- Facebook, Inc. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 22, 2023 · IPR2021-01461 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the pending substitute claims lack written-description support and are obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Mr. Schmandt’s testimony, Facebook argues that a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of context-based computer systems, such as the collection, processing and use of context data in computer systems capable of adapting their operation based on context.” Pet. 6 (citing Ex. 1002 ¶¶ 15– 18). Facebook also contends that a person might qualify as an ordinarily skilled artisan “with more formal education and less technical experience, or vice versa.” Id. For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 16–17. Because Facebook’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of using contextual data in computer systems).” slip op. at 10
- Strike new argumentNew argument consideredDecided for petitioner
“construction of the term “facts and assertions” or the identification of facts and assertions within Cheng. See Paper 23, 1–2. Having reviewed the arguments, we do not consider them untimely. As we discuss in more detail below, Facebook relied on the ordinary and customary meaning of the term “facts and assertions” in its Petition, and then when PARC raised an alternative construction of the term in its Response, Facebook responded to those arguments. See infra Sections IV.B.2, IV.C.4(a). Facebook’s Reply only responded to arguments raised in PARC’s Response and was not untimely. See 37 C.F.R. § 42.23(b) (permitting a petitioner to respond to arguments in a patent owner response); Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (“[T]he petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner, or if it is used ‘to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.’” (quoting Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016))). Moreover, PARC had a meaningful opportunity to address the arguments in its Sur-reply and in oral argument. See PO Sur-reply 7–12; Tr. 22–34. Thus, we do not find Facebook’s contested arguments untimely and we have considered them in our decision.7” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Facebook. As we discuss below, Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1003, Fig. 7. Also, as PARC acknowledges, Facebook’s expert Mr. Schmandt stated in deposition that he assumed, for his analysis, that the term “context graph” requires a “graph-based model.” PO Resp. 22 (citing Ex. 2019, 36:16–37:8); see also PO Sur-reply 4. Thus, because Facebook’s analysis of Cheng is consistent with the assumption that “context graph” has the meaning PARC proposes in this proceeding, we do not need to construe the term “context graph” to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with the parties that a person of ordinary skill in the art would have understood the term “fact” to include an indication of truth, whereas an assertion need not include such an indication. However, we disagree with PARC that a person of ordinary skill would have considered the term “assertion” to exclude facts. Indeed, in its ordinary and customary meaning, a fact stored in a context graph would be a type of assertion. We appreciate PARC’s argument that when two different terms appear in a claim, they presumably refer to different things. See PO Resp. 27 (citing CAE Screenplates, 224 F.3d at 1317). And we agree that the two terms have different meanings in claim 1 based on the plain meaning of each term. However, the specification refers to “stor[ing] facts and assertions about a user’s behavior and interests,” which simply appears to identify a single category of data for storage, i.e., “facts and assertions,” without specifying a clear difference between “facts” and “assertions.” See Ex. 1001, 3:21–22. In any event, we find no evidence of record suggesting that either (1) the (citing Pet. Reply 8–9). Because Facebook appears to have been relying on what it regarded as the plain meaning of the terms without proposing an explicit construction, we do not interpret Facebook’s argument in the Petition (Pet. 20–21) to imply that there is no distinction between a fact and an assertion, and do not find Mr. Schmandt’s later testimony (see, e.g., Ex. 2019, 41:3–11) inconsistent with arguments made in the Petition. ordinary and customary meaning of the term “assertion” excludes facts, or (2) that the ’439 patent uses these terms in a way that departs from their ordinary and customary meaning. That claim 1 requires the presence of both “facts” and “assertions” does not render the two terms superfluous, as this would exclude prior art in which a context graph includes only assertions but not facts. On the other hand, a disclosure of a collection of facts would meet the term “facts and assertions” because a person of ordinary skill in the art would have regarded any subset of the facts to also be assertions.” slip op. at 15
Patent outcomesUS 9,208,439 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - Twitter, Inc. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 22, 2023 · IPR2021-01430 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the proposed substitute claims lack written-description support and are unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Turnbull’s testimony, Twitter argues that a person of ordinary skill in the art “would at minimum have a bachelor’s in software, computer, or electrical engineering or computer science with at least two years’ experience in software development, including with respect to context-aware devices and systems, or the equivalent.” Pet. 16 (citing Ex. 1003 ¶ 24). Also, “[a]dditional graduate education could substitute for professional experience, or significant experience in electronic messaging could substitute for formal education.” Id. (citing Ex. 1003 ¶ 24). For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 21. Because Twitter’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of contextual data in computer systems).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree as to Twitter’s last point, as we discuss below, that Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1005, Fig. 7. Moreover, this decision does not address grounds of the Petition that omit Cheng as a reference, Cheng discloses a “context graph” under either party’s construction. Thus, we need not construe the term for this decision. See Nidec, 868 F.3d at 1017. Because the terms “recommender” and “application event data and/or operating system data” are not contested and are not material to our decision, we do not construe these two terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). To the extent that other claim terms are significant, we discuss them below in the context of the asserted prior art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
Patent outcomesUS 9,208,439 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,208,439
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.