- Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentablePTAB · Dec 3, 2024 · IPR2023-01020 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. environment Patent Owner initially argues that “environment” should mean “physical surroundings in which a user operates.” PO Resp. 6. Petitioner responds that the plain meaning of environment “encompasses physical and virtual environments.” Reply 2. During the hearing, Patent Owner conceded that Petitioner’s construction for environment is correct. Tr. 49:24–50:10. We agree with this construction and apply it here. See, e.g., Ex. 1001, 28:16 (referring to “a physical or a virtual environment”). “Environment” encompasses physical and virtual environments.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“insufficient to support the concept of alerting a user that the user is leaving a virtual environment. In so deciding, we need not address the parties’ contentions about boilerplate. Regardless of whether the sentence at 168:15–16 of the ’140 application is boilerplate, we agree with Petitioner that “there is no suggestion of the specific claimed combination.” Reply 22 (citing Ex. 1146 ¶ 82). That is, if one views the “[e]xamples herein” from Figure 6 as taking place “in computer rendered spaces (VR)” or “in partially computer rendered spaces (AR),” there is still no disclosure of alerting a user that a user is leaving a virtual environment. See Ex. 1028, 168:15–16. For instance, if Alice in the Figure 6 example mentioned above is entering a virtual car instead of a real car, Alice is still in a virtual environment. See id. at 120:13–27. Thus, relying on Figure 6 to take place “in computer rendered spaces (VR)” does not support alerting that a user is leaving those virtual spaces. See id. at 168:15–16. Petitioner also correctly identifies a problem with analogizing the Alice example to a virtual environment—namely, it would no longer make sense to give Alice an audible warning. See Reply 22 (citing Ex. 1146 ¶ 82). In the example, Alice’s earphones switch from binaural sound to mono sound when Alice enters a real car because “[t]he state where Alice is located . . . prohibits drivers from localizing sound while driving a motorized vehicle.” Ex. 1028, 120:15–18. But it would not make sense (nor does the ’140 application disclose) for a state to prohibit Alice to localize sound while driving a virtual vehicle. We therefore find compelling Petitioner’s argument, supported by the testimony of Dr. Roginska, which we credit, that there is no “disclosure that 3D audio would not be permitted in a 3D virtual space.” Reply 22 (citing Ex. 1146 ¶ 82). Accordingly, Patent Owner’s second support argument fails.10” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“One benefit Petitioner proposes to support a rationale to combine is that a POSITA “would have implemented this feature to help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44 (citing, e.g., Ex. 1003 ¶¶ 90, 251–254). Petitioner provides additional argument and evidence supporting a motivation to combine, with a reasonable expectation of success. See id. at 42–46. We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 52 (citing Ex. 1003 ¶¶ 250–268). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 24
Patent outcomesUS 10,448,184 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,448,184 - Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentablePTAB · Dec 3, 2024 · IPR2023-01019 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Accordingly, we are not persuaded that the ’140 application supports the claimed concept of warning or alerting a user that the user is leaving the virtual environment. Thus, the ’140 application does not support the full scope of the limitations “warning the user that the user is leaving the 3D virtual environment” in claim 1 and “alerting the user that the user is leaving the environment” in claims 7 and 14. The parties have not made any additional arguments regarding support in the ’140 application for limitations of the dependent claims. We conclude that no claim of the ’179 patent is entitled to priority to the ’140 application.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 51 (citing Ex. 1003 ¶¶ 250–263). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 26
- ExcludeMotion to exclude, deniedGranted in part
“paragraphs of Dr. Roginska’s declarations in Exhibits 1003 and 1146. Mot. 1; Reply to Opp. 1. Some of these paragraphs support Petitioner’s challenge based on Clement, Osman, and Sauk. Mot. 2–5, 7–11. Because we do not reach Petitioner’s challenge based on Clement, Osman, and Sauk, we do not rely on the portions of Dr. Roginska’s declarations addressing Clement, Osman, and Sauk. Accordingly, we dismiss this portion of Patent Owner’s Motion to Exclude as moot.” slip op. at 27
Patent outcomesUS 10,368,179 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,368,179 - PTAB · Dec 6, 2023 · IPR2023-01020 · APJ Scott Raevsky · IPR · Institution
Instituted review of claims 1–20 on all grounds; the Lyren and Reif combination showed a reasonable likelihood of obviousness for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’184 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that If the PTAB institutes the pending IPR in IPR2023-01020 challenging the patentability of claims 1-20 of the ’184 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 7. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’184 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties do not propose any claim constructions. See Pet. 7; Prelim. Resp. 7. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,448,184 - PTAB · Dec 6, 2023 · IPR2023-01019 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim, including over Lyren and Reif assuming Lyren is prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’179 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022). Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[8] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that 7 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 8 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). If the PTAB institutes the pending IPR in IPR2023-01019 challenging the patentability of claims 1-20 of the ’179 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA). Prelim. Reply 1. Patent Owner concedes that Petitioner has filed a “Sotera-like stipulation” but argues that it is insufficient because it “leaves the door open to a duplication of efforts and the possibility of conflicting decisions.” Prelim. Sur-reply 1 (citing Ex. 1141, 4 (“This stipulation is not intended . . . to limit Meta’s ability to assert . . . invalidity under 35 U.S.C. §§ 102 and 103 not available in IPR and under 35 U.S.C. §§ 101 and 112[], regardless of whether IPRs are instituted.” (emphasis omitted))). Namely, Patent Owner argues that Petitioner’s stipulation carves out “the right to assert overlapping system art in the parallel district court proceeding,” such that institution here would not address the risk of “inconsistent outcomes between the PTAB and the district court.” Id. at 4. We disagree with Patent Owner, as Petitioner’s stipulation sufficiently” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner applies Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 4. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’179 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. See Pet. 6–7; Prelim. Resp. 4. We agree that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,368,179 - Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00031 · APJ Barbara A Parvis · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable over the asserted obviousness or indefiniteness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4. A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324 (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’869 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10 (citing Ex. 1004 ¶ 16). Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 33. Considering the subject matter of the ’869 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’869 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,409,869 - Tencent Technology (Shenzhen) Co. Ltd. v. Yogesh RathodInstitution deniedPTAB · Jun 27, 2022 · DER2022-00002 · APJ Michael R Zecher · DER · Institution
The Board denied institution because Tencent did not make a sufficient showing that the named inventors conceived the invention allegedly communicated to Rathod.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.” 35 U.S.C. § 135(a)(1). We have authority to institute a derivation proceeding on behalf of the Director. 37 C.F.R. § 42.408(a). The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support a determination of derivation. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c).1 Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For the reasons set forth below, we conclude” slip op. at 2
- BurdenDenied
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6 To the extent Tencent expects us to scour the preliminary record to unearth supporting evidence of prior conception, we decline to do so. It is well-settled that Tencent is “master of its complaint.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). We are constrained by the arguments and evidence presented and developed in Tencent’s Petition, and we are not” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“6 We recognize that Tencent contends that the ’265 patent and the three applications in its priority chain lack sufficient written description support for the claimed invention. Pet. 17–28. We need not reach Tencent’s arguments that the three applications in the priority chain of the ’265 patent lack sufficient written description support for the claimed invention because, as we explain above, Tencent does not demonstrate that the named inventors in the ’371 application conceived, at any time, the inventions purportedly communicated to Mr. Rathod.” slip op. at 13
- Expert testimonyNot reached
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6” slip op. at 13
§ 112 disclosurePatents in suitUS 10,990,265 - SZ Dji Technology Co., Ltd. v. Autel Robotics USA LLCAll claims unpatentablePTAB · May 14, 2020 · PGR2019-00016 · APJ Erica A Franklin · PGR · Final written decision
Claims 1–24 are unpatentable: claims 1–24 as obvious over Phantom 2 Manual and Kondo; claims 1–17 and 21–24 over Saika and Ichiba; claims 18–20 over Saika, Ichiba, and Phelps.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner agree that the differences in their proposed definitions do not impact Petitioner’s grounds for unpatentability or Patent Owner’s responsive arguments. Pet. Reply 3; PO Sur-Reply 1. turn on which proposed definition is applied. In any event, having considered the evidence and the arguments, we find Petitioner’s rationale for its broader description of the level of ordinary skill in the art to be persuasive and supported by record as a whole. Accordingly, for this Decision, we adopt Petitioner’s description of a person of ordinary skill in the art, while maintaining that the prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Patent Owner Response, Patent Owner asserts that “the term ‘fixed with’ needs no construction here because—whether the Board adopts Petitioner’s proposal or Patent Owner’s position—the . . . obviousness analysis will not ultimately be impacted.” PO Resp. 7. In the Reply, Petitioner agrees with Patent Owner that “the construction of ‘fixed with’ is not necessary to resolve the controversy in this proceeding.” Pet. Reply 2. Based upon our review of the record as a whole, we agree that no claim terms are in controversy with respect the asserted obviousness grounds. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). This finding is consistent with our analysis of the indefiniteness challenge, as discussed below in Section II.F.” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“invention. Based upon our review of the arguments and evidence, we find that it is. “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to at 658–59. Patent Owner argues that Kondo and the ’013 patent are not from the same field of endeavor because Kondo is concerned with batteries for hand-held power tools and the challenged patent is directed to batteries for UAVs. PO Sur-Reply 3–5. Petitioner asserts that the field of endeavor includes any area describing mechanisms for latching a battery in a portable consumer electronic device. Pet. Reply 5. We find that Petitioner’s description of the field of endeavor to be overly broad as the ’013 patent explicitly states that it “relates to [the] unmanned aerial vehicle field, more particularly, relates to a battery used for unmanned aerial vehicle and an unmanned aerial vehicle.” Ex. 1001, 1:18–20. Moreover, as Patent Owner correctly asserts, the only independent claim of ’013 patent recites “[a] multi-rotor unmanned aerial vehicle,” comprising components of such a UAV, including its battery compartment, battery, and battery latching mechanism. Id. at 5:42–64. In contrast, Kondo explicitly states that it “relates to a novel attachment structure which allows a battery pack including secondary cells to be detachably attached to a battery holder in a power-driven tool.” Ex. 1008, 1:6–9. Moreover, each of Kondo’s claims are directed toward such attachment structure for power-driven tools. Petitioner has not argued persuasively why we should consider either of the fields of endeavor for the challenged patent or Kondo to be more inclusive than what each patent explicitly describes its own field to be. Accordingly, we agree with Patent Owner that Petitioner has not shown that Kondo is in the same field of endeavor as the ’013 patent. However, our inquiry whether Kondo is analogous art does not end there. particular problem with which the inventors of the ’013 patent are involved, meaning it is “one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” Clay, 966 F.2d at 659. According to Petitioner, Kondo’s disclosure is reasonably pertinent because the problem it addresses, i.e., how to securely latch a battery package into a housing of an electronic device in a secure, user-friendly manner, is similarly addressed in the ’013 patent. Pet. 22–24; Pet. Reply 6–8. Patent Owner argues that Kondo is not reasonably pertinent based upon alleged differences between design considerations for UAV batteries compared to hand-held power tool batteries. PO Resp. 21–26, PO Sur-Reply 4–9. Patent Owner, however, does not adequately support those alleged differences with evidence or explain sufficiently why such differences would have caused the ’013 inventors to not take account of the battery latching mechanism used to detachably connect a battery in a different device, such as that taught by Kondo.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“mechanism for its battery, although the Phantom 2 Manual does not provide details regarding such mechanism. Yet Patent Owner asserts that a skilled artisan would have “been far more likely to obtain, inspect, and experiment with the battery latching mechanism on an actual Phantom 2 rather than engaging in research to find alternatives.” PO Resp. 20. We discount that argument as Patent Owner’s position is unsupported by any legal authority and disregards patent law principles recognizing obviousness over a combination of prior art teachings. Next, Patent Owner asserts that the lack of detail in the Phantom 2 Manual regarding the battery latching mechanism used would “discourage, rather than encourage a POSA to modify the Phantom 2 battery,” with the Phantom 2 that would encourage or motivate a POSA to create a more secure latching mechanism.” Id. at 21. That argument, however, fails to consider that the motivation to combine may be found in a number of sources, including “the background, knowledge, creativity, and common sense of the person of ordinary skill,” as Petitioner asserts. Pet. Reply 9 (quoting ZUP, LLC, 896 F.3d at 1371). Based upon our review, Petitioner has set forth persuasive reasons why a person of ordinary skill in the art would have been motivated to review and combine a reference describing battery latching mechanisms for portable electronic devices, such as Kondo, with the Phantom 2 Manual. In particular, Petitioner asserts that such motivation is supplied by the lack of detail in the Phantom 2 Manual regarding the specific battery latching mechanism used. Pet. 22. We agree with Petitioner that a person of ordinary skill in the art would have been motivated to search and review references describing battery latching mechanisms for portable electronic devices to address that deficiency in the Phantom 2 Manual. See id. Further, Petitioner has demonstrated that a skilled artisan would have looked to Kondo because it is directed to and describes such a battery latching mechanism in detail. Id. at 22–23.” slip op. at 30
Patent outcomesUS 10,044,013 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,044,013 - SZ Dji Technology Co., Ltd. v. Autel Robotics USA LLCAll claims unpatentablePTAB · May 14, 2020 · PGR2019-00014 · APJ Erica A Franklin · PGR · Final written decision
Claims 1–12 are unpatentable as obvious over the stated combinations of prior art; Petitioner did not show claims 1–12 indefinite.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner agree that the differences in their proposed definitions do not impact Petitioner’s grounds for unpatentability or Patent Owner’s responsive arguments. Pet. Reply 3; PO Sur-Reply 1. We agree and note that our consideration of the issues presented does not turn on which proposed definition is applied. In any event, having considered the evidence and the arguments, we find Petitioner’s rationale for its broader description of the level of ordinary skill in the art to be persuasive and supported by record as a whole. Accordingly, for this Decision, we adopt Petitioner’s description of a person of ordinary skill in skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the single term for which Petitioner proposed a claim construction, i.e., “fixed with.” Dec. 8–9. In particular, we determined that, in view of Specification, the broadest reasonable construction of the claim phrase “fixed with the clamp button” is “fastened to, attached or placed and not readily moveable with respect to the clamp button, such that it does not merely abut against the clamp button nor is it detachably connected to it.” Id. at 9. In the Patent Owner Response, Patent Owner asserts that “the term ‘fixed with’ needs no construction here because—whether the Board adopts Petitioner’s proposal or Patent Owner’s position—the . . . obviousness analysis will not ultimately be impacted.” PO Resp. 9. In the Reply, Petitioner agrees with Patent Owner that “the construction of ‘fixed with’ is not necessary to resolve the controversy in this proceeding.” Pet. Reply 2. Based upon our review of the record as a whole, we agree that no claim terms are in controversy with respect to the asserted obviousness grounds. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). This finding is consistent with our analysis of the indefiniteness challenge, as discussed below in Section II.F.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(1) Motivation to Combine The parties agree that the Phantom 2 includes some type of latching mechanism for its battery, although the Phantom 2 Manual does not provide details regarding such mechanism. Yet Patent Owner asserts that a skilled artisan would have “been far more likely to obtain, inspect, and experiment with the battery latching mechanism on an actual Phantom 2 rather than engaging in research to find alternatives.” PO Resp. 22. We discount that argument as Patent Owner’s position is unsupported by any legal authority and disregards patent law principles recognizing obviousness over a combination of prior art teachings. Next, Patent Owner asserts that the lack of detail in the Phantom 2 Manual regarding the battery latching mechanism used would “discourage, rather than encourage a POSA to modify the Phantom 2 battery,” particularly because Petitioner has not identified “any problem associated with the Phantom 2 that would encourage or motivate a POSA to create a more secure latching mechanism.” Id. at 23. That argument, however, fails to consider that the motivation to combine may be found in a number of sense of the person of ordinary skill,” as Petitioner asserts. Pet. Reply 9 (quoting ZUP, LLC, 896 F.3d at 1371). Based upon our review, Petitioner has set forth persuasive reasons why a person of ordinary skill in the art would have been motivated to review and combine a reference describing battery latching mechanisms for portable electronic devices, such as Kondo, with the Phantom 2 Manual. In particular, Petitioner asserts that such motivation is supplied by the lack of detail in the Phantom 2 Manual regarding the specific battery latching mechanism used. Pet. 23. We agree with Petitioner that a person of ordinary skill in the art would have been motivated to search and review references describing battery latching mechanisms for portable electronic devices to address that deficiency in the Phantom 2 Manual. See id. Further, Petitioner has demonstrated that a skilled artisan would have looked to Kondo because it is directed to and describes such a battery latching mechanism in detail. Id. at 23–24.” slip op. at 32
- Obviousness (§103) › Analogous artAnalogous artNon analogous artDecided for petitioner
“The parties dispute whether Kondo is analogous art to the claimed invention. Based upon our review of the arguments and evidence, we find that it is. “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Clay, 966 F.2d at 658–59. Patent Owner argues that Kondo and the ’000 patent are not from the same field of endeavor because Kondo is concerned with batteries for handheld power tools and the challenged patent is directed to batteries for UAVs. area describing mechanisms for latching a battery in a portable consumer electronic device. Pet. 24; Pet. Reply 6. We find Petitioner’s description of the field of endeavor to be overly broad as the ’000 patent explicitly states that it “relates to [the] unmanned aerial vehicle field, more particularly, relates to a battery used for unmanned aerial vehicle and an unmanned aerial vehicle.” Ex. 1001, 1:18–20. Moreover, as Patent Owner correctly asserts, the only independent claim of ’000 patent recites “[a] multi-rotor unmanned aerial vehicle,” comprising components of such a UAV, including its battery compartment, battery, and battery latching mechanism. Id. at 5:34–6:16. In contrast, Kondo explicitly states that it “relates to a novel attachment structure which allows a battery pack including secondary cells to be detachably attached to a battery holder in a power-driven tool.” Ex. 1008, 1:6–9. Moreover, each of Kondo’s claims are directed toward such attachment structure for power-driven tools. Petitioner has not argued persuasively why we should consider either of the fields of endeavor for the challenged patent or Kondo to be more inclusive than what each patent explicitly describes its own field to be. Accordingly, we agree with Patent Owner that Petitioner has not shown that Kondo is in the same field of endeavor as the ’000 patent. However, our inquiry whether Kondo is analogous art does not end there. Next, we consider whether Kondo is reasonably pertinent to the” slip op. at 33
Patent outcomesUS 9,979,000 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 9,979,000 - Mobile Tech, Inc. v. Invue Security Products Inc.Rehearing deniedPTAB · Dec 4, 2018 · PGR2018-00004 · APJ Stacey G White · PGR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show an abuse of discretion in finding claims 1–45 supported and enabled.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting rehearing of a decision, the challenging party must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the record. Id. When considering a request for rehearing of a decision on whether to institute trial, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005) (citing Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004)). We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“’472 patent is eligible for post-grant review. Dec. 16. Here, eligibility for post-grant review depends on the effective filing date of the challenged claims. When determining the effective filing date, a claim is entitled to the benefit of an earlier filing date when an earlier application discloses the claimed invention “in the manner provided by § 112(a) (other than the requirement to disclose the best mode).” See id. at 6 (citing US Endodontics, LLC v. Gold Standard Instruments, LLC, Case PGR2015- 00019, slip. op. at 7 (PTAB Dec. 28, 2016) (Paper 54)). The ’472 patent was the latest in a chain of continuation applications that dates back to U.S. Patent Application No. 13/169,9685 (“968 Application”), which was filed on June 27, 2011. Ex. 1001, at [63]. We previously determined that the 968 5 There are other applications in this chain, but none of those applications are relevant to the issues presented here and thus, we do not address those applications. Application and the ’472 patent have substantially identical specifications and figures. See Dec. 7 (finding that the 968 Application and the patent application from which the ’472 patent issued are substantially identical). We thus determined that we were able to “analyze the ’472 patent’s eligibility for post grant review through a discussion of Petitioner’s arguments as to written description support in the ’472 patent.” Id. at 8. We then found that Petitioner failed to establish that the challenged claims lack written description support or are not enabled. See id. at 12, 15–16.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The ’472 patent expressly recites: Actuation of activation switch 85 causes logic control circuit 18 of programming station 3 to randomly generate a unique security code (i.e. SDC) that is transmitted via communication circuit 20 to communication circuit 79 of programmable key 5, which in turn stores the randomly generated SDC in security code (SDC) memory 81 of the key . . . . [T]he SDC initially provided by the programming station 3 is randomly generated and is unique to that programming station and always remains with that programming station for subsequent use. Thus, the SDC initially generated always stays with the programming station 3 and is subsequently programmed into one or more programmable keys 5. Ex. 1001, 9:23–43 (emphases added); see also id. at 10:6–12 (“[T]he particular programming station 3 of the retail store [is] used to program the key with the SDC.”). The ’472 patent also discloses that the programming station “reprogram[s] or refresh[es] the SDC into the key” after the programmable key times out, which occurs after a predetermined period elapses from the time that the programmable key was last programmed or refreshed. See e.g., id. at 12:63–13:8. Specifically, the programming station performs a “handshake” with the key “to determine whether the key has not previously been programmed with a SDC (i.e. a ‘new’ key), or is an authorized key that is being presented to the programming station a subsequent time to refresh the SDC,” and once a proper “handshake” is completed, the programming station “permits the SDC generated by the logic control circuit and/or stored in the memory to be transmitted . . . [to] the programmable electronic key.” Id. at 16:4–19. Thus, the programming station is responsible for generating the SDC and transmitting it to the programmable key. More to the point, the ’472 patent discloses that “the programming station will deactivate a SDC stored in the SDC memory of a key if an incorrect SDC is encountered when the programming station is attempting to reprogram or refresh the key.” Id. at 13:13–17 (emphases added). This contradicts Petitioner’s proposition that a key programmed with one SDC from a first programming station can then program that same SDC into a second programming station. The ’472 patent expressly teaches how to deal with a situation in which a second programming station encounters an incorrect SDC in the memory of a key: it deactivates the SDC stored in the key.” slip op. at 7
§ 112 disclosurePatents in suitUS 9,659,472 - Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentablePTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision
Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.
RulingsFinal written decision- BurdenFwd mixedMixed
“C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24
Patent outcomesUS 7,268,703 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,268,703
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.