- Metacluster LT, Uab v. Bright Data Ltd.InstitutedPTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution
Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’034 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,272,034 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Apr 15, 2022 · IPR2021-00158 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–3, 5, 6, 19–21, 23, 26, 27, 30, 31, and 33 are unpatentable as obvious over Eyal and Wiser; claims 1–3 and 6 are also unpatentable over Madison and Holtz.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“I. INTRODUCTION Hulu, LLC (“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of claims 1−3, 5, 6, 19−21, 23, 26, 27, 30, 31, and 33 (“the challenged claims”) of U.S. Patent No. 9,026,673 B2 (Ex. 1001, “the ’673 patent”). Paper 2 (“Pet.”), 1. SITO Mobile R&D IP, LLC and SITO Mobile Ltd. (collectively, “Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). On April 20, 2021, we instituted the instant inter partes review as to all of the challenged claims for all of the grounds of unpatentability asserted in the Petition. Paper 9 (“Dec.”).” slip op. at 2
- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“server to validate and authenticate the user requesting the media file.” Ex. 1003 ¶¶ 150−151. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). For the foregoing reasons, we find that Petitioner has articulated an adequate reason to combine the teachings of Eyal and Wiser. 8. Conclusion on Obviousness over Eyal and Wiser” slip op. at 50
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“For the foregoing reasons, we agree with Petitioner that neither the” slip op. at 54
Patent outcomesUS 9,026,673 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,026,673 - Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentablePTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision
Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.
RulingsFinal written decision- BurdenFwd mixedMixed
“C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24
Patent outcomesUS 7,268,703 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,268,703 - Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Apr 24, 2015 · CBM2014-00030 · APJ Thomas L Giannetti · CBM · Final written decision
Claims 1–23 are unpatentable under § 101 because they claim an abstract idea implemented with routine, conventional activity.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“are directed to the abstract idea of tailoring an information provider’s web page based on data about a particular user. Institution Dec. 12. Patent Owner responds that the claims do not fall within any of the “categories of abstract ideas enumerated by the Supreme Court.” PO Resp. 15. Citing Alice, Patent Owner asserts that the claims are not directed to “an idea itself, a mathematical formula or algorithm, a fundamental economic practice long prevalent in our system of commerce, or a method of organizing human activity.” Id. (internal quotation marks omitted). Therefore, Patent Owner asserts, the first step in the Alice/Mayo test is not met. Id. at 15–21. Petitioners respond that in Alice, the Supreme Court expressly declined to limit the categories of unpatentable abstract ideas as suggested by Patent Owner. Reply 3. We are persuaded by the Supreme Court’s opinion in Alice that Petitioners are correct, and that these enumerated categories were not intended as exclusive. Specifically, the Court wrote: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” 134 S. Ct. at 2357; accord Content Extraction, 776 F.3d at 1347. We are influenced also by the evidence from Patent Owner’s expert, who testified as follows: I’m trying to make clear that the patent is described at what may appear to be a fairly high abstract level, because it was generally known by persons of skill in the art that there are multiple ways to go about reducing the invention to practice depending upon the technologies that they have at hand. And it wasn’t the patent’s job to be that specific at the time. I shouldn’t say it wasn’t the patent’s job. The inventor did not choose to describe at that level of detail. Ex. 1037, 47:12–23 (emphasis added). We therefore conclude that the first step in the Alice/Mayo test is met for claims 1–23.” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are convinced by Petitioners’ argument that the ʼ382 patent claims do not contain an “inventive concept” sufficient to transform the claimed abstract idea into a patentable invention. Stated another way, we determine that the claims do not “significantly more than simply describe that abstract method.” Ultramercial, 772 F.3d at 715. Instead, “the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.” Id.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Patent Owner’s expert does not rebut convincingly Dr. Myers’s claim- by-claim analysis. Instead, Patent Owner’s expert addresses the claims in two groups only. Ex. 2003, ¶¶ 26–28. We find this approach unconvincing, and therefore, credit Dr. Myers’s testimony as to specific claims over the testimony of Patent Owner’s expert. We are therefore persuaded, by a preponderance of the evidence, that, like the claims considered in Ultramercial, claims 1–23 of the ʼ382 patent simply instruct the practitioner to implement the abstract idea with routine, conventional activity. Ultramercial, 772 F.3d at 715. For the reasons stated above, none of the elements recited in the claims, including the “interactive interface” and the “plurality of data streams,” transforms the nature of the claims into patent-eligible subject matter. We credit the cited testimony of Patent Owner’s expert that the ʼ382 patent lacks implementation details because it is written at a “fairly high abstract level.” See supra. As a result of this choice by the patentee, the risk of preemption is great.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner contends that neither Petitioners nor the Board provides any evidence that “interactive” and “Internet” have the same meaning, “either in the ʼ382 patent or as understood by one of skill in the art.” PO Resp. 7. Patent Owner further contends that Board should adopt a construction requiring the interface to be a “selectively tailored medium.” Id. at 8–9. Petitioners respond that there are not any claim terms “that could reasonably be construed in a manner that would impact the 35 U.S.C. § 101 analysis.” Reply 11. Petitioners further contend that the Board’s construction was nevertheless correct because the patent specification and claims make it clear that it is the information that is “selectively tailored,” not the information medium. Id. at 11–12. We are not convinced of any error in our initial construction of “interactive interface” as an Internet interface. Institution Dec. 6. Petitioners’ reliance on the Myers Declaration and the ʼ382 patent’s interchangeable use of interactive and Internet to describe the interface are persuasive. Pet. 15, 17 (citing Myers Dec., Ex. 1004 ¶ 52), 18 (citing Ex. 1001, Title, Abstract). We, therefore, determine that the correct construction of “interactive interface” is “an Internet interface that provides a medium for information users to communicate with information providers.”” slip op. at 6
Patent outcomesUS 7,603,382 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,603,382
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.