- PTAB · Aug 27, 2025 · IPR2025-00574 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on claim 1 over Choe and Workman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Skill levelOther
“would have had a Bachelor’s in Computer Science with a focus on computer/machine vision, and at least two years of experience with each of: (1) machine learning (including neural network) methods as applied to machine/computer vision and (2) classical machine/computer vision algorithms (e.g., edge detection, line identification, computation of camera parameters from horizon line, etc.)” and that additional education “could serve as a substitute for the experience requirement.” Pet. 7–8 (citing Ex. 1003 ¶ 77). Patent Owner disagrees with Petitioner’s definition and asserts that a POSITA “would have a bachelor’s degree in engineering or computer science with one- or two-years training and/or experience in design of software for camera/sensor systems in the automotive industry.” Prelim. Resp. 12 (citing Ex. 2003 (Declaration of Scott Andrews) ¶ 35). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should the parties continue to disagree regarding the level of ordinary skill in the art during trial, we encourage the parties to explain how an automotive-focused definition, or the lack thereof, would affect any obviousness analysis in our final written decision. B. slip op. at 5
- Expert testimonyOther
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,875,580 - PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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 Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.No claims unpatentablePTAB · Mar 6, 2017 · IPR2015-01801 · APJ Peter P Chen · IPR · Final written decision
Claims 30, 31, 33, and 40–46 were not shown unpatentable because Rabinovich required prior client access before replication, and Carter did not cure that limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Ratner, testifies that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 14. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 21–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 20. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. at 21. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“whether to replicate data object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating/migrating object xs only if the ratio of cnt(s,xs) over aff(xs) is greater than m, and the ratio can be greater than m only if cnt(s,xs) is greater than zero. PO Resp. 19; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication or migration step. This means that Rabinovich will not replicate or migrate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independent of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“30, for use with a computer game (claim 45) and with an interactive computer game accessed by at least two users (claim 46). Ex. 1001, 30:47– 54. In connection with its obviousness contentions, Petitioner makes no separate arguments why Rabinovich teaches or suggests shifting redundantly stored data based upon data transmission parameters between the servers independent of an access of the client. Pet. 45–47; Reply 17–18. Because claims 45 and 46 depend from claim 30, we find that Petitioner has failed to demonstrate by a preponderance of the evidence that Rabinovich teaches or suggests the limitations in these two dependent claims for the same reasons discussed above with respect to claim 30.” slip op. at 21
Patent outcomesUS RE40,521 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · Graham - Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentablePTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision
Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7
Patent outcomesUS 7,904,680 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,904,680 - Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentablePTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision
Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12
Patent outcomesUS 7,397,363 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 7,397,363 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Jan 27, 2017 · IPR2015-01645 · APJ Beth Z Shaw · IPR · Final written decision
Claims 21, 22, 24, 25, 29, and 36 are unpatentable as obvious over the stated combinations of prior art.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross- examination are sufficient to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. Yet, we are persuaded that the statement “that’s correct” (in response to the question made during cross examination about his review of the prosecution history of four patents) appears to be a misstatement as to Mr. McNamara’s review of the ’363 patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury, and made other statements during cross-examination that are consistent with his declaration testimony that he reviewed the relevant prosecution history. See Ex. 1003 ¶ 13; Ex. 2006, 154:11–20. We agree with Petitioner that Mr. McNamara’s inconsistent testimony (i.e., “that’s correct”) appears to illustrate a momentary lapse in memory. Compare e.g., Ex. 2006 at 153:11– 15, with id. at 154:11–20. Moreover, Patent Owner has not explained why Mr. McNamara’s testimony displays a lack of understanding of any particular part of the prosecution history, or how such testimony is dispositive to any particular issue in this case. In light of the foregoing, we credit the declaration testimony of Mr. McNamara that he reviewed the prosecution history of the ’363 patent over his cross-examination statement to the contrary. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”) (quoting Velander v. Garner, 348 F. 3d 1359, 1371 (Fed. Cir. 2003)).” slip op. at 8
- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Institution Decision, we determined that no terms required express construction. Dec. 7. In its Response, Patent Owner proposes constructions for “interface device,” “processing device,” “first signal,” “second signal,” and “third signal.” PO Resp. 9–11. We determine that it is not necessary to expressly construe these terms to resolve the controversy here. To the extent it is necessary for us to construe any additional claim terms in this decision, we do so below in the context of analyzing whether the prior art renders the claims unpatentable.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner contends a person having ordinary skill would have combined the teachings of Frossard with those of Spaur for various reasons, including that both references describe systems for remotely communicating information to a vehicle, and receivers located on the vehicle that receive a signal from a remote device, and because one of ordinary skill in the art would recognize that it would be advantageous to use a device associated with a web site to send a shutdown signal to the vehicle. Pet. 16–17 (citing Ex. 1003 ¶ 49). Petitioner also contends that one of ordinary skill in the art would have combined Spaur and Frossard because it would achieve the predictable result of using a processing device associated with a web site for the controlled shutdown of a vehicle. Id.” slip op. at 14
Patent outcomesUS 7,397,363 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,397,363 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Jan 25, 2017 · IPR2015-01585 · APJ Stacey G White · IPR · Final written decision
Claims 1–3, 11, 16, and 17 are unpatentable: claims 1 and 16 are anticipated by Frossard and Pagliaroli; the remaining claims are unpatentable on the stated obviousness grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyTerm construed patent owner constructionDecided for patent owner
“Claim 3 recites, in relevant part, “a positioning device for determining location of the vehicle, wherein said positioning device is located at the vehicle.” In the Institution Decision, we preliminarily construed the term “positioning device” to be governed by 35 U.S.C. § 112 ¶ 65. Dec. 6. Patent Owner disagrees and asserts that one of ordinary skill in the art would understand ‘“positioning device’ to be the name for the structure that performs the corresponding functions, even though the term covers a broad class of structures and/or identifies the structures by their function.” PO. Resp. 10–11. Petitioner maintains that the preliminary construction should govern this Final Written Decision. Reply 1–2. In Patent Owner’s view, “positioning device” is similar to terms such as filters, brakes, and clamps that have functional names, but still provide sufficient structure to remove the term from the reach of § 112 ¶ 6. PO Resp. 10–11. Patent Owner argues that Petitioner’s position is inconsistent because Petitioner argues that “positioning device” is not sufficient structure while arguing for a construction that includes the same term. Id. at 11 (noting that the proposed structure is a “satellite-based global positioning device.”). We are persuaded by Patent Owner’s arguments. Thus, we find that “positioning device” is not governed by 35 U.S.C. § 112 ¶ 6. For the purposes of this decision, we adopt Patent Owner’s proposed construction of “positioning device” which is “a device that determines the location of the vehicle.” PO Resp. 12.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary and any such intermediary may append additional information to the received signals. III. ANALYSIS” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We, however, are persuaded that the statements made during cross examination appear to be misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2005, 154:11–20. In addition, we have reviewed the relevant prosecution history and we are in the position to evaluate whether Mr. McNamara’s testimony is at odds with the evidence in this case, which include the relevant prosecution history. Accordingly, we are not persuaded Mr. McNamara’s testimony should be accorded little or no weight due to the statements he made during cross-examination regarding his review of the prosecution history.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner is correct in arguing that Patent Owner improperly attempts to limit “control device” in a way that contradicts the construction of the term. We agree with Petitioner that Frossard’s server center 1 and resource 2 may disclose the claimed “second control device” because by definition a “control device” can comprise “part of a device”; therefore, it follows that if something may be “part of a device” then it is permissible for that device to have multiple parts. Thus, a “control device,” which necessarily is a type of device, can include multiple parts. Therefore, the question is whether the cited elements of Frossard (server center 1 and resource 2) reasonably can be interpreted to be the parts of the second control device. To that end, Petitioner compares the combination of Frossard’s server center 1 and resource 2 with the ’405 patent’s combination of server 952 and transmitter 957. Id. at 8–9. It is Petitioner’s contention that “Frossard’s server 1 corresponds to server 952 of the ’405 patent because both generate a signal for remote control. Frossard’s resource 2 corresponds to transmitter 957 of the ’405 patent because both transmit the signal.” Id. at 12. According to Petitioner, “[t]he specification describes that, in response to a command received by the server receiver 953, the server 952 sends a control signal via the transmitter 957.” Id. at 8 (citing Ex. 1001, 58:41–48, 5:55– 58). Further, Petitioner asserts that “[a]ll of the described second devices use transmitters (e.g., server 952 uses transmitter 957 in Fig. 11B).” Id. at 9. Thus, in Petitioner’s view, Patent Owner’s argument that the control device may not be the combination of a server and transmitter is not supported by the specification. Id. We agree and find that Frossard discloses the claimed second control device. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 36:1–38:19. Thus, a “control device” that is both “[1] a device and [2] a computer” would fall within the scope of the construed claim term because the term “or” is broad enough to include a variant that has both of the listed options. Id. Here, we determine Frossard’s server center 1 and resource 2 discloses a control device (i.e., “a device or a computer”).” slip op. at 20
Patent outcomesUS 5,917,405 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,917,405 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Jan 25, 2017 · IPR2015-01508 · APJ Stacey G White · IPR · Final written decision
Claims 3, 20, 65, 73, 93, 103, 104, 108, and 205 are unpatentable: claims 3, 20, 73, 103, and 205 are anticipated by Frossard; the remaining claims are unpatentable on the stated obviousness or anticipation …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“For purposes of the Decision to Institute, we construed the term “control device.” Dec. 10–11. Neither party raised any concerns regarding this construction during trial. See PO Resp. 10–11; Reply 1. Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our construction for this claim term. For convenience, the claim construction is reproduced in the table below. Term Citations Construction Control Ex. 2002, 6 A device or a computer, or that part of a device or Device a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” 7 This information was modified by a Certificate of Correction issued July 1, 2003. See Ex. 1001, 95. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We, however, are persuaded that the statements made during cross examination appear to be misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2005, 154:11–20. In addition, we have reviewed the relevant prosecution history and we are in the position to evaluate whether Mr. McNamara’s testimony is at odds with the evidence in this case, which include the relevant prosecution history. Accordingly, we are not persuaded Mr. McNamara’s testimony should be accorded little or no weight due to the statements he made during cross-examination regarding his review of the prosecution history.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner is correct in arguing that Patent Owner improperly attempts to limit “control device” in a way that contradicts the construction of the term. We agree with Petitioner that Frossard’s server center 1 and resource 2 may disclose the claimed “second control device” because by definition a “control device” can comprise “part of a device”; therefore, it follows that if something may be “part of a device” then it is permissible for that device to have multiple parts. Thus, a “control device,” which necessarily is a type of device, can include multiple parts. Therefore, the question is whether the cited elements of Frossard (server center 1 and resource 2) reasonably can be interpreted to be the parts of the second control device. To that end, Petitioner compares the combination of Frossard’s server center 1 and resource 2 with the ’076 patent’s combination of server 952 and transmitter 957. Id. at 9. It is Petitioner’s contention that “Frossard’s server 1 corresponds to server 952 of the ’076 patent because both generate a signal for remote control. Frossard’s resource 2 corresponds to transmitter 957 of the ’076 patent because both transmit the signal.” Id. at 12. According to Petitioner, “[t]he specification describes that, in response to a command received by the server receiver 953, the server 952 sends a control signal via the transmitter 957.” Id. at 9 (citing Ex. 1001, 58:41–48, 5:55–58). Further, Petitioner asserts that “[a]ll of the described second devices use transmitters (e.g., server 952 uses transmitter 957 in Fig. 11B).” Id. at 10. Thus, in Petitioner’s view, Patent Owner’s argument that the control device may not be the combination of a server and transmitter is not supported by the specification. Id. We agree and find that Frossard discloses the claimed second control device.” slip op. at 19
Patent outcomesUS 6,542,076 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,076
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.