- DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision
Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22
- Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner
“Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39
Patent outcomesUS 9,053,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,053,494 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.All claims unpatentablePTAB · Jul 25, 2018 · CBM2017-00032 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 are unpatentable under § 101; the petitioner did not show claims 17, 18, 23, 24, and 28 unpatentable under § 112.
RulingsFinal written decision- BurdenOther
“Considering each claim limitation, as well as each explicit citation to the specification expressly set forth in the Petition, we are persuaded that Petitioner has met its burden of showing, via analysis and evidence explicitly set forth on pages 6–7 of the Petition, that independent claim 1, as a whole, does not recite a technological feature that is novel or unobvious.” slip op. at 22
- Adverse judgmentOther
“Response (Paper 24, “PO Resp.”) and disclaimed claims 5, 25, 39, and 43 (Ex. 2006). Petitioner filed a Reply to the Patent Owner’s Response (Paper 38, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 40, “PO Sur”), and Petitioner filed a Response to the Sur-Reply (Paper 41, “Pet. Sur”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“II. ANALYSIS A. Claim Construction Petitioner and Patent Owner dispute the construction of certain claim terms. Pet. 23–28; PO Resp. 34–46. We apply the constructions of those terms set forth in Paper 49 in this decision.” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree. The preambles of independent claims 1, 19, and 33 expressly state as much. In particular, the preamble of claims 1 and 33 provide: “A system for providing targeted advertising to a multimedia content end user” (claim 1) or “a plurality of multimedia content end users” (claim 33). Ex. 1003, 46:13–14, 49:59–60. Likewise, claim 19’s preamble refers to “[a] device for providing targeted advertising to an end user.” Id. at 48:20–21. Taking claim 1 as a representative example, the remainder of the claim recites certain tangible components, namely a “storage device” and specifically, an “addressable and reserved storage space”; a “processor”; and “software implemented by” the processor. Id. at 46:13–28. The claim further requires the following functionalities: the processor “reserv[ing]” the storage space; the processor “select[ing] particular advertising data suitable for targeting to at least one end user based upon predefined criteria data”; the storage space “storing digital advertising data” and specifically, the “particular advertising data”; and the “particular advertising data” being “accessible to” the user. Id. Thus, we are persuaded that claim 1, taken as a whole, is focused on the concept of providing targeted advertising to a user. Further, the claims merely invoke computers as a tool to implement the concept of targeted advertising, and are not directed to any improvement in computer functionality. See Pet. 34; Ex. 1008 ¶¶ 944–945. The claims recite generic components and functionality. For example, in claim 1, the required components, outlined above—a storage device and specifically, a storage space, a processor, and software— are conventional. The recited functionalities—reserving the storage space for advertising data, selecting advertising data targeted to a user, storing that data, and making that data accessible to the user—are likewise basic and routine. As Petitioner points out, the specification expressly acknowledges that some of the tangible components of the recited system were known. See Pet. 7–8, 33–34, 40–75; Ex. 1008 ¶ 949. For instance, the specification refers to storage device 14 as “any medium known in the art for storing electronic data” and similarly, “any storage device for audio/video information known in the art.” Ex. 1003, 13:22–28, 15:1–5, 24:66–25:7; see id. at [57], 5:3–6, 21:42–22:2. The testimony of Petitioner’s declarant, Dr. Negus, also persuade us that each recited component and functionality was generic, conventional, and known. Ex. 1008 ¶¶ 945, 949–954; see id. ¶¶ 955–987.” slip op. at 26
Patent outcomesUS 9,053,494 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Mayo · EnfishPatents in suitUS 9,053,494 - Twilio Inc. v. Telesign CorporationAll claims unpatentablePTAB · Mar 6, 2018 · IPR2016-01688 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 2, 4, 6, 8, 10, 11, 13, 15, and 17 are unpatentable as obvious over Bennett and Campbell under § 103(a).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art at the time of the ’792 patent would have had “at least an undergraduate degree in computer science, or equivalent experience, and in addition would be familiar with Internet and telephone communications.” Pet. 22 (citing Ex. 1002 ¶¶ 11–20). Patent Owner does not dispute Petitioner’s assessment in its Response. Based on the record developed during trial, including our review of the ’792 patent and the types of problems and solutions described in the ’792 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for petitioner
“As shown in the chart above, the ’792 patent claims priority as a continuation or divisional application of a series of applications, and as a continuation-in-part (CIP) of U.S. Patent Application No. 11/034,421 (Ex. 1027, “the ’421 application”), filed on January 11, 2005. See Ex. 1001, col. 1, ll. 7–25. Petitioner argues that there is no presumption that the challenged claims are entitled to the filing date of the ’421 application, because the Office did not consider priority during prosecution of the ’792 patent, and the ’421 application does not provide written description support for certain limitations pertaining to the recited “notification event” in independent claims 1 and 10 of the ’792 patent. Pet. 9–15. In our Decision on Institution, we agreed with Petitioner, based on the record at the time, that the challenged claims are not entitled to the filing date of the ’421 application, and the earliest effective filing date of the challenged claims is October 5, 2006. Dec. on Inst. 10–12. Patent Owner does not dispute Petitioner’s assertions regarding the effective filing date of the challenged claims in its Response, and we do not perceive any reason or evidence that compels any deviation from our earlier conclusion. Thus, we adopt the previous analysis, and conclude that Bennett is prior art under 35 U.S.C. § 102(e) and Campbell is prior art under 35 U.S.C. § 102(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“reasonable construction in light of the specification of the patent in which [they] appear[ ].” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In the Decision on Institution, we preliminarily interpreted the claim term “notification event” to mean an event that results in the user being notified that the event occurred. Dec. on Inst. 6–10. The parties apply this interpretation in their Response and Reply, and we do not perceive any reason or evidence that compels any deviation from our earlier interpretation. See Resp. 14–15; Reply 11. We adopt the previous analysis and conclude that no other terms require interpretation.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s position, in effect, would require that a single prior art reference have to disclose the full concept of a “notification event” “associated with” an “action” requiring user acknowledgement. See, e.g., PO Resp. 18–19 (arguing that “[t]he Petition would need to rely on Campbell to teach the notification-event limitations . . . because Bennett does not, . . . but Petitioner fails to adequately argue or show that Campbell teaches such actions”); Tr. 18:7–19:9 (acknowledging that there need not be one reference disclosing the entire limitation, but arguing that “one cannot untether the action from the notification event”). The test for obviousness, however, is “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006) (explaining that in an obviousness analysis, “the prior art must be considered as a whole for what it teaches”); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Petitioner explains sufficiently what the combined teachings of Bennett and Campbell would have suggested to a person of ordinary skill in the art, namely, “events” in Bennett that trigger an SMS message to the user and that have associated “actions,” and adding a sentence to the SMS message in Bennett to provide notification to the user that the event occurred. See Pet. 37–59; Reply 16 (“Bennett discloses different types of ‘actions’ and Campbell discloses ‘notification events.’ . . . Thus, it is the combination of Bennett and Campbell that discloses ‘notification events associated with actions.’”). Thus, we are persuaded that, collectively, Bennett and Campbell account for a “notification event” “associated with” an “action” requiring user acknowledgement, as recited in claim 1.” slip op. at 21
Patent outcomesUS 9,300,792 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,300,792 - Oracle America Inc. / Oracle Corporation et al. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Jan 8, 2018 · IPR2016-01434 · APJ Michael W Kim · IPR · Final written decision
Claims 11–13 and 15–20 are unpatentable as obvious; claim 14 was not shown unpatentable because the cited personal notes were not “content contributed.”
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“While the parties use slightly different language, we are unable to discern any substantive differences between the proffered levels of skill and basic qualifications of a person of ordinary skill in the art. Accordingly, we adopt Dr. Papakonstantinou’s articulation of the level of ordinary skill as our own, if for no other reason then for its conciseness, with the understanding that the differences between the proffered levels of ordinary skill are limited and inconsequential in our analysis.” slip op. at 23
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner
“above-identified single statement in the specification, which uses permissible language such as “can be” and “does not need to be,” is sufficient to justify Patent Owner’s assertions, which for all practical purposes, is a disavowal of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”) We also credit the testimony of Dr. Almeroth over that of Dr. Papakonstantinou, because, among other reasons, Dr. Almeroth supports his testimony with relevant citations to the specification, while Dr. Papakonstantinou largely repeats that which is set forth in the Patent Owner Response, without further analysis. graphical fields that allow the input of administrative information without programming” are advantageous over “cumbersome programming performed in the past.” Ex. 2002 ¶¶ 44, 47. We treat this argument as subsumed within Patent Owner’s argument that the specification disparages prior art systems that require HTML programming to perform administrative tasks.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“224, 232 encompasses a “link to content.” In application, however, “what is a wireless LAN?” 224, 232 is actually two separate components: (1) the underlying technical set of computer instructions that, upon clicking the link associated with “what is a wireless LAN?” 232, transports a user to a web page associated with “what is a wireless LAN?” 232; and (2) the words “what is a wireless LAN?” 224 itself displayed on the computer display, but separate from the technical set of computer instructions set forth in (1). In this example, (1) is “link to content, but not itself ‘content,’” however, (2) is itself “content.” More precisely, when we now consider “what is a wireless LAN?” 224, 232 in relation to the aforementioned construction of “content” as “electronic data embodying information for an individual or individuals,” it becomes clear that “what is a wireless LAN?” 224, 232 is both “links to content” and “content.” Specifically, component (1) of “what is a wireless LAN?” 232 is “links to content,” but not “content” itself, because the underlying technical set of computer instructions is not “electronic data embodying information for an individual or individuals,” but for a computer. By contrast, component (2) of “what is a wireless LAN?” 224 is “content,” as it is clearly “electronic data embodying information for an individual or individuals,” in that the words “what is a wireless LAN?” are intended to convey information to an individual. So, as a practical matter, we discern that every disclosure of a “link to content” that includes “electronic data embodying information for an individual or individuals” (i.e., any information associated with a “link” that is separate from a generic indication of the “link” itself), is “content.” See also Ex. 3001, 6–16 (providing further analysis concerning construction, which we expressly incorporate herein). Accordingly, we determine that a proper construction of “content” is “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. We are persuaded that “administrative interface” is broader than the “administrative page” mentioned in the specification, in that an “administrative interface” may encompass 9 While discussing “graphical user interface” during oral argument, Patent Owner stated that it was not disclaiming claim scope. Tr. 47:20–22 (“We’re not arguing that the claim terms have been disclaimed in some phrase.”). something other than an “administrative page.” We are also persuaded that the specification’s disclosure of a non-limiting embodiment, that of a highlyautomated and browser-based “administrative page,” does not require that a proper construction of “administrative interface” include “graphical user interface.” As admitted by Patent Owner, these pages are “example[s]” only, and, at best, merely “impl[y]” the presence of a “graphical user interface.” See PO Resp. 8–9 (citing Ex. 1002, 16:39–44; Ex. 2002 ¶ 40). We are persuaded that an “implied example” does not belong in a proper construction of a claim term. Indeed, Petitioner asserts that Patent Owner’s factual premise, concerning the above “implied example,” is flawed, as the specification’s “reference to automation and a browser provides no basis for restricting the claimed ‘administrative interface’ to a graphical user interface.” Pet. Reply 5–6 (citing Ex. 1033 ¶ 15) (Dr. Almeroth testifies that “automation of computer systems does not require a graphical user interface.”). More specifically, Dr. Almeroth identifies other automated “interfaces” in the specification, such as “a networked cash register, bar code scanner or electronic product code reader” (Ex. 1002, 13:8–15, 14:51–52) that do not require a “graphical user interface.” Ex. 1033 ¶ 14. We agree with Dr. Almeroth’s analysis of the specification. Dr. Almeroth asserts further, and we agree, again, that “[o]ne of ordinary skill would understand that that cash register could be connected to a server that is accessible only via a command line interface, and that administrators could use command-line tools . . . to group content on that server.” Ex. 1033 ¶ 14. Patent Owner cites In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–1150 (Fed. Cir. 2012) for its finding of an implicit definition of a” slip op. at 13
Patent outcomesUS 7,516,177 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,516,177 - Telebrands Corp. v. Tinnus Enterprises, LLCInstitution deniedPTAB · Nov 30, 2017 · PGR2017-00024 · APJ Frances L Ippolito · PGR · Institution
The Board denied institution on all challenged claims, finding the § 103 and written-description challenges previously considered under § 325(d), and the remaining written-description and indefiniteness challenges insufficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We agree with Patent Owner that we should exercise our discretion in denying institution of review based on Petitioner’s § 103 challenges because the same art and arguments were considered by the Examiner during the original prosecution. There is no dispute that Saggio and Lee were expressly considered by the Examiner and discussed in the Examiner’s Reasons for Allowance in the May 24, 2016 Notice for Allowance. See Ex. 1008, 86–88. In the Notice of Allowance, the Examiner considered expressly the teachings of Saggio and Lee, and explained in detail that neither one of these disclosed the claimed “elastic fastener.” Id. Moreover, the Examiner expressly also considered Donaldson and found that it was “cumulative with Lee [ ] in that both references disclose that moving mechanical components must be used to detach the balloons.” Id. at 17.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on our review of the record, including the claim language and the Specification of the ’779 patent, we agree with Patent Owner’s position. Here, the restriction of the claimed elastic ring is limited such that the balloon, if filled with a sufficient amount of water, is detachable by (1) gravity or (2) by gravity combined with a manually applied acceleration of the tube. Further, we agree with Patent Owner’s explanation that a person of ordinary skill in the art would know when the amount of water has reached a “sufficient amount,” because the elastic rings would allow detachment by gravity or by gravity and manually applied acceleration of the tube. See Prelim. Resp. 42. Indeed, the claim language itself provides the conditions” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the effective filing date of the ’779 patent (“POSA”) was a person having general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in a technical science or engineering. Pet. 19 (citing Ex. 1020 ¶¶ 10–14). For purposes of this Decision, we agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, 2 Claims 38, 46, 54, and 60 issued as claims 4, 7, 10, and 13. and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’779 patent and cited prior art.” slip op. at 14
- Expert testimonyOther
“Petitioner argues that the present record is different than the one before the Examiner. Pet. 80. In particular, Petitioner asserts that the testimony of Dr. Kamrin was not before the Examiner. Id. Petitioner contends that “one of the issues in this petition is inherency of the prior art references, which benefits from the consideration of expert testimony.” Id. at 81. Nonetheless, having reviewed the record, we disagree with Petitioner’s position. The technology here does not appear to be particularly complex, and the Examiner’s explanation shows that he expressly considered the issues of inherency, and offered detailed findings why the functional limitations related to the elastic fastener were not necessarily present in the art at issue. See Ex. 1008, 87–88. Although not referred to expressly in the Examiner’s explanation, the Information Disclosure Sheet considered by the Examiner includes the Petitions in PGR2016-00030 and PGR2016-00031, which contain similar explanations of inherency to those at issue in this case. See PGR2016-00031, Paper 2, 43–45 (Petition discussing inherency issue with respect to Lee). Although the Examiner’s explanation does not refer to those papers expressly, the fact that those papers were listed on an IDS is, nevertheless, circumstantial evidence that Petitioner’s inherency arguments were considered when the Examiner provided his explanation concerning inherency. See Ex. 1008, 87 (“Because it is not true that all elastic bands have the same elastic force as an inherent property, it cannot be presumed that all elastic bands would function the same way.”). Moreover, as Patent Owner notes, Dr. Kamrin fails to even address Donaldson’s use of a mechanical means, i.e., a spring, to release the balloon. Prelim. Resp. 32. Thus, we are not persuaded that Dr. Kamrin’s testimony meaningfully distinguishes the record that is before us from the record that was before the Examiner.” slip op. at 12
§ 112 disclosureDiscretionary denialPatents in suitUS 9,533,779 - Google Inc. v. Performance Pricing Holdings, LLCAll claims unpatentablePTAB · Sep 13, 2017 · CBM2016-00050 · APJ Kevin W Cherry · CBM · Final written decision
Claims 1–14 are unpatentable under §§ 101 and 112(a) because they claim an abstract advertising-pricing idea implemented with conventional technology and lack written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). Considering these factors, we agree with Petitioner that a degree in computer science is not required for a person of ordinary skill in the art. See Reply 4. First, as Patent Owner admitted at the hearing, the named inventor, Mr. Rosenberg, does not have a computer science degree. Tr. 87:8–22. Second, as Patent Owner’s Response makes clear, the problems encountered in the field of the ’059 patent are problems of maintaining advertising customers, when viewer response to an ad can be tracked and there is an almost limitless inventory. PO Resp. 5–7. These are economic and business problems caused by the particular market conditions present in the Internet advertising market—large inventory and a high level of knowledge of behavior in the market. See Ex. 1003 ¶ 36. We are persuaded that a computer science degree would not provide a person with further useful insight into such economic and business problems. See Ex. 1003 ¶¶ 36–40. Indeed, this understanding is confirmed by the ’059 patent, which describes the business problems Internet advertising had on sellers of advertising. See, e.g., Ex. 1002, 1:55–59 (“As systems of accountability are developed and the amount of advertising inventory increases, vendors or publishers in all media will be faced with the problems of attracting advertisers while, at the same time, covering overhead costs.”); 1:60–63 (noting “[o]ne problem associated with current methods of selling Internet advertising is the difficulty of striking a fair and reasonable balance between fixed-fee pricing and performance-based pricing”); 1:63–3:24 (describing characteristics of the Internet advertising market); 3:27–31 (“[T]he present invention include methods and systems for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.”). Third, the discussion of computer components in the ’059 patent is only at a very high level. See, e.g., id. at 8:33–9:9 (discussing the components of the claimed system as only “computers,” “servers,” “databases,” “network protocol (such as Hypertext Transfer Protocol or HTTP)”). This indicates that the focus is not on the computer technology, but the pricing strategy. Fourth, the prior art solutions discussed in the ’059 patent are all in terms of different pricing models—“fixed fee” or “performance based”—not in terms of technical solutions. See id. at 1:55– 3:24. Finally, Patent Owner submits a job announcement by Petitioner for hiring a “Technical Program Manager, Ads Quality, AdWords,” as evidence of the level of skill of workers in this field. PO Resp. 29 (citing Ex. 2006 (Google Technical Program Manager, Ads Quality, AdWords Job Announcement)). However, no evidence or explanation is provided why this announcement should be given particular weight for defining the educational level of active workers in the field of the ’059 patent, beyond the fact that they both nominally involve Internet advertising. See PO Resp. 29. Moreover, no evidence or explanation is provided why a job announcement from 2016 would relate to the level of skill in the art at the time of the invention, i.e., at the latest, 2001, the effective filing date of the ’059 patent. See id. Thus, we give Ex. 2006 little weight. Accordingly, considering this evidence together, we agree with Petitioner that a “person of ordinary skill in the art would have, through education or practical experience, the equivalent of a bachelor’s degree in business, economics, or a similar discipline and/or two years of experience with media buying or selling, including Internet advertising or e-commerce systems.” Pet. 17. slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“lacks a computer science degree, he is not a person of ordinary skill and we should give his testimony no weight. PO Resp. 29. As set forth above, we are unpersuaded that Patent Owner’s definition of a person of ordinary skill above is correct. Accordingly, this argument is unpersuasive. Dr. Farris is a tenured professor of business and during his career, Dr. Farris has written a number of articles and books on advertising, including Internet advertising. Ex. 1003 ¶¶ 5–19, Appendix B. He has also taught a number of courses in Internet advertising, and has done extensive consulting on Internet advertising. Id. Thus, contrary to Patent Owner’s contentions, we are persuaded that Dr. Farris’s experience is more than sufficient for him to provide competent testimony on the subject matter of the ’059 patent. Accordingly, we decline to give his testimony no weight.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“We construe the challenged claims according to these principles. In our Decision to Institute, we determined that no terms required express construction. In its Patent Owner Response, Patent Owner contends that we should construe the term “impression,” recited in claim 1, as “presentation of an Internet advertising message.” PO Resp. 29–31. In the Reply, Petitioner indicates that it agrees with Patent Owner’s proposed interpretation and points to the testimony of Petitioner’s declarant Dr. Farris and Patent Owner’s declarant Mr. Zatkovich for support. Reply 5–6 (citing Ex. 1003 ¶ 27, Ex. 1017, 44:19–45:19, 142:15–143:12). This is also the construction we adopted in our Decision to Institute in the related proceeding, CBM2016- 00049. See Google Inc. v. Performance Price Holdings, LLC, Case CBM2016-00049, slip op. 5–6 (PTAB Sept. 21, 2016) (Paper 10). Given that this construction is consistent with the specification, we adopt Patent Owner’s construction of “impression” as “presentation of an Internet advertising message.” See Ex. 1002, 2:36–44, 5:12–16.” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree with Petitioner that these claims are drawn to an abstract idea. Specifically, we agree with Petitioner that the claims of the challenged patent are directed to decreasing the cost of an advertisement based on the performance of the ad, and that such a concept is an abstract idea. Pet. 19. More succinctly, we are persuaded that the claims are directed to a performance-based pricing model for advertising, and that such a pricing model is an abstract idea. The clear language of the claims and unambiguous disclosure of the specification to the contrary belie Patent Owner’s arguments. For example, beginning with independent claims 1 and 6, the only equipment that those claims identify are a “processor” and “at least one storage device in communication with the at least one processor.” Ex. 1002, 12:24–25, 12:56–57. The remainder of the claim is simply a method embodied in instructions stored on the storage device. As discussed above, these claimed method steps include having the processor (i) “ascertain[ ] . . . a predetermined cost to an entity per impression of an advertising message,” (ii) “present[ ] . . . the advertising message for display on a website such that the advertising message is viewable via one or more viewer computers,” (iii) “detect[ ] . . . a quantity of actions performed by users of the one or more viewer computers,” and (iv) “decrease[e] the cost per impression of the advertising message to the entity below the predetermined cost” as the “quantity of detected actions increases.” Id. at 12:30–43. Thus, the focus of the claims is on collecting and analyzing data for the pricing method, not the hardware on which it is performed or the software that implicitly causes it to happen. The specification reinforces the abstract nature of the claimed invention. The “Summary of the Invention,” explains that “[e]mbodiments of the present invention include methods and system for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.” Id. at 3:27–33. Indeed, the specification describes the advantages of the claimed invention include helping sellers secure fixed-fee pricing while offering a performance-based incentive to buyers, and attracting potential buyers, while maintaining customer loyalty, encouraging effective creative advertising design and placement, and assisting sellers in managing unsold inventory. Id. at 3:34– 39. These advantages all concern abstract concepts, and not technology.” slip op. at 19
Patent outcomesUS 8,799,059 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric PowerPatents in suitUS 8,799,059 - Zepp Labs, Inc. v. Blast Motion, Inc.All claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00677 · APJ Michael W Kim · IPR · Final written decision
Claims 1, 2, 4, 7, and 8 are unpatentable: claims 1, 4, 7, and 8 as obvious over Mahajan, and claim 2 as obvious over Mahajan and Dugan.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Based on the above, we modify Petitioner’s proffered level of ordinary skill as follows: “a person with a Bachelor’s degree in mechanical or electrical engineering or a related field with two to three years of experience working with data acquisition systems, including motion data captured using markers and sensors.” We decline, however, to limit the level of ordinary skill to “designing wireless motion capture sensors,” as the ’928 Patent does not disclose being limited to “design” and “wireless” sensors. We note, however, that, in this case, the prior art itself reflects an appropriate skill level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, the prior art of record, such as Mahajan, has been shown to relate to the field of data acquisition systems, and, in particular, motion capture sensors.” slip op. at 8
- Expert testimonyOther
“basis for the proposed modification, nor identifies any benefit. PO Resp. 17–23. We disagree. The relevant portion of the Petition cites expressly to paragraphs 42 and 127 of Mahajan, and in quoting paragraph 127, Petitioner bolds the following: “‘[t]he apparatus can be used alone or in conjunction with other hardware . . . or software . . . and may be adapted for wired transmission of data, wireless transmission of data, or for storage of data on the apparatus.’” Pet. 17. The next sentence of the Petition then reads “[t]hus, Mahajan teaches that the on-board memory component for storage of data on the apparatus is an obvious design choice.” Pet. 17. This statement is supported by Dr. Nesbitt’s testimony, with which we agree, explaining that Mahajan provides the option to include on-board memory and leaves it to the designer to include it, considering that it was common to include memory in data capture systems to store the captured data. Ex. 1003 ¶ 115. We are unclear as to how this portion of the Petition can be read as asserting anything other than coupling memory for the purpose of data storage would have been, as Petitioner phrases it, an “obvious design choice” to one of ordinary skill at the time of the invention.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). For the purposes of this Decision, we determine that no claim term needs express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Accordingly, given our above findings that (1) Mahajan discloses a microcontroller and (2) coupling memory for the purpose of data storage was known to one of ordinary skill at the time of the invention, we have little trouble in concluding that it would have been obvious to modify microcontroller 50 of Mahajan by coupling memory thereto for the purpose, i.e., the predictable reason to combine of, of data storage. With no persuasive evidence of unpredictability or change in function of the microcontroller with memory combination, nothing more is required under KSR, nor under other Federal Circuit precedent. See Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)) (“a finding of obviousness at the time of invention requires a ‘plausible rational [sic] as to why the prior art references would have worked together’” (citation omitted)).” slip op. at 16
Patent outcomesUS 8,944,928 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,944,928 - Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentablePTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision
Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54
- Skill levelNot reached
- Expert testimonyPatent owner expert discountedDecided for patent owner
“data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14
Patent outcomesUS 6,693,557 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,693,557 - PTAB · Jul 6, 2017 · IPR2017-00245 · APJ Melissa A Haapala · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution on claims 52, 58, 60, and 61 and denial of institution on the remaining challenged claims unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“instituting an inter partes review of claims 52, 58, 60, and 61 of U.S. Patent No. 6,950,013 (“the ’013 patent”) and denying institution of claims 1, 4, 8– 12, 17, 18, 27, 28, 34, 35, and 45 of the ’013 patent. Paper 11 (“Req. Reh’g”), 1. On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously address in a motion, an opposition, or a reply.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” See 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“differentiation analysis constitutes error, much less an abuse of discretion. Specifically, under any standard, we disagree that merely because claim 13 sets forth “said download trigger is adapted to require input of an electronic access code,” that the information datalink is able to access the captured data without an authorization code. Even if we were to agree with Petitioner that the “electronic access code” recited in claim 13 is synonymous or related to the “authorization code” recited in claim 1 (see id. at 7), an assertion that itself is dubious given the differences in express claim language, claim 13 merely sets forth a specific technique for inputting the electronic access code via the download trigger. Claim 13 does not negate claim 1’s specific requirement that the captured data is inaccessible without the authorization code — in other words, if the authorization code is not required to be input in the download trigger, it must be provided in another way to access the data. We similarly disagree with Petitioner that the limitations set forth in claim 47 dictate that the data can be transferred (accessed) without an authorization code. Claim 47 merely sets forth the transfer is “in response” to the receipt of the access code, and does not mandate an interpretation that the data can be transferred (accessed) without the authorization code.” slip op. at 3
- BurdenDecided for patent owner
“In our Decision, we concluded that Petitioner did not adequately explain or map how either Joao or Mackey discloses captured/stored data being inaccessible without the use of the authorization code. Dec. 10, 15. Petitioner asserts that in reaching our conclusion, we incorrectly interpreted “the captured data being inaccessible without the authorization code” to” slip op. at 2
Claim constructionPatents in suitUS 6,950,013 - Arctic Cat, Inc. v. Polaris Industries Inc.Institution deniedPTAB · Jul 5, 2017 · IPR2017-00455 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the challenged claims, failing to provide a sufficient rationale for either proposed prior-art combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, and for that reason, section 325(d) is not relevant to our analysis. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. We consider Patent Owner’s three underlying contentions under this standard.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“cooling air unobstructed by exterior body panels and would avoid receiving hot air from inside the engine compartment, thereby cooling the CVT more effectively, reducing wear, and improving CVT efficiency. Pet. 19, 22; Ex. 1001 ¶¶ 48–50, 54, 55, 230, 233; Ex. 1005 ¶¶ 4–5. The premise of this reasoning is that airflow to Suzuki’s CVT is obstructed by an exterior body panel or panels. That premise is not supported adequately the record.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this decision, and on this record, we determine that no claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“We reserve ruling on the Motion to Seal. Paper 7 and Exhibit 2015 will remain under seal in the interim. After the absence of a timely request for rehearing, or if filed, after resolution of a request for rehearing, Patent Owner may seek authorization to file a Motion to Expunge Paper 7 and Exhibit 2015. See 37 C.F.R. §§ 42.71(d)(1), 42.56.” slip op. at 3
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,217,501
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.