• ROKU, Inc. v. Universal Electronics, Inc.All claims unpatentable
  PTAB · Sep 22, 2022 · IPR2021-00758 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious over Chardon, HDMI 1.3a, and Mishra because the combined teachings meet each limitation and support a reason to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15–19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 13 (citing Ex. 2004 ¶¶ 24–29, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 13

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

    “The ultimate difficulty with Patent Owner’s theory is that it presumes relationships between various elements of the claim, but such relationships are not expressed by the language of the claim. This includes relationships between the “command communication,” the “functional operation of the media sink device,” and “activation of an input element of the controlling device.” See id. at 29:13–31:20, 33:10–35:2. Under such circumstances, we necessarily agree with Petitioner that “[t]he patentee chose to claim broadly and vaguely,” such that there is “no principled reason to exclude steps 500/502/504 from reading on the broadly-worded first wherein clause [that the media source device is programmed to provide the ‘message having data’ to the controlling device].” See Reply 13. For the reasons explained above, the prosecution history of the ’785 patent and its ancestors provides insufficient basis to discriminate between the parties’ positions. But both the plain and ordinary meaning of the claim language and the specification of the ’785 patent support Petitioner’s position, which we accordingly adopt. That is, we construe the “message having data” limitation as not requiring actual transmission of a “command communication” to indicate responsiveness to such a “command communication.”” slip op. at 26

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “1 Petitioner asks that we “discount Dr. Turnbull’s testimony with respect to HDCP [i.e., High-bandwidth Digital Content Protection]” because Dr. Turnbull “did not know what HDCP stands for” and incorrectly testified that “HDCP break” is a term of art in the HDCP standard. Reply 10–11 n.4. We decline to do so after reviewing Dr. Turnbull’s testimony, and instead accord his testimony due weight when evaluated in context.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “contention that HDMI 1.3a is a printed publication under 35 U.S.C. § 102(b): (1) internet web pages referring to HDMI 1.3a, together with affidavits from the Internet Archive supporting a date of June 8, 2009, 5 When citing to HDMI 1.3a, we cite to the native pagination. Exs. 1042, 1045, 1048, 1049; (2) a declaration by Steve Venuti, former Vice President of Marketing HDMI Licensing, LLC, who attests to facts within his personal knowledge that support public availability of HDMI 1.3a at least as of November, 2006, Ex. 1043; (3) citations to HDMI 1.3a as prior art by the Office before October 28, 2011, Exs. 1037–1041; and (4) the date of November 10, 2006 on the face of HDMI 1.3a itself, Ex. 1010, 1. Patent Owner does not contest that HDMI 1.3a is prior art to the challenged claims. See PO Resp. 11–12. We have reviewed Petitioner’s evidence and find it sufficient to treat HDMI 1.3a as prior art.” slip op. at 29

  Patent outcomesUS 9,641,785 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,641,785
• Snap Inc. v. You Map Inc.Instituted
  PTAB · Sep 2, 2022 · IPR2022-00568 · APJ Jason M Repko · IPR · Institution

  The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 12 would be obvious over the asserted combinations.

  RulingsInstitution decision

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

    “The standard for instituting an inter partes review “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). For the reasons discussed below, the Petition meets this standard. Thus, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Preliminary Response, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. In this Decision, we apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. If Patent Owner proposes a different level of ordinary skill in the” slip op. at 6

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

    “At this stage and on this record, we disagree with Patent Owner’s claim construction to the extent that it excludes the disclosed embodiment that uses areas of a map as screen attribute information: For example, the social mapping module 106 may receive a request from the client device 300. The request may include device. For example, the size of the display 305, the resolution of the display 305, areas of a map displayed on the display 305, etc. Ex. 1001, 15:13–15 (emphasis added). We emphasize “For example” here because it indicates that “areas of a map” are screen attribute information. Id. Area is listed together with the device’s size and resolution. Id. Thus, at this stage and on this record, we disagree with Patent Owner that “‘areas of a map displayed on the display’ is a function of the ‘screen attribute information about a display of the client device’ not the other way around.” Prelim. Resp. 30.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “These teachings lead us to favor Petitioner’s arguments over Patent Owner’s, at this stage, because the cited teachings show that Jackson proposes using a flexible approach, which may include multiple factors or criteria. See id. at 16:40–66. For example, Petitioner asserts that “Jackson explains that its ‘recommendation system 522’ can make its decision based on weighting the ‘global score’ or its signals, and that its ‘personal score 538’ can create weighted scores based on each.” Pet. 52 (citing Ex. 1006, 19:50–61, 22:63–23:3). As for the global score, Petitioner asserts that Jackson’s global score would be weighed based on secondary criteria, such as location, to arrive at a modified score: [I]t would have been obvious to: (1) generate “global scores” for “every post” based on non-user-specific “primary criteria” (Jackson, 9:19-25, 16:45-56), (2) weight those global scores using “secondary criteria” relating to the user and poster sharing a geographic location (Jackson, 16:65-17:7) to generate “modified scores” for the posts, and (3) rank the posts according to the modified scores in the same way Jackson teaches in connection with the social-network-distance secondary criteria (Jackson, 9:54-67).” slip op. at 28

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,616,727
• ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Aug 11, 2022 · IPR2021-00455 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Chardon and HDMI 1.3a because the combination does not disclose data that itself identifies a controllable function.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As Patent Owner observes, the two proposals differ “in terms of the level of experience specifically with home theater systems.” Id. at 10. Because all of the challenged claims make specific reference to a “home theater device,” Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15– 19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 10–11 (citing Ex. 2003, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 17

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

    “phrase creates a degree of ambiguity, we are mindful that “the claims themselves provide substantial guidance as to the meaning of particular claim terms” and that “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. In this instance, the related phrasing that appears in the “automatically adding” and “causing” limitations of issued independent claim 1 is illuminating. Both of those limitations refer to “the controllable function of the controllable appliance that was identified by the data received from the controllable appliance.” Ex. 1001, 17:11–14, 17:21–24 (emphasis added). There is no question that the only antecedent for “the data” in these limitations is the “data that functions to identify a controllable function of the controllable appliance” recited in the “receiving” limitation. See id. at 17:8–9. And there is no apparent room in the language “that was identified by the data” for the introduction or consideration of such “other information” that Petitioner would like to use “in connection with” the recited “data” to identify the controllable function. See Reply 2.” slip op. at 19

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

    “Petitioner reasons that a person of ordinary skill in the art would have combined such teachings from HDMI 1.3a with Chardon’s system because HDMI 1.3a “is a technical guide for the interoperability of the HDMI standard and how HDMI enabled devices operate,” and that “Chardon relies on HDMI capabilities to facilitate communication and monitoring-device state changes in its system.” Pet. 30–31 (citing Ex. 1005, 4:18–21; Ex. 1010, 17; Ex. 1003 ¶¶ 130–131). According to Petitioner, “[a] person of ordinary skill in the art would have therefore turned to at least one of the versions of the HDMI Specification to fill in any details in Chardon with respect to how HDMI-capable devices, such as those of Chardon and the ’486 patent operate, and would have had a reasonable expectation of success in doing so.” Id. at 31. Petitioner supports this reasoning with testimony by Dr. Russ that it is a “well-known industry practice” to rely on HDMI 1.3a as “specification of an industry standard” when “designing and building devices that implement the HDMI standard, incorporating all of the capabilities it offers.” Ex. 1003 ¶ 133. Patent Owner disputes the sufficiency of Petitioner’s showing. In” slip op. at 35

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

    “The difficulty with Petitioner’s and Dr. Russ’s position is that it is inconsistent with our adopted claim construction that the data itself identify a controllable function of the controllable appliance from which the data is received. See supra § II.C. As Patent Owner asserts, HDMI 1.3a “does not contemplate the exchange of any information that itself functions to identify a controllable function of a playback device.” PO Resp. 24 (emphasis added). All that the “Deck Status” message indicates in the example of Figure 17 is that the current status of the playback device is “Stop.” We also are not persuaded by Petitioner’s and Dr. Russ’s argument that HDMI 1.3a’s Tables 13 and 26 disclose that “Deck Info” information is returned with the “Deck Status” message, and that such “a deck status message includ[es] the features that the device can provide (e.g., play, pause, stop, etc.).” Pet. 41; Ex. 1003 ¶ 117. Reliance on such “Deck Info” information is problematic at least because it is “other information” that would be used in combination with the “Deck Status” to determine controllable functions of the controllable device, which is precluded by our adopted claim construction.” slip op. at 36

  Patent outcomesUS 10,325,486 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,325,486
• Google LLC v. Parus Holdings, Inc.Institution denied
  PTAB · Jul 18, 2022 · IPR2022-00355 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–16 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.

  RulingsInstitution decision

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

    “For these reasons, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1 as obvious over Buchner or obvious over Buchner and Launey.” slip op. at 32

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). In its Preliminary Response, Patent Owner contends that we should exercise our discretion to deny the Petition because Petitioner’s invalidity grounds will be resolved in a district court case3 before our deadline for a final written decision. Prelim. Resp. 15–17 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). However, because we find that Petitioner is not likely to prevail on the merits, and deny on that basis, we do not need to address whether we should exercise our discretion to deny based on the district court case.” slip op. at 10

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

    “We agree with Patent Owner. First, the ordinary meaning of “internet address” in the context of the claims is an address that conforms to IP. Claim 1, for example, recites “providing a computer operatively connected to the internet.” This is a reference to the Internet, the global network conforming to TCP/IP. Later references to “internet address” should be read in this context. See Phillips, 415 F.3d at 1314 (The Federal Circuit’s “cases provide numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term.”). The Specification confirms that the Internet is a specific network and not just any network: “[T]he present invention allows users to control and monitor other systems and devices that are connected [to] the Internet or any other network by using voice commands.” Ex. 1001, 1:25–28; see also id. at 1:32–43, 1:53–56 (“Furthermore, the use of laptop or desktop computers to access the Internet requires either a direct or a dial-up connection t[o] an Internet Service Provider (ISP).”). The Specification gives a specific example of a uniform resource locator (URL) as a device identifier. Id. at 17:52–54 (“Each record will contain at least a device identifier, which may be in the form of a URL.”). It also states that “data is transmitted using the uses “internet” to distinguish the Internet from other networks. It follows that an “internet address” is an address on the Internet (or at least conforming to IP), and not an address on any arbitrary network. As Phillips counsels, “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 the disputed term appears, but in the context of the entire patent, including the specification.” 415 F.3d at 1313.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. Petitioner has not introduced persuasive evidence that a TCP/IP based bus would have been an obvious replacement for Buchner’s IEEE 1394 bus. Petitioner makes this argument in conclusory fashion, and Mr. Lipoff largely repeats this argument in his testimony, without meaningful additional testimony and without identifying the basis for that testimony. Ex. 1002 ¶¶ 116–117. If Mr. Lipoff contends that the 1997 IEEE article shows that an IEEE 1394 bus can be swapped for a TCP/IP bus, he has not explained that adequately or shown where the article supports such an argument. Thus, Petitioner’s contention is largely conclusory attorney argument driven by hindsight. Petitioner has not shown a reasonable likelihood that it would prevail in showing that Buchner teaches “said instruction set comprising: at least one internet address, said at least” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,386,455
• Google LLC v. Traxcell Technologies, LLCInstitution denied
  PTAB · Jul 11, 2022 · IPR2022-00442 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Google did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “We thus determine that Petitioner does not adequately demonstrate that the second wherein clause of the update limitation is met by Myr as Petitioner contends. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claims 1 and 11 as unpatentable under 35 U.S.C. § 103(a) over Myr and Yiu, nor on its challenge of claim 22 as unpatentable under 35 U.S.C. § 103(a) over Myr, Yiu, and Machida. Because Petitioner’s challenges of the various challenged dependent claims suffer from the same defect by virtue of those claims’ dependence from one of the challenged independent claims, we also conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing in its challenges of claims 5, 7, 8, 11, 12, and 17–19 as unpatentable under 35 U.S.C. § 103(a) over Myr and Yiu, nor its challenges of claims 2, 6, 13, and 16 as unpatentable under 35 U.S.C. § 103(a) over Myr, Yiu, and Machida.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in Computer or Electrical Engineering, Computer Science, or equivalent training, in addition to approximately 2 years of experience working on telecommunications navigation and geolocation systems.” Pet. 2–3 (citing Ex. 1003 ¶¶ 30–34). Patent Owner proposes that a person of ordinary skill in the art “would have at least a Master of Science (‘MS’) Degree in Computer Science, Computer Engineering, Cartography, or equivalent work experience in the field of computer networks, along with knowledge of the general structure of networked communication systems, its hardware and software components and underlying communications technologies.” Prelim. Resp. 6. Patent Owner further proposes that a person of ordinary skill in the art “would be familiar with the latest communications standards.” Id. (citing Ex. 2001, 7). Neither Patent Owner nor Mr. Van Essen explains why the higher educational level is necessary, and, on the current record, we do not discern a basis for reaching a different conclusion under either proposed articulation of the level of ordinary skill. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Michalson, we adopt it for purposes of this Decision. 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

  • Prior constructionPrior construction adoptedDecided for petitioner

    “the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Both parties note that, for a related patent, the Eastern District of Texas previously construed the term “preference flags,” recited in challenged independent claims 1, 11 and 22 of the ’147 patent, as “two or more flags to control access to tracking of the user.” Pet. 3 (citing Ex. 1008, 54–55; Ex. 1003 ¶¶ 35–36); Prelim. Resp. 5 (citing Ex. 1008, 54–55). Both parties state that they apply this construction in their briefs. Pet. 3; Prelim. Resp. 5. In light of the parties’ apparent agreement, and because the district court’s construction appears reasonable, we adopt it for purposes of this Decision.” slip op. at 9

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

    “The specification of the ’147 patent does not use the term “navigation information” outside of its title and claims, and we discern insufficient reason to include “composed as a number of segments” as part of its construction because the claims explicitly further limit “navigation information” by reciting such segmentation. See Ex. 1001, 128:17–19 (claim 1 reciting “wherein the first processor further sends the user navigation information to the network as a number of segments”), 130:21– 23 (claim 11 reciting “sending the user navigation information to the at least one other processor outside the network as a number of segments”), 132:54– 57 (claim 22 reciting “wherein the first processor further sends the user navigation information to the at least one other processor outside of the network as a number of segments”). Nevertheless, consistent with the dictionary definitions Patent Owner provides, we agree that the “term ‘navigation information’ includes at least ‘a course or way (route) from one place to another.’” Prelim. Resp. 5. In adopting such a construction for purposes of this Decision, we additionally note that each of independent claims 1, 11, and 22 further recites “traffic congestion information” as a distinct term. See Ex. 1001, 128:21–22, 130:26–27, 132:51. We accordingly treat “navigation information” and “traffic congestion information” as distinct in meaning. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”).” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,820,147
• Google LLC v. Parus Holdings, Inc.Institution denied
  PTAB · Jul 1, 2022 · IPR2022-00279 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4 were unpatentable over the asserted § 103 combinations.

  RulingsInstitution decision

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

    “III. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–4 of the ’705 patent is unpatentable. Accordingly, we deny the Petition and decline to institute an inter partes review.4 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found

    “But as Patent Owner points out, Petitioner’s argument “makes no consideration for the use of the Kovatch tree by multiple users,” and “[a]ttempting to incorporate user preferences would result in a complex, unwieldy system as the number of users increases, running counter to Kovatch’s goal of a ‘scaleable, remotely manageable’ architecture.” Prelim. Resp. 36 (quoting Ex. 1004, 14:14–16). Based on our review of Kovatch, we agree with Patent Owner’s characterization that “the Kovatch system is not designed using [Petitioner’s] alleged hierarchical tree ranked with users’ preferences.” See id. at 37. That is, as Patent Owner asserts, “[t]he Kovatch tree is designed to be a navigational tool that allows the system to produce a list of valid destinations by prompting the users” with context-sensitive voice prompts, using Anita Prompt Generator 6, as discussed above in our summary of Kovatch. Id. at 36. Distinctly, Kovatch describes user preferences as stored in user profiles, without any explicit integration with the destination tree structure. See Ex. 1004, 16:7–8 (“During each user session, Anita Query Engine transfers relevant information to Anita Profiler. Anita Profiler captures and filters this information to build a repository of user preferences, navigational history and usage patterns.”); Prelim. Resp. 37 (Patent Owner asserting that “Kovatch makes clear that user preferences are stored outside of the Kovatch tree in user profiles”). The integration that Petitioner relies on in asserting that a person of ordinary skill in the art “would have understood that Kovatch includes a hierarchical order based on users’ preferences” appears instead to be derived from a hindsight modification of what Kovatch actually teaches. See Pet. 21; Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”).” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “Based on this sparse disclosure, Petitioner asserts that a person of ordinary skill in the art “would have understood that, logically, in order for Wise’s documents to be stored in hierarchical order, each document must be assigned a number, indicating where in the ordered list it should be saved.” Id. at 42 (citing Ex. 1002 ¶ 192). At best, this assertion is grounded in hindsight. Contrary to Petitioner’s implication, Wise does not teach that source documents found by a search engine are “stored in hierarchical order”; rather, Wise states that the documents that make up the index are stored “in hierarchical order.” Ex. 1007, 10:7–9. And, as Patent Owner points out, “Wise does not even discuss an ‘ordered list’ or even any sense of numbering within the index.” Prelim. Resp. 46. Petitioner’s conclusory assertion does not adequately explain why a person of ordinary skill in the art would understand documents that form an index stored in hierarchical order to teach storing the source documents in an ordered list. Mr. Lipoff’s testimony is no more edifying and simply repeats the same conclusion without providing a sufficient explanation. See Ex. 1002 ¶ 192. Indeed, Wise’s explanation that a user may use “navigation commands to traverse the index and invoke a link to the source document” suggests that the source documents are not “stored in hierarchical order,” contrary to what Petitioner and Mr. Lipoff assert. Ex. 1007, 10:9–10 (emphasis added); Pet. 42. Petitioner alternatively relies on the combination of Burrows with Wise to meet the limitations, contending that a person of ordinary skill in the art “would have found it obvious to include Burrows’s rank numbering in Wise’s hierarchical order.” Pet. 42. This contention largely suffers from the same deficiency as the corresponding contention made in the context of Petitioner’s Kovatch-Burrows challenge. That is, because Burrows’s ranking operation is performed on results after execution of a query, “[r]anking cannot be applied to an index (either Wise’s hierarchical document index or Burrows’s index) because an index merely documents the content of records (web sites).” Prelim. Resp. 47. As Patent Owner explains, the index “cannot hold rank information because alone, it has no sense of a future query that might be executed.” Id. We accordingly determine that the Petition identifies insufficient rational underpinning to support its contention that it would have been obvious over Wise and Burrows to assign a rank number to each of the recited web sites, as required by independent claims 1 and 2. And, as for the Kovatch-Burrows challenge, this deficiency impacts the polling limitations that require changes in rank number. See Ex. 1001, 20:4–17, 20:36–47; Pet. 50–52; Prelim. Resp. 52–54. We thus conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Wise and Burrows.” slip op. at 28

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,721,705
• Epic Games, Inc. v. Ingenioshare, LLCInstituted
  PTAB · Jun 7, 2022 · IPR2022-00295 · APJ Steven M Amundson · IPR · Institution

  The Board instituted IPR on claims 7–12, 22–24, and 33–67 on all petitioned grounds, finding a reasonable likelihood of success on the § 103(a) combinations.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in light of the Texas case where Patent Owner has asserted the ’038 patent and other patents against Petitioner. See Prelim. Resp. 7–12; supra § II.B.” slip op. at 16

  • Parallel petitionsDecided for petitioner

    “Under the circumstances here, two petitions challenging claims in the ’038 patent will not place a substantial and unnecessary burden on the Board or Patent Owner. In IPR2022-00202, the Board will consider challenges to related U.S. Patent No. 10,142,810 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 9 (PTAB May 23, 2022) (granting institution of inter partes review); supra § II.B. In IPR2022-00291, the Board will similarly consider challenges to related U.S. Patent No. 10,708,727 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00291, Paper 10 (PTAB May 24, 2022) (granting institution of inter partes review); supra § II.B. Thus, in other proceedings the Board will consider and become familiar with Diacakis, Tanigawa, and Hullfish and the relevance of those references to claims in related patents.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. Petitioner also asserts that “[a]dditional education might 5 The record does not include evidence concerning objective indicia of nonobviousness. compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 92–97. At this stage of the proceeding, Patent Owner does not address the educational level or work experience of a person of ordinary skill in the art. See, e.g., Prelim. Resp. 1–7, 12–16. Based on the current record and for purposes of institution, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’038 patent and the asserted prior art.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,492,038
• Epic Games, Inc. v. Ingenioshare, LLCInstitution denied
  PTAB · May 26, 2022 · IPR2022-00297 · APJ Joni Y Chang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 5, 7, 53, 54, 56, 57, and 59 obvious over Furlong or Diacakis.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Each of these claims does not reintroduce the term “message” in the body of the claim but instead relies on the instance of “message” introduced in the preamble for antecedent basis. Notably, the first reference to “message” in the body of claim 1 (Element 1.1) appears in a limitation (“receiving, by the server, the message from the person using the first device”), describing a positive step in the claimed “method.” Similarly, the first reference to “message” in the body of claim 53 (Element 53.3) appears in a limitation (“wherein the at least one computing device [of the server] is configured to receive the message from the person using the first device”), describing a structural feature (“computing device”) of the claimed “server.” As Patent Owner notes, the “message” recited in each of Elements 1.1 and 53.3 refers back to the phrase “a person, using a first device, trying to 8 electronically convey a message from the first device to a second device” recited in the preambles. Prelim. Resp. 1−2, 10. Because claims 1 and 53 require the server (or the computing device in the server) to “receive the message from the person using the first device,” the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in the preambles of these claims is essential to understanding the limitations in these claims, not merely reciting an intended purpose of the claimed invention. This “indicates a reliance on both the preamble and claim body to define the claimed invention.” Catalina, 289 F.3d at 808; Bell Commc’ns Research, 55 F.3d at 620; Shoes by Firebug, 962 F.3d at 1368. Therefore, the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in each of the preambles of claims 1 and 53 is limiting.” slip op. at 8

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

    “Notably, neither the authenticated session with PLAS 15, nor the request from the third-party application (steps 500 and 502), is the “message” the person is trying to convey to the device of the user, as required by Element 53.3. Significantly, Furlong discloses that, after PLAS 15 notifies the third-party application of the subscriber’s availability (step 512), “the application sends the message to the subscriber (step 514)” directly, not via the server, PLAS 15. Ex. 1007 ¶ 94 (emphasis added), Fig. 5. Thus, PLAS 15 in Furlong does not receive the message the third-party application (person) is trying to convey to the device of the subscriber (user).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Here, Petitioner asserts that a person of ordinary skill in the art of the ’407 patent would have had “a Bachelor’s degree in Computer Science, or equivalent field and three to five years of experience working with Internet communication systems.” Pet. 23 (citing Ex. 1003 ¶¶ 67−72). At this juncture, Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. 2 At this time, the parties do not address objective indicia of nonobviousness, which accordingly do not form part of our analysis. See Pet. 75 (“Petitioner is unaware of any evidence of secondary considerations that would support a finding of non-obviousness.”). 10 For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’407 patent, prior art of record, and supported by the testimony of Dr. Kevin Almeroth.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,744,407
• Epic Games, Inc. v. Ingenioshare, LLCInstituted
  PTAB · May 24, 2022 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Institution

  The Board instituted IPR on claims 1–9 and 15–17 on all asserted § 103 grounds, finding a reasonable likelihood that Epic would prevail on at least one challenged claim.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation, and Patent Owner does not, at this time, propose any different articulation. See Ex. 1003 ¶¶ 92–97. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. 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 9

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

    “used to construe the claim in a civil action under 35 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.” 37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Although “Petitioner does not believe that any terms need to be construed to assess the arguments presented” in its Petition, Patent Owner raises an issue with respect to the challenged claims’ recitation of a “network-based portal.” See Pet. 25; Prelim. Resp. 15–16. In particular, Patent Owner contends that “[t]he specification of the ’727 Patent uses the term ‘network-based portal’ consistently as being at the server-side of a network.” Prelim. Resp. 15. Patent Owner supports its contention by identifying examples where the specification of the ’727 patent describes a “portal” as separate from a “mobile phone” or from a person’s “wireless device.” Id. at 15–16 (citing Ex. 1001, 6:12–13, 6:32–33, 6:55–63, 16:1–3). But the specification also includes numerous examples where the portal functionality is implemented in a “mobile phone,” i.e., a client-side device. See Ex. 1001, 3:10–19, 9:3– 10:2, 10:17–13:27, 14:64–15:54, Figs. 7–11. For example, the specification explains that a “mobile communication device,” such as a “mobile telephone,” may perform steps depicted in Figures 7 through 11. See id. at 9:4–8, 10:17–28, 11:60–12:5, 13:1–9, 14:7–13, 14:66–67, 15:44–46; see also id. at 14:36–38 (identifying a “mobile telephone” as an example of a “mobile communication device), 17:53–55 (same). And Patent Owner categorizes a “mobile phone” as a client-side device. See Prelim. Resp. 16– 22. To adopt Patent Owner’s exclusion of client-side functionality from the scope of the recited “network-based portal” would thus exclude preferred embodiments. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Accordingly, for purposes of this Decision, we decline to adopt such an exclusion. The parties will have an opportunity to elaborate on their positions for proper construction of “network-based portal” during the trial. On the record before us, we do not find it necessary to construe any other term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Among such reasons, Petitioner identifies both references’ teachings regarding prioritization of communications from certain individuals, as well as the similarity of Diacakis’s “presence and availability” information with Loveland’s “current circumstance” information. Id. at 53–56 (citing Ex. 1007 ¶¶ 8, 24; Ex. 1008, 3:45–5:24, Figs. 1–2). Petitioner supports this identification with testimony by Dr. Almeroth, who also supports Petitioner’s contention that the combination would both yield predictable results and be reasonably expected to succeed. Ex. 1003 ¶¶ 152–161; Pet. 54–57. At this time, Patent Owner disputes neither Petitioner’s reasoning to effect the combination nor Petitioner’s specific analysis of the individual limitations of claims 7–9. On the current record, and mindful of the standard that applies during this preliminary phase of the proceeding, we find that Petitioner’s reasoning is sufficiently supported by rational underpinning.” slip op. at 25

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner

    “discretion under 35 U.S.C. § 314(a) to deny the Petition in light of the state of the related litigation. Prelim. Resp. 9–14 (citing, inter alia, NHK Spring Co., Ltd. v. Intri-plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). But on the same date Patent Owner filed its Preliminary Response, the district court granted Petitioner’s motion to dismiss for improper venue, thereby terminating the related litigation. See Ex. 3001, 9. We agree with Petitioner that “this dismissal moots Patent Owner’s arguments based on Fintiv” and that “[b]ecause there is no longer any parallel proceeding, there is no basis for a discretionary denial under § 314(a).”4 Reply 1. We accordingly decline to exercise our discretionary authority to deny the Petition.” slip op. at 33

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,708,727
• T-Mobile USA, Inc. v. Traxcell Technologies, LLCInstituted
  PTAB · May 24, 2022 · IPR2022-00669 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–30 under all six §103 grounds and granted T-Mobile’s motion to join IPR2021-01552.

  RulingsInstitution decision

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

    “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 any 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.” As elaborated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review as to the challenged claims and grounds raised in the Petition. We also grant the Joinder Motion.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “We are persuaded by Petitioner’s arguments. Because the Petition challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

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

    “Claim terms need only be construed 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). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,918,196

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.