- Valve Corporation v. Ironburg Inventions Ltd.No claims unpatentablePTAB · Jan 26, 2023 · IPR2017-00858 · APJ Mitchell G Weatherly · IPR · Remand
Claims 18, 19, 21, 26, and 29 were not shown unpatentable as obvious because Valve did not provide a reasoned basis to combine Burns with the design references.
RulingsRemand decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“testimony relating to the combinations of Burns with LaCelle or Knight, it falls short of providing a reasoned basis for modifying Burns. Dr. Rempel merely opines that incorporating the curved shapes of back controls from LaCelle or Knight into Burns would result in a back control that “could have better coupling with the user’s finger than the flat paddles that are otherwise disclosed by Burns.” Ex. 1019 ¶¶ 39–40 (emphasis added). In other words, modifying Burns in view of LaCelle or Knight might improve Burns. Dr. Rempel testified that the modification “could” improve Burns, not that it “would” improve Burns. The possibility of improvement, which also allows that Burns would not be improved, fails to rise to the level of “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we find such testimony to be insufficient to demonstrate that an ordinarily skilled artisan would have modified Burns in view of LaCelle or Knight. After considering the parties’ briefing, we conclude that Valve’s arguments and supporting evidence for combining teachings of Burns with each one of the Design References, excluding the untimely evidence submitted with Valve’s Supplemental Reply, are unpersuasive. Neither the Petition nor the evidence cited in the Petition cogently explains what advantage would be provided by the alternative control geometries of Burns and each of the Design References. A petitioner cannot demonstrate obviousness “by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “To facilitate review, this analysis should be made explicit.” KSR, 550 U.S. at 418 (citing Kahn, 441 F.3d at 988). Here, we find that Valve proffers conclusions without sufficient reasoning or objective evidence to demonstrate a reasonable likelihood of establishing that an ordinarily skilled artisan would have found it obvious to combine the elements from the prior art to arrive at the claimed controllers.” slip op. at 17
- Expert testimonyPetitioner expert discountedOther
“this simple and predictable art, and the results would not have been unexpected.” Id. (citing Ex. 1009 ¶¶ 21, 27, 32). Dr. Rempel cites no objective evidence to support this cited testimony, which largely parrots Valve’s brief. Compare id., with Ex. 1009 ¶¶ 21, 27, 32. Dr. Rempel’s testimony is entitled to less weight because it is not supported by underlying facts or data. See 37 CFR § 42.65(a).” slip op. at 15
- ExcludeMotion to exclude, grantedGranted in part
“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). “All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). We find that: (1) Valve proffered new testimony to fill the gaps that we identified in the Institution Decision and (2) presenting such testimony in the reply constitutes untimely new argument and evidence that must have been presented in the Petition.” slip op. at 16
Patent outcomesUS 9,289,688 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,289,688 - Intel Corporation v. XMTT, Inc.No claims unpatentablePTAB · May 11, 2021 · IPR2020-00145 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–39 were not shown unpatentable because the petition did not address the construed system-level processing modes, and Nakaya’s synchronization did not mark the claimed transition.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“adapted to execute “primarily” in serial, and serial memory adapted to store data for use by the serial processor in executing the software instructions “substantially” in serial. Ex. 1001, 3:1–6. That embodiment also includes a plurality of parallel processors adapted to execute “substantially” in parallel. Id. at 2:59–67. Significantly, independent claim 32 refers to the serial processor both as adapted to execute “primarily” in serial, and as adapted to execute “substantially” in serial. Ex. 1001, 16:17–23. In light of these teachings, we find that the Specification uses the terms “primarily” and “substantially” interchangeably. In a context similar to that of the claims at issue, “substantially” has been interpreted to mean “largely but not wholly that which is specified.” See, e.g., York Prods. v. Cent. Tractor and Farm & Family Ctr., 99 F.3d 1568, 1573 (Fed. Cir. 1996). That interpretation is consistent with the claim language and the Specification. Returning to the language of claim 1, we determine that “a serial processing mode” refers to the system executing primarily in serial on the serial processor. Likewise, “a parallel processing mode” refers to the system executing primarily in parallel on the parallel processors. The Specification supports that interpretation. Specifically, the Specification describes that the system may make a hard switch from “serial processing mode” to “parallel processing mode,” or may switch from “primarily serial processing” to “primarily parallel processing.” Ex. 1001, 11:46–52; see also id. at 1:58–61, 3:34–35; 5:6–48, 6:54–56; 8:3–5; 10:36–41. Therefore, the Specification explicitly describes primarily serial processing as an example of a serial processing mode, and likewise describes primarily parallel processing as an example of a parallel processing mode. This suggests that a serial processor as claimed must be adapted to execute in a serial processing mode (a mode of executing so that the system is executing primarily in serial). Likewise, the parallel processor must be adapted to execute in a parallel processing mode (a mode of executing so that the system is executing primarily in serial). We return to the language of claim 1 having determined that: “adapted to” means “configured to,” “primarily” means “largely but not wholly,” and the serial and parallel processing modes each refer to the execution of the system as a whole. Thus, the claimed serial processor must be configured to have a serial processing mode (a mode where the system executes largely but not wholly in serial on the serial processor). Likewise, the parallel processors must be configured to have a parallel processing mode (a mode where the system executes largely but not wholly in parallel on the parallel processors).” slip op. at 10
- Skill levelSkill level board ownOther
“There is very little difference between the skill levels asserted by the parties. As we pointed out in the Institution Decision, the parties only disagree with regard to two of the factors relevant to the level of skill in the art. See Dec. 12. There is no dispute with regard to the many other factors that influence the level of skill in the art. Further, also as pointed out in the Institution Decision, Patent Owner’s broader recitation of experience in “general computer architecture” would include experience with both serial and parallel processing. Id. In the Response, Patent Owner chose not to dispute other factors of the level of skill inquiry, and chose not to dispute that general experience would include experience with parallel computing architectures.5 We determine that a person of ordinary skill in the art at the time of ’388 patent would have had either a Bachelor’s or a Master’s degree in electrical engineering, computer engineering, or a related field, and would have had about three years of experience in computer architecture that 5 We informed the parties they could further address the level of skill during the trial. Dec. 13. included experience with both serial and parallel processing. Our reasoning follows.” slip op. at 15
- BurdenFwd all claims patentableNot shown unpatentable
“We agree with Patent Owner that the Petition must identify how the construed claim is unpatentable. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4). We analyze the limitation at issue as addressed by the Petition.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Nakaya’s system changes the ratio of serial to parallel processors at T6, not at T8 (synchronization). Specifically, prior to T6, the system is processing on four serial and four parallel processors, and after time T6, the system is processing on one serial and seven parallel processors. Nakaya’s processor ratio change is akin to the claimed transition from serial processing mode to parallel processing mode. At T8, the ratio of serial to parallel processors being used by the system remains the same (one to seven). That is, at the moment Petitioner contends corresponds to the claimed transition from serial to parallel processing, there is actually no change in the ratio of serial to parallel processors in use by Nakaya’s system. We emphasize that the Petition is deficient because it fails to adequately address how the prior art discloses or suggests a serial processor configured to execute so that the system executes largely but not wholly in serial on the serial processor. Likewise, the Petition does not adequately address how the prior art discloses or suggests a parallel processor adapted to execute so that the system executes largely but not wholly in parallel on the parallel processor.” slip op. at 27
Patent outcomesUS 7,707,388 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,707,388 - Kranos Corporation v. Riddell, Inc.No claims unpatentablePTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand
On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.
RulingsRemand decision- RemandOther
“motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted
“certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9
- Skill levelSkill level board ownDecided for petitioner
“record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13
Patent outcomesUS 8,528,118 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,528,118 - Kranos Corporation D/B/A Schutt Sports v. Riddell, Inc.No claims unpatentablePTAB · Feb 7, 2018 · IPR2016-01649 · APJ Barry L Grossman · IPR · Final written decision
Claims 1, 2, 4–8, 13, 15, and 16–19 were not shown unpatentable under either §103 ground based on inadequate claim mapping and an unpersuasive rationale to combine.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner does not present an evidence-based analysis of factors typically considered in determining the level of ordinary skill. Petitioner merely states a conclusion without any analysis or persuasive evidence to support that conclusion. Petitioner’s entire assertion concerning the level of ordinary skill is the following sentence: It is contemplated that a person of skill in the art (“POSITA”) in the field of coupling and release mechanisms at the time of the invention of the ‘269 patent would have a bachelor’s degree in engineering or more than three years of experience in product design, with specific experience in attachment and release mechanism design. Pet. 50 (emphasis added). Petitioner does not cite any evidence in the Petition to support this assertion.5 5 Petitioner cites to the Declaration of Mr. Float in its Reply. Pet. Reply 9 (citing Ex. 1028 ¶ 65). Mr. Float’s declaration testimony merely restates Petitioner’s conclusion without any analysis, facts, or data to support that conclusion. As such, his testimony on this issue is entitled to little if any probative weight. 37 C.F.R. § 42.65. We further note that Petitioner did not provide this evidence with the Petition and consequently Patent Owner did not have notice or an opportunity to respond. Patent Owner proposes a higher level of ordinary skill than that asserted by Petitioner. According to Patent Owner, a person of ordinary skill would have had “a degree in a relevant technical, physics or engineering field and at least two years of experience in designing and engineering sports helmets. Alternatively, a POSITA could have at least five years of experience designing sports helmets, even without the relevant technical degree.” PO Resp. 21–22 (citing Ex. 2001 ¶ 21) (emphasis added). Mr. Shewchenko testifies that he is aware of “the factors that may be considered in determining the level of ordinary skill in the art.” Ex. 2001 ¶ 16. These factors include: (1) the education level of the inventor; (2) the types of problems encountered in the art; (3) the prior art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the education level of active workers in the field. Id. Mr. Shewchenko also testifies that “[g]iven the potential for significant injury, football (and other contact sports) has instituted rigid safety standards for helmets.” Id. at 20 (citing the National Operating Committee on Standards for Athletic Equipment (“NOCSAE”) safety guidelines for athletic equipment (Exhibit 2003)). Mr. Shewchenko concludes “[i]n view of these potential safety hazards and stringent performance requirements associated specifically with the design of helmets for contact sports,” it is his opinion that: a person of ordinary skill in the art with respect to the ‘269 patent would have [had] a degree in a relevant technical, physics, or engineering field and at least two years of experience designing and engineering sports helmets. Alternatively, one could be considered a person of ordinary skill in the art without the relevant technical degree with at least five years of experience designing sports helmets.” Id. at 21. We have not been directed to any evidence in the record concerning the educational level of the inventors of the ’269 patent; the rapidity with which innovations in the relevant technology are made; or the educational level of workers active in the field. The type of problems discussed in the ’269 patent suggest skill involving” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Dependent claim 2 addresses the direction of the actuation force applied to the coupler mechanism. It recites the negative limitation that “the actuation force lacks a rotational component.” Dependent claims 7 and 18 each recite that a component of the “releasable coupler mechanism,” the “cylindrical body,” “lacks threads.” As dependent claims, these claims further limit the claims from which they depend. As such, as an initial premise, these dependent claims suggest that, under the doctrine of claim differentiation, the construction of the phrase “releasable coupler mechanism” in independent claims 1 and 13 is broader than, and thus does not include, limitations on the direction of the actuation force (“lacks a rotational component,” as recited in claim 2) or any exclusion of threads (“lacks threads,” as recited in claims 7 and 18). As we explain below, however, the doctrine of claim differentiation does not control the outcome here. b. Specification The Abstract summarizes the “invention” by stating “[t]he present invention is directed to an improved sports helmet including a quick release connector assembly for the faceguard that allows for rapid disconnection of the faceguard from the helmet shell . . . [using] [a]n inwardly directed actuation force that lacks a rotational component.” Ex. 1001, Abstract (emphasis added). This summary emphasizes that the quick-release feature of the “releasable coupler mechanism,” and the rapid disconnection function, are dependent on an inwardly directed force that does not have a conventional rotational component.” slip op. at 13
- BurdenNot shown unpatentable
“Our rules require a petition to specify where each element of the claim is found in the prior art patents or printed publications relied upon. 37 C.F.R. § 42.104(b)(4), (5). It is unclear from Petitioner’s argument where each element of challenged claims 1, 4, 13, and 15 is found in either Ide or Szendel and how and why the two references would have been combined. For example, independent claims 1 and 13 each require a releasable coupler mechanism that requires a “washer,” a “cylindrical body,” and a “head.” Dependent claims 4 and 15 require a cylindrical body with two segments of different diameters. Petitioner has not identified persuasively which elements of Ide or Szendel are being relied upon to meet these limitations, and why it would have been obvious to combine the selected elements. We decline to speculate as to Petitioner’s intentions. Accordingly, Petitioner has not met its burden to establish that claims 1, 4, 13, and 15 are unpatentable.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Common sense” is a conclusory label. It is the final step in a reasoned analysis based on the evidence. References to “common sense”—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016), cert. denied sub nom. Google Inc. v. Arendi S. A. R. L., No. 16-626, 2017 WL 1040877 (U.S. Mar. 20, 2017). Petitioners’ failure to explain the “common sense” on which it relies is problematic. Id. slip op. at 33
Patent outcomesUS 8,813,269 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,813,269 - Homeland Housewares, LLC v. Whirlpool CorporationNo claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00877 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–16 were not shown unpatentable: Kolar did not anticipate them, Kolar did not render them obvious, and Wulf did not anticipate them.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“As Petitioner observes, the Board has found the rule of Harza inapplicable where duplicating components would have rendered the claimed subject matter unsuitable for its intended purpose. PO Resp. 43 (citing Ex parte Efremova, No. 2010-003842, 2011 WL 1131352, at *3 (BPAI Mar. 28, 2011)). We agree with the reasoning of the panel in Efremova. Mr. Faerber testifies that “it would not have been obvious to repeat the drink program of Figure 6, in whole or in part” because “[r]epeating a program would risk overmixing the blender contents, and would defeat the purpose of having a set program to produce consistent and complete results.” Ex. 2001 ¶ 89. We credit the testimony of Mr. Faerber, which is uncontroverted.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“3. “to effect a pulsing” Patent Owner proposes that “to effect a pulsing,” which is recited in each of the independent claims, should be construed to mean “to effect a series of repeated pulses.” PO Resp. 14–20. Patent Owner contends that the specification supports a distinction between “pulsing” and “pulses,” and that it would be unreasonable to construe “pulsing” to include only one pulse. Id. Patent Owner supports its position with uncontroverted testimony by Mr. Faerber. Ex. 2001 ¶¶ 46–53. Petitioner responds in its Reply that “a ‘pulsing that includes only one pulse is still a reasonable interpretation which the Board should adopt.” Reply 6. But Petitioner recanted that position in its argument at oral hearing: JUDGE BOUCHER: . . . You seem to indicate that a “pulsing” implie[s] that there would be multiple pulses. Is that a correct understanding of Petitioner’s position? MR. TROJAN: That’s correct, that -- right. Tr. 7:12–16. We adopt Patent Owner’s proposed construction of “to effect a pulsing” as “to effect a series of repeated pulses.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner responds that “[i]t is noteworthy that the limitation . . . is at the very end of claim 1,” contending that “what happen[s] after the blade reaches the operating speed is not covered by the claims.” Reply 6. We are not persuaded by this contention because the “pulsing” recited in the independent claims requires multiple pulses, each of which has the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” We also are unpersuaded by Petitioner’s argument that the cutter assembly may have multiple operating speeds. See id. at 7–8. Even acknowledging that the recitation of “a predetermined operating speed” in the “constant speed phase” allows for the possibility that the cutter assembly may have more than one predetermined operating speed, the relevant limitation refers to increasing the speed of the cutter assembly “to the operating speed” (emphasis added). Petitioner’s argument is not supported by the claim language nor by any evidence presented by Petitioner. We adopt Patent Owner’s construction of “to the operating speed” as “up to, but not past, the operating speed.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Kolar does not disclose “automatically controlling a rotational speed of the cutter assembly to effect a pulsing,” wherein each pulse comprises the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” See PO Resp. 26–31. First, Patent Owner observes that the “pulse blend” routine identified by Petitioner executes separately from automatically controlled user drink programs as a manual pulse in which the blender motor runs only as long as the user is pushing the pulse button. Id. at 27–28. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶ 74. Thus, the “pulse blend” routine described by Kolar does not “automatically” control a rotational speed of the cutter assembly to effect a pulsing as required by the independent claims. Second, as Mr. Faerber testifies, Figure 6 of Kolar “depicts a set of different, non-repeating steps. No part of the drink program is repeated.” Ex. 2001 ¶ 75. The illustrated sequence, for example, has only a single deceleration phase, and, therefore, does not disclose “effect[ing] a pulsing” by effecting a series of repeated pulses that each have a constant speed phase, a deceleration phase, and an acceleration phase. See PO Resp. 31. We also agree with Patent Owner that Kolar does not disclose an acceleration phase, where the speed of the cutter assembly is “increased from the settling speed to the operating speed,” as recited in each of the independent claims. See id. at 32–33. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶¶ 77–83. The acceleration phase identified by Petitioner between t4 and t5 in Figure 6 of Kolar does not increase “to the operating speed,” as we have construed the phrase, but instead increases to a speed greater than the operating speed. For these reasons, we conclude that Petitioner has not shown, by a preponderance of the evidence, that any claim of the ’688 patent is anticipated by Kolar.” slip op. at 9
Patent outcomesUS 7,581,688 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,581,688 - Facebook, Inc. v. Rembrandt Social Media, L.P.No claims unpatentablePTAB · Jun 22, 2015 · IPR2014-00415 · APJ Matthew R Clements · IPR · Final written decision
Claims 1, 4, 17, 18, 20, and 26 were not held unpatentable because the prior-art combinations did not teach the claimed privacy level information.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The ’316 patent uses the term “privacy level” in two contexts: it describes a diary page “operating” at a privacy level (Ex. 1001, 10:37–41), and it describes content objects “having” a privacy level (id. at 11:25–29). The “privacy level information” being claimed is part of “configuration information for controlling behavior of a cohesive diary page.” Ex. 1001, Claims 1, 17. The ’316 patent discloses that an owner can assign a “privacy level” to pages, sections, and content objects to control whether they are visible at the privacy level at which the diary page is operating. Ex. 1001, 18:12–15 (“[T]he owner of the diary can control what is presented to various classes of persons via his diary” by “identify[ing] various pages, sections, or content objects as having a certain privacy level.”). Only content data with a privacy level lower than or equal to the privacy level at which the diary page is operating is displayed. Id. at 18:17–20 (“[T]he diary applet generates HTML only for those portions of the diary that have a privacy level lower than or equal to the privacy level of the viewer who is viewing the diary.”).2 Specifically, “[t]he person viewing a diary page can only view that content marked as appropriate for him and other people at his privacy level.” Id. at 18:23–25. Similarly, “[a]ll users must enter an appropriate password before diary applet 112 will generate HTML (for content objects) or otherwise reveal the existence of objects having those privacy levels (e.g., for named sections in the named section list 404).” Id. at 11:25–29. The privacy level information for a content object, therefore, specifies the privacy level at or above which the diary page must be operating in order for that content object to be displayed. Accordingly, we construe “privacy level information” to mean “configuration information that describes or specifies a level at, or above, which particular content data is displayed as part of a cohesive diary page.”” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are persuaded by Patent Owner’s arguments. As discussed above, we construe “privacy level information” to mean “configuration information that describes or specifies a level at, or above, which particular content data is displayed as part of a cohesive diary page.” Salas teaches that file metadata includes “access information such as which users may open, view, and edit the file.” Ex. 1005, 13:54–55 (emphasis added). As Patent Owner correctly points out, the file is not “particular content on a cohesive diary page,” as our construction requires; the only “content on a cohesive diary page” related to the file is an icon. Even if the file was “content on a cohesive diary page,” Salas’s access information would still not be “privacy level information” because it does not describe or specify a level at, or above, which the file is displayed as part of a cohesive diary page. In that regard, Petitioner relies upon Parker’s teaching of visually indicating a user’s access level by ghosting out, greying out, shading, or hiding a folder icon and name. Pet. 43–46. According to Petitioner, This would predictably result in the eRoom system of Salas in which the ActiveX control running in the web browser obtains the file metadata identifying the access privileges of the user (Salas, 13:52‐57), and then uses it to generate the eRoom page with an item box (408) listing each file with a visual indication consistent with the viewing user’s access privileges (e.g.[,] fully visible, ghosted, grayed out, with a “lock icon,” etc.). (Tittel Decl. ¶ 88.) Pet. 46. Thus, Petitioner contends that by specifying a category of users permitted to open/view/edit non-content (i.e., a file), Salas’s access information also specifies a level (e.g., users-with-view-privileges level) at, or above, which the file is displayed as part of a cohesive diary page. For example, the technique of Parker may be used to hide the icon of a file whose file metadata specifies that the user does not have view privileges (i.e., is not at, or above, the users-with-view-privileges level). Ex. 1011, Figs. 6, 7, 11:4-47. As an initial matter, Salas’s user-based privileges are inconsistent with the description of a “privacy level” in the ’316 patent. As discussed above when construing “privacy level information,” neither the privacy level at which a content object is viewable nor the the privacy level at which a diary is operating depend upon the identity of a particular user. Ex. 1001, 10:29– 33, 10:41–43, 11:24–29, 17:22–23, 18:25–27. The “privacy level information” for a content object specifies a level at which, not a user to whom, the object becomes visible. Id. Salas’s access information, in contrast, specifies users to whom the file is openable, viewable, and/or editable. Ex. 1005, 13:52–57. Even assuming that the group of users who can view a file constitutes” slip op. at 18
Patent outcomesUS 6,415,316 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,415,316 - Standard Innovation Corporation v. Lelo, IncNo claims unpatentablePTAB · Apr 23, 2015 · IPR2014-00148 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–8, 10–12, 14–20, and 22–24 were not shown unpatentable because Petitioner failed to establish LILY as prior art in both obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted in part
“Federal Rule of Evidence 901 requires that the proponent produce evidence sufficient to support a finding that an item is what the proponent claims it is. When offering a printout of a webpage into evidence to prove the website’s contents, the proponent of the evidence must authenticate the information from the website itself, not merely the printout. See Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007), as amended (Nov. 20, 2007) (citing United States v. Jackson, 208 F.3d 633, 638 (7th Cir. 2000)). For this reason, the Board has stated that “[t]o authenticate printouts from a website, the party proffering the evidence must produce some statement or affidavit from someone with knowledge of the website . . . for example a web master or someone else with personal knowledge would be sufficient.” EMC Corp. v. Personalweb Techs., LLC, Case IPR2013-00084, slip op. 45 (PTAB May 15, 2014) (Paper 64) (quoting St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson, No. 8:06˗CV˗223˗T˗MSS, 2006 WL 1320242, at *2 (M.D. Fla. May 12, 2006)); see also Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3d Cir. 2007) (citing with approval the holding in In re Homestore.com, Inc. Sec. Litig., 347 F.Supp.2d 769, 782–83 (C.D. Cal. 2004), that printouts of webpages must be authenticated by a witness). Petitioner has not provided the testimony of any witness with personal knowledge of the information on the website or the associated printouts for any of the exhibits at issue.10 Exhibits 1015, 1016, and 1022 appear to be printouts of webpages retrieved from the Internet Archive’s “Wayback Machine,” which shows archived versions of other websites. Our reviewing court has held that printouts of webpages from the Wayback Machine were admissible under Federal Rule of Evidence 901(b)(1) where the proponent provided one of two types of supporting evidence: one, a witness that testified regarding how the Wayback Machine worked and how reliable its contents were, or two, a witness having personal knowledge that the printouts were authentic. U.S. v. Bansal, 663 F.3d 634, 667–68 (Fed. Cir. 2011). Here, in contrast to Bansal, Petitioner has not provided either form of supporting evidence. Consequently, Exhibits 1013–1022 are inadmissible under Federal Rule of Evidence 901 because Petitioner has not put forth sufficient evidence to support a finding that these exhibits are what Petitioner claims, or that any of these exhibits is self-authenticating under Federal Rule of Evidence 902.” slip op. at 10
- BurdenNot shown unpatentable
“upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify as a printed publication, a document must be generally available. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify as a printed publication, a document must be generally available. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“Sufficiency of Proof Given our determination above that Exhibit 1002 is inadmissible, Petitioner has not adequately demonstrated that LILY (Exhibit 1002) is a printed publication under either 35 U.S.C. §§ 102(a) or 102(b). Because both asserted grounds of unpatentability rely in part upon the assertion that LILY (Ex. 1002) is prior art, Petitioner has not demonstrated by a preponderance of the evidence that claims 1–20 and 22–27 of the ’178 patent are unpatentable.” slip op. at 24
Patent outcomesUS 7,749,178 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,749,178
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