.