• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Oct 19, 2023 · IPR2022-00810 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 and 13–21 are unpatentable: Vaios anticipates some claims, and the listed Vaios, Klein, and Naidoo-068 combinations render the remaining claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8 (citing Ex. 1002 ¶¶ 21–24). Patent Owner responds that “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art” such that Dr. “Hochwald’s conclusory opinion should be given no weight.” PO Resp. 4–5 (citing Ex. 1002 ¶¶ 21–24). Notwithstanding Patent Owner’s arguments, Dr. Hochwald declares that “[a]ll of the opinions contained in this declaration are based on the documents I have reviewed and my professional judgment, as well as my education, experience, and professional knowledge.” Ex. 1002 ¶ 17. Such documents include the “’098 patent (EX1001), the prosecution history of the ’098 patent (EX1017), the prior art references cited herein, and other Hochwald bases his proposed level of ordinary skill on the relevant documents. Moreover, Patent Owner does not offer a proposed level of ordinary skill in the art or even argue that a different level would result in a different analysis by Dr. Hochwald or any other declarant. See id. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’098 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Phillips. See Pet. 7–8. The parties disagree over whether the preamble is limiting. Compare PO Resp. 2–3 (arguing the preamble is limiting), with Reply 2–3 (arguing that “‘for receiving a person at an entrance’ clearly states an intended purpose of the invention”). As the analysis of the grounds art renders the claims unpatentable.” slip op. at 9

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

    “In any event, even if we generally adopt what Patent Owner refers to as an agreed upon plain and ordinary meaning and construe “detecting a person at the entrance” as limited to “detecting a person at an exterior,” and further construe “exterior” as referring to the exterior of an area defined by some type of a “demarcation line” according to the ’098 patent’s description of Figure 1 (see Ex. 1001, 6:40–50), the Petitioner persuasively shows that the prior art teaches the limitation (including when the “demarcation line” defines the exterior of a building), as discussed further below. Accordingly, it is not necessary to explicitly construe the limitation any further or to construe any other claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “shows that the ’384 provisional does not contemplate transmitting “video of the person at the entrance” to a “remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance,” using “a graphic user interface,” as claim step 1c requires. Disclosure in the ’384 provisional of a generic laptop or other remote peripheral device that may be capable of viewing video in isolation is not possession of the claimed invention. In other words, as Petitioner persuasively shows, “[c]ommunication of actual video to the remote peripheral device was not countenanced in the provisional, and [Patent Owner] fails to identify evidence to the contrary.” Id. at 9. That is, as Petitioner also argues, “[w]ritten description support is not established simply by identifying peripheral devices such as PDAs and laptop[s] in the provisional and arguing that such devices were ‘capable of’ displaying video, nor by the provisional’s disclosure of ‘communications’ between the central computer and said peripheral devices.” Id. at 8–9 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331–32 (Fed. Cir. 2008)). Under the rationale and holding of Tech. Licensing Corp., even if “a person skilled in the art might conclude” that the ’384 provisional’s disclosed system is capable of performing the same function of viewing the particular video at a remote peripheral device, this is not enough to show adequate written description. See id. at 1334 (“This evidence persuaded the trial court that a person skilled in the art might conclude that R21 and R26 establishing a level shifted signal [as recited in the ’250 patent claims at issue], but that was all,” and that evidence is insufficient to satisfy written description for a level shifted signal), 1333–34 (“The pertinent question is not whether a person skilled in the art could look at both Figure 3 [from the earlier-filed ’323 application] and Figure 16 [from the ’250 patent at issue] and determine that the resistors in the former perform a similar function to the resistors in the latter. Rather, the issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the ’250 patent, that the inventor had possession of the claimed ‘other circuit’ in 1992 when the ′323 application was filed.”). Even if there is a disclosure in the ’384 provisional of a system that merely is capable of providing for the viewing of live streaming or recorded video at the remote peripheral device of “the person at the entrance,” this still is not sufficient written description for claim 1, step 1c. Rather, claim 1 requires “a graphic user interface” (which facilitates and controls the viewing) at “the remote peripheral device,” because it requires “providing a [GUI] to a remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance.”14 There is no disclosure in the ’384 provisional for providing a GUI to a remote peripheral device. See Inst. Dec. 9 (indicating a lack of showing as to the claimed” slip op. at 19

  Patent outcomesUS 8,139,098 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,139,098
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · Jul 27, 2023 · IPR2022-00351 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 2, 5–7, 14–16, 19, and 20 are unpatentable: claims 1, 2, 5, 6, 14–16, 19, and 20 as obvious over Suzuki, and claim 7 as obvious over Suzuki and Park.

  RulingsFinal written decision

  • Skill levelOther

    “III. DISCUSSION A. Claim Construction In an inter partes review proceeding, we construe a claim of a patent “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).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103, effective March 16, 2013. See Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011). Because the application from which the ’842 patent issued claims the benefit of priority to an application that was filed before this date, the pre-AIA version of § 103 applies. 2 Suzuki, U.S. Patent No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005). 3 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006). Petitioner asserts that “no terms require specific construction.” Pet. 10. Patent Owner does not respond. See generally PO Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “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).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). slip op. at 6

  • BurdenDecided for patent owner

    “Petitioner’s burden to show that [Patent Owner is] not entitled to the Korean date.” Tr. 44:3–4; see also PO Resp. 23 (“Petitioner cannot carry its burden to show that the ’842 patent should not be given its earliest alleged priority date to show that Park is prior art.”). That is not so. There are two distinct burdens of proof, namely, a burden of persuasion and a burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner carries “the burden of persuasion to prove unpatentability by a preponderance of the evidence,” and that burden never shifts to Patent Owner. Id. at 1379. The burden of production, however, is a shifting burden, the allocation of which depends on where in the process of trial the issue arises. See id. Here, Petitioner starts with the initial burden of production, which it satisfies by arguing obviousness based on its assertion that Park is prior art, as discussed above. See id. The burden of production then shifts to Patent Owner to argue or produce evidence that Park is not prior art because the challenged claims are entitled to the benefit of a filing date earlier than Park’s effective date of December 6, 2011. See id. at 1380. To shift the burden back to Petitioner, Patent Owner needs to present evidence to support an argument that the specification of the Korean application describes an invention understandable to an ordinarily skilled artisan and that the inventor actually invented the invention claimed in the ’842 patent. See Ariad Pharms., 598 F.3d at 1351; see also Dynamic Drinkware, 800 F.3d at 1378. Patent Owner does not do that here. Notably, Patent Owner does not address at all whether the disclosure of the Korean application provides support for claim 7 of the ’842 patent. See generally PO Resp. Indeed, counsel for Patent Owner admitted at oral argument that he did not know whether the record even contains an English language translation of the Korean application. Tr. 42:25–43:1 (counsel for Patent Owner referring to “the Korean patent application, which I’m not aware of whether or not we have a translation of that”). Without such translation, there can be no “objective inquiry into the four corners of the specification.” See Ariad Pharms., 598 F.3d at 1351. Counsel for Patent Owner further acknowledged that Patent Owner did not meet this burden of production. Tr. 44:7–13. We asked counsel at oral argument, “Well, if we disagree with you and say you have the burden to show support in the Korean application, then you lose on that issue?” Id. at 44:7–9. Counsel responded, “Well, yes, Your Honor. . . . If you disagree with me on that position, yes, that is correct.” Id. at 44:10–13. Because Patent Owner neither argues nor presents evidence that claim 7 is entitled to the benefit of the filing date of the Korean application, we determine that Petitioner shows that Park qualifies as prior art.” slip op. at 37

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

    “Under 35 U.S.C. § 119, “the claims set forth in a United States application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). Section 112, ¶ 1 contains a written description requirement, which is satisfied here if “the disclosure of the [foreign] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and, “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id.” slip op. at 36

  Patent outcomesUS 10,622,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 10,622,842
• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Feb 1, 2021 · IPR2019-01349 · APJ Jameson Lee · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Shellhammer; claim 5’s patentability could not be reached because its scope is ambiguous.

  RulingsFinal written decision

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

    “Further, even assuming that the Patent Owner successfully shows that the Examiner erred in not accepting the applicant’s foreign priority claim, that does not mean Patent Owner, in this proceeding, is automatically entitled to the filing date of the foreign application. If Patent Owner wished to challenge the prior art status of a reference, after Petitioner satisfied its initial burden of production by arguing the reference is prior art, Patent Owner would then have to demonstrate, in this proceeding, that the challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware states that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application, the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. 5 “[I]f the effective filing date of what is claimed in a United States application is at issue, to preserve symmetry of treatment between sections 120 and 119, the foreign priority application must be examined to ascertain if it supports, within the meaning of section 112, ¶ 1, what is claimed in the United States application.” In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir. 1989). Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we have no reason to disagree with Petitioner’s articulation of the level of ordinary skill, which is supported by the testimony of Dr. Roy (Ex. 1003 ¶¶ 62–63), except to note that the open-ended qualifier “or more” as applied to years of experience expands the level to encompass that of an expert, which is inappropriate for the level of 7 Patent Owner has not presented any objective evidence of nonobviousness or any argument in that regard. “ordinary skill.” Petitioner’s articulation without the expansive qualifier appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Therefore, we adopt the Petitioner’s articulation of the level of ordinary skill, but without the expansive qualifier “or more” as applied to the amount of experience. C.” slip op. at 13

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

    “stations which operate in accordance with a first radio interface standard and/or a second radio interface standard” Claim 1 recites: “stations which operate in accordance with a first radio interface standard and/or a second radio interface standard.” Ex. 1001, 6:24–26. Although Petitioner asserts that no construction is necessary for this phrase and that the plain and ordinary meaning applies, Petitioner nonetheless proposes that the phrase, according to its plain and ordinary meaning, means “stations, each of which operates in accordance with a first radio interface standard, a second radio interface standard, or both.” Pet. 14. Patent Owner asserts that no construction is necessary. PO Resp. 14. Regarding Petitioner’s articulation of the plain and ordinary meaning of the phrase, Patent Owner has not refuted it in any way, and it appears consistent with what the phrase ostensibly indicates. Thus, on the record before us, we accept and adopt Petitioner’s articulation of the plain and ordinary meaning for this phrase. slip op. at 15

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

    “renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band” Claim 1 recites: “renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band.” Ex. 1001, 6:32–36. For this phrase, Petitioner asserts that “claim construction is not necessary.”8 Pet. 15. Patent Owner, likewise, “submits that the Board need not construe this claim term.” PO Resp. 14. We agree with the parties that express claim construction of this claim term or phrase is not necessary. Although no additional discussion is necessary, we point out certain inaccuracies in the Patent Owner Response, to avoid potential confusion. slip op. at 16

  Patent outcomesUS 7,016,676 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,016,676
• Supercell OY v. Gree, Inc.All claims unpatentable
  PTAB · Aug 14, 2019 · PGR2018-00029 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–15 are unpatentable: the Board found them ineligible under § 101 and also found claims 1–15 unpatentable under § 112(a).

  RulingsFinal written decision

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

    “division” to “way of managing a game and playing a game” does not alter our analysis, because “displaying a panel selection in a division” is no more than identifying high level details of a game that are substantively analogous to how “wagering game,” “dice game,” and “bingo game” are identified in the aforementioned cases. Accordingly, we find that independent claim 1 recites “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which, under the Guidance, is one of certain methods of organizing human activity and, thus, an abstract idea.” slip op. at 26

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

    “way of managing a game and playing a game involving displaying a panel selection in a division.” Accordingly, Petitioner is not required to account for any limitations within this characterization, at least for the purposes of determining whether a claim limitation is “well-understood, routine, conventional.” And when this framework is applied properly, we see how most of Patent Owner’s assertions fall away. First, Patent Owner argues that Petitioner has provided no evidence that the claimed use of panels is well-understood, routine, or conventional. PO Resp. 32–39 (citing Ex. 1001, 6:36–38, 6:42–46, 7:27, 7:36, 7:44–53. 7:55–56; Ex. 2002, ¶¶ 22–30). More specifically, Patent Owner asserts that the panels disclosed in the ’583 patent may “display a still image,” “display a movie when the panels are emphasized and displayed,” “zoom in,” and may have portions of frames, in which the panels are disposed, that “display the texts showing the sound effect and/or an effect display portion.” PO Resp. 32–33 (citing Ex. 1001, 7:27, 7:36, 7:44–53, 7:55–56). Patent Owner asserts that these elements provide an interactive and dynamic format using panels that was unique and unconventional. PO Resp. 34. However, Petitioner is not required to show that those properties of the panels described in the ’583 patent, whether in an interactive and dynamic format or otherwise, are well-understood, routine, and conventional, because these elements are not recited in any of the independent claims.11 Relatedly, Petitioner is not slip op. at 45

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “2. Analysis Petitioner asserts that the Specification of the ’583 patent fails to provide adequate written description support for the following limitations of representative claim 1:” slip op. at 58

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Pet. Reply 25; see also Tr. 37:3–11 (continuing line of argument). Here, once again, Petitioner mistakes breadth, which is permitted, for indefiniteness. See In re Miller, 441 F.2d at 693. As admitted by Patent Owner, the limitation and, in particular the term “allowed,” is certainly broad. See Tr. 73:15–74:2. But as stated by Mr. Crane, a person of ordinary skill would have understood that “one character would not be allowed to dispose a panel . . . into a division that is occupied by a panel belonging to another character,” or if “an attempt is being made to dispose a panel into a space where the panel will not fit, it will also not be allowed to be disposed.” PO Sur-Reply 22–23 (citing Ex. 2002 ¶ 44; Ex. 1009, 107:24–108:4). Petitioner has not provided sufficient evidence or analysis to show that such an example from the ’583 patent is insufficient guidance to one of ordinary skill and compels a determination of indefiniteness.17 For these reasons, we are not persuaded that Petitioner has met its burden of showing that claims 1–15 are indefinite under 35 U.S.C. § 112(b).” slip op. at 69

  Patent outcomesUS 9,636,583 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Enfish · Electric Power · Nautilus
  Patents in suitUS 9,636,583
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.All claims unpatentable
  PTAB · Jul 25, 2018 · CBM2017-00032 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 are unpatentable under § 101; the petitioner did not show claims 17, 18, 23, 24, and 28 unpatentable under § 112.

  RulingsFinal written decision

  • BurdenOther

    “Considering each claim limitation, as well as each explicit citation to the specification expressly set forth in the Petition, we are persuaded that Petitioner has met its burden of showing, via analysis and evidence explicitly set forth on pages 6–7 of the Petition, that independent claim 1, as a whole, does not recite a technological feature that is novel or unobvious.” slip op. at 22

  • Adverse judgmentOther

    “Response (Paper 24, “PO Resp.”) and disclaimed claims 5, 25, 39, and 43 (Ex. 2006). Petitioner filed a Reply to the Patent Owner’s Response (Paper 38, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 40, “PO Sur”), and Petitioner filed a Response to the Sur-Reply (Paper 41, “Pet. Sur”).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “II. ANALYSIS A. Claim Construction Petitioner and Patent Owner dispute the construction of certain claim terms. Pet. 23–28; PO Resp. 34–46. We apply the constructions of those terms set forth in Paper 49 in this decision.” slip op. at 7

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

    “We agree. The preambles of independent claims 1, 19, and 33 expressly state as much. In particular, the preamble of claims 1 and 33 provide: “A system for providing targeted advertising to a multimedia content end user” (claim 1) or “a plurality of multimedia content end users” (claim 33). Ex. 1003, 46:13–14, 49:59–60. Likewise, claim 19’s preamble refers to “[a] device for providing targeted advertising to an end user.” Id. at 48:20–21. Taking claim 1 as a representative example, the remainder of the claim recites certain tangible components, namely a “storage device” and specifically, an “addressable and reserved storage space”; a “processor”; and “software implemented by” the processor. Id. at 46:13–28. The claim further requires the following functionalities: the processor “reserv[ing]” the storage space; the processor “select[ing] particular advertising data suitable for targeting to at least one end user based upon predefined criteria data”; the storage space “storing digital advertising data” and specifically, the “particular advertising data”; and the “particular advertising data” being “accessible to” the user. Id. Thus, we are persuaded that claim 1, taken as a whole, is focused on the concept of providing targeted advertising to a user. Further, the claims merely invoke computers as a tool to implement the concept of targeted advertising, and are not directed to any improvement in computer functionality. See Pet. 34; Ex. 1008 ¶¶ 944–945. The claims recite generic components and functionality. For example, in claim 1, the required components, outlined above—a storage device and specifically, a storage space, a processor, and software— are conventional. The recited functionalities—reserving the storage space for advertising data, selecting advertising data targeted to a user, storing that data, and making that data accessible to the user—are likewise basic and routine. As Petitioner points out, the specification expressly acknowledges that some of the tangible components of the recited system were known. See Pet. 7–8, 33–34, 40–75; Ex. 1008 ¶ 949. For instance, the specification refers to storage device 14 as “any medium known in the art for storing electronic data” and similarly, “any storage device for audio/video information known in the art.” Ex. 1003, 13:22–28, 15:1–5, 24:66–25:7; see id. at [57], 5:3–6, 21:42–22:2. The testimony of Petitioner’s declarant, Dr. Negus, also persuade us that each recited component and functionality was generic, conventional, and known. Ex. 1008 ¶¶ 945, 949–954; see id. ¶¶ 955–987.” slip op. at 26

  Patent outcomesUS 9,053,494 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Mayo · Enfish
  Patents in suitUS 9,053,494
• Twilio Inc. v. Telesign CorporationAll claims unpatentable
  PTAB · Mar 6, 2018 · IPR2016-01688 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4, 6, 8, 10, 11, 13, 15, and 17 are unpatentable as obvious over Bennett and Campbell under § 103(a).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art at the time of the ’792 patent would have had “at least an undergraduate degree in computer science, or equivalent experience, and in addition would be familiar with Internet and telephone communications.” Pet. 22 (citing Ex. 1002 ¶¶ 11–20). Patent Owner does not dispute Petitioner’s assessment in its Response. Based on the record developed during trial, including our review of the ’792 patent and the types of problems and solutions described in the ’792 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “As shown in the chart above, the ’792 patent claims priority as a continuation or divisional application of a series of applications, and as a continuation-in-part (CIP) of U.S. Patent Application No. 11/034,421 (Ex. 1027, “the ’421 application”), filed on January 11, 2005. See Ex. 1001, col. 1, ll. 7–25. Petitioner argues that there is no presumption that the challenged claims are entitled to the filing date of the ’421 application, because the Office did not consider priority during prosecution of the ’792 patent, and the ’421 application does not provide written description support for certain limitations pertaining to the recited “notification event” in independent claims 1 and 10 of the ’792 patent. Pet. 9–15. In our Decision on Institution, we agreed with Petitioner, based on the record at the time, that the challenged claims are not entitled to the filing date of the ’421 application, and the earliest effective filing date of the challenged claims is October 5, 2006. Dec. on Inst. 10–12. Patent Owner does not dispute Petitioner’s assertions regarding the effective filing date of the challenged claims in its Response, and we do not perceive any reason or evidence that compels any deviation from our earlier conclusion. Thus, we adopt the previous analysis, and conclude that Bennett is prior art under 35 U.S.C. § 102(e) and Campbell is prior art under 35 U.S.C. § 102(a).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “reasonable construction in light of the specification of the patent in which [they] appear[ ].” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In the Decision on Institution, we preliminarily interpreted the claim term “notification event” to mean an event that results in the user being notified that the event occurred. Dec. on Inst. 6–10. The parties apply this interpretation in their Response and Reply, and we do not perceive any reason or evidence that compels any deviation from our earlier interpretation. See Resp. 14–15; Reply 11. We adopt the previous analysis and conclude that no other terms require interpretation.” slip op. at 6

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

    “Patent Owner’s position, in effect, would require that a single prior art reference have to disclose the full concept of a “notification event” “associated with” an “action” requiring user acknowledgement. See, e.g., PO Resp. 18–19 (arguing that “[t]he Petition would need to rely on Campbell to teach the notification-event limitations . . . because Bennett does not, . . . but Petitioner fails to adequately argue or show that Campbell teaches such actions”); Tr. 18:7–19:9 (acknowledging that there need not be one reference disclosing the entire limitation, but arguing that “one cannot untether the action from the notification event”). The test for obviousness, however, is “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006) (explaining that in an obviousness analysis, “the prior art must be considered as a whole for what it teaches”); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Petitioner explains sufficiently what the combined teachings of Bennett and Campbell would have suggested to a person of ordinary skill in the art, namely, “events” in Bennett that trigger an SMS message to the user and that have associated “actions,” and adding a sentence to the SMS message in Bennett to provide notification to the user that the event occurred. See Pet. 37–59; Reply 16 (“Bennett discloses different types of ‘actions’ and Campbell discloses ‘notification events.’ . . . Thus, it is the combination of Bennett and Campbell that discloses ‘notification events associated with actions.’”). Thus, we are persuaded that, collectively, Bennett and Campbell account for a “notification event” “associated with” an “action” requiring user acknowledgement, as recited in claim 1.” slip op. at 21

  Patent outcomesUS 9,300,792 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,300,792
• Google Inc. v. Performance Pricing Holdings, LLCAll claims unpatentable
  PTAB · Sep 13, 2017 · CBM2016-00050 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–14 are unpatentable under §§ 101 and 112(a) because they claim an abstract advertising-pricing idea implemented with conventional technology and lack written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). Considering these factors, we agree with Petitioner that a degree in computer science is not required for a person of ordinary skill in the art. See Reply 4. First, as Patent Owner admitted at the hearing, the named inventor, Mr. Rosenberg, does not have a computer science degree. Tr. 87:8–22. Second, as Patent Owner’s Response makes clear, the problems encountered in the field of the ’059 patent are problems of maintaining advertising customers, when viewer response to an ad can be tracked and there is an almost limitless inventory. PO Resp. 5–7. These are economic and business problems caused by the particular market conditions present in the Internet advertising market—large inventory and a high level of knowledge of behavior in the market. See Ex. 1003 ¶ 36. We are persuaded that a computer science degree would not provide a person with further useful insight into such economic and business problems. See Ex. 1003 ¶¶ 36–40. Indeed, this understanding is confirmed by the ’059 patent, which describes the business problems Internet advertising had on sellers of advertising. See, e.g., Ex. 1002, 1:55–59 (“As systems of accountability are developed and the amount of advertising inventory increases, vendors or publishers in all media will be faced with the problems of attracting advertisers while, at the same time, covering overhead costs.”); 1:60–63 (noting “[o]ne problem associated with current methods of selling Internet advertising is the difficulty of striking a fair and reasonable balance between fixed-fee pricing and performance-based pricing”); 1:63–3:24 (describing characteristics of the Internet advertising market); 3:27–31 (“[T]he present invention include methods and systems for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.”). Third, the discussion of computer components in the ’059 patent is only at a very high level. See, e.g., id. at 8:33–9:9 (discussing the components of the claimed system as only “computers,” “servers,” “databases,” “network protocol (such as Hypertext Transfer Protocol or HTTP)”). This indicates that the focus is not on the computer technology, but the pricing strategy. Fourth, the prior art solutions discussed in the ’059 patent are all in terms of different pricing models—“fixed fee” or “performance based”—not in terms of technical solutions. See id. at 1:55– 3:24. Finally, Patent Owner submits a job announcement by Petitioner for hiring a “Technical Program Manager, Ads Quality, AdWords,” as evidence of the level of skill of workers in this field. PO Resp. 29 (citing Ex. 2006 (Google Technical Program Manager, Ads Quality, AdWords Job Announcement)). However, no evidence or explanation is provided why this announcement should be given particular weight for defining the educational level of active workers in the field of the ’059 patent, beyond the fact that they both nominally involve Internet advertising. See PO Resp. 29. Moreover, no evidence or explanation is provided why a job announcement from 2016 would relate to the level of skill in the art at the time of the invention, i.e., at the latest, 2001, the effective filing date of the ’059 patent. See id. Thus, we give Ex. 2006 little weight. Accordingly, considering this evidence together, we agree with Petitioner that a “person of ordinary skill in the art would have, through education or practical experience, the equivalent of a bachelor’s degree in business, economics, or a similar discipline and/or two years of experience with media buying or selling, including Internet advertising or e-commerce systems.” Pet. 17. slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “lacks a computer science degree, he is not a person of ordinary skill and we should give his testimony no weight. PO Resp. 29. As set forth above, we are unpersuaded that Patent Owner’s definition of a person of ordinary skill above is correct. Accordingly, this argument is unpersuasive. Dr. Farris is a tenured professor of business and during his career, Dr. Farris has written a number of articles and books on advertising, including Internet advertising. Ex. 1003 ¶¶ 5–19, Appendix B. He has also taught a number of courses in Internet advertising, and has done extensive consulting on Internet advertising. Id. Thus, contrary to Patent Owner’s contentions, we are persuaded that Dr. Farris’s experience is more than sufficient for him to provide competent testimony on the subject matter of the ’059 patent. Accordingly, we decline to give his testimony no weight.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “We construe the challenged claims according to these principles. In our Decision to Institute, we determined that no terms required express construction. In its Patent Owner Response, Patent Owner contends that we should construe the term “impression,” recited in claim 1, as “presentation of an Internet advertising message.” PO Resp. 29–31. In the Reply, Petitioner indicates that it agrees with Patent Owner’s proposed interpretation and points to the testimony of Petitioner’s declarant Dr. Farris and Patent Owner’s declarant Mr. Zatkovich for support. Reply 5–6 (citing Ex. 1003 ¶ 27, Ex. 1017, 44:19–45:19, 142:15–143:12). This is also the construction we adopted in our Decision to Institute in the related proceeding, CBM2016- 00049. See Google Inc. v. Performance Price Holdings, LLC, Case CBM2016-00049, slip op. 5–6 (PTAB Sept. 21, 2016) (Paper 10). Given that this construction is consistent with the specification, we adopt Patent Owner’s construction of “impression” as “presentation of an Internet advertising message.” See Ex. 1002, 2:36–44, 5:12–16.” slip op. at 15

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

    “We agree with Petitioner that these claims are drawn to an abstract idea. Specifically, we agree with Petitioner that the claims of the challenged patent are directed to decreasing the cost of an advertisement based on the performance of the ad, and that such a concept is an abstract idea. Pet. 19. More succinctly, we are persuaded that the claims are directed to a performance-based pricing model for advertising, and that such a pricing model is an abstract idea. The clear language of the claims and unambiguous disclosure of the specification to the contrary belie Patent Owner’s arguments. For example, beginning with independent claims 1 and 6, the only equipment that those claims identify are a “processor” and “at least one storage device in communication with the at least one processor.” Ex. 1002, 12:24–25, 12:56–57. The remainder of the claim is simply a method embodied in instructions stored on the storage device. As discussed above, these claimed method steps include having the processor (i) “ascertain[ ] . . . a predetermined cost to an entity per impression of an advertising message,” (ii) “present[ ] . . . the advertising message for display on a website such that the advertising message is viewable via one or more viewer computers,” (iii) “detect[ ] . . . a quantity of actions performed by users of the one or more viewer computers,” and (iv) “decrease[e] the cost per impression of the advertising message to the entity below the predetermined cost” as the “quantity of detected actions increases.” Id. at 12:30–43. Thus, the focus of the claims is on collecting and analyzing data for the pricing method, not the hardware on which it is performed or the software that implicitly causes it to happen. The specification reinforces the abstract nature of the claimed invention. The “Summary of the Invention,” explains that “[e]mbodiments of the present invention include methods and system for selling advertising, which incorporates a unique pricing model wherein advertising Buyers earn bonus exposure to the advertising message based on the reflected interest by the Viewers in that advertising message.” Id. at 3:27–33. Indeed, the specification describes the advantages of the claimed invention include helping sellers secure fixed-fee pricing while offering a performance-based incentive to buyers, and attracting potential buyers, while maintaining customer loyalty, encouraging effective creative advertising design and placement, and assisting sellers in managing unsold inventory. Id. at 3:34– 39. These advantages all concern abstract concepts, and not technology.” slip op. at 19

  Patent outcomesUS 8,799,059 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,799,059
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00004 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 21 and 22 are unpatentable under § 101 because they claim an abstract idea implemented using generic, conventional technology.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “term “SRC.” The ’151 patent does, however, give some context from which to discern the meaning of the term. For example, the ’151 patent states that “[t]he term ‘SRC technology,’ as used herein, may include any short-range radio communications technology now existing or yet to be developed, including, for example, radio frequency identification (‘RFID’), IEEE 802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at 2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-enabled mobile terminals” as including RFID, Bluetooth, and WiFi related devices). Moreover, the ’151 patent describes several embodiments of the invention. The first embodiment involves an RFID system. Id. at 3:7–8. The second embodiment is described as a “hybrid system” using “Bluetooth, WiFi, WiMAX, or any other wireless protocol” to connect with an RFID reader. Id. at 4:19–34. Based on this disclosure, it is clear that “SRC,” as used in the ’151 patent, encompasses communications at a range used by the technologies named in the specification—RFID, Bluetooth, and WiFi—and other short-range radio communication technologies. The question is whether the” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “extrinsic evidence, including testimony from Dr. Georgios B. Giannakis. Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood meaning in the art of “a nominal range of 100 meters or less, such as used by practical systems performing typical applications of RFID, Bluetooth, and Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all three examples of SRC technologies listed by the ’151 patent have “a practical upper range in a typical deployment that is nominally 100 meters or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts upon which it is based. Dr. Giannakis points to no factual support for his specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore, give very little weight to Dr. Giannakis’s testimony concluding that the term SRC, as used in the ’151 patent, includes a specific upper bound of 100 meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”).” slip op. at 8

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Although a term may be relative, it is not necessarily indefinite. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“That some claim language may not be precise, however, does not automatically render a claim invalid.”). We are persuaded a person of ordinary skill in the art would understand that short-range communication covers a communication range “shorter” than the range covered by mobile networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term “short-range communication protocol,” which was construed to mean “a set of procedures required to initiate and maintain short-range communication between two or more devices” where short-range communications similarly included Bluetooth and WiFi technologies, but did not include a numeric upper bound on range), cert. granted in-part on other grounds, 135 S.Ct. 752 (U.S. Dec. 5, 2014) (No. 13-896). The ’151 patent expressly describes mobile networks as including “cellular networks such as Global System for Mobile Communications (‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’) networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes interoperability between the various systems, contrasting them by size. For example, in describing the problems encountered when locating mobile terminals, the Specification describes “cell sizes [that] have grown to cover up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to this problem is employing “at least one SRC device.” Id. at 2:9–11. The ’151 patent also describes employing the “at least one SRC device . . . within a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the specification makes reasonably clear to the person of ordinary skill the range of SRC in comparison to the range of mobile networks—and in turn the scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite where the specification makes reasonably clear that the term means “very close to or at the edge of”).” slip op. at 12

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of receiving information and providing services or advertisements based on that information. The preambles and all claim limitations of both claims support this abstract idea, and the ’151 patent repeatedly discloses that the invention is directed to providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27. Patent Owner has not identified any portion of the ’151 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is a fundamental building block of economics, similar in nature to the abstract idea of hedging claimed in Bilski and intermediated settlement claimed in Alice. Patent Owner does not direct us to any authority for its assertion that an idea is not abstract if it includes specific recitation regarding the type of information transmitted, how that information is acquired, and whether it is used for authentication. Here, the claims are generally directed to a method of (i) receiving information over a network, (ii) authenticating that information, and (iii) providing a service to a mobile terminal or receiving an advertisement over the network, all of which inform the aforementioned abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the claimed abstract idea as “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” despite claim’s recitation of specific limitations, like scanner). This combination of steps recites an abstraction because it has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The details emphasized by Patent Owner do not remove the claimed methods from the realm of the abstract. These details are characteristic of the invention’s implementation, rather than its general idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing the claim’s abstract idea without including the claim’s “computer network” limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed limitations may “add a degree of particularity,” but do not convert the concept embodied by the majority of the limitations into something concrete).” slip op. at 16

  Patent outcomesUS 7,463,151 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Nautilus
  Patents in suitUS 7,463,151
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00006 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 25–29 are unpatentable under § 101; claim 25 is also unpatentable as obvious over Havinis ’931 and Leonhardt, and Landgren and Leonhardt.

  RulingsFinal written decision

  • Skill levelOther
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “reasoning with rational underpinning to combine Havinis ’931 and Leonhardt. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For instance, Petitioner states: [a] person of ordinary skill would have found it obvious to modify the system of Havinis ’931 to include Leonhardt’s location access policies, in order to further Havinis ’931’s goals of managing positioning requests sent by Location Applications such that location services can be tailored individually to meet the needs of the mobile device user. Pet. 59 (citing Ex. 1004, 3:33–40). Relying on Dr. Cox, Petitioner adds that this modification “would have been nothing more than the application of a known method of privacy management to achieve a predictable result.” Ex. 1002 ¶ 76. As explained in our Decision to Institute, we are persuaded the rationale set forth by Petitioner and Dr. Cox is reasonable. See Dec. 24–25. Subsequent to our preliminary finding, Patent Owner has provided no evidence or argument to the contrary. Thus, after once again evaluating Petitioner’s arguments and supporting evidence, we conclude that Petitioner has shown by a preponderance of the evidence that it would have been obvious to combine the relied upon teachings of Havinis ’931 and Leonhardt. We conclude that Petitioner has shown by a preponderance of the evidence that claim 25 of the ’752 Patent would have been obvious over Havinis ’931 and Leonhardt.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “We are not persuaded that Petitioner has shown by a preponderance of the evidence that the ’752 patent fails to provide sufficient written description support for the notifying limitation. Petitioner’s only evidence that the notifying limitation is not sufficiently supported is its argument that the ’752 patent fails to explicitly describe notifying the wireless device that access to the location information was denied. Pet. 44–45. Petitioner proffers testimony from Dr. Cox parroting, almost word for word, the argument in Petitioner’s brief. Ex. 1002 ¶¶ 24–36. This argument and testimony, however, does not speak to the correct standard—whether the ’752 specification “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Moreover, “the disclosure as originally filed does not . . . have to provide in haec verba support for the claimed subject matter at issue,” nor must it describe “every conceivable and possible future embodiment of [the] invention.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (internal quotation marks omitted). We agree with Patent Owner, that the ’752 patent broadly describes notifying the wireless device at any time during the described process. See, e.g., Ex. 1001, 9:26–29 (“the system described herein is for a subscriber to receive a notification on their wireless communications device whenever a location request is made by any client application”). Moreover, as pointed out by Petitioner, the ’752 patent describes sending “denied access” messages to client applications. See Pet. 44 (citing Ex. 1001, 11:40–42). Based on these disclosures, we are persuaded that the ’752 patent provides broad support for providing notifications of various messages to different elements of the system at multiple points in the described process. Petitioner has not pointed to anything in the ’752 patent specification that clearly limits what messages can be sent to the various elements or when they can be sent. In fact, as Patent Owner points out, the Provisional Application explicitly contemplates “initiat[ing] a dialogue with the subscriber regarding permission for a location request.” Ex. 1020, 22. Although Petitioner complains that this disclosure does not describe how a dialogue would occur or how messages are relayed (Reply 5), we are not persuaded that a person of ordinary skill in the art would disbelieve, based on the entirety of the ’752 patent disclosure, that the inventor had possession of sending an access denied message to the wireless device at the appropriate time during the process. Thus, we are persuaded that the ’752 patent “provides ample support for the breadth” of the notifying limitation and does not “unambiguously limit” its meaning to a narrower embodiment (e.g., notifying the wireless device only when a request has been made). Cordis, 339 F.3d at 1365. Petitioner has not shown by a preponderance of the evidence that the ’752 patent fails to support the notifying limitation.” slip op. at 20

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of controlling access to location information using a subscriber profile. The preambles and all claim limitations of both claims support this abstract idea, and the ’752 patent repeatedly discloses that the invention is directed to controlling access to location information. See, e.g., Ex. 1001, 1:14–19, 1:60–2:7. Patent Owner has not identified any portion of the ’752 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is similar to the kind of “organizing human activity” at issue in Bilski and Alice. See, e.g., Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1008 (Fed. Cir. 2014) (comparing “methods and systems for managing a game of Bingo” to the kind of “organizing human activity” at issue in Bilski and Alice).” slip op. at 24

  Patent outcomesUS 7,203,752 unpatentable
  § 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · KSR
  Patents in suitUS 7,203,752
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Mar 30, 2015 · CBM2014-00005 · APJ Barbara A Parvis · CBM · Final written decision

  Claims 1–6 are unpatentable under § 112, first paragraph, because the patent lacks written description support for the claimed limitations.

  RulingsFinal written decision

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

    “To satisfy the written description requirement, the focus is not just on whether the claims are supported by the specification, but whether one of ordinary skill in the art reasonably would conclude from the original disclosure that the inventor had possession of the claimed invention. See, 2 Claim 4, which depends from claim 1, recites “wherein said step of accessing comprises obtaining information established by a network administrator regarding said prioritization for presenting said service provider information to said subscriber.” Claim 4 was added as claim 79 during prosecution. Ex. 1003, 233. e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Additionally, where an explicit limitation is not present in the written description, “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Furthermore, “[n]egative limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F. 3d 1344, 1351 (Fed. Cir. 2012).” slip op. at 13

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Dr. Kingdon, who Patent Owner relies on for support, does not provide sufficient rationale for his opinion to the contrary. Ex. 2002 ¶ 27. In particular, Dr. Kingdon provides a conclusory statement, “[t]his preference information is, by its very nature, determined by the network administrator—not by the subscriber, and not on the basis of proximity determined from location finding equipment.” Id. Dr. Kingdon does not identify persuasive support in the ’205 patent specification or describe persuasively other evidence that supports his conclusion. Id. ¶¶ 23–27; see also id. ¶¶ 11–15 (describing a background of location based services including a description of certain handsets, promotion of implementation of location services worldwide by several companies, and an exemplary commercial launch in Sweden of a mobile positioning service). Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. See 37 C.F.R. § 42.65(a).” slip op. at 17

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

    “5. “prioritization” The term “prioritization” is recited, for example, in claim 1: “a prioritization for presenting service provider information to a subscriber” and “prioritization information establishing a basis independent of proximity and independent of any subscriber preferences for prioritizing.” Neither party provides a proposed construction for the term “prioritization.” We, however, construe this term as part of our evaluation of the parties’ dispute as to whether the ’205 patent specification provides written description support for the limitations challenged by Petitioner. The specification does not provide a definition of “prioritization.” The IEEE Dictionary sets forth a plain and ordinary meaning of “priority” as follows: “A rank order of status, activities, or tasks.” Institute of Electrical and Electronics Engineers, The Authoritative Dictionary of IEEE Standard Terms 867 (7th Ed., IEEE Press 2000) (emphasis added) (Ex. 3001). This definition is consistent with the specification, which provides an example of “prioritization” as follows: “[t]he menu may be ordered based on any of various criteria such as preferences expressed in the subscriber profile, nearest to farthest, preferred service providers defined by the network administrator, etc.” Ex. 1001, 8:32–36 (emphasis added). Upon review, we determine that construing “prioritization” to have its plain and ordinary meaning of “ordering” is reasonable and consistent with the specification. Therefore, we adopt it as a broadest reasonable construction.” slip op. at 10

  Patent outcomesUS 7,024,205 unpatentable
  Claim construction§ 112 disclosure
  Patents in suitUS 7,024,205

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.