- PTAB · Aug 6, 2024 · IPR2024-00508 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–18, 21–24, and 26–29 on all petitioned grounds after finding a reasonable likelihood that claim 1 is anticipated by or obvious over Rosenberg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s analysis persuasively demonstrates a reasonable likelihood of success of showing that the subject matter of claim 1 is unpatentable. That Rosenberg varies, or modulates, its haptic effect based on the input signal, and specifically the degree to which the input signal represents a value close to a target value, persuades us on this record that Rosenberg describes the recited “modulating” limitation. On whole, reviewing the Petition and the evidence cited therein, we determine that Petitioner has established a reasonable likelihood that claim 1 is anticipated by, or would have been obvious in view of, Rosenberg.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSA) would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction. Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our view, on this record, the first construction is too narrow. It adds limitations from the specification that are not found in the claims, namely, the term “continuous” or “continuously.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.”) (internal quotation marks omitted). There is no requirement that the claims must recite all the features of the specification, and we are not persuaded on this record that the claim requires this absent word. The second potential construction offered by Petitioner states that it “would not require the ‘new input’ mapping to the modulated haptic signal to be received immediately after earlier input that was mapped to a haptic signal.” Pet. 22. Petitioner states that the second construction would cover situations where an input sensor is mapped to a haptic signal but later new inputs are not mapped to a haptic signal, and then even later new sensor input is mapped to a haptic signal. Id. Petitioner does not provide further explanation, and it is not clear to us on this record what the construction would be. Instead, the second potential construction merely seems to be an example of a situation in which Petitioner asserts the claim limitation would be met. In sum, we do not adopt either of Petitioner’s proposed constructions. We do not offer our own construction at this time, however, because we believe that construing the claim limitation is unnecessary for the purpose of institution. Instead, we will focus on the plain language itself, “modulating the haptic signal when new input is received,” when reviewing Petitioner’s prior art grounds. We do not explicitly construe any terms in this Decision at this time” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,116,546 - PTAB · Aug 5, 2024 · PGR2024-00014 · APJ Barry L Grossman · PGR · Institution
Instituted PGR on claims 33–36 on all asserted grounds; the Board found it more likely than not that at least one claim would be unpatentable over Clary and Tsuji.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, or similar technical degree and at least 2 years of experience in the field of mechanical design or relevant product design experience.” Pet. 27 (citing Ex. 1003 ¶¶ 56–58). Petitioner also asserts that “[f]or individuals with different educational backgrounds, a person could still be of ordinary skill in the art provided that person’s additional experience compensates for any differences in that person’s education as stated above.” Id. At this stage of the proceeding, Patent Owner does not dispute Petitioner’s level of ordinary skill in the art, but “reserves the right to propose or challenge the level of ordinary skill and claim constructions should the Board institute trial.” Prelim. Resp. 21. Based on the record before us, we adopt, for purposes of this Decision, Petitioner’s proposed, and unopposed, level of ordinary skill. We also determine that this level of skill is consistent with the disclosed invention and the cited references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute post-grant review. 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 further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability. Any claim discussion in this Decision does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that final claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition,” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“As to why a person of ordinary skill would have modified Clary based on Tsuji, Petitioner asserts “rotatably coupling the actuator assembly directly to a linkage arm instead of a bracket or other intervening part would have been a mere design choice from a finite number of options.” Pet. 98 (citing Ex. 1003 ¶ 142). Petitioner also asserts that “in a four-bar linkage system like Clary, there are only a few options for coupling the actuator.” Id. If one end of the actuator assembly is coupled to the support bracket, then the other end of the actuator assembly can be coupled to a linkage arm or the display bracket. Pet. 98 (citing Ex. 1003 ¶ 142). would have been motivated to directly rotatably couple the actuator assembly to an arm of the arm assembly because this could reduce the number of parts and provide direct force from the actuator to the arm assembly which causes the display bracket to move. This configuration would simplify the design by reducing part count resulting in reduced inventory, assembly and inspection costs. Such a modification could also allow for a shorter actuator. Pet. 99 (citing Ex. 1003 ¶ 142).” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,781,703 - PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 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 8
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042 - Dropbox, Inc.InstitutedPTAB · Jul 25, 2024 · IPR2024-00287 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 9–16 and 22–24, finding a reasonable likelihood that claims 9, 10, 14, and 15 are obvious over Riepling and Meisels, and claims 11–13, 16, and 22–24 over Riepling, Manzano, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any Preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 3–4 (citing Mowry Decl. ¶ 29). Patent Owner does not 8 No evidence of objective indicia of non-obviousness is of record concerning the challenged claims. dispute Petitioner’s definition for purposes of its preliminary response. Prelim. Resp. 22. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues that this combination would have been motivated because (i) Riepling and Meisels are from the same field of endeavor, directed to sharing files over a network; (ii) that the combination would have yielded expected, predictable results, using known and routine computer programming principles, to modify Riepling’s system to generate an electronic message that includes a link pointing to an uploaded file; (iii) that the combination would have been readily implemented given Meisels’ teachings of inserting, in an electronic message, a link to a shared location where a file is uploaded; (iv) and that the combination was suggested because Meisels expressly disclosed a benefit of sending an email message with a link, to avoid multiple copies of a file from existing at multiple locations, and sending links to one file to multiple recipients and managing permissions on an individual recipient basis. Pet. 67–70 (citing Ex. 1107, Fig. 1, ¶¶ 2, 4, 19; Ex. 1108, Fig. 4, ¶¶ 1, 3, 41–45, 56; Mowry Decl. ¶¶ 194–198). In addition, for reasons similar to the motivation basis, Petitioner argues that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination. Id. at 70–71 (citing Mowry Decl. ¶¶ 199–200). Patent Owner does not specifically address Petitioner’s arguments regarding the combination of Riepling and Meisels. See Prelim. Resp. 38. At this stage, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Riepling and Meisels.” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner does not specifically address Petitioner’s arguments regarding the combination of Riepling and Meisels. See Prelim. Resp. 38. At this stage, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Riepling and Meisels.” slip op. at 23
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,611,520 - Dropbox, Inc. v. Motion Offense, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00286 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR of claims 17–21 on all petitioned grounds, finding a reasonable likelihood that Houston and Garcia render at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, Patent Owner has shown that the first part of the Advanced Bionics framework is satisfied. Turning to the second part of the Advanced Bionics framework, we determine that Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. As Petitioner argues, there is no evidence that the references in question were meaningfully addressed during the prosecution of the ’520 patent — there was no evaluation of the art or articulation regarding any arguments applying that art. Pet. 11. We note that the IPR petitions were submitted only after the prosecution came to a purported end with an Issue Notification — submission of the petitions briefly postponed issuance, but resulted in no further substantive actions other than a later issuance.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, notwithstanding Patent Owner’s specific arguments directed to claim requirement 17[e], and its arguments discussed above generally relating to all of Petitioner’s grounds, for the reasons discussed above, for purposes of this Decision, we are persuaded that the record sufficiently supports Petitioner’s arguments regarding claim requirements 17[e] and 17[f]. d) Conclusion Regarding Claim 17 Based on our analysis set forth above, including our analysis of Patent Owner’s arguments regarding secondary considerations of nonobviousness, we determine, on the current record and for purposes of this Decision, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner will prevail in establishing that claim 17 is unpatentable under 35 U.S.C. § 103(a) over the combination of Houston and Garcia.” slip op. at 45
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the earliest claimed priority date of the ’520 patent (September 22, 2012): would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer science, or a related field and two or more years of experience in a related field such as networked computer systems using Internet protocols. Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa. Pet. 3–4 (citing Mowry Decl. ¶ 29). Patent Owner does not dispute Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 17. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments are not pertinent to Petitioner’s proffered combination of Houston with Garcia as applied to the remaining challenged claims 17–21. As discussed further below, Petitioner relies on Garcia as supplementing Houston for details regarding the requirements of generating and sending an email with a link to a folder but without a file attachment, and for synchronizing folders and providing interfaces for display of shared folders. Pet. 26–27, 36–39, 57–60. For the challenged claims, Petitioner does not rely on the combination to modify Houston’s system such that, when an icon for a shared folder is created in Houston’s interface at an invited user’s client, the client does not store a file in the shared folder — that aspect of the Houston/Garcia combination is only relevant to claims 1–8, which have been disclaimed. Pet. 40–41; Ex. 2045. Thus, Patent Owner’s argument, that Houston teaches away from combining with Garcia to delay storing a file when a folder is shared, is not applicable to Petitioner’s challenges of claim 17–21. The fact that the Houston system ensures the availability of synchronized local copies of files at each user and criticizes systems that store documents remotely, such as in Garcia, is irrelevant to those claims. On this record, nothing about that particular difference in the approaches of Houston and Garcia would have discouraged one of ordinary skill in the art from adopting Houston to take advantage of the teachings in Garcia regarding use of email and folder interfaces. In sum, Patent Owner focuses on a specific irrelevant detail of Houston regarding local storage of files, whereas Petitioner relies on other features of the combination of Houston and Garcia. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have been motivated to apply the email and folder interface teachings of Garcia to modify Houston. Mowry Decl. ¶¶ 84–93, 102–104, 148, 151–152. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Houston and Garcia.” slip op. at 35
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,611,520 - PTAB · Jul 24, 2024 · IPR2024-00477 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–7 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“does not provide any authority supporting its position that failure to provide a Sotera stipulation “neutralizes” or “undercuts” the impact of a stay. We also disagree with Patent Owner’s suggestion that a district court stay can make discretionary denial inappropriate only when coupled with a Sotera stipulation. See Prelim. Resp. 59. Again, Patent Owner does not provide any authority supporting this position. Id. Contrary to Patent Owner’s positions, Fintiv indicates a district court stay “has strongly weighed against exercise of the authority to deny institution” independent of whether a Sotera stipulation—or any other type of stipulation—has been submitted. Fintiv at 6.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,336,260 - Bright Data Ltd. v. Oxylabs, UabNo claims unpatentablePTAB · Jul 15, 2024 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Scoda did not disclose the claimed interception limitation and Hallak did not disclose execution of the removed script after removal.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find that the parties’ agreed upon construction is supported by the record before us and apply it in our patentability analysis below, requiring the embedded script to be removed before that script is executed. We determine that no other claim terms require express construction.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“during trial, we determine that Petitioner has not shown by a preponderance of the evidence that Scoda discloses intercepting a web page sent from a We agree with Patent Owner that portions of Scoda cited in the Petition do not disclose a web page, let alone one sent from a server and addressed to a client browser. See PO Resp. 17; Tr. 73:10–23. Scoda discloses that “[t]he core module 21 is executed by the web content proxy server 12 to determine where to provide the response with the executed JavaScript functionality in the exemplary environment 10, such as to a web browser on one of the client devices 14(1)–14(n).” Ex. 1016 ¶ 55. But this functionality does not refer to a web page from a server. Instead, this discussion is about a HTTP request that comes from a client device and may include one or more hidden JavaScript identifiers. See id. ¶¶ 50–55. The discussion about providing a response to a web browser on a client device refers to a response to the client device’s HTTP request, in the form of an error message, that is sent from the proxy server to client device. Id. ¶ 58. As Patent Owner points out, this is one of the two scenarios presented in Scoda, the other one being that HTTP request is sent to the server. Id.; PO Resp. 36; see also Ex. 2009 ¶ 70. We agree with Patent Owner and Dr. Almeroth that these communications between the client and proxy server or the proxy server and the content server do not disclose the “intercepting” limitation.” slip op. at 19
- Strike new argumentNew argument disregardedDenied
“deficient, Petitioner attempts to change the focus of its argument. Pet. Reply 2–3. Petitioner instead relies on Figure 8 and related discussion as “Scoda’s disclosure of proxy server 12 processing a web page that was sent from a web server.” Id. Scoda, and Petitioner’s argument based on this disclosure is, therefore, an untimely new argument presented in the Reply. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 20
Patent outcomesUS 9,516,091 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 9,516,091 - Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Jul 15, 2024 · IPR2022-00734 · APJ Garth D Baer · IPR · Remand
On remand, the Board held claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 unpatentable as obvious over Heller and Quam, and over Heller, Quam, and Deaton.
RulingsRemand decision- RemandOther
“After our Final Written Decision (Paper 41) found no challenged claims unpatentable, the Director vacated our Decision and remanded the case back to the Board. Paper 43. With our authorization, Petitioner and Patent Owner filed Briefs on Remand. Paper 45 (“Pet. Remand Br.”), Paper 48 (“PO Remand Br.”). We have jurisdiction under 35 U.S.C. § 6. This decision is a Final Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we discuss below, we determine that Petitioner has proven by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’737 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4–5. 1 Because the parties agree that the challenged claims of the challenged patent have an effective filing date before March 16, 2013, we apply the pre- AIA (“America Invents Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). 2 Heller, “The Site-Model Construction Component of the RADIUS Testbed System,” in Proceedings: ARPA Image Understanding Workshop (1997) (Ex. 1004, “Heller”). 3 Quam, “The Radius Common Development Environment,” in RADIUS: Image Understanding for Imagery Intelligence (1997) (Ex. 1005, “Quam”). 4 U.S. 2006/0235611 A1, Pub. Oct. 19, 2006 (Ex. 1006, “Deaton”). Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. at 5. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that “this limitation should be interpreted broadly enough to encompass transmitting roof measurement information between components of the same computer system,” Pet. 11, whereas Patent Owner contends this limitation requires “transmitting the roof measurement information outside the roof estimate report system . . . such as to third-party systems.” PO Resp. 18. We agree with and adopt Petitioner’s construction. As we explained in IPR2016-00592, “[t]he claim term at issue requires only ‘transmit[ting]’ roof measurement information—it does not specify any particular source or destination for the transmission.” Ex. 1010, 20. In addition, the ’737 patent’s specification states that “the roof [report] generation engine 813 may transmit roof measurement information” and “some portion of the contents . . . of the [Roof Estimation System] 810,” which includes roof report generation engine 813, “may be stored on and/or transmitted over the other computer readable media 805.” Ex. 1001, 17:16–17, 16:13–17 (emphasis added), Fig. 8. Thus, because the ’737 patent’s specification expressly recognizes transmitting roof-estimate content between components of the same computer system, we maintain our construction from IPR2016-00592— that “transmission” includes transmission within the same system. See Ex. 1010, 20.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“The at-issue language appears in preambles, which as a general rule are not limiting unless they are “necessary to give life, meaning and vitality to the claim.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (internal quotation marks omitted). Because claims 16 and 26 describe structurally complete inventions without their preambles, we find the preambles not limiting. In addition, even if the preambles were limiting, the Petition’s analysis, along with Dr. Forsyth’s supporting declaration, plainly indicate that the Heller-Quam RADIUS system includes these generic computing features because RADIUS is a software platform executed by a processor on a computer that utilizes memory. See, e.g., Pet. 20 (explaining that RADIUS is a “workstation-based image processing system,” that “runs on both SunMicrosystems and Silicon Graphics RISC-based workstations,” “utilizes ‘memory,’” and “comprises over 200,000 lines [of code]”); see also Ex. 1041 ¶¶ 36, 38–40. Thus, we agree with Petitioner that the Heller-Quam system teaches the preambles in claims 16 and 26.” slip op. at 11
Patent outcomesUS 9,135,737 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,135,737 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jul 12, 2024 · IPR2024-00381 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition challenges after finding a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–20 in the ’012 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking, and/or data records management.” Pet. 8. Petitioner also asserts that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. Dr. Clark’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 23. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’012 patent as well as the asserted references.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor 4 For Exhibit 1010 (Plaintiffs’ Opening Claim Construction Brief), we cite to the page numbers of the brief rather than the header page numbers. Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Alleged Reason to Combine the Teachings of the References Petitioner identifies a reason that would have prompted an ordinarily skilled artisan to combine Murphy’s teachings with Evenhaim’s teachings in the way Petitioner proposes, i.e., to provide “additional details about how to beneficially implement statistical de-identification.” See Pet. 15–16. Further, Petitioner asserts that an ordinarily skilled artisan would have had a “reasonable expectation of success” in combining the teachings of the references. Id. at 16. Dr. Clark’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 68–70. For instance, Dr. Clark testifies that Murphy describes “measures [that] would prevent a search for a single subject in Evenhaim to result in the identification of the subject’s medical records” and, therefore, “reduc[e] the risk of a HIPAA violation.” Id. ¶ 68. According to Dr. Clark, Murphy does so by recommending: (1) “at least a minimum amount of de-identified medical data (i.e., multiple patient records) such that the query complies with the HIPAA statistical requirements”; and (2) “maintaining a log of queries to ensure that a user does not repeatedly submit a query that returns the same number of results multiple times within a defined time period.” Id. Based on the current record, Petitioner establishes sufficiently that an” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,886,012 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jul 12, 2024 · IPR2024-00382 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pet.”), to institute an inter partes review (“IPR”) of claims 1–22 (the “challenged claims”) of U.S. Patent No. 9,665,685 B1 (“the ’685 patent”). 35 U.S.C. § 311 (2018). Vigilytics LLC (“Patent Owner”) did not file a Preliminary Response. We have jurisdiction under 35 U.S.C. § 6. 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. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 8 (citing Ex. 1003, Clark Decl. ¶¶ 20–25). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶¶ 20–25). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. The ’685 patent issued from a continuation application filed on April 22, 2016 (Ex. 1001, code (22)) and claims priority under 35 U.S.C. § 120 to an application filed on June 30, 2010. Id. at code (63), 1:7–20. We apply the pre-AIA version of the statutory basis for unpatentability. 2 U.S. Pat. No. 7,823,207 (Ex. 1005) 3 U.S. Pat. Appl. Publ. No. US 2007/0294111 (Ex. 1006) 4 U.S. Pat. Appl. Publ. No. US2002/0111833 (Ex. 1007) 5 U.S. Pat. No. 7,519,591 (Ex. 1008) 6 Shawn N. Murphy & Henry C. Chueh, A Security Architecture for Query Tools Used to Access Large Biomedical Databases, 2002 AMIA Annual Symposium Proceedings, 552–56 (2002) (Ex. 1009). we apply Petitioner’s description of a person of ordinary skill in the art, because it appears commensurate with the subject matter of the ’685 patent and the references.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Petitioner’s Contentions Concerning Motivation to Combine the Teachings of Evenhaim and Settimi Petitioner notes that, where Evenhaim sends healthcare data queries to various healthcare organizations, Settimi consolidates the information from various providers in a central repository for queries. Pet. 39 (citing Ex. 1005, 15:15–24, 16:5–21, Fig. 4; Ex. 1006, Figs. 1–2, ¶ 27; Ex. 1003, Clark Decl. ¶ 132). According to Petitioner, Settimi’s repository eliminates the need for conducting searches across different entities and uses a “common vocabulary” that make searching easier and more reliable. Id. (citing Ex. 1006 ¶¶ 9, 60–62; Ex. 1003, Clark Decl. ¶ 131). Petitioner further cites Settimi as disclosing generating encoded patient identifiers (EPIDs) for individuals, i.e., encrypted tokens, based, e.g., on a patient’s name or Social Security number, and querying the repository to obtain records without revealing the patient’s identity. Id. at 38 (citing Ex. 1006 ¶¶ 37–43; Ex. 1003, Clark Decl. ¶¶ 51–52, 130–131). According to Petitioner, a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Settimi to simplify search vocabulary, while still allowing for searches for specific patients. Id. at 39 (citing Ex. 1006 ¶¶ 9, 14, 17, 27, 39–40; Ex. 1003, Clark Decl. ¶¶ 131–132). For purposes of this Decision, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to apply the teachings of Evenhaim to a central repository, as disclosed in Settimi.” slip op. at 24
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,665,685
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.