- Microsoft Corp. v. Parus Holdings, Inc.Institution deniedPTAB · May 11, 2022 · IPR2022-00137 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 or 2 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner fails adequately to support its contention that the combination of Perrone, Kumar, and Madnick meet claim 1’s requirement for “a rank number assigned to each one of said web sites and stored in said database.” See Ex. 1001, 19:56–57. We therefore 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 Perrone, Kumar, and Madnick.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Petitioner seeks to fill the resulting gap by contending that a person of ordinary skill in the art “would have understood Kumar’s ranking teachings would have been appropriately applied to distinct web sites when the web sites each represent a satisfactory source for desired information.” Id. at 24. Petitioner advances this contention notwithstanding the fact that Perrone fails to disclose a database containing a list with multiple web sites, and notwithstanding the fact that Kumar fails to disclose distinct web sites. Petitioner’s gap-filling contention thus seeks to compensate for what is absent from the references themselves. But “[t]o draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Petitioner’s additional citation of Anycasting fares no better. Notably, Petitioner does not rely directly on Anycasting as part of its patentability challenge. Instead, Petitioner cites Anycasting to support its gap-filling argument, specifically for the proposition that “distinct web sites may be considered equivalent sources of particular information (‘replicated servers’) for desired information, such as news.” Pet. 24. In doing so, Petitioner relies on Anycasting’s statement that “whereas the many web news sites (e.g., CNN Interactive, Time Magazine and USA Today) carry different information, they, nevertheless, can be construed as being replicated servers for some applications.” Ex. 1008, 1390 (emphasis added).3 Petitioner does not specifically address the limited applications for which this statement might apply. Regardless, Anycasting’s statement falls far short of supporting a general equivalence of replicated servers and distinct web sites 3 Petitioner’s citation to page 1392 appears to be a typographical error. that would thereby render inconsequential Kumar’s silence on distinct web sites. See Prelim. Resp. 31 (“Anycasting fails to remedy Kumar’s failure to disclose the ranking of multiple, distinct web sites.”).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies, such as web-based information retrieval systems.” Pet. 4. Petitioner adds that “[a]dditional education may substitute for lesser work experience and vice-versa.” Id. Dr. Terveen supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶¶ 25–28. 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. Terveen, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner does not believe any claim language requires express construction” to resolve its challenges, nor does Patent Owner propose any express construction of any claim term. See Pet. 6. 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 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,721,705 - PTAB · Apr 19, 2022 · IPR2022-00010 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 14–19 on four § 103 grounds based on Suzui, Boniface, and Gilmore, with additional references for claims 16, 17, and 19.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“Even though it explains that parallel petitions challenging the same patent are generally disfavored, the consolidated Trial Practice Guide nevertheless recognizes that there may be “rare” circumstances in which more than one petition may be necessary, and that the panel has discretion to review whether fairness warrants allowing multiple petitions by a single petitioner. Consolidated Trial Practice Guide, 59. In particular, petitioners are required to file lengthy petitions that fully elaborate their arguments for canceling the challenged patent. 37 C.F.R. § 42.22(a)(2); see also id. § 42.21(a), (c); 35 U.S.C. § 312(a)(3) (“A petition … may be considered only if … the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). Thus, the Board recognizes that, with the strict limits set on the length of petitions (see 37 C.F.R. § 42.24(a)(1)), in some cases, it may be impossible to adequately present all legitimate grounds for cancelation in a single petition. Here, petitions in Group 2 challenge different claims from the petitions in Group 1, wherein the claims in Group 2 are directed to different subject matter from those in Group 1. Thus, we are not persuaded that Petitioner should be able to adequately present all legitimate grounds for cancelation of both sets of claims directed to different subject matter in a single petition. In this case, we are not persuaded that the petitions between the two groups are considered “parallel” petitions that would provide the Petitioner more than one bite at the apple. That is, we are not persuaded that the filing of the two separate groups of petitions directed to different subject matter involve an abusive attempt to get more than one bite at the apple.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. 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 grant Petitioner’s request and institute an inter partes review of all challenged claims.” 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).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner further contends that “routing wires in parallel (for instance in the same conduit) was a well-known wiring technique,” wherein Boniface teaches “routing the positive and negative conductors ‘in parallel with an array grounding conductor.’” Pet. 29 (citing Ex. 1402 ¶¶ 193–196). Petitioner provides an annotated Figure 1 of Boniface, shown below, to illustrate its contentions. Annotated Figure 1 of Boniface in the Petition, according to Petitioner, illustrates “a fault detection system comprising a photovoltaic solar array 101 (blue) connected to a power conditioning unit, e.g., inverter 115 (orange) via connective wiring.” Pet. 29 (citing Ex. 1424 ¶ 37; Ex. 1402 ¶ 194). Petitioner contends that Boniface discloses that “a photovoltaic source positive conductor (102/112/112’) and a negative conductor (103/113/113’) (green) are routed in parallel with an equipment ground conductor 104 connected to earth ground system 118.” Id. (citing Ex. 1424, ¶¶ 37–39, 48, Figs. 1, 2, 6, 8; Ex. 1402 ¶ 194). According to Petitioner, a POSITA would have been motivated to implement Suzui’s system, in view of Boniface’s teaching, “to route Suzui’s positive and negative conductors in parallel with Suzui’s frame grounding conductors . . . to prevent shock hazards and improve safety,” and additionally “because routing the wires in parallel (e.g., in the same conduit) would also be easier and more convenient.” Id. at 31 (citing Ex. 1424 ¶ 2; Ex. 1402 ¶ 195).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,937,822 - PTAB · Apr 19, 2022 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13 and 20, finding a reasonable likelihood of success on each asserted ground in the petition.
RulingsInstitution decision- Parallel petitionsOther
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we find that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1–3 and 8–10 as anticipated by Tracy; Claims 1–3 and 8–10 as obvious over Tracy; Claims 4 and 11 as obvious over Tracy and Fujimoto; Claims 6 and 20 as obvious over Tracy and De; Claim 7 as obvious over Tracy and Bond; XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’822 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). construed as means plus function terms: DC to AC converter, switch[ing] controller, AC ground leak detector, bi-directional DC-to-DC converter, common-mode filter. Pet. 17–21. Although Petitioner states these terms “could be construed as means-plus-function limitations,” Petitioner states that if the panel does not construe them as such, these terms should be construed according to their ordinary and customary meaning. Id. at 17. According to Petitioner, whether these limitations are construed as means plus function terms or according to their ordinary and customary meaning, the prior art discloses the limitations of the challenged claims. Petitioner does not explain why terms that have an ordinary and customary meaning should be construed as means-plus-function limitations in the context of the ’822 patent. Therefore, we apply the ordinary and customary meaning to each limitation. Vivid Techs., 200 F.3d at 803.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that at the time of the patent application, a person of ordinary skill “would have had a bachelor’s degree in electrical engineering or a similar discipline and three years of design experience with power electronics, including experience designing power converters.” Pet. 17 (citing Ex. 1002, Declaration of Dr. R. Joseph Baker (“Baker Decl.”)). Patent Owner does not discuss the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); of ordinary skill is consistent with the subject matter of the claims and references, we apply Petitioner’s proposed level of skill in this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,937,822 - Unified Patents, LLC v. Divx, LLCInstitutedPTAB · Mar 17, 2022 · IPR2021-01476 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted review of claims 1 and 10 on both § 103 grounds: Biderman with Gigliotti, and Sood, Myers, Casalena, Nilsson, and Ma.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with streaming media applications or related fields (e.g., network applications),” where a “lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4-5 years).” Pet. 8 (citing Ex. 1003 ¶¶ 47–51). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally Prelim. Resp. We determine, on the current record, that the level of ordinary skill proposed by Petitioner is consistent with the ’987 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt that level in deciding whether to institute trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In this inter partes review, claims are construed using the same claim construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). Neither party contends that any claim term requires express construction. Pet. 10; see generally Prelim. Resp. Accordingly, we do not expressly construe any claim terms at this stage of the proceeding.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“At this stage of the proceeding, Petitioner sufficiently shows that an ordinarily skilled artisan would have had reason to combine the teachings of Biderman and Gigliotti. Pet. 30–33. Patent Owner’s arguments misconstrue Petitioner’s contentions regarding the benefits of the combination. Petitioner contends that Biderman describes that its technique “allows the client device to switch between the versions of the program without a substantial interruption of the program” at a transition point by storing content in a buffer, but a [person of ordinary skill in the art] would have recognized that, without a technique for measuring the amount of content in the buffer, Biderman’s client might switch to the second playlist content without sufficient content stored in the buffer, which might result in an interrupted stream of media, contrary to its goals. Pet. 31–32 (citing Ex. 1019 ¶ 140) (emphasis added). Petitioner acknowledges that Biderman teaches the transition without a substantial interruption, but argues Biderman does not account for sufficient second playlist content stored in the buffer. Petitioner’s claimed motivation is different than just avoiding substantial interruptions during streaming, i.e., Petitioner’s claimed improvement from Gigliotti’s technique relates to interruption that may come later, after the transition to the second playlist. According to Petitioner, Gigliotti’s technique of measuring buffer fill levels before switching occurs ensures an uninterrupted or substantially uninterrupted stream of media, thereby improving Biderman’s client device and system. Id. at 32 (citing Ex. 1020 ¶ 13; Ex. 1003 ¶¶ 122–125). Gigliotti’s selection of the most appropriate available bit rate for the stream to provide uninterrupted streaming is based on Gigliotti’s heuristics module’s statistical analysis of the buffer’s activity and the buffer’s fill level. See supra § III.E.1.f; Ex. 1020 ¶ 42. Accordingly, on the current record, we are persuaded that Petitioner’s motivation to combine Gigliotti’s technique is based on adding Gigliotti’s heuristics module functionality to Biderman. See Pet. 32. Petitioner’s contention that there would be a reasonable likelihood of success in doing so is supported by Dr. Reddy’s testimony. Ex. 1003 ¶¶ 125–126 (citing Ex. 1009, 5). For purposes of deciding whether to institute trial, we determine Petitioner provides an adequate reason why one of ordinary skill in the art would have combined the teachings of Biderman and Gigliotti in the manner asserted by Petitioner, with a reasonable expectation of success. Pet. 30–32.” slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,326,987 - Hulu, LLC v. Divx, LLCInstitution deniedPTAB · Mar 15, 2022 · IPR2021-01418 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable; each ground relied on file-relative Candelore-II pointers disclaimed during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has not established a reasonable 1 This Petition is Petitioner’s first petition challenging claims 1, 2, 4, 7, 8, 10, and 13–16 of the ’443 patent. As noted below, Petitioner also filed a second petition challenging the same claims of the ’443 patent in IPR2021- 01419. Petitioner filed a Ranking and Explanation of Material Differences Between Petitions (Paper 3), where Petitioner discusses the two petitions. Because of the determination we reach on the merits, we do not address the parties’ arguments as to whether two petitions are necessary. likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review of the Challenged Claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“based on Candelore-II, the applicants raised two primary arguments. First, the applicants argued that Candelore-II “does not . . . appear to disclose partial encryption of encoded frames of video by encrypting at least one block of data within the partially encrypted frame so that only a portion of the encoded frame is encrypted.” Ex. 1003, 250. Second, and importantly, the applicants argued that Candelore-II’s failure to disclose partial encryption of encoded frames of video “is highlighted by the Candelore patent’s failure to disclose DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame as recited in claim 1.” Id. at 251 (first emphasis added). Critically, the very next sentence begins with the word instead, and states, “[i]nstead, the Candelore patent discloses pointers that point to the location of encrypted portions of the video data relative to the file.” Id. (emphases added). These two sentences from the applicants’ argument directly contrast the recited “offset value” language with Candelore-II’s disclosure. Specifically, the applicants sought to distinguish Candelore-II because its pointers are relative to the file. We find that by contrasting Candelore-II’s pointers, the applicants “ma[d]e clear that the invention does not include a particular feature”— pointers that are relative to the file. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). And, we also find that the applicants’ arguments constitute a “clear and unmistakable disclaimer” of an offset value that points to the start of an encrypted block within an encoded frame, where the offset value is relative to the file. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012). Although we agree with Petitioner that the applicants “never raised a distinction between offset values ‘relative to a file’ and offset values ‘relative to a frame’ at any point during prosecution,” we do not agree with Petitioner that the applicants “never said that offset values relative to a file are excluded from the scope of the claim.” Prelim. Reply 10. Rather, we find no other way to interpret the applicants’ arguments. As noted above, the applicants specifically stated that Candelore-II fails to disclose “DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame’” and then stated that “[i]nstead,” Candelore-II “discloses pointers that point to the location of encrypted portions of the video data relative to the file.” The applicants’ argument specifically identifies the claim language at issue here and specifically says that it is not disclosed because Candelore-II discloses something else instead.11 Accordingly, for these reasons, we find that the applicants disclaimed “pointers that point to the location of encrypted portions of the video data relative to the file.”” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“regarding the meaning of “an offset value that points to the start of an encrypted block within an encoded frame,” we determine that the applicants disclaimed an offset value that is relative to the file. See supra § II.A.2. On the present record, we find Patent Owner’s argument and evidence persuasive regarding Candelore-II’s disclosure. In particular, Patent Owner identifies the teachings of Candelore-II directed to its pointers, and Candelore-II’s description and Figure 3 support Patent Owner’s argument that Candelore-II’s pointers are relative to the file. See, e.g., Prelim. Resp. 33 (citing Ex. 1006 ¶ 31, Fig. 3). Additionally, Petitioner does not contest Patent Owner’s position that Candelore-II teaches pointers that are relative to the file. See generally Pet.; Prelim. Reply. Further, as applied to the combination, Petitioner does not propose modifying Candelore-II’s pointers such that they are not relative to the file. See, e.g., Pet. 22–27 (discussing motivation and reasonable expectation of success), 30–40 (discussing, inter alia, limitations [1f], [1h], [1i], and [1j]). Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution of the ’443 patent, Petitioner has not shown sufficiently on the present record that the combination of Toma, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [1j] and, hence, claim 1.” slip op. at 42
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,257,443 - Hulu, LLC v. Divx, LLCInstitution deniedPTAB · Mar 15, 2022 · IPR2021-01419 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7, 8, 10, and 13–16 were unpatentable over either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has not established a reasonable 1 This Petition is Petitioner’s second petition challenging claims 1, 2, 4, 7, 8, 10, and 13–16 of the ’443 patent. As noted below, Petitioner also filed a petition challenging the same claims of the ’443 patent in IPR2021-01418. Petitioner filed a Ranking and Explanation of Material Differences Between Petitions (Paper 3), where Petitioner discusses the two petitions. Because of the determination we reach on the merits, we do not address the parties’ arguments as to whether two petitions are necessary. likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Bajaj, however, testifies that he disagrees with Dr. Storer’s definition of the level of ordinary skill because the definition “exceeds the qualifications of a person of ordinary skill in the art.” Ex. 2002 ¶ 25. Nonetheless, Dr. Bajaj does not propose a specific level of ordinary skill in the art and states that, for purposes of his declaration, he applies Dr. Storer’s definition of the level of ordinary skill in the art. Id. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’443 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 and apply Petitioner’s position as to the level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“prosecution history sheds substantial light on how the applicants understood the disputed claim language. As set forth above, in response to rejections based on Candelore-II, the applicants raised two primary arguments. First, the applicants argued that Candelore-II “does not . . . appear to disclose partial encryption of encoded frames of video by encrypting at least one block of data within the partially encrypted frame so that only a portion of the encoded frame is encrypted.” Ex. 1103, 250. Second, and importantly, the applicants argued that Candelore-II’s failure to disclose partial encryption of encoded frames of video “is highlighted by the Candelore patent’s failure to disclose DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame as recited in claim 1.” Id. at 251 (first emphasis added). Critically, the very next sentence begins with the word instead, and states, “[i]nstead, the Candelore patent discloses pointers that point to the location of encrypted portions of the video data relative to the file.” Id. (emphases added). These two sentences from the applicants’ argument directly contrast the recited “offset value” language with Candelore-II’s disclosure. Specifically, the applicants sought to distinguish Candelore-II because its pointers are relative to the file. We find that by contrasting Candelore-II’s pointers, the applicants “ma[d]e clear that the invention does not include a particular feature”— pointers that are relative to the file. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). And, we also find that the applicants’ arguments constitute a “clear and unmistakable disclaimer” of an offset value that points to the start of an encrypted block within an encoded frame, where the offset value is relative to the file. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012). Although we agree with Petitioner that the applicants “never raised a distinction between offset values ‘relative to a file’ and offset values ‘relative to a frame’ at any point during prosecution,” we do not agree with Petitioner that the applicants “never said that offset values relative to a file are excluded from the scope of the claim.” Prelim. Reply 10. Rather, we find no other way to interpret the applicants’ arguments. As noted above, the applicants specifically stated that Candelore-II fails to disclose “DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame’” and then stated that “[i]nstead,” Candelore-II “discloses pointers that point to the location of encrypted portions of the video data relative to the file.” The applicants’ argument specifically identifies the claim language at issue here and specifically says that it is not disclosed because Candelore-II discloses something else instead.11 Accordingly, for these reasons, we find that the applicants disclaimed “pointers that point to the location of encrypted portions of the video data relative to the file.”” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“regarding the meaning of “an offset value that points to the start of an encrypted block within an encoded frame,” we determine that the applicants disclaimed an offset value that is relative to the file. See supra § II.A.2. On the present record, we find Patent Owner’s argument and evidence persuasive regarding Candelore-II’s disclosure. In particular, Patent Owner identifies the teachings of Candelore-II directed to its pointers, and Candelore-II’s description and Figure 3 support Patent Owner’s argument that Candelore-II’s pointers are relative to the file. See, e.g., Prelim. Resp. 42 (citing Ex. 1106 ¶ 31, Fig. 3). Additionally, Petitioner does not contest Patent Owner’s position that Candelore-II teaches pointers that are relative to the file. See generally Pet.; Prelim. Reply. Further, as applied to the combination, Petitioner does not propose modifying Candelore-II’s pointers such that they are not relative to the file. See, e.g., Pet. 30–36 (discussing motivation and reasonable expectation of success), 41–53 (discussing, inter alia, limitations [1f], [1h], [1i], and [1j]). Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution of the ’443 patent, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [1j] and, hence, claim 1. d. Independent Claim 7 and Dependent Claims 2, 4, 8, 10, 14, and 16 As noted above, limitation [7j] of independent claim 7 recites the same “offset value” language as limitation [1j] and Petitioner relies on its arguments and evidence directed to limitation [1j] in its discussion of limitation [7j]. See Pet. 72–73 (limitation [7j]). For the same reasons discussed above, we find that the same deficiency regarding claim 1 applies equally to claim 7 and the claims that depend from claim 1 or claim 7— claims 2, 4, 8, 10, 14, and 16. Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [7j] and, via their dependency from claim 1 or claim 7, the subject matter of dependent claims 2, 4, 8, 10, 14, and 16.” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,257,443 - Interactive Communications International, Inc. v. Blackhawk Network, Inc.All claims unpatentablePTAB · Mar 15, 2022 · PGR2020-00084 · APJ Frederick C Laney · PGR · Final written decision
Claims 1–19, 21–42, and 44–53 are unpatentable as obvious over Szrek; claims 20 and 43 are unpatentable as obvious over Szrek and Gilmore.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s contention persuasive. We agree that the description of a POSA in this case, which is most consistent with the scope and content of the ’894 patent and the prior art, properly includes a working knowledge of both POS activation systems and lottery systems. Therefore, the level of skill in the art for this case is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Although Patent Owner’s proposal most accurately reflects the background of the hypothetical person of ordinary skill in the art, the differences between the parties’ proposed formulations are not material to any issue in dispute and the parties do not contend otherwise. All of the findings and conclusions set forth below would have been the same had we instead adopted Petitioner’s proposed formulation.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“After considering the parties’ arguments and evidence, we determine that the plain meaning of “transaction processor”/“transaction processor system” applies, which is a processor [system] that processes transactions between two devices.8 We agree with Petitioner that adding “third party” to the plain meaning simply creates uncertainty. For example, it is unclear whether “third party” imports a limitation for the owner/manufacturer of the processor/system to be a different entity than the owner/manufacturer of the retailer and lottery administration devices (which is unrelated to the functionality or structure of the processor/system) or whether “third party” 8 Rather than “between two devices,” Patent Owner refers to “between a lottery administration system and retailer.” PO Resp. 20. Because other elements in the claims dictate the particular devices with which the transaction processor communicates, we determine that it would be improper to import that limitation into the meaning of “transaction processor”/“transaction processor system.” Nevertheless, even if those particular devices were imported, it would not change our obviousness analysis because no issue rests on whether the alleged transaction processor in the prior art is processing a transaction between a lottery administration system and retailer. imports a limitation for the processor/system to be a separate and distinct device from the retailer point of sale and lottery administration devices. Although Patent Owner’s counsel made clear that the latter interpretation was intended (Tr. 41:10–42:7, 43:2–43:15), we do not agree that the use of the words “third party” in Figures 7 and 8 of the ’894 patent limits the “transaction processor” and “transaction processor system” to being a separate and distinct device from the retailer and lottery administration devices. Identifying the transaction processor as a “Third Party Processor” in two illustrative figures depicting a process (Ex. 1001, Figs. 7, 8), without anything more in the written description to explain why a “third party processor” may be an important or significant aspect of the transaction processor or invention as a whole, does not justify limiting the plain meaning of a “transaction processor” to the “third party processor” shown. Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (explaining that an invention will only be limited to its preferred embodiment when “the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Therefore, we construe “transaction processor” and “transaction processor system” in accordance with their plain meaning, which is a processor [system] that processes transactions between two devices. Additionally, we decline to limit “transaction processor” and “transaction processor system” to “third party” processors or systems because the intrinsic record does not justify such a modification and it would create uncertainty. However, we do construe the “transaction processor”/“transaction processor system,” “retailer”/“retailer POS,” and “lottery administration system” as separate and distinct components.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“processing unit, causes payment confirmation for the pre-printed lottery ticket to be provided to the lottery administration system. And Patent Owner disputes whether Petitioner has sufficiently shown Szrek discloses the transaction processor (store back office 240) provides payment confirmation to the lottery administration system (game provider 250). PO Resp. 13–14, 48–53; Sur-reply 19–20. We are persuaded by Petitioner, however, that Szrek’s description of the inter-operational characteristics of store back office 240, cash register/POS terminal 230, and game provider system 250 would have suggested to a skilled artisan at the time of the invention that store back office 240 would include an instruction to cause payment confirmation for the pre-printed lottery ticket to be provided to the game provider system 250. Ex. 1007, 4:28–29, 4:56–67, 5:17–20, 6:44–47; Ex. 1005 ¶¶ 62–64.” slip op. at 43
Patent outcomesUS 10,769,894 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,769,894 - Apple Inc. v. Traxcell Technologies, LLCInstitutedPTAB · Mar 15, 2022 · IPR2021-01553 · APJ Norman H Beamer · IPR · Institution
The Board instituted review of claims 1–25, 27–28, and 30 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in The Art (“POSITA”) in October 2001 would have had a bachelor’s degree in electrical or computer engineering, or an equivalent, and two years of professional experience relating to locating technologies, mobile devices and wireless networks. . . . Lack of professional experience can be remedied by additional education, and vice versa. Pet. 6 (citing Braasch Decl. ¶ 22). Patent Owner submits: A Person of Ordinary Skill in The Art (“POSITA”) in October 2001 would have had a bachelor’s degree in electrical or computer engineering, or an equivalent, and two years of professional experience relating to locating technologies, mobile devices and wireless networks. . . . Lack of professional experience can be remedied by additional education, and vice versa. Prelim. Resp. 4 (citing Ex. 2001 (Declaration of Robert Van Essen, hereafter, “Van Essen Decl.”), ¶ 21). Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Although we agree that the plain meaning of “navigation information” encompasses “route, travel direction, speed, and mobile location” in this context, we conclude that, as this stage of the proceeding, it is not necessary to explicitly construe that phrase or other claim terms.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner argues, without elaboration, “[t]here is a lack of a motivation to combine [Moles, Sakarya, and Meadows].” Prelim. Resp. 26 (citing Van Essen Decl. ¶ 72). This conclusory assertion is unpersuasive. For purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of Moles, Sakarya, and Meadows.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,549,388 - Apple Inc. v. Traxcell Technologies, LLCInstitutedPTAB · Feb 7, 2022 · IPR2021-01552 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the filing would have at least a Master of Science (“MS”) Degree in Computer Science, Computer Engineering, Cartography, or equivalent work experience in the field of computer networks, along with knowledge of the general structure of networked communication systems, its hardware and software components and underlying communications technologies. . . . In addition, a POSITA would be familiar with the latest communications standards. Prelim. Resp. 4 (citing Ex. 2001 (Declaration of Robert Van Essen, hereafter, “Van Essen Decl.”), ¶ 21). Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 6–7. Patent Owner states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“3. The Combination of Bruce and Hancock Petitioner argues that one of ordinary skill would have been motivated to combine the geographic location-based systems of Bruce and Hancock, resulting in a combination that would have rendered obvious, for example, independent claim 1. Pet. 12–17. Petitioner first argues that one of ordinary skill would have been motivated to add to the Bruce system, the capability of accessing routing information via the Internet, as disclosed in Hancock. Pet. 13–15. Petitioner cites the fact that one embodiment of Bruce uses a computer with a modem to allow a user to obtain directions from the system, and that providing such access via the Internet, as disclosed in Hancock, would have provided well-known advantages of higher data rates, storage capacity and additional Internet services. Id. (citing Ex. 1005, 1:38–40; Ex. 1008, 42:38–42; Ex. 1011, 24:16–19, 25:1–7, 27:39–67, 32:32–41; Braasch Decl. ¶¶ 46–49). Petitioner also argues that that one of ordinary skill would have been motivated to improve Bruce by providing more flexibility and variety in the ways for entering a destination, for which directions are requested, as disclosed in Hancock. Pet. 15–16. For example, Hancock discloses the ability to enter the names of businesses, to specify specific distances to destinations, and to use menus of possible destination locations. Id. (citing Ex. 1006, 2:40–43, 8:2–3; Ex. 1011, 8:66–9:3, 13:7–15, 28:49–29:1, 30:12– 14; Braasch Decl. ¶¶ 50–51). Petitioner further argues that one of ordinary skill would have been motivated to improve Bruce by using Hancock’s improved methods of formatting requests for directions via the use of data packets. Pet. 16–17 (citing Ex. 1011, 27:27–39, 27:64–67, 28:58–65; Braasch Decl. ¶¶ 52–54). Patent Owner does not specifically respond to these arguments. See generally Prelim. Resp. For purposes of this Decision, we determine that Petitioner has” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - Intel Corporation v. Parkervision, Inc.No claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
Patent outcomesUS 7,539,474 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,539,474
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.