• Netskope, Inc. v. Fortinet, Inc.Institution denied
  PTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution

  The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8

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

    “B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe a 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.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 9,231,968
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution

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

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2

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

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

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

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

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 7,769,238
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision

  Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9

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

    “added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 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.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20

  Patent outcomesUS 9,591,360 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,591,360
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00206 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 are unpatentable as obvious over the stated prior-art combinations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “U.S. Patent No. 8,825,887 (“the ’887 patent”). The claims of that patent include the same term referring to “at least one portion,” and the ’887 patent shares its written description with the ’636 patent. In our Final Written Decision in CBM2020-00028 (Paper 33, 9−13), we found that the plain and ordinary meaning of this term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” CBM2020-00028, Paper 33 at 10–11. We declined to adopt Patent Owner’s implicit claim construction because it improperly imports extraneous limitations into the claims and excludes a preferred embodiment. Id. at 11–” slip op. at 8

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

    “as “a file containing one or more media references and other information used by a communication device to obtain media.” PO Resp. 14–17. Patent Owner contends that “a play script is not itself limited to being a list.” Id. at 15. Patent Owner argues that a script “is a file, which can be processed by a computer to obtain media” because the claims recite that the play script contains “instructions.” Id. Patent Owner also cites the district court’s adoption of this construction. Id. at 13–14. Whether or not a playlist is a file is not a meaningful distinction for the purposes of this Final Written Decision. As Petitioner notes, all of the “play scripts” identified by Petitioner in the prior art are files. Reply 6. We agree with Petitioner that we need not determine which party’s construction applies for purposes of our analysis. Nidec, 868 F.3d at 1017.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “reservation. Patent Owner now proposes the following construction: “arrangement regarding reserved resources of a streaming system.” PO Resp. 17. Patent Owner cites the specification and Mr. Adam’s testimony 13 for support. Id. (citing Ex. 1001, 10:33−37; Adams Decl. ¶ 110). Mr. Adam relies on the ’636 patent specification, which states that “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37. Further, “[t]he reservation uniquely identifies the viewer 118 or 120 and the customized play script.” Id. at 10:27–28, 10:34–37. The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Based on the description in the specification, we construe “reservation” as “a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37.” slip op. at 13

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Neither party points out any meaningful difference between the parties’ assessments. We therefore apply Patent Owner’s more detailed assessment on the level of ordinary skill in the art. This proposal is consistent with the ’636 patent, the prior art of record, and is supported by 16 the testimony of Mr. Adams. Adams Decl. ¶¶ 27–29. However, our analysis would be the same under either party’s description.” slip op. at 16

  Patent outcomesUS 9,135,636 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,135,636
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached

    “Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00506 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–5 are unpatentable because Shinohara anticipates them.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2

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

    “Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6

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

    “the ’176 grandparent application is insufficient. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997); see also Reply 5–6. We find that the cited disclosures in the ’176 grandparent application do not describe the density, size, depth, or height of the deformities at approximate midpoints between adjacent pairs of light sources. As discussed above, Patent Owner maintains that a skilled artisan reading the ’176 grandparent application would know that “the approximate midpoint between the two light sources is an area farther away from a light source.” PO Resp. 28 (emphasis added). We are not persuaded by this argument, for it does not establish that the approximate midpoint between adjacent pairs of light sources is the only area farther away from a light source. As Petitioner points out, “the increased distance from the light source is not limited to a distance along the length of the panel member, along the width of the panel member, or along any direction at all.” Reply 11. Thus, Patent Owner fails to meet its burden under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015) (burden of production shifted to patent owner to prove entitlement to earlier filing date).” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner

    “In view of the foregoing, we determine that Patent Owner has not demonstrated that the ’176 grandparent application, as originally filed, provides written description support for the disputed limitation. Therefore, we determine that claims 1–5 are not entitled to the benefit of the filing date of the ’176 grandparent application and Patent Owner is thus entitled only to the effective filing date of the application for the ʼ973 patent, February 9, 2007. As a consequence, we find that Shinohara qualifies as prior art.” slip op. at 11

  Patent outcomesUS 7,434,973 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 7,434,973
• Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentable
  PTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision

  Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.

  RulingsFinal written decision

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

    “that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached

    “E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31

  Patent outcomesUS 6,857,022 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 6,857,022

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.