• Ironsource Ltd. v. Digital Turbine Inc.All claims unpatentable
  PTAB · Jan 4, 2023 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Final written decision

  Claims 1–18 are unpatentable; the contingent motion to amend proposing claims 19–36 is denied, and the parties’ motions to exclude are denied in part and granted in part.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleUnpatentable

    “3. Analysis On the full record developed during trial, we are persuaded by Patent Owner’s argument. Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element (f3) not only ignores that that limitation recites performing two specific software tasks simultaneously—which we are not persuaded is an abstract idea—but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. That is, under Step 2A of the Guidance, we are neither persuaded that limitation f3, which Petitioner points us to, recites an abstract idea (Prong 1), nor that the other limitations recited in the independent claims fail to integrate the alleged abstract idea into a practical application (Prong 2). Petitioner characterizes the claims as directed to multitasking, which Petitioner describes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See Guidance, 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings . . . , and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances”). The claimed invention may result in multitasking on the device, but the claims are directed to downloading and installing an application in the background instead of directing the user to an application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps—invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large). Petitioner thus fails to establish sufficiently that the claims are directed patent ineligible subject matter under Step 2A of the Guidance. We also agree with Patent Owner that the challenged claims are somewhat similar to those that the Federal Circuit held patentable in DDR Holdings. The claims there were directed to a method of generating a composite webpage that combined visual elements of a host website with content from a third-party, e.g., by combining the logo, background color, and fonts of the host website with product information from a merchant. DDR Holdings, 773 F.3d at 1248. When a user clicked on a link on the host website, the system would construct the composite web page comprising a look and feel description from the host website along with content based on product information from the merchant’s product catalog. Id. at 1250. The court held those claims were not directed at an abstract idea because they addressed the problem of retaining website visitors that, absent the claimed invention, would be instantly transported away from a host’s website after clicking on an advertisement and activating a hyperlink. Id. at 1257.” slip op. at 29

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “1. Independent Claim 1 a) “A mobile device configured for running software applications, comprising:” Petitioner contends that Pasha discloses computer system 600, which” slip op. at 38

  • 112 supportMotion to amend, deniedDenied

    “4. Support in the Original Disclosure A motion to amend may not present substitute claims that introduce new subject matter. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii) (“A motion to amend may be denied where . . . [t]he amendment seeks . . . introduce new subject matter.”). “Normally, a claim element without support in the original disclosure (i.e., the application as originally filed) merits a rejection under 35 U.S.C. § 112 for lack of written description support.” Lectrosonics, Paper 15, 7. Accordingly, a motion to amend must set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim.” Id.” slip op. at 74

  • ExcludeMotion to exclude, grantedGranted in part

    “CTPG at 73–74. Accordingly, Rule 42.23(b) prohibits filing of new evidence other than deposition transcripts of the cross-examination of any reply witness with a sur-reply. Patent Owner does not argue that the opinions presented in paragraphs 4–13 of Dr. Mao’s declaration are within the scope of §42.23(b). See generally PO MTE Opp. Nor do we find it in the interests of justice to allow this evidence in the case file. Accordingly, we grant in part Petitioner’s Motion to Exclude paragraphs 4–13 of Exhibit 2013 pursuant to 37 C.F.R. § 42.23(b).22” slip op. at 90

  Patent outcomesUS 10,782,951 unpatentable
  § 101 eligibility§ 102 anticipationcites Alice · Enfish · Phillips · KSR · Graham
  Patents in suitUS 10,782,951
• Realtek Semiconductor Corp. v. Future Link Systems, LLCAll claims unpatentable
  PTAB · Jan 4, 2023 · IPR2021-01182 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1, 2, and 7–14 are unpatentable as obvious over Guthrie and Budruk; the Board did not reach anticipation by Guthrie alone.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s declarant, Dr. Levy, describes a person of ordinary skill in the art as having “a Bachelor’s degree in electrical or computer engineering, or an equivalent field, and approximately three (3) years of industry or research experience.” Ex. 1001 ¶ 27. Patent Owner’s declarant, Dr. Brogioli, agrees with this proposed level of skill in the art. Ex. 2002 ¶ 29. This description of a person of ordinary skill appears to be generally consistent with the subject matter of the ’680 patent. For purposes of this Decision, we adopt this assessment of the level of ordinary skill.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We have considered the parties’ positions on claim construction as well as the claim construction adopted by the district court in the Intel case (see Ex. 1014, 23–25). In this Final Decision, we determine that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 9

  • Strike new argumentNew argument consideredDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “As previously discussed with respect to limitation 1[c] (see Section II.E.4), Patent Owner’s criticism of Petitioner’s combination is misplaced because the Petition does not propose to incorporate the port and virtual channel arbitration rules from Budruk into Guthrie’s system. Instead, the Petition proposes to use Budruk’s port and virtual channel arbiters, modified to use the ordering rules disclosed in Guthrie. Pet. Reply 12 (citing Ex. 2004, 49:23–51:23). Similarly, Patent Owner’s argument with respect to reasonable expectation of success is based on this same misunderstanding. See, e.g., Ex. 2002 ¶ 60 (A person of ordinary skill in the art “would not have had a reasonable expectation of success in making this modification to Guthrie’s system, because a [person of ordinary skill in the art] would not know how to implement a virtual channel arbiter in a PCI system.”). As Dr. Levy explains, however, a person of ordinary skill in the art would have made the combination by having a first arbiter (Budruk’s port arbiter) implement the protocol-based ordering rules from Guthrie, and having a second arbiter (Budruk’s virtual channel arbiter) implement the performance-based ordering rules from Guthrie. See Ex. 2004, 49:23–51:23. Dr. Levy further explains that “[a]n arbiter is little more than software or hardware that implements arbitration rules, so a [person of ordinary skill in the art] would have had no difficulty at all in modifying the arbiters of Budruk in this way to make a modified system of Guthrie.” Ex. 1017 ¶ 35. “The table of rules itself,” Dr. Levy explains, “is all that a [person of the art) in order to implement arbiters for those rules.” Id. “The fact that Guthrie itself does not mention details of arbiters is consistent with the fact that a [person of ordinary skill in the art] did not need to be instructed on how to create an arbiter to implement arbitration rules. That is well within the skillset of a [person of ordinary skill in the art] and did not need to be specified by Guthrie.” Id. Based upon the complete record, Petitioner has demonstrated that one” slip op. at 33

  Patent outcomesUS 7,917,680 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,917,680
• Vivint, Inc. v. SB IP Holdings LLCInstituted
  PTAB · Nov 2, 2022 · IPR2022-00812 · APJ Jon M Jurgovan · IPR · Institution

  The Board instituted IPR on claims 1–10, 12, and 15–20 on 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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims on all asserted grounds of unpatentability.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “statements in his opinion on the level of ordinary skill in the art, which should be given no weight such that all grounds fail. Prelim. Resp. 2–3. However, Petitioner’s declarant indicates that he considers the relevant factors in determining the level of ordinary skill in the art, and Petitioner notes that “the level of skill in the art is also shown by the art cited herein.” Ex. 1002 ¶¶ 22–23; Pet. 8. Patent Owner does not explain why these bases for Petitioner’s proposed level of ordinary skill in the art may be inadequate, nor does Patent Owner propose any different level of ordinary skill in the art. We find that Petitioner’s statement of the level of ordinary skill in the art is consistent with the content of the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). For institution purposes, we adopt Petitioner’s statement of the level of ordinary skill in the art. B.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Patent Owner fails to identify any statement in the ’384 provisional mentioning “a remote peripheral device configured to . . . communicate with said computerized controller for viewing an image from said video camera” as claimed. Although Patent Owner shows a system that may be configurable to communicate with a computerized controller for viewing an image from a video camera, Patent Owner does not cite to clear support showing that a remote peripheral device is so configured in the ’384 provisional. Consequently, we find Petitioner’s showing sufficient for purposes of institution, although we do not consider this issue closed. Neither party mentions why this issue is important in this case. We assume that it is because the issue of whether Klein is prior art turns on the priority date of the ’581 patent. For purposes of this Decision, Petitioner has shown sufficiently that Klein does constitute prior art. Petitioner’s showing is also sufficient to shift the burden of production going forward to Patent Owner to show that the ’581 patent is entitled to the benefit of the ’384 provisional by demonstrating written description support under § 112 for all limitations of the claims. Dynamic Drinkware, LLC v. Nat’l Graphics Inc., 800 F.3d 1375 (Fed. Cir. 2015). D.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “We do not agree with Patent Owner’s arguments. Petitioner identified the parts of Vaios and Menard on which it relies (Pet. 36–50), and provides reasons why one of ordinary skill in the art would have combined Vaios and Menard with a reasonable expectation of success (see, e.g., Pet. 39–40). Patent Owner contends that Petitioner’s modification of Vaios would require its video camera to incorporate numerous additional components which would destroy Vaios’s video camera and render its local computer system superfluous. Prelim. Resp. 43–47, 52–62. Patent Owner has not explained sufficiently why it would be necessary to transfer all components of the Vaios’s local computer system 12 to its video camera 10. Nor does Patent Owner explain sufficiently why packaging such components would have been difficult or impossible for a person of ordinary skill in the art. “A person of ordinary skill in the art is a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. We further note that Vaios explicitly teaches “that various omissions and substitutions and changes in the form and details of the disclosed invention may be made without departing from the spirit of the invention.” Ex. 1003, 10:1–4.” slip op. at 37

  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,154,581
• Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentable
  PTAB · Oct 11, 2022 · IPR2021-00762 · APJ Sharon Fenick · IPR · Final written decision

  The Board held claims 1–12 not unpatentable because Petitioner did not show that FlexWave Prism Manual was publicly accessible before the critical date.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Our determination regards obviousness to an ordinarily skilled person rather than “to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art at hand.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983)). We therefore remove the open-ended term “a minimum of” from Petitioner’s proposal, and adopt for this decision the following definition: “a person of ordinary skill in the art at the time of the claimed invention would have had: (1) a bachelor’s degree in electrical engineering; and (2) 3–4 years of industry experience in wireless communications networks and engineering. However, an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1–2 years).” This level of skill comports with the teachings of the ’508 patent and the asserted prior art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp., 868 F.3d at 1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). No claim terms require construction to resolve the controversy before us. See Nidec, 868 F.3d at 1017.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “c) Conclusion After considering this record evidence, Petitioner has not shown that one of ordinary skill would have performed the searches Mr. Stravitz performed on the EAS database. Mr. Stravitz’s searches appear to have been performed at the direction of counsel to discover whether and how FlexWave Prism Manual could be retrieved from the EAS database by someone who knew about FlexWave Prism Manual, without consideration of whether one of ordinary skill would have performed the searches absent a search directed towards FlexWave Prism Manual or would have known about the EAS database. Thus, Petitioner has not shown that one interested in and ordinarily skilled in the art relating to the ’508 patent would have found FlexWave Prism Manual using the EAS database.” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For these reasons, our determination is that FlexWave Prism Manual has not been shown to be publicly available. E. Conclusion For the reasons given above, Petitioner has not met its burden to show that FlexWave Prism Manual was disseminated or otherwise made available to the extent that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. All instituted grounds of unpatentability rely on FlexWave Prism Manual. Pet. 23–77; see Dec. on Inst. 17–29. Therefore, Petitioner fails to demonstrate by a preponderance of the evidence that any of the challenged claims are unpatentable based on the instituted grounds.” slip op. at 27

  Patent outcomesUS 9,826,508 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,826,508
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00701 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because JP029 supports claims 1–4 as of April 26, 2002, making the June 2002 Draft H.264 Standard unavailable as prior art for the asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any 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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’059 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’059 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Ex. 2001 ¶ 46 (emphasis added) (citing Ex. 1004 (H.324, 1998), Fig. 1, 1–2). In other words, according to the testimony of Dr. Richardson, which the record supports and Petitioner does not dispute, the applicable standards, known to artisans of ordinary skill prior to the filing date of JP029, show multiplexing and demultiplexing the coded audio and video, thereby satisfying claim 1’s limitations for multiplexing and demultiplexing coded audio data, contrary to Patent Owner’s arguments. See Pet. 25.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “argument, Petitioner has not shown that such a disclaimer exists in the prosecution history. The purported disavowal of claim scope with respect to the plain meaning of a claim term must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). Petitioner has not made such a showing. Rather, Petitioner points to language that was added to the claim during prosecution, namely, “performing arithmetic coding on a first bit of the binary data corresponding to each absolute value of the coefficients,” and concludes that this language requires coding a first bit separately from the remaining bits, using separate probability tables. Pet. Reply 10 (citing Ex. 1012, 656). We agree with Patent Owner, that the plain meaning of this claim language does not require coding a first bit separately from the remaining bits, using separate probability tables. Prelim. Resp. 57–58. Turning to the prosecution history, Petitioner does not explain how the applicant’s remarks to the Examiner in the prosecution history show a clear and unmistakable disavowal of claim scope. See Pet. Reply 9–10. Further, the applicant did not state to the Examiner that the claim requires coding a first bit separately from the remaining bits, using separate probability tables. See Ex. 1012, 662–664. On this limited record, it is not clear how the applicant’s arguments in the prosecution history persuasively show that the applicant made a clear and unmistakable disavowal of claim scope. Therefore, we construe the claim according to its plain and ordinary meaning, which does not require coding a first bit separately from the remaining bits using separate probability tables as alleged by Petitioner.” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. Petitioner’s claim construction regarding prosecution history disclaimer does not address “unanticipated and incorrect statements” made by Patent Owner “regarding the law with respect to written description and the disclosure of the subject patent and priority applications, to which Petitioners need to respond.” Ex. 1041. Specifically, Petitioner does not allege an incorrect statement in Patent Owner’s contention that “Petitioner admits that JP029 discloses performing the encoding on all bits of binary data, including the ‘first bit’ of data.” Prelim. Resp. 55 (citing Pet. 29). Nor does Petitioner allege an incorrect statement in Patent Owner’s contention that “Petitioner’s expert opines – with no explanation or citation – that the claims require ‘separately arithmetically encoding/decoding a first bit of binary data using a separate probability table from the probability table (or tables) used to encode/decode the remaining bits of binary data.’ Nothing in the claims require this.” Id. at 57 (citing Ex. 1003 ¶ 52). Instead, Petitioner, for the first time in its Reply, proposes construing the claim beyond its plain and ordinary meaning in order to rebut Patent Owner’s contention that the plain and ordinary meaning of the claim does not require coding a first bit separately from the remaining bits, using separate probability tables. Petitioner has not explained how Patent Owner made an incorrect statement, nor has Petitioner explained why Patent Owner’s construction of the claim based on the claim’s plain and ordinary meaning was unanticipated. See Pet. 7 (“[T]he Petition does not present any controversy over claim meaning and the Board need not construe any terms.”); see id. at 8 (“Petitioner maintains that the Challenged Claims would have been obvious under any reasonable construction.”). Petitioner’s new claim construction alleging prosecution history disclaimer, and Petitioner’s corresponding new argument based on the alleged disclaimer, are untimely.” slip op. at 24

  Claim construction§ 112 disclosurecites Graham
  Patents in suitUS 7,970,059
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00629 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because Patent Owner established claim 1’s priority to JP665, antedating the references relied on in both obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any 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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’878 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’878 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “. . . each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. §112.” Lockwood, 107 F.3d at 1571. To satisfy this written description requirement, a priority application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351. “It is the specification itself that must demonstrate possession,” and “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on its expert, Dr. Schonfeld, Petitioner contends as follows: A POSITA at the time would have had at least an undergraduate degree in Electrical Engineering, Computer Science, Computer Engineering, or a related field (or equivalent work experience in the that field), and two or more years of experience with audio, image, or video coding. Ex. 1003, ¶ 24. The relevant experience would include a working understanding of the then-existing audio and video coding standards, including ongoing work on emerging standards. Id. Pet. 15 (citing Ex. 1003 ¶ 24). Dr. Schonfeld adds that “a POSITA would have a working understanding of the then existing audio and video encoding standards (e.g., H.263), as well as ongoing work on emerging standards (e.g., H.26L/H.264).” 1003 ¶ 24. Dr. Richardson, Patent Owner’s expert, agrees with, and applies, Dr. Schonfeld’s proposed level of ordinary skill. Ex. 2001 ¶ 30 (citing Ex. 1003 ¶ 24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as agreed upon by Dr. Schonfeld and Dr. Richardson, because it is consistent with the evidence of record, including the asserted prior art and ’878 patent specification.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “As Petitioner argues, it is not necessary to explicitly construe any claim terms. See Pet. 7. Any construction would have no effect in the analysis of the dispositive priority issue here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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§ 112 disclosurecites Graham
  Patents in suitUS 8,139,878
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Patent Owner established priority to JP665, antedating the references asserted against sole challenged claim 1.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any 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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 7,769,238
• Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentable
  PTAB · Jul 19, 2022 · IPR2021-00408 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are not unpatentable because Petitioner did not show that Kummetz-464 discloses the claimed QoS of network traffic used to reconfigure sectors.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In the Decision on Institution, we concluded that one of ordinary skill would have had (1) a bachelor’s degree in electrical engineering; and (2) a minimum of 3-4 years of industry experience in wireless communications networks and engineering. Dec. on Inst. 9–10 (citing Ex. 1003 ¶ 28). We additionally concluded that “an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1-2 years),” and that “the person of ordinary skill at the time of the invention would additionally possess some experience with or knowledge of DAS.” 6 The record does not include any evidence of secondary considerations of nonobviousness. court action), 100:15–102:8). Patent Owner notes its agreement with this conclusion, and its expert adopted it. PO Resp. 22; Ex. 2023 ¶ 5. Petitioner provides no further comment in its post-institution briefing. After considering the record, we conclude that the same level of skill we adopted in the Decision on Institution should apply. This level of skill comports with the disclosures of the ’454 patent and the asserted prior art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “As noted in the Decision on Institution, a claim construction order issued in the related district court action in the final week of the period set forth for institution. Id. at 16 n.11. This claim construction order adopts Petitioner’s proposed definition. Ex. 1017, 14–21. has not established that Kummetz-464 teaches the determination of a QoS of network traffic. Thus, we need not resolve the parties’ claim construction dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Petitioner that the relative concentration of devices is a function of the number of users, which is a KPI. See Pet. 31; Ex. 1003 ¶ 95. But we determine Petitioner fails to establish the relative concentration of devices is a quality of service of a network traffic. Petitioner’s declarant describes QoS as a function of KPIs without more, and asserts that the relative concentration of devices between coverage zones would be a QoS. Ex. 1003 ¶¶ 93–103 (concluding that “Kummetz[-464] discloses that the controller 108 can determine one or more traffic indicators (i.e., KPIs) and a function of the traffic indicators (i.e., QoS = function of the one or more KPI” and “network performance is expressed by a number of KPIs which leads to the QoS”). While Petitioner’s declarant describes this as consistent with the teachings of the ’454 patent relating to adjusting traffic loads, no explanation is provided as to how capacity (as in Kummetz-464’s example) would meet the requirement of a QoS of network traffic, and no further testimony or evidence was adduced regarding what one of ordinary skill in the art would have thought QoS to mean. See id. We credit the testimony of Patent Owner’s expert that the plain meaning of “QoS” requires that the QoS be a value that indicates network performance.7 Ex. 2023 ¶ 55. We agree with Patent Owner that Petitioner does not establish Kummetz-464 discloses that a concentration of wireless devices is indicates network performance. See PO Resp. 43. As noted by Patent Owner during oral argument, “[y]ou can have perfect information of relative concentration of devices and still not know anything about network traffic.” Tr. 36. Patent Owner provides an example of a church service in which there are a large number of users (large concentration of user devices), but no traffic. Tr. 38. Conversely, we observe that a small concentration of user devices may have a large impact on network performance if engaged in activities requiring heavy network traffic usage. 7 We respectfully disagree with the dissent that the specification requires a different interpretation. The ’454 patent describes a QoS as a weighted combination of three KPIs (cost factors) that indicates network performance. See Ex. 1001 11:48–50, 14:41–51. This supports Patent Owner’s position that the plain and ordinary meaning of quality of service (QoS) indicates network performance. Although the KPIs discussed are exemplary, to fall within the bounds of claim 1, the plain meaning of quality of service of a network traffic requires the function to indicate network performance (i.e., the “quality” of the network). be a function of KPIs, but it is not a QoS according to the plain meaning of that term, and is not “of a network traffic” because it may be unrelated to network traffic. Thus, Petitioner fails to persuade us that Kummetz-464’s description of a concentration of wireless devices discloses a quality of service of a network traffic. We further determine that Petitioner fails to establish Kummetz-464’s” slip op. at 23

  Patent outcomesUS 10,506,454 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 10,506,454
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Scramoge Technology Ltd.Instituted
  PTAB · Jun 23, 2022 · IPR2022-00385 · APJ Jameson Lee · IPR · Institution

  The Board instituted review of claims 1, 4, 5, 8–13, and 17–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on Hiroki anticipation and Hiroki–Akiho obviousness.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “the petitioner in IPR2022-00117. Petitioner here also represents that none of its real parties in interest is related in any way to the petitioner in IPR2022- 00117. Prelim. Reply 5. Petitioner further represents that it has not coordinated in any way with the petitioner in IPR2022-00117 with regard to challenging the ’215 patent before the Board. Id. Petitioner additionally notes that it and the petitioner in IPR2022-00117 are not even codefendants in the same district court litigation, were not sued by the Patent Owner at the same time, and were sued on the basis of each’s own separate products. Id. at 6.6 With respect to such lack of relationship, Patent Owner makes no contention to the contrary. For the foregoing reasons, General Plastic Factor 1 weighs very strongly against exercising discretion to deny the Petition. 2. Factors 2–5 Regarding Factor 2, Patent Owner points to no evidence that as of the filing of the petition in IPR2022-00117 on November 3, 2021, Petitioner knew of any of the references applied in the Petition at issue in this proceeding. General Plastic Factor 2 weighs against exercising discretion to deny the Petition. Regarding Factor 3, the Petition here was filed on December 31, 2021, prior to the filing of Patent Owner’s preliminary response and the Board’s institution decision in IPR2022-00117. Patent Owner points to no evidence of Petitioner using any Board decision or Patent Owner submission as a roadmap to prepare the Petition. General Plastic Factor 3 weighs against exercising discretion to deny the Petition.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “2. Fintiv Factor 2 It is undisputed by the parties that the district court has now scheduled trial in both the parallel litigation involving Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., and the parallel litigation involving Google LLC for March 6, 2023. Prelim. Reply 2–3; Ex. 1031. The trial date of March 6, 2023 is approximately four months prior to the expected time of a final written decision in this proceeding. Fintiv factor 2 weighs in favor of exercising discretion to deny the Petition.” slip op. at 14

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “e) Conclusion Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 is anticipated by Hiroki.” slip op. at 37

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “crystalline alloy, as claimed. Ex-1002, ¶¶ 115–116; Ex-1015, 1:13–15; Ex- 1007, [0015]; Ex-1018, 1:38–39.” Pet. 29. However, paragraph 41 of Sakuma, cited by Petitioner, describes Sakuma’s embodiment as shown in Figure 7, not Sakuma’s embodiment as shown in Figure 2A. Ex. 1005 ¶ 41. As discussed above in Section II.C.2, the embodiment disclosed by Sakuma with respect to its Figure 2A is structurally different from the embodiment disclosed by Sakuma in Figure 7. Whereas in the Figure 2A embodiment soft magnetic sheet 11 comprises separate magnetic tile pieces 311 arranged in a single loop and a single layer, in the Figure 7 embodiment soft magnetic sheet 11 comprises not magnetic pieces arranged in one layer but two stacked magnetic sheets. Ex. 1005 ¶¶ 28, 29, 40, 41. Sakuma does not identify “sendust” as usable material for magnetic pieces 311 in the Figure 2A embodiment. Id. ¶ 42. Petitioner does not provide any reason why one with ordinary skill in the art would have read Sakuma’s disclosure of “sendust” as also describing any magnetic piece 311 in the Figure 2A embodiment of Sakuma. We are not sufficiently persuaded, for institution purposes, that Sakuma discloses using “sendust” as the material for any magnetic piece 311 in Figure 2A. d) Conclusion Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 1 and 13 by Sakuma. 4. Dependent Claims 8, 9, 11, 17, 19, and 21 Claims 8, 9, and 11 each depend directly from claim 1. Ex. 1001, 10:46–61. Claims 17, 19, and 21 each depend directly from claim 13. Id. at 12:10–28. Each dependent claim incorporates all the limitations of the claim on which it depends. For the same reasons discussed above in the context of claims 1 and 13 regarding limitation 1[i] and limitation 13[j], Petitioner has not sufficiently shown that Sakuma discloses those limitations. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 8, 9, 11, 17, 19, and 21 by Sakuma. D.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,843,215
• Twitter, Inc. v. Palo Alto Research Center Inc.Instituted
  PTAB · Apr 6, 2022 · IPR2021-01458 · APJ Christopher L Ogden · IPR · Institution

  The Board instituted review of claims 1, 4, 6, 7, 9–12, 15, 17, and 18 on all petition grounds, finding a reasonable likelihood of success on at least one ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Based on these factors, we conclude that Twitter has made a sufficient showing that claim 12 would have been obvious over PALLAS in view of Yau (Ground 2) or in view of the teachings of both Yau and Kim (Ground 4). Thus, for the reasons below, we determine that Twitter is reasonably likely to prevail on claim 12.” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “As PARC recognizes, the first factor examines whether the same petitioner or a related petitioner previously filed a petition directed to the same claims of the same patent, and can also apply in some circumstances when “when different petitioners submit multiple petitions to challenge the same patent.” Prelim. Resp. 12 (citing Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve I”); see also Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00064, Paper 10 (PTAB May 1, 2019) (precedential) (“Valve II”). Valve II held that “when different petitioners challenge the same patent, [the Board] consider[s] any relationship between those petitioners while weighing the General Plastic factors.” Valve II at 10. In weighing this factor against the second petitioner Valve in Valve II, the Board noted that “Valve and HTC were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on the same product, namely HTC’s VIVE devices that incorporate technology licensed from Valve.” Id. at 11. Also, Valve joined the previous petition as a party and the later-filed petitions challenged the same claims as the previous petition. See id. (noting a “complete overlap in the challenged claims”). Similar considerations do not exist here. Twitter did not previously file a petition challenging the ’599 patent,11 nor did Twitter seek to join the 11 Concurrently with this Petition, Twitter filed another petition on the same grounds, challenging claims of the ’599 patent that Twitter thought might be indefinite and thus not amenable to an inter partes review. See IPR2021- 01459, Paper 3; Paper 2, 2. Because Twitter ranks this Petition above that in IPR2021-01459 (see Paper 2, 3), we address the parallel-petition issue in the decision instituting trial in the other proceeding. earlier Snap or Facebook petitions. See generally IPR2021-00987, IPR2021- 01294, IPR2021-01536. There is also no evidence in the record that Twitter coordinated with Snap or Facebook in their respective petitions: Twitter represents that they “are unrelated companies; if anything, they are direct competitors.” Pet. 102. Twitter also represents that “Twitter has not coordinated its IPR with Snap or Facebook; and the attorneys substantively preparing Twitter’s IPR did not use Snap’s or Facebook’s petitions as a roadmap or even consult them.” Id.” slip op. at 32

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Twitter argues, for the purpose of its Petition, that all of the terms in the challenged claims have their ordinary and customary meaning, except that the ’599 patent defines contextual information to mean “input data that is gathered by a computing device from a number of input sources, and reflects basic information associated with the user and/or the operating environment of the computer device.” Pet. 13 (emphasis omitted) (quoting Ex. 1001, 6:15–19). Twitter also argues that the ’599 patent defines context to mean “a set of data that describes an event or environmental factor associated with a user or the operational environment of content management system.” Id. (emphasis omitted) (quoting Ex. 1001, 7:36–39). Twitter provides little analysis for its proposed constructions apart from citing the location of the alleged definitions in the ’599 patent. PARC does not agree that the terms contextual information or context need explicit constructions, but does not offer any evidence that Twitter’s proposed constructions are incorrect. See Prelim. Resp. 11. PARC also contends that Twitter incorrectly applies its proposed constructions to the asserted prior art by failing to recognize the distinction between those two terms. See id. at 11, 25. We address this argument below. See infra part III.D.1(d). Based on the parties’ arguments at this stage, our application of the claim limitations to the asserted prior art does not rely on Twitter’s proposed constructions, and no explicit construction is necessary for our decision to institute an inter partes review. 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))). To the extent that the parties’ arguments touch on these or other particular claim terms, we discuss them below in the context of the asserted prior art.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Based on the preliminary record, we disagree. Although Yau teaches that students engage with the learning content at a time when they “would like to undertake some learning activities” (Ex. 1005, 4), Yau also states that it takes a “context-triggered approach” based on “IF-THEN rules, which are previously specified,” so that actions are “invoked automatically when a contextual element or a mixture of contextual elements are fulfilled.” Ex. 10 PARC also addresses Twitter’s argument (for Ground 1) that PALLAS alone teaches a trigger condition that triggers presentation of a content piece to the user. See Prelim. Resp. 18–22. As we discuss below, we do not need to reach this issue for our determination to institute an inter partes review. See infra part III.D.2. 1005, 5. Thus, we find Twitter’s arguments sufficiently persuasive that Yau teaches a trigger condition that triggers the presentation of a content piece such as a formal assessment. PARC also contends that Twitter’s arguments in this regard are insufficiently cited and thus conclusory, and that Twitter improperly incorporates Dr. Turnbull’s declaration by reference. See Prelim. Resp. 23– 24. We disagree, based on the present record, that Twitter’s arguments in the Petition lack sufficient support. A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). Although many of the quotations in Twitter’s claim charts are abbreviated and lack specific citations, Twitter adequately directs our attention to the passage in Yau with those quotations that indicate that context-triggered actions are automatic when a contextual element is fulfilled. See Pet. 37. Twitter also articulates specific reasoning, based on the disclosures in PALLAS and Yau, that would support the conclusion obviousness, including a motivation to combine the two references. See Pet. 43–44. We find these arguments sufficiently specific and persuasive, at this stage, to support Twitter’s contention that the combination of PALLAS and Yau teaches limitation 12.1.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,489,599

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.