- Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
Patent outcomesUS 11,488,451 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentablePTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner
“Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43
Patent outcomesUS 9,865,135 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 3, 5, 7–12, and 23–26 were not shown unpatentable over Pisanich or the PSO Manual because neither was shown to teach or suggest the claimed QIE module.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not agree with Patent Owner that “Petitioner’s definition of a POSITA includes a general knowledge of advertising and virtual reality, but these backgrounds do not specifically apply to the ‘941 Patent at issue, and Patent Owner is unaware why Petitioner would include them in their definition.” Id. at 5. The ’941 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’941 patent describes an embodiment “having a program for integrating holographic images into a virtual thematic environment using a computerized system, includes means for displaying images from a virtual thematic environment; and means for projecting the images as holographic projections using a holographic projection system.” Ex. 1001, 3:61–67. As for advertising, the ’941 patent discusses that advertising can be included in the virtual thematic environment, id. at 7:42–57, and explains that “digital content library 209 4 “POSITA” is “person of ordinary skill in the art.” may also include scheduling directions for when the web site access and identification of where to place the web content or advertising, e-commerce, video, etc. are to be placed,” id. at 17:35–39. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“technology to display objects internal to the cockpit, and to display objects external to the aircraft in the virtual thematic environment” and “[s]aid ‘conventional technology’ included rendering technology configured to account for differences between multiple gaming devices as needed” to be without sufficient factual support. See Ex. 1004 ¶¶ 147–148 (citing Ex. 1007, 16:10–11; Ex. 1004 ¶ 83).. Although it may have been known in the art to create different versions or programs of a game for different devices, Mr. Crane points to no disclosure in Pisanich that explains or discloses a QIE consistent with the plain language of the claim. He points to no textbook, technical disclosure, or other independent evidence that would have led a person of ordinary skill considering Pisanich to implement a “software layer” that receives real time data and manipulates this data “so as to be accessible on different types of devices for use within the virtual thematic environment.” See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”). Our Trial Practice Guide cautions against crediting unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Pisanich meet the elements of claims 1, 3, 5, 7–12, and 23–26. Pet. 12–36. Patent Owner opposes. PO Resp. 14–43. Because we conclude that Petitioner has failed to show by a preponderance of the evidence that Pisanich accounts for the claimed QIE module, we focus our analysis on that limitation. a. “a quantum imaging environment (QIE) module, the QIE module being a software layer that receives, interprets, and manipulates the second content so as to be accessible on different types of devices for use within the virtual thematic environment…” The parties’ arguments and evidence here focus on the “quantum” slip op. at 19
Patent outcomesUS 10,846,941 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,846,941 - Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentablePTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision
Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.
RulingsFinal written decision- Expert testimonyOther
“prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26
- ExcludeDenied
“III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83
- Skill levelOther
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27
Patent outcomesUS 8,458,028 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,458,028 - Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.Some claims unpatentablePTAB · Aug 7, 2024 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 5–10, 13–18, 20–22, 24, 31, and 32 are unpatentable; claims 2–4, 23, and 25–30 were not shown unpatentable. The revised motion to amend was granted in part and denied in part.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“d. Summary For the above reasons, we determine that Patent Owner has not shown” slip op. at 100
- ExcludeMotion to exclude, deniedOther
“IV. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner seeks to exclude Exhibit 1034 and page 10 of the Reply” slip op. at 86
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“A. “housing” Patent Owner proposes that we construe the term “housing” to mean” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“suggested to one skilled in the art, objective evidence of non-obviousness (“secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted). For us to give substantial weight to objective evidence of nonobviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-” slip op. at 21
Patent outcomesUS 9,365,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - Netflix, Inc. v. Divx, LLCNo claims unpatentablePTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand
The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52
- Strike new argumentNew argument disregardedDecided for petitioner
“I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62
- ExcludeMotion to exclude, grantedMixed
“7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5
Patent outcomesUS 10,225,588 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,225,588 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand
Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28
- ExcludeMotion to exclude, deniedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29
Patent outcomesUS 7,069,560 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.
RulingsRemand decision- RemandDecided for petitioner
“Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30
Patent outcomesUS 6,851,115 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Ebates Performance Marketing, Inc., D/B/A Rakuten Rewards v. International Business Machines Corp.Some claims unpatentablePTAB · May 24, 2023 · IPR2022-00133 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 3–6, 13, and 15–18 are unpatentable as obvious; claims 2, 7–12, and 14 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“consistently’ characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.” GPNE, 830 F.3d at 1370. It is also true that “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks and alteration in original); see also Verizon, 503 F.3d at 1302–03 (“The mere fact that the specification’s examples of translation may involve a change in protocol from a higher to a lower level protocol does not establish that such a limitation should be imported into the claims.”). Thus, the mere fact that the examples in what the Specification clearly identifies as “preferred” embodiments (Ex. 1001, Abstract, 5:1–3, 5:55–59, 6:6–8, 6:67–7:4, 7:23–25) cannot, by themselves, limit the scope of the claims. See Phillips, 415 F.3d at 1323 (noting “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have at least a bachelor’s degree in computer science or a related field, plus at least two years of experience in the design and implementation of graphical user interfaces, and would have familiarity with portal design and portlet technology. Additional education in the fields of computer science and/or human factors, such as a masters or doctorate degree, may serve as a substitute for experience in the field.” Pet. 10 (citing Ex. 1003 ¶ 32). Patent Owner applies Petitioner’s level of ordinary skill in the art for purposes of this proceeding. See PO Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the level of skill reflected by the Specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Figure 3 illustrates a plurality of portlets relative to a first sub-tab and Gridsphere2’s Figure 2 illustrates a single portlet relative to a first sub-tab, and that other sub-tabs are illustrated in Gridsphere1 and Gridsphere2, which would include one or more portlets. Ex. 1003 ¶ 141. As Dr. Bederson explains, these tabs define “two or more stacks of portlets.” Id. Dr. Bederson illustrates this with an annotated version of Figure 2 from Gridsphere2 reproduced below. An annotated version of Figure 2 of Gridsphere2 showing a first stack of portlets currently presented and second stack of portlets not currently presented. Ex. 1003 ¶ 141. Dr. Bederson explains that Figure 2 shows “the Administration main tab includes a first stack of portlets, having at least one portlet in the Portlets, Users, and Groups sub-tabs, respectively (highlighted in red).” Id. Dr. Bederson testifies that It is also obvious to a [person of ordinary skill in the art] that the Welcome main tab (highlighted in green) (or the JSR Portlets tab) would also have a plurality of sub-tabs, each with at least one portlet. This defines a second stack of portlets, which second stack of portlets is not currently displayed. Id. We find Dr. Bederson’s testimony to be rational, well-reasoned, and give it substantial weight. Dr. Bederson further persuasively testifies, “[t]o render the portal in” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“The motivation-to-combine analysis is a flexible one. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). “[T]he motivation-to-combine analysis ‘need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’” PACT XPP, 61 F.4th 1380 (citing KSR, 550 U.S. at 418). We find that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine Rose with the GridLab references. See Pet. 64–67; Ex. 1003 ¶¶ 216–223. In particular, we agree with Petitioner and Dr. Bederson that applying Rose’s technique to the GridLab References would have been within the level of skill in the art, and that a person of ordinary skill in the art “would find it beneficial to index the new portlet [being suggested to be added by GridLab], as per Rose, and compare those indexing results to the existing portlets of the user’s portal, and suggest a tab or sub-tab for the new portlet in the user’s portal, or automatically place the portlet in a content-relevant tab or sub-tab in the user’s portal, as per Rose.” Ex. 1003 ¶ 222 (citing Ex. 1004 § 10.1.6 (40); Ex. 1012, 262–64, 267–68). We address Patent Owner’s arguments below.” slip op. at 49
Patent outcomesUS 7,543,234 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,543,234 - Iapartments, Inc. v. Edst, LLCInstitutedPTAB · Apr 11, 2023 · IPR2022-01469 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–11, 14, 15, 17, 18, 20, 22, and 23, finding a reasonable likelihood of success on at least one claim over Cahill and Deros.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’685 patent “would have had a Bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field, and two or more years of experience working in home or commercial security and automation systems and/or smart home or smart buildings technology.” Pet. 22 (citing Ex. 1002 ¶¶ 10–16). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’685 patent and the asserted prior art, and we have applied it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- BurdenMixed
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“here: Where the claimed subject matter is no more than “the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement,” and the combination of such known “elements according to known methods . . . does no more than yield predictable results,” the claim is unpatentable under 35 U.S.C. § 103. KSR, 550 U.S. at 401.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,803,685
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.