- Hulu, LLC v. Intertainer, Inc.All claims unpatentablePTAB · Jun 12, 2015 · CBM2014-00052 · APJ Jennifer M Meyer · CBM · Final written decision
Claims 1–3, 5, 8, 10, 11, and 13–15 are unpatentable: claims 1–3, 5, 8, 10, 11, 13, and 14 as anticipated by Chen, and claim 15 as obvious over Chen and Hartanto.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“in view of the Specification of the ’246 patent, requires the link program be limited to a single program. The claim language itself does not indicate a single program is required. Further, we see no language in the Specification, and Patent Owner has not pointed us to any such language, that indicates clearly or persuades us that the claims should be limited as such. The only” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are persuaded also that Chen’s disclosure of pausing the video and displaying the linked page on the computer, in response to clicking a hot-link, discloses the claimed “creating a link program adapted to both: (a) interrupt streaming of the video at the remote storage medium . . . and (b) access ancillary content . . . .” Pet. 16–17 (citing Ex. 1003, 4:5–10, 4:21–25, 4:28–40, 7:30–33; Ex. 1008 ¶ 16); see also Ex. 1003, 2:11–17 (“The [HyperVideo Authoring] tool allows one to prepare video clips with the hot-link information and then to link them with other types of media.”); id. at 5:55–6:26 (discussing “[c]reation of hot video content”). As discussed above, Patent Owner admitted, during prosecution of the ’884 application, “the fact that [a] computer performs the disclosed functions when a user interacts with an interface link necessarily requires that there is a link program.” Ex. 1002, 60, 83 (emphases added). We are persuaded additionally that Chen’s disclosure of encoding the embedded hyperlinks in the video (e.g., inserting the hot-link information into frames in the video), and identifying incoming data as a “hot” video such that a hot video decoder may display the “hot” video, including the video, audio, and hot-link information, corresponds to the claimed steps of “associating the link program with the video” and “providing the link program over the network.” Pet. 17–19 (citing Ex. 1003, 4:4–10, 5:56–6:39, 6:48–7:2; Ex. 1008 ¶ 18). We are persuaded further that Chen’s disclosure of transmitting a signal to the URL, from which the video is being streamed, to request delivery of a linked html file (containing instructions to display text or multimedia content), in response to a user clicking on a hot-link, corresponds to the claimed step of “receiving an indication of an interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:20–25; Ex. 1008 ¶ 19). We are persuaded also that Chen’s disclosure of having the URL, from which the video is being streamed, pause the video, in response to a user clicking on a hot-link, while the text or multimedia content is being displayed, corresponds to the claimed step of “interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:28–34; Ex. 1008 ¶ 16). We are persuaded additionally that Chen’s disclosure of allowing the user to resume the video corresponds to the claimed step of “continuing the streaming of the video over the network from the point in time when the streaming of the video was interrupted.” Pet. 19 (citing Ex. 1003, 4:38–40; Ex. 1008 ¶ 20).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“under 35 U.S.C. § 103 as obvious based on Chen and Hartanto. Pet. 28–30. Claim 15 recites that the network includes a wireless network. Ex. 1001, 10:43–44. Petitioner contends that use of wireless networks as a mechanism for the transmission of videos was well known in the art prior to the filing date of the ’246 patent, and provides declaration evidence that one of skill in the art would have understood the network for data transfer could be a wireless network. Pet. 28–29; Ex. 1008 ¶ 24. Petitioner cites Hartanto as an example of disclosure of wireless networks used with video transmission. Id. Petitioner further contends that the combination of using a wireless network connection as the network in Chen would have yielded a predictable result. Pet. 29–30; Ex. 1008 ¶ 24. We determine that Petitioner’s analysis and evidence is persuasive. Patent Owner does not argue specifically the patentability of claim 15 based on any limitations other than those discussed above with respect to independent claim 1. See PO Resp. 33. After reviewing the entire record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 15 of the ’246 patent would have been obvious to a person of ordinary skill in the art7 over Chen and Hartanto.” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We note, as a general matter, that although the claims in the ’592 reexamination may be similar, they are not identical to the claims of the ’246 patent. Further, Patent Owner has not filed a Motion to Exclude Dr. Bove’s testimony. In any case, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See Gnosis S.p.A. v. S. Alabama Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In rendering our decision, we have assigned weight to the evidence as appropriate in view of the entire record before us.” slip op. at 17
Patent outcomesUS 8,479,246 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,479,246 - Sony Computer Entertainment America LLC v. Game Controller Technology LLCAll claims unpatentablePTAB · Apr 14, 2015 · IPR2013-00634 · APJ Jennifer M Meyer · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1, 3, 4, 6, 7, 10, and 11 as anticipated by Hashimoto or obvious over Wang and Hashimoto; claims 2 and 9 over Hashimoto and Marks ’859; claims 5 and …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“patent,7 as a “user manipulated electronic device which serves to communicate with a computer.” Inst. Dec. 6 (quoting Ex. 1001, 5:54–56). Patent Owner argues that “communication” requires “electronic communication.” PO Resp. 15–20; Tr. 39:22–40:10. In this regard, Patent Owner argues that a “controlling object” must be more than a light on a stick, and “must include both a light and a ‘user interface.’” PO Resp. 15, 17. Patent Owner argues that the examples of a controlling object given in the Specification “uniformly refer to devices that include or incorporate a light and also have some additional electronics for communication with a computer.” Id. at 18 (citing Ex. 1001, 2:64–3:6 (remote control provided with a light), 3:6–10 (cell phone), 5:54–62 (“remote controls, mice, wands, steering wheels, joysticks, electronic pens, game pads, wearable devices, etc.”)). We must, however, be careful not to import limitations from the Specification into the claims. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (cautioning against reading limitations into a claim from preferred embodiments described in the specification). If Patent Owner intended such features to be a part of the claim, these features should have been claimed expressly therein.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Although we agree with Patent Owner’s assertion that a prior art reference must include enabling disclosure in order to anticipate a claim (PO Resp. 7 (citing In re Hoeksema, 399 F.2d 269 (CCPA 1968)); see also Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“a reference must enable someone to practice the invention in order to anticipate under § 102(b)”)), as noted by Petitioner, “a prior art reference need not enable its full disclosure; it only needs to enable the portions of its disclosure alleged to anticipate the claimed invention” (Reply 4 (quoting In re Antor Media Corp., 689 F.3d 1282, 1290–91 (Fed. Cir. 2012))). We further agree with Petitioner that Patent Owner’s “conclusion that Hashimoto itself could not be implemented does not inform the question of whether a PHOSITA could have combined the description of Hashimoto with his [or her] own knowledge to make the [claimed] invention.” Reply 4–5 (citing Antor, 689 F.3d at 1290–91; In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985)) (emphases added). Patent Owner’s enablement arguments appear to be premised primarily on the specific arrows (or lack thereof) included in the functional block diagram of Figure 2 of Hashimoto. See, e.g., Tr. 36:3–15, 47:23–48:9. In this regard, we agree with Petitioner that a “PHOSITA would recognize that the figures in Hashimoto are functional block diagrams, and that many illustrated blocks are logical components (i.e., software) that would not necessarily correspond to specific physical components.” Reply 7 (citing Ex. 1025 ¶¶ 3–17). Patent Owner’s arguments regarding Hashimoto’s lack of enablement are not persuasive.” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Reasons to Combine Patent Owner argues that Hashimoto and Marks ’859 are not combinable to arrive at the claimed invention. PO Resp. 25–26, 34–41. Specifically, Patent Owner argues that Marks ’859 “teaches an improved type of frame-by-frame tracking system of the sort that Hashimoto rejects.” Id. at 26. Patent Owner, thus, argues that because Marks ’859 “embraces and seeks to improve a methodology decisively rejected by Hashimoto, the combination of these two reference is inappropriate.” Id. Patent Owner argues that Hashimoto and Marks ’859 are not analogous art. Id. at 35–36 (citing Ex. 1031 (“EXHIBIT D”) ¶¶ 41–42). We, however, agree with Petitioner that both Hashimoto and Marks ’859, as well as the ’885 patent, relate to “tracking the position of specific objects . . . using color data extracted for each pixel in the image of the background environment,” and, thus, the references are analogous art. Pet. 25.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In Hashimoto, the selected color is based on an observation of the background of the scene and is a least represented color therein. Ex. 1003 ¶ 53. As previously discussed, Marks ’859 solves a problem of changing conditions in the scene by re-sampling the scene periodically in order to allow for adjustments for improved object tracking. Ex. 1004, 8:32–58, 9:45–10:51, 11:8–24, 11:35–50. Petitioner asserts that one of skill in the art would have recognized that the Hashimoto system could be improved “by simply configuring the system to perform the already disclosed background color spectrum analysis and LED color update process when environmental lighting/color conditions change as taught by Marks ‘859.” Pet. 27–28. Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the combination of the prior art teachings identified above. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We are not persuaded by Patent Owner’s arguments to the contrary.” slip op. at 23
Patent outcomesUS 8,094,885 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,094,885 - PTAB · Sep 15, 2014 · IPR2014-00470 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions to terminate the instituted inter partes reviews as to Intel and Zond after settlement; it did not decide patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and” slip op. at 3
NonePatents in suitUS 7,811,421 - PTAB · Sep 15, 2014 · IPR2014-00455 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions and terminated IPR2014-00455 and IPR2014-00456 as to Intel and Zond after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and” slip op. at 3
NonePatents in suitUS 7,808,184 - PTAB · Sep 15, 2014 · IPR2014-00446 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions and terminated the instituted proceedings as to Intel and Zond after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and FURTHER ORDERED that the parties’ Joint Request that their Written Settlement Agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 3
NonePatents in suitUS 7,147,759 - PTAB · Sep 15, 2014 · IPR2014-00444 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions, terminated the instituted proceedings as to Intel and Zond, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and FURTHER ORDERED that the parties’ Joint Request that their Written Settlement Agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 3
NonePatents in suitUS 7,147,759 - PTAB · Sep 15, 2014 · IPR2014-00468 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions, terminated the instituted inter partes reviews as to Intel and Zond, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and” slip op. at 3
NonePatents in suitUS 7,811,421 - PTAB · Sep 15, 2014 · IPR2014-00445 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions, terminated the instituted proceedings as to Intel and Zond, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and FURTHER ORDERED that the parties’ Joint Request that their Written Settlement Agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 3
NonePatents in suitUS 7,147,759 - PTAB · Sep 15, 2014 · IPR2014-00443 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions and terminated the instituted inter partes reviews as to Intel and Zond after settlement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and” slip op. at 3
NonePatents in suitUS 7,147,759 - PTAB · Sep 15, 2014 · IPR2014-00456 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motions and terminated the instituted inter partes reviews as to Intel and Zond after settlement.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On September 3, 2014, the Board instituted an inter partes review of the ’184 patent, in each above-identified proceeding. Paper 12. However, Zond has not filed a Patent Owner Response. Nor has Intel filed a Reply. Furthermore, no Final Hearing has been held.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of the facts before us, we determine that it is appropriate to terminate the above-identified proceedings as to both parties, and enter judgment. For the foregoing reasons, it is: ORDERED that the Joint Motions to Terminate the above-identified inter partes reviews are granted; FURTHER ORDERED that the above-identified proceedings are terminated as to all parties—namely, Intel and Zond; and FURTHER ORDERED that the parties’ Joint Request that their Written Settlement Agreement be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 3
NonePatents in suitUS 7,808,184
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.