- Google LLC v. Parus Holdings, Inc.Institution deniedPTAB · Dec 13, 2022 · IPR2022-01020 · APJ James J Mayberry · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the present record, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 8. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Petitioner bases these contentions on declaration testimony from Mr. Lipoff. Id. (referencing Ex. 1002 ¶¶ 40, 85).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the three independent claims include language that indicates that each claim encompasses a set-up stage and a retrieval stage. When construing a claim, we start with the language of the claims themselves. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). Claim 1 expressly recites that steps (a) through (h) are completed before step (i) and subsequent steps. Ex. 1001, 14:12–15; see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.” (citation omitted)). For claim 16, its preamble recites “[a] method for allowing a phone user to set up and subsequently retrieve information in an audio format from a pre-defined portion of a pre-selected web [site].” Id. at 16:13–15; accord id. at 16:17–62 (affirmatively reciting “pre-defined portion of said pre-selected web site” in multiple steps in the body of the claim); see also Pet. 13 (“Furthermore, a [person having ordinary skill in the art] would have understood that Claim 16’s preamble is similar to element 1(i) of Claim 1.”); Prelim. Resp. 22–23; cf. Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013) (concluding that a claim that recites “processing” an “electronic advertisement” necessarily indicates that “the creation of the ad must happen before the processing begins”).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other claim terms Except as provided above, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. 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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,516,190 - PTAB · Dec 7, 2022 · IPR2022-00946 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–22 on all petition grounds, finding a reasonable likelihood that PPC would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented in the Petition, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–12 and 14–22 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In addition, Petitioner contends that a POSITA would understand that Brochure in combination with Blunt teaches the “first flange configured to engage the first frame” and the “second flange configured to engage the second frame.” Pet. 42–44 (citing Ex. 1002 ¶¶ 65–75; Ex. 1004 ¶¶ 96–97, Figs. 3, 11; Ex. 1006; Ex. 1001, 10:50–53). Specifically, Petitioner argues that a POSITA would understand that when the separable cable reel disclosed in Blunt is inserted into the bag in Brochure, “the ‘first flange’ is ‘configured to engage’ the ‘first frame’ in the base of the bag and the outer engaged with the ‘first frame.’” Id. at 40. Petitioner reasons that a POSITA would understand that the cable reels of Brochure and Blunt are similarly configured when the cable reel in Blunt is assembled. Pet. 40 (citing Ex. 1002 ¶ 68). According to Petitioner, a POSITA would know that when the Blunt cable reel is inserted into the Brochure bag, the outer side of the flange first inserted into the bag (i.e., the “first flange”) is configured to engage with the first frame at the base of the bag in Brochure. Id. Petitioner explains the same is true for the outer side of the second flange, which is the flange facing out of the bag cover. Id. At this stage, we note that the preliminary evidence supports Petitioner’s contentions that Blunt teaches reel 34", flange 42", core 36", and separate flange 40". Ex. 1004 ¶ 96, Fig. 11. Further, Dr. Eldering’s unrebutted testimony supports Petitioner’s position that a POSITA would have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34", within Brochure’s cable reel apparatus. See Ex. 1002 ¶ 57. Dr. Eldering also testifies a POSITA would understand the environmentally friendly advantages of replenishing the supply of cable in the cable reel installed in the Tote bag. Id. ¶ 53 (citing Ex. 1004 ¶ 107). Upon review of the preliminary record and based on the evidence and” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes “the plain meaning of each claim term can be applied.” Pet. 5. For purposes of this Decision, we do not expressly construe any terms. 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 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,988,342 - PTAB · Dec 7, 2022 · IPR2022-00947 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–8 on all petitioned grounds; the Board found a reasonable likelihood of prevailing on at least claim 1 over Brochure and Blunt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For reasons provided below, we determine, on behalf of the Director (see 37 C.F.R. § 42.4(a)), that the Petition demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). We therefore institute the petitioned inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’471 patent “would have at least a bachelor’s degree in physics or engineering and experience with the installation of cable,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4; Ex. 1002 ¶ 15. At this stage of the proceeding, we find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the ’471 patent and the prior art of record. 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 it in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms need construction and the plain meaning can be applied.” Pet. 5. Petitioner asserts claim 4’s “means for releasably coupling” limitation (Ex. 1001, 12:21–27, pg. 20 (Cert. of Correction)) is a means-plus-function limitation under 35 U.S.C. § 112(f), and Petitioner provides a corresponding construction. See Pet. 5–6. For reasons provided below, we determine Petitioner’s challenge to claim 1 provides a sufficient basis to justify institution of review regardless of claim 4, so we do not reach this claim construction issue at the present time. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Based on our review of the record at this preliminary stage, we determine no explicit construction of any claim term is needed to decide whether to institute review. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to implement a two-component reel structure, such as Blunt’s cable reel 34ʹʹ, within Brochure’s cable reel apparatus. See Pet. 28–34, 36–38, 49–52. This would have been done, according to Petitioner, in order to permit the user to “replenish the supply of cable in Brochure’s cable reel when it is exhausted in an environmentally friendly way.” Id. at 28 (emphasis added); Ex. 1002 ¶ 57. Petitioner points out that Brochure describes its system as being “Environmentally-Friendly,” and alleges that Blunt similarly describes how its two-component reel 34ʹʹ can “be replenished with a new supply of cable when the cable supply in the reel is exhausted such that the reel would be reused in ‘an environmentally friendly manner.’” Pet. 28–29 (quoting Ex. 1006; Ex. 1004 ¶ 107) (citing Ex. 1004 ¶¶ 19, 73, 89); Ex. 1002 ¶ 58. Specifically, according to Petitioner, using Blunt’s replenishable two-component reel in Brochure “would be environmentally friendly because it would save cost and reduce waste since the entire cable reel does not have to be disposed.” Pet. 29 (citing Ex. 1004 ¶ 19; Ex. 1005, 1:21–25, 4:33–57, Fig. 6); Ex. 1002 ¶ 58. Petitioner also asserts this modification could have been achieved with a reasonable expectation of success, given various similarities between Brochure’s and Blunt’s rotatable mounting of a cable reel, and related teachings in those and other prior art references. See Pet. 29–32; Ex. 1002 ¶¶ 59–61. Petitioner further provides illustrations of how a person of ordinary skill in the art might have implemented this combination. See Pet. 32–34; Ex. 1002 ¶ 62. Upon review of the foregoing, we determine Petitioner’s contentions regarding the motivations that would have led a person of ordinary skill in the art to use, with a reasonable expectation of success, Blunt’s two-component cable reel structure within Brochure’s cable dispensing apparatus, are sufficiently articulated and supported by the evidence of record to justify institution of review.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,001,471 - Apple Inc. v. Parus Holdings, Inc.Institution deniedPTAB · Dec 6, 2022 · IPR2022-00950 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command.” Pet. 10. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We also note that, although the specific language of Petitioner’s proposal differs somewhat from the expressions of the level of ordinary skill that we adopted in the related proceedings to determine whether to institute review, they are substantially equivalent. See Microsoft, IPR2022-00137, Paper 9 at 9–10; Google, IPR2022-00279, Paper 7 at 10–11.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction,” nor does Patent Owner propose any express construction of any claim term. See Pet. 10. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“2. Combination of Brown and Shuster Patent Owner disputes Petitioner’s reasoning for combining Brown and Shuster (together with Myers) as “based solely on hindsight.” Prelim. Resp. 64 (citing ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998)). We agree with this assessment because, as Patent Owner observes, “Brown discloses a web-based [interactive voice response] system with no inherent search capability and [that is] used to navigate Internet sites,” while Shuster “discloses a system for searching a wide area network and then displaying optimized search results such that users can find information easily and quickly.” Id. at 61 (emphases omitted). This difference, between navigation and searching, is meaningful, as Patent Owner illustrates with what it calls “a more realistic scenario.” See id. at 62.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,721,705 - Resmed, Inc. v. New York UniversityInstitutedPTAB · Dec 5, 2022 · IPR2022-00989 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on all challenged claims and all petition grounds, finding a reasonable likelihood of success on obviousness over Sullivan995 and Sullivan460.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 315(b) is unavailing. Rule 42.104(b) requires a petitioner to state in its petition “[h]ow the challenged claim is to be construed” and “specify where each element of the claim is found in the prior art.” 37 C.F.R. §§ 42.104(b)(3), (b)(4). The Petition states “[t]he Board construes the claims ‘using the same claim construction standard that would be used’ in district courts.” Pet. 20. We disagree that Rule 42.104(b) or the CTPG requires Petitioner to make any specific statement if it takes the position that no express construction of claim terms is required. Rather, the CTPG states that “a petitioner may include a statement that the claim terms require no express construction.” CTPG 44.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We use a two-part framework to analyze a request to exercise discretion to deny institution under § 325(d). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, Paper 6 at 8. Second, if either condition of the first part of the framework is satisfied, then we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” Id. In applying this framework, we refer to the non-exclusive factors delineated in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). These factors are: a) the similarities and material differences between the asserted art and the prior art involved during examination; b) the cumulative nature of asserted art and the prior art evaluated during examination; c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; d) the extent of overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Id. at 17–18.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “in 2003 would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 9. We find, on the current record, that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner propose no express construction for any claim term, at least with regard to the alleged obviousness grounds of unpatentability. See Pet. 20. In regard to the alleged anticipation grounds, Petitioner contends “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep,” and asserts this is an “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court. Id. at 68, 70. Patent Owner proposes no express construction of any claim term and states “no claim terms are in controversy.” Prelim. Resp. 10. In light of our determinations below, we find that an express construction of any claim term is not necessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - Apple Inc. v. Parus Holdings, Inc.Institution deniedPTAB · Dec 2, 2022 · IPR2022-00949 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable over the asserted Brown and Neal combinations, including the Shuster ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill in the Art The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. See Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). POSITA “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command or equivalent field,” wherein “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“search for a product that is offered by multiple suppliers, a hierarchy of cascading searchable data sets in a database system is searched until a match is found. Pet. 32; see also Ex. 1008, Abstract, 5:58–60, 7:9–12. And, as Patent Owner points out, Neal’s system manager configures the predetermined hierarchy of data sets in the database system in which to search. Prelim. Resp. 33; see Ex. 1008, 5:58–64. We are persuaded by Patent Owner’s contention that a POSITA would not have been motivated to combine Brown’s system in which the list of choices of full title descriptions is refined for user selection until the user converges on one choice (see Ex. 1007, 6:41–50), with “a database system such as Neal in which the realm of possible results is already predefined by a system manager.” Prelim. Resp. 34–35. As Patent Owner points out, “[Petitioner]’s basis for the Neal combination hinges on the Brown exception condition where multiple hyperlink URLs are retrieved due to an ambiguous speech command.” Id. at 35–36. But “[w]ith no knowledge of ‘desired information,’ Neal’s sequential search methodology is meaningless when applied to Brown’s set of ambiguous hyperlink URLs.” Id. at 36. Petitioner’s contention that a POSITA would have been motivated to modify the system of Brown with the teachings of Neal does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, Petitioner’s obviousness position does not sufficiently explain why a person which the list of choices of full title descriptions is refined for user selection until there is no ambiguity (see Ex. 1007, 6:41–50), using Neal’s search of a favored supplier in a hierarchy of cascading searchable data sets. See Ex. 1008, Abstract, 5:58–60, 7:9–12. Indeed, Petitioner does not direct us to persuasive evidence that applying Brown’s IVR system using Neal’s sequential searching technique (Pet. 36–37) would have been expected to provide any advantage, outside the teachings of the ’402 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Yarowsky’s declaration testimony to support its contention that one of ordinary skill in the art would have combined the teachings of Brown and Neal such that “[i]f the data supplier (e.g., a website in Brown) does not have the desired information, then the search continues to the second preferred supplier of information, and so on until a match is found or all the websites have been visited.” Pet. 36–37. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See In re Magnum Oil Tools, 829 F.3d at 1380. Instead, we conclude that Petitioner uses improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,185,402 - PTAB · Nov 30, 2022 · IPR2022-00943 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–16: claims 1–11 and 13–16 on obviousness over Hart-787, Fu, and Rosenberg, and claim 12 with Hart-286 added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’267 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 16 (citing Ex. 2001 (declaration of Dr. Michael S. Scordilis) ¶¶ 21–28). Dr. Scordilis asserts that Petitioner’s definition “imports a number of specific and nuanced work-experience requirements that are not necessary to understand the invention of the ’276 patent,” but also notes that he performed his analysis from the point of view of a person of skill as defined by each party and “the differences between [the different levels of skill] did not affect my overall conclusions.” Ex. 2001 ¶¶ 25, 28. Based on the present record including the disclosure in the ’267 patent, for the purposes of institution, we preliminarily adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill as reflected in the prior art. We find that this definition is consistent with the level of skill in the art as reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our decision here would not be different if we applied Patent Owner’s proposed definition, in which we would substitute “approximately” for “at least” to avoid ambiguity.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner, while arguing that no construction is necessary, asserts that the proper interpretation of “one or more commands” in claim 1 would include “conventional remote control commands.” Pet. 18–19. Patent dispute this assertion. Prelim. Resp. 16–17. We need not construe this claim term at this point in the proceeding for the purpose of institution. Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On the present record and for the purpose of institution, we determine that Petitioner has adequately showed a proper combination of the prior art references. With respect to arguments regarding field of endeavor, we note that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In re Bigio in an inter partes context). Each of the prior art references is an “audio monitoring method[]” (Prelim. Resp. 28) in which information received by audio-receiving microphones is used to attenuate what is played by a device. Ex. 1004, code (57); Ex. 1005, code (57); Ex. 1006, code (57). are in the same field of endeavor. See Pet. 61 (citing Ex. 1003 ¶ 159). Additionally, based on the current record, we find Petitioner’s motivation to combine argument sufficient for institution. In particular, the distinction Patent Owner seeks to draw between the references does not undermine Petitioner’s argument and evidence that one of ordinary skill in the art would have, in order to effectuate Hart-787’s teaching of attenuating the audio output of a linked device if a user has indicated a command is to be issued, looked to Fu’s teaching of volume adjustment based on a predetermined threshold and Rosenberg’s teaching of a noise level threshold based on a measurement of environmental noise. Pet. 26–30. We additionally agree that Petitioner has, preliminarily and on this record, shown sufficiently that one of ordinary skill in the art would have been motivated to make the combination and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. Id. at 28– 31 (Ex. 1003 ¶¶ 89, 91, 93). Notably, we find particularly compelling Hart- 787’s express disclosure regarding the goal of improving SNR for spoken commands. Ex. 1004, 1:64–2:37 (cited at Pet. 28), 9:21–25 (describing attenuating the audio more if the ratio between the user’s utterance and the volume of the audio) (cited at Pet. 22, 27).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,930,276 - Apple Inc. v. Parus Holdings, Inc.Institution deniedPTAB · Nov 28, 2022 · IPR2022-00948 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–26 were unpatentable over Danner or Danner and Woods.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner does not sufficiently show that this aspect of the claim would have been obvious over Danner, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Danner.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to voice commands, or equivalent field.” Pet. 13. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision.4 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, all terms of the Challenged Claims should be given their plain and ordinary meaning,” and Patent Owner does not propose any express construction of any claim term. See Pet. 14. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that Petitioner insufficiently supports its contention that Danner’s application document database is “associated” with the components Petitioner identifies as corresponding to the recited “media server.” At best, Petitioner appears implicitly to apply a broad understanding of the term “associated,” but has not proffered any explicit construction of the term that we might evaluate in the context of the ’314 patent. In this respect, we note that Danner’s proxy browser 62 (and other components Petitioner identifies as part of the recited “media server”) is separated from application server 66 and web server 64 by components that Petitioner identifies as corresponding to the “internet.” See Pet. 34 (Petitioner’s annotated version of Danner’s Figure 2 identifying the “internet” in green). Neither Petitioner nor Dr. Yarowsky provides sufficient explanation how a database can be “associated” with a “media server” in the context of the ’314 patent with such a separation. See Ex. 1003 ¶ 91. We recognize that Petitioner advances an obviousness challenge, not an anticipation challenge. But Petitioner has described no clear modification to Danner that would result in Danner’s application document database 96 being “associated” with proxy browser 62 and related components. We decline to speculate how such a modification might be accomplished to meet the required association. Such association is not achieved merely because proxy browser 62 sends an instruction “to cause the application server to perform instructions stored in its database.” See Pet. 46 (emphasis added).” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Equo IP LLCAll claims unpatentablePTAB · Nov 28, 2022 · IPR2021-00943 · APJ Jason M Repko · IPR · Final written decision
Claims 1, 5–9, 11, 12, 16–20, and 22 are unpatentable as obvious over the 300 reference, the 321 reference, and Ericsson.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“Generally, Patent Owner’s arguments and Dr. Cooklev’s corresponding testimony do not give sufficient weight to the 300 reference. See id. at 49–52. Rather, they are heavily focused on what the 321 reference alone expressly teaches or suggests. See id.; Cooklev Decl. ¶¶ 140–148, 180–181. Because Petitioner relies on the 300 reference together with the 321 reference in its obviousness rationale, we disagree with these arguments (PO Resp. 49–52), and we give little weight to Dr. Cooklev’s corresponding testimony on this issue (Cooklev Decl. ¶¶ 140–148, 180– 181). c) Experts versus a POSITA Patent Owner notes that “both parties agree that the members of the 3GPP Working Groups were experts in the field—with more expertise and understanding than a POSITA.” PO Resp. 49 (emphasis added). Dr. Cooklev testified, “I disagree that a POSITA—who under all accounts would have less expertise than the members of the 3GPP Working Groups—would recognize a problem and believe that the solution was obvious when the Working Group members themselves struggled with the same issue.” Cooklev Decl. ¶ 194, cited in PO Resp. 49. Patent Owner argues that Petitioner’s obviousness analysis relies on the skill level of an expert, not a POSITA. PO Resp. 56. Patent Owner, though, provides insufficient evidence to support the assertion that the Working Group members struggled with this issue. See id. at 49. To the contrary, the background knowledge, reflected in the 300 reference, demonstrates that, in the RAP, the UE must receive a RAR before it transmits Message 3. See, Pet. 33–34 (citing Min Decl. ¶ 102; Ex. 1002, as “correction” (category F), instead of an “addition of feature” (category B) or a “functional modification of feature” (category C). Ex. 1011, 1. The “reason for change” in Qualcomm’s change request also lacks any indication of a struggle: According to the original intention, it is clarified that the transmission of the RACH Msg3 performed only in response to an uplink grant in the Random Access Response. The current specification also allows transmission of Msg3 in response to UL grant on PDCCH.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“PO Resp. 44–45. Patent Owner claims that its definition is better than Petitioner’s because (1) it is not “based on a rigid formula that does not credit significant industry or research experience, which may substitute for formal academic work” and (2) it references additional degrees and coursework. Id. at 45. Patent Owner, though, does not explain how those differences affect the obviousness analysis in this case. See id. Instead, Patent Owner argues that, “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness” because the members of the 3GGP working groups were experts, not persons having ordinary skill. PO Resp. 56. That is, Patent Owner’s argument does not depend on the specific differences between the proposed definitions. See id. Rather, Patent Owner argues that Petitioner implicitly applies a level of skill that exceeds the ones proposed by either party. See id. We disagree with Patent Owner’s argument for the reasons discussed in Section II.C of this Decision. We see no differences between the parties’ proposed definitions that would affect our analysis. Considering the full record developed during trial, including our review of the ’120 patent and the types of problems and solutions described there and in the cited prior art, we apply Petitioner’s definition in this Decision. Pet. 12. But our conclusion would be the same under Patent Owner’s.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner asserts, The Board should construe these two related terms [in claims 1 and 12] such that this “transmitting” feature requires transmitting the Msg3 data only when the three claimed conditions are met: (1) the UL Grant is received on the specific message, (2) the specific message is the random access response message, and (3) there is data stored in a Msg3 buffer of the user equipment. Pet. 12–13 (citing Ex. 1016 ¶¶ 56–57). In Petitioner’s view, the plain language supports the “only when” construction because “the only time after the UL Grant is received on the specific message that the user equipment transmits Msg3 buffer data is only when the specific message is the random access response message and there is data stored in a Msg3 buffer of the user equipment.” Id. at 13. Patent Owner argues for a broader construction. PO Resp. 40; Sur- reply 1–7. In Patent Owner’s view, narrowing the claim by adding the word in other IPRs involving a related patent (U.S. Patent No. 7,881,236),7 the word “only” clarified when the system transmits Message 3 data, but this is not needed here because the claim recites four transmitting limitations that cover all possible scenarios. PO Resp. 40. Patent Owner argues that Petitioner’s narrow construction is “an effort to introduce a potential non-infringement position” in this IPR. Sur-reply 5. In Patent Owner’s view, “No word or phrase from the challenged claims requires construction for resolution of this IPR.” PO Resp. 36; Sur-reply 4. During the oral hearing, both parties agreed that we need not construe the claims to reach the unpatentability issues. See Tr. 43:14–17 (Patent Owner’s counsel); 64:18–22 (Petitioner’s counsel). We need not resolve the dispute because Petitioner has shown that the” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“properly considers the 300 reference together with the 321 reference because the 300 reference describes a process not clearly documented by the 321 reference. Pet. 6. In particular, the 321 reference, individually, does not clearly describe whether a UE transmits Message 3 when it receives an uplink grant on a message other than an RAR. See id. But together the references show that (1) the Message 3 transmission occurs only if the RAP is ongoing and the Message 3 buffer has a MAC PDU and (2) Message 3 transmission requires a prior UL Grant received in an RAR. See id. at 34–35; Min. Decl. ¶ 104. Specifically, the 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003 § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an UL Grant in an RAR and calls the C-RNTI grant the UL Grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. Dr. Min testifies that, in the 321 reference, the UE chooses either the UL Grant received in an RAR or the UL Grant received in a PDCCH. Min Decl. ¶ 95. But, according to Dr. Min, the 321 reference clearly indicates that UL Grant received in the RAR is the correct one to use during the RAP. Id. ¶ 96. Dr. Min explains that the 321 reference teaches that the UE processes the received UL Grant value after successfully receiving RARs, but the 321 reference is silent about looking for a grant in a PDCCH during the RAP. Id. (citing Ex. 1003 § 5.1.4; Ex. 1045, TS 36.213 v8.3.0, § 6.1). Dr. Min testifies that a UL Grant received in a PDCCH during a RAP “would be highly unreliable” and should be discarded. Id. ¶¶ 96–97. So the 321 reference alone provides strong evidence supporting Petitioner’s assertion that it would have been obvious to transmit Message 3 only when (1) Message 3 data was available to transmit and (2) the UE had received an UL Grant in an RAR. See Pet. 35. To the extent that the language of the 321 reference is ambiguous on” slip op. at 15
Patent outcomesUS 10,517,120 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,517,120 - Meta Platforms, Inc. v. Wrinkl, Inc.All claims unpatentablePTAB · Nov 23, 2022 · IPR2021-00882 · APJ Neil T Powell · IPR · Final written decision
Claims 1–23 are unpatentable as obvious over Ji and Sarafa; the Board did not reach the Ji, Sarafa, and Oh ground.
RulingsFinal written decision- Strike new argumentNew argument consideredMixed
“We do not agree with Patent Owner that the arguments in sub-section 2 on pages 8–9 of Petitioner’s Reply are improper new arguments. Rather, we find these arguments properly elaborate on the Petition, in response to the proposed construction of “link” in Patent Owner’s Response. Although we agree with Patent Owner that the Petition does not include the phrase “quoted message identifier,” Sarafa explains that the quoted message cited in the Petition and the “quoted message identifier” are part of the same message package. E.g., Ex. 1007 ¶ 83. Patent Owner contends that Petitioner’s citation of the quoted message in the Petition and then the quoted message identifier in the Reply is like if I have a patent to some kind of car and someone points to a Porsche and says, look, the Porsche has an engine, and then we argue about an engine, and then they come back and say, well, we're referring to the turbo charger in the engine in their reply, even though they never mention turbo charger, and said that's the key, it's like, well, we weren't on notice of that. Tr. 71:2–9. We find this unpersuasive. Patent Owner does not explain why a reply that cites a subcomponent of an item cited in the petition would necessarily go beyond properly elaborating on the arguments in the petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill identified by Petitioner. Additionally, we agree with Patent Owner that the level of skill it identifies differs very little from Petitioner’s proposed level of skill, and our analysis below would be the same under either party’s identified level of skill.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In order to resolve the parties’ patentability dispute, we only need to resolve whether the correct construction of “link” requires using an address specifically (rather than data generally) to “point to” a message. We find the record lacks persuasive support for such a construction. Looking to the ’198 patent itself first, neither the claims nor the Specification says anything about “point[ing] to” a message or another resource. See generally Ex. 1001. The ’198 patent mentions “address” only once, and that passage refers to a person’s address, not a message’s address. Id. at 12:29–33. Additionally, Patent Owner does not cite any other intrinsic evidence, such as the prosecution history of the ’198 patent, supporting a construction of “link” requiring a message’s address. See, e.g., PO Resp. 10–12; PO Sur-reply 2–7.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Weighing the parties’ arguments and evidence, we find that Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine the teachings of Ji and Sarafa. As explained below, Petitioner persuades us that a person of ordinary skill in the art would have understood that Ji teaches automatic scrolling, and that Sarafa’s automatic scrolling would have beneficially complemented Ji’s. Pet. 21–22; Pet. Reply 14–17; Ex. 1003 ¶¶ 75–77; Ex. 1018 ¶ 47. Additionally, regardless of whether Ji teaches automatic scrolling in paragraph 92, Petitioner persuades us that Ji and Sarafa address similar problems related to tracking and understanding convoluted conversations in messaging systems. See Pet. 16–21; Ex. 1003 ¶¶ 64, 65, 70, 73, 74. As Dr. Cockburn testifies, Ji emphasizes the problem that users cannot quickly find and understand messages in complicated message streams. Ex. 1003 ¶ 64 (citing Ex. 1006 ¶ 2); Pet. 16. Petitioner also persuades us that Sarafa addresses such problems, at least in part, by expressly teaching certain advantages of its scroll-back feature, such that a person of ordinary skill in the art would have considered it advantageous to add Sarafa’s scroll-back feature to Ji’s system. See Pet. 18–19; 21–23; Ex. 1003 ¶¶ 70, 74. For example, addressing the same problems discussed in Ji, Sarafa explains that its scroll back feature would facilitate a user’s ability to understand a complicated conversation because “[m]aking available the context of a quoted message may benefit a user in understanding a quoted message by providing messages that were displayed before and/or after the quoted message so as to play the quoted message in context.” Ex. 1007 ¶ 90; Pet. 19; Ex. 1003 ¶ 70. Similarly, Sarafa explains that its scroll back feature “provid[es] additional context to users . . . , improving the user experience of quoted messages for its users.” Ex. 1007 ¶ 23; Pet. 19; Ex. 1003 ¶ 70. We find that these disclosed benefits would have provided compelling motivation for a person of ordinary skill in the art to add Sarafa’s scroll back feature to Ji’s messaging system. Pet. 19–23; Ex. 1003 ¶¶ 71, 73–77. Indeed, as Dr. Cockburn explains, “[s]ince Ji also quotes the original message in the reply, Sarafa would therefore be a natural complement to Ji.” Ex. 1003 ¶ 77.” slip op. at 42
Patent outcomesUS 9,860,198 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198
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.