• American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentable
  PTAB · Oct 27, 2016 · IPR2015-01079 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–45 are unpatentable: claims 1–40 and 44 as obvious over either PC Tools and Gerace or LogoMania, and claims 41–43 and 45 as obvious over either specified combination.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • ScopeMotion to amend, deniedDenied
  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for petitioner

    “We first note that proposed claim 46 recites a “profile,” a term that is broader than a “user profile” and is not specifically defined. In addition, the meaning of the language in proposed claim 46 “wherein the computer system [that displays the image] characterizes the profile under the operating system environment” is unclear. Although the operating system may be a Windows OS, as Patent Owner argues, Patent Owner does not cite to a description concerning what it means for the computer system, i.e., the system that displays the image, to “characterize[s] the profile” or what steps the computer takes to characterize the profile. Id. at 8–9. Instead, Patent Owner argues that a service center provides additional content based on the user system and profile. Id. at 9. That language, however, is not recited in proposed claim 46. We deny the Motion to Amend on this basis as well.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “It was not Petitioner’s responsibility to monitor whether Patent Owner moved for Mr. Summerfield’s pro hac vice admission. However, we also are troubled by Petitioner’s failure to seek a conference with the Board at the time of the deposition. Although Petitioner argues it could not have moved to quash the deposition because the notice was signed by lead counsel, Christopher Frerking (Reply to Opp. To Mot to Exclude 4), it appears that Petitioner’s counsel was aware that Mr. Summerfield would conduct the cross examination at least several days, and possibly several weeks, before the deposition took place. Hr’g Tr. 47, 49. Petitioner does not allege any prejudice as a result of Mr. Summerfield conducting the cross examination or argue that Mr. Summerfield behaved improperly during the deposition. Mot. To Exclude 4. Instead, Petitioner contends we should exclude the evidence as a matter of policy to demonstrate that our rules concerning pro hac vice admission must be taken seriously and to discourage others from acting in a similar manner, particularly in the case of deposition testimony and arguments that become part of the trial record. Id. at 4–6.8 Petitioner contends that allowing the deposition to take place did not cure its objection to the deposition. Reply to Opp. To Mot. To Exclude. 1–2. Dr. Kaliski’s deposition took place on January 8, 2016. Petitioner could have opposed Mr. Summerfield’s pro hac vice admission until January 16, 2016. However, notwithstanding Mr. Summerfield’s conduct, to which Petitioner objected, Petitioner did not oppose Mr. Summerfield’s pro hac vice admission. Had Petitioner opposed Mr. Summerfield’s admission on the basis that he conducted the deposition without proper authorization, the issue could have been addressed earlier in the proceeding and another deposition scheduled, if it was determined that Mr. Summerfield would not be admitted and the deposition transcript would not be entered. Instead, Petitioner elected to delay the matter until the last possible date for filing a Motion to Exclude. Thus, even if Petitioner’s objection was not cured when Petitioner permitted the deposition to proceed without contacting the Board, Petitioner’s subsequent failure to oppose Patent Owner’s Motion for Admission pro hac vice implies at least some degree of consent. The parties conduct in this case does not warrant excluding Dr. Kaliski’s deposition transcript from evidence. We do not condone Patent Owner’s unreasonable delay in seeking pro hac vice admission of Mr. Summerfield, and under other circumstances our ruling might be different. However, in this case, the absence of prejudice and Petitioner’s failure to” slip op. at 27

  Patent outcomesUS 6,373,498 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 6,373,498
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 23, 2016 · IPR2014-01527 · APJ Karl D Easthom · IPR · Final written decision

  Claim 13 is unpatentable because Reiter anticipates it and, independently, Summers with Fedida and the CBS Petition, Blatt, or Millar renders it obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDisclaimer not foundDecided for petitioner

    “Accordingly, several factors tilt against narrowing the claim from its plain and ordinary meaning (in view of the Specification) based on the ’1837 Reh’g Decision, including the (1) broader scope of claim 13 (relative to the claim at issue in the ’1837 Reh’g Decision), (2) different claim phrases recited in the two claims, (3) contradictory arguments by Patent Owner before different tribunals (i.e., the Atlanta lawsuit and the Board), (4) the lack of a close example or clear disclaimer in the Specification applicable to claim 13, (5) broad objectives for combining content from different sources as described in the Specification, and (6) the lack of clarity as to what Patent Owner disclaimed during prosecution relative to claim 13. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The “court also observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.”); Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 279 (1877) (patents are procured ex parte; the public is not bound 15 by decision of the Patent Office to issue a patent); Switzer v. Sockman, 333 F.2d 935 (CCPA 1964) (decision made during ex parte examination not binding in subsequent interference involving application in which holding was made); Sze v. Bloch, 458 F.2d 137, 140 (CCPA 1972) (same). Consistent with the ’243 patent Specification, and taking into account prior arguments by Patent Owner, regardless of whether or not the content of data of interest and the program relate to each other, a proper (coordinated) relative position of the two would include a simultaneous presentation of data of interest and a program. Such a simultaneous presentation may include an overlay, or a separate window, for example, of some form of the data (e.g., a graph) with the program, as discussed in connection with Figure 1C.” slip op. at 15

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

    “In the Institution Decision, we determined that Patent Owner’s position about priority was not persuasive on that limited record. We reasoned that according to the cited passage in the (1981) ’490 patent specification, and according to Patent Owner’s arguments, each receiver stores only a subset of the data (i.e., “those prices that relate to the stocks in its stored portfolio”) that the remote source transmits (i.e., “all closing stock prices applicable that day”), but claim 13 requires the receiver to store all the transmitted data. See Dec. on Inst. 16. That is, claim 13 recites “transmitting at least a portion of said data from said first remote data source to said receiver station in response to said step of receiving said query, said receiver station selecting and storing said transmitted at least a portion of said data.” Ex. 1003, 300:22–26 (emphases added). In essence, in claim 13, the receiver’s query controls the portion of data transmitted to the receiver. In contrast, in the ’490 patent specification, the transmitter controls the data––it sends all the stock data for a given day, and the receiver 25 then culls and records subscriber stock data from that transmitted data. See Ex. 1002, 19:35–41; Prelim. Resp. 12 (as quoted above, Patent Owner adding information to show that the ’490 patent discloses querying for “[all closing stock prices applicable that day]”).” slip op. at 25

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “B. Priority The prior art status of Reiter (filed May 28, 1985) under 35 U.S.C. §102(e) hinges on the priority date for the ’243 patent with respect to claim 13. Petitioner contends that the earliest priority date for the ’243 patent is September 11, 1987. Pet. 9. The ’243 patent was filed as a CIP (continuation-in-part) application through a chain of continuing applications 23 purportedly having a priority date of November 3, 1981––the filing date of the earliest-filed ancestor patent in the chain, U.S. Patent No. 4,694,490. See Ex. 1002 (“the ’490 patent”). Patent Owner contends that the priority date of the ’243 patent is “the November 3, 1981 filing date of the ’490 [p]atent.” PO Resp. 8. The parties agree that the latest possible priority date for claim 13 of the ’243 patent is September 11, 1987. See id. at n.1; Pet. 9. For the reasons that follow, Patent Owner has not rebutted Petitioner’s initial showing that the ’243 patent, a CIP, is not entitled to the earlier filing date of the ’490 patent.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Contrary to Patent Owner’s argument, a program schedule display that includes a currently viewed program or lists local and television movies is not “happenstance” in Reiter––Reiter discloses a schedule guide of programs for viewing, including necessarily includes programs currently being viewed. Ex. 1025, Abstract, 2:30–37, 6:34–38 (describing “updatable television programming information” and “whether a window format . . . or a television overlay format. . . . , the viewer may continue to view the television program he is currently watching”). As Dr. Neuhauser explains, the guide also explains when “the current program will end.” Ex. 1001 ¶ 181 (discussing Reiter’s television schedule data); Ex. 1025, 6:35–38 (“In [the window and overlay format] situations, the viewer may continue to view the television program he is currently watching.”). Dr. Neuhauser also persuasively describes how a similar overlay or window display of “a critical review of movies or shows” during the viewing of that show or movie, constitutes another example of coordinated display that includes related content. See Ex. 1001 ¶ 181 (discussing and quoting Reiter, Ex. 1025, 5:37– 46). Patent Owner also contends that Reiter “fails to explicitly disclose that television scheduling information is stored at the central computer.” PO Resp. 31 (citing Ex. 2009 ¶ 112). This argument pertains to the claim 13 requirement of storing, receiving, and transmitting data from “a first remote 43 data source.” Contrary to this argument, the record supports Petitioner’s contention that Reiter discloses downloading the programming data from a remote central computer. Pet. Reply 22 (citing Ex. 1025 at 2:67–68; 4:50– 51); Ex. 1025, 4:40–51 (“televising scheduling . . . can . . . be provided on a central computer” and “download[ed]”). As Petitioner explains, downloading information “provided on” the central computer necessarily requires storing that information on the central computer. Pet. Reply 22 (citing 1001 ¶ 171; Ex. 1036 ¶ 46); Ex. 1025, 4:40–44. Dr. Russ’s testimony does not address the “provided on” and “download[ed]” language in Reiter. See Ex. 2009 ¶¶ 111–13. Furthermore, Dr. Russ’s testimony admits that the central computer “may retrieve” and “forward” the information, necessarily implying at least temporary (buffer) storage at the central computer. See Ex. 2009 ¶ 113. Based on the foregoing discussion, Petitioner shows by a preponderance of evidence that Reiter anticipates claim 13.” slip op. at 43

  Patent outcomesUS 5,887,243 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 5,887,243
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Aug 17, 2015 · IPR2014-00414 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–19 are unpatentable under the instituted §103 grounds because Petitioner proved unpatentability by a preponderance of the evidence.

  RulingsFinal written decision

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “Seventh, having reviewed my financial disclosure, Patent Owner is well aware that even if Microsoft were a party to these proceedings, the de minimis value of stock I own in Microsoft, is far below the $15,000 recusal threshold. 5 C.F.R. § 2640.202(a). Patent Owner’s allegations of a financial conflict of interest in this proceeding are unjustified and not supported by any evidence. Finally, after obtaining my financial disclosure, it appears that Patent Owner arranged to publish it, along with a threatening photo of me superimposed on a target with a skull and crossbones, on an Internet site of uncertain ownership and operation. See, Paper 21, 2 (describing public release of this information on November 26, 2014). These actions suggest an attempt to intimidate. In any case, Patent Owner’s conduct has not influenced and will not influence the outcome of any proceeding before us. Thus, to the extent that Patent Owner has supplemented her Motion to Recuse, Patent Owner’s Motion is DENIED.” slip op. at 6

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

    “To provide support for a negative claim limitation, the written description must describe, at a minimum, a reason to exclude the relevant limitation. Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). As discussed above, Petitioner has demonstrated that the specification essentially is silent on excluding CGI to connect to the value 10 Patent Owner does not cite a specific page, but appears to be referring to page 6 of Ex. 2004). added service provided by the Web merchant. Patent Owner has not rebutted Petitioner’s contentions. Thus, the earliest written description of the limitation “to connect in real time to the value-added network service of the Web merchant without executing Common Gateway Interface (CGI) scripts” is in the claims of the application for the ’894 Patent. For the reasons discussed above, the claimed subject matter in the ’894 Patent is entitled to a priority date of Nov. 30, 2009. See X2Y Attenuators, LLC v. Int'l Trade Comm'n, 757 F.3d 1358, 1366 (Fed. Cir. 2014) (“[E]ntitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.”).” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “CONCLUSION Patent Owner does not respond specifically to the grounds on which we instituted this inter partes review. Having reviewed the Patent Owner Response and Petitioner Reply, and in consideration of the matters discussed above and in the Decision to Institute, we conclude that Petitioner has established by a preponderance of the evidence that claims 1–19 are unpatentable for the reasons stated in our Decision to Institute.” slip op. at 23

  Patent outcomesUS 8,346,894 unpatentable
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 8,346,894
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Sep 18, 2014 · CBM2013-00013 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–3 and 11 are unpatentable under §§ 101 and 103, and claims 1–6 and 11 are unpatentable under § 112, second paragraph.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Under Federal Rules of Evidence (“FRE”) 901(b)(1) a proponent may authenticate evidence through testimony that the evidence is what it is claimed to be. In Loraine v. Markel American Insurance Co., 241 F.R.D. 534, (D. Md. 2007), the court noted that a witness authenticating electronic evidence must “provide factual specificity about the process by which the electronically stored information is created, acquired, maintained, and preserved without alteration or change, or the process by which it is produced if the result of a system or process that does so.” Id. at 545. The inventor’s statements do not meet these criteria. However, under FRE 901(b)(4) a party may authenticate evidence using circumstantial evidence in conjunction with the appearance, contents, substance, internal patterns, or other distinctive characteristics of the evidence. Although Patent Owner has not provided evidence such as hash values or metadata (see Lorraine at 547), the contents and substance of the documents indicate that they are what they purport to be. Given their technical nature of the documents, this panel can assign them appropriate weight.” slip op. at 28

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “As discussed further in this decision, based on Patent Owner’s contentions and the language of the Specification, we conclude that the term “routed transactional data structure” fails to inform a person of ordinary skill in the art of the scope of the claim with reasonable certainty and is therefore indefinite under 35 U.S.C. § 112 , second paragraph. See, Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30 (2014) . However, to the extent that the claim can be construed in order to analyze its relationship to the prior art in this proceeding and whether the claim recites patent eligible subject matter under 35 U.S.C. § 101, we have reconsidered our use of the expression “switching a user” in the construction we applied in our Decision to Institute. Dec. to Inst. 15-16. Claim 1 recites that the “routed transactional data structure” is specific to a POSvc application, which is a software program that facilitates execution of transactions requested by a user. Upon reconsideration, we conclude that “utilizing a routed transaction data structure” encompasses using a data structure that facilitates switching the processing of information associated with a user selected transactional application that provides immediate processing.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “In our Decision to Institute, we noted that “object routing” requires the use of individual networked objects to route a user from a selected transactional application to the processing provided by the service provider. In contrast, the limitation “routed transactional data structure,” does not impose a meaningful limit on the scope of claims 1–3 and 11 because it does not play a significant part in permitting the claimed method to be performed. See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010). For example, as explained below in our 35 U.S.C. § 112 , second paragraph analysis, the Specification does not describe clearly how a data structure is transactional, as opposed to non-transactional, or routed, as opposed to non-routed. As discussed above, to the extent that “utilizing a routed transactional data structure that is both complete and non-deferred,” can be construed, we have interpreted it to mean using a data structure that facilitates switching the processing of information associated with a user– selected a transactional application that provides immediate processing. Switching the processing of information from one resource to another, such as from one program or data base to another, is a well-known abstract concept that is not limited to any particular technical approach, such as object routing, as recited in claim 4. The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter.” slip op. at 16

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter. Claims 2, 3, and 11 do not add limitations that contribute to patent eligibility. Thus, we conclude that Petitioner has demonstrated that claims 1–3 and 11 do not recite patentable subject matter under 35 U.S.C. § 101.” slip op. at 17

  Patent outcomesUS 8,037,158 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Nautilus
  Patents in suitUS 8,037,158

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.