- Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Feb 29, 2024 · IPR2022-01356 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 4, 5, 8, 9, and 13–17 are unpatentable as obvious under § 103(a) over the grounds based on Park and Kim, with Hileman or Pugliese for specified dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We discern no material difference between the levels of skill in the art espoused by the parties. Nor does Consumeron’s expert. See Ex. 2016 ¶ 20 (“Petitioner’s definition of a POSITA is not materially different from my definition.”). Accordingly, we adopt the level of skill in the art as defined by Instacart.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“More specifically, as we explained in the 865 IPR, the specification does not equate an “acquisition request” exclusively with a shopping or purchase request. See Ex. 3006, 10–11. Rather, the specification repeatedly uses the phrase “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 4:58–60 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:7–9 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121.”); id. at 2:9–12 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”) (emphases added).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“course of construing “real time,” the district court does not appear to have accepted Consumeron’s narrower construction in that regard. More accurately, the district court stated it “sees no reason that a ‘real-time’ transmission of data could not both involve no inherent delay and permit a system that requires multiple ‘clicks’ to operate.” Ex. 1035, 24 (emphasis added). In addition, the district court quoted from a technical dictionary, which provided: The basic definition of real-time data is that it is data that is not kept or stored, but is passed along to the end user as quickly as it is gathered. It is important to note that real-time data does not mean that the data gets to the user instantly. There may be any number of bottlenecks related to the data collection infrastructure, the bandwidth between various parties, or even just the slowness of the end user’s computer. Real-time data does not promise data within a certain number of microseconds. It just means that the data is not designed to be kept back from its eventual use as it is collected. Id. at 25 (citing “Technopedia”). In other words, the district court contemplated that real-time data includes data that is transmitted as it is gathered despite some inherent delay in transmitting and accessing the data, such as bottlenecks in the infrastructure, slowness of the user’s computer, or “multiple clicks” by the user. With that in mind, we reject Consumeron’s attempt to alter our construction of “real-time” to exclude so-called “intentional delay.” Thus, consistent with the district court and our institution decision, we maintain that “real-time” transmission means “data that is passed along as it is gathered.” 3. “mobile delivery agent system” In our institution decision, we adopted a construction of “mobile delivery agent system” consistent with the way the term was construed in the Delaware action, namely, “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” See Inst. Dec. 4–5 (citing Ex. 1034, 1; Ex. 1035, 13–17). Neither party disputes that construction. See PO Resp. 12 (adopting our construction); Pet. Reply 1–7 (disputing only the meaning of other claim terms). Thus, we maintain our construction as stated above.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Again, we disagree with Consumeron. As Instacart points out, Park’s system and method is not limited to one-hour delivery. See Pet. Reply 19. To the contrary, Park teaches that items can be “delivered within the hour or within a customer specified delivery window” exceeding an hour. Ex. 1005, Abstract (emphasis added), 20:9–12 (describing “processing orders for deferred delivery (i.e. those not required to be delivered in the next hour)” (emphasis added)); see also Ex. 1044 ¶ 29. Moreover, while Park places some emphasis on delivery time, it also explains that its goal is to promote customer satisfaction. See Ex. 1005, 30:16–18 (increasing “dispatch efficiency and customer satisfaction”), 34:5–7 (resequencing delivery “to ensure 100% customer satisfaction”). In that regard, the reason that Instacart articulates for combining Park and Kim dovetails with Park’s objective of improving customer satisfaction by ensuring the product to be delivered is acceptable to the customer. See Ex. 1044 ¶ 65 (“[A] POSITA would have understood that a customer ordering goods would care little if an unacceptable product was delivered quickly.”).” slip op. at 28
Patent outcomesUS 8,244,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,244,594 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Feb 29, 2024 · IPR2022-01358 · APJ Michael A Valek · IPR · Final written decision
Claims 1–5, 8, 9, 12, 14, 18, 19, and 21–28 are unpatentable as obvious over the four asserted combinations of Park and Kim, with Hileman, Mault, or Pugliese where specified.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers a similar description, asserting that a POSITA “is someone with a background in electrical engineering, computer science or the like” and that either experience or training can make up for a lack of the other. Resp. 9–10 (citing Ex. 2016 ¶¶ 17–20). We adopt Petitioner’s definition of the level of ordinary skill in the art. This definition is supported by the record (Ex. 1003 ¶ 24) and consistent with the disclosure in the ’067 patent and the references cited in the Petition. Patent Owner’s definition is “not materially different” from Petitioner’s definition. See Ex. 2016 ¶ 20 (Patent Owner’s declarant acknowledging such). Thus, our analysis and findings would be the same under either sides’ proposal.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“In the institution decision, we agreed with and applied the same MDAS construction adopted by the district court in the Delaware litigation. Dec. 12–14. That is, a “mobile delivery agent system” is “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” Ex. 1034, 1. To the extent there was any substantive disagreement with this preliminary construction, we invited the parties to present their alternative positions at trial. See Dec. 14. Neither party has done so. See Resp. 13 (applying same MDAS construction); Reply 1–5 (addressing other claim construction issues, but not raising any issue with the MDAS construction). Accordingly, we apply the same construction of “mobile delivery agent system” here. ii. “real-time” The term “real-time” is not recited in the independent claims, but does appear in some of the challenged dependent claims. See Ex. 1001, 10:8– 14:16 (claims 14 and 18). In the institution decision, we agreed with and applied the same construction adopted by the district court in the Delaware litigation. Dec. 14–15. That is, that “real-time” has its ordinary meaning, which is “data that is passed along as it is gathered.” Ex. 1034, 2. Neither party has proposed an alternative construction. See Resp. 13 (applying same “real-time” construction); Pet. 14 (asserting that “the terms of the Challenged Claims should be given their ordinary and customary meaning”). Accordingly, we apply the same construction of “real-time” here.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. Contrary to Patent Owner’s assertions, the Specification does not exclusively equate an “acquisition request” with a shopping or purchase request. See Resp. 10–12. Rather, the Specification repeatedly uses the phrasing “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:4–6 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:24–26 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121 and deliver the product.”); id. at 2:15–18 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”). Patent Owner’s argument that the Specification uses the “word ‘or’ to refer to things that are synonymous to each other” is not persuasive. See Resp. 10; Sur-reply 4 (citing Epic Games, Inc. v. Ingeniosh, LLC, IPR2022- 00202, Paper 29, 18–19 (PTAB May 19, 2023)). As noted above, the Specification uses the phrasing “purchase or otherwise acquire.” Ex. 1001, 5:4–6, 7:24–26 (emphasis added); see also id. at 2:15–18 (similar). By including the adverb “otherwise,” the Specification makes clear that purchase and acquire are not used synonymously, but rather that acquiring is broader and encompasses other ways of obtaining a product. See Ex. 1039, 1 (“otherwise” means “in a different way or manner”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner has also articulated a sufficient rationale for combining these elements of Park and Kim. See Pet. 20–23 (citing exhibits). Kim identifies a problem with purchasing a product from a website, i.e., that the product delivered to the customer may not match the images or videos of that product on the website. Ex. 1006, 2. Kim teaches this problem can be overcome by having the delivery service provider operate a MDAS to transmit an image of the actual product in real time to the customer so that after receiving the image the customer can send instructions back to the delivery service provider confirming that is the product they delivered. Id. We credit Dr. Houh’s testimony that, based on these teachings, a POSITA would have been motivated to incorporate those same steps into Park’s system and methodology to “enhance the reliability of the delivery,” “increase customer satisfaction,” and “save[] resources” by preventing the delivery of goods that, upon viewing, the customer might reject. Ex. 1003 ¶¶ 51–56. Moreover, a POSITA would have had a reasonable expectation of success in combining these teachings because Park’s system was already configured to send live video and images to the customer’s computer. Ex. 1003 ¶ 57. Indeed, while Park primarily discusses transmission of video and images of the delivery process to the customer, it expressly teaches that its objective is to “allow customers to interactively view, in real-time, the progress of his order, from reception to compilation to delivery though the route taken by the delivery agent.” Ex. 1005, 4:26–32 (emphasis added). Incorporating Kim’s teachings regarding elements 1.5–1.7 would further this objective, allowing the customer to interactively view images of the actual products compiled for delivery and send instructions back to the delivery agent regarding those products prior to delivery. See Ex. 1003 ¶ 57 (explaining that the combination allows Park’s system to perform the same intended functionality “in a more reliable way”). Accordingly, Petitioner has shown that it would have been obvious to” slip op. at 24
Patent outcomesUS 10,115,067 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,115,067 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Feb 29, 2024 · IPR2022-01359 · APJ Michael A Valek · IPR · Final written decision
Claims 1, 3, 4, and 6–15 are unpatentable as obvious over Park, Kim, and Williams; claims 11–13 are also unpatentable over those references with Hileman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers a similar description, asserting that a POSITA “is someone with a background in electrical engineering, computer science or the like” and that either experience or training can make up for a lack of the other. Resp. 9–10 (citing Ex. 2016 ¶¶ 17–20). We adopt Petitioner’s definition of the level of ordinary skill in the art. This definition is supported by the record (Ex. 1003 ¶ 24) and consistent with the disclosure in the ’191 patent and the references cited in the Petition. Patent Owner’s definition is “not materially different” from Petitioner’s definition. See Ex. 2016 ¶ 20 (Dr. Mitzenmacher acknowledging such). Thus, our analysis and findings would be the same under either sides’ proposal.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“ii. “real-time” In the institution decision, we agreed with and applied the same construction adopted by the district court in the Delaware litigation. Dec. 14–15. That is, that “real-time” has its ordinary meaning, which in this context is “data that is passed along as it is gathered.” Ex. 1034, 2. Notably, this is the same construction Patent Owner advocated for in the Delaware litigation. See Ex. 1035, 4. Nevertheless, Patent Owner now seeks to add to that construction, urging that the district court “accepted” that the term “does not include any ‘intentional delay’ in the transmission.” Resp. 14 (citing Ex. 1035, 22, 26); see also Sur-reply 16–17 (essentially same). Although the district court considered “intentional delay” in the course of construing “real time,” it did not include the additional language Patent Owner proposes in its construction. See Ex. 1035, 2. Moreover, the district court stated it “sees no reason that a ‘real-time’ transmission of data could not both involve no inherent delay and permit a system that requires multiple ‘clicks’ to operate.” Id. at 25 (emphasis added). In addition, the district court quoted from a technical dictionary, which provided: The basic definition of real-time data is that it is data that is not kept or stored, but is passed along to the end user as quickly as it is gathered. It is important to note that real-time data does not mean that the data gets to the user instantly. There may be any number of bottlenecks related to the data collection infrastructure, the bandwidth between various parties, or even just the slowness of the end user’s computer. Real-time data does not promise data within a certain number of microseconds. It just means that the data is not designed to be kept back from its eventual use as it is collected. Id. at 26 (citing “Technopedia”). In other words, the district court contemplated that real-time data” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. Contrary to Patent Owner’s assertions, the Specification does not exclusively equate an “acquisition request” with a shopping or purchase request. See Resp. 10–12. Rather, the Specification repeatedly uses the phrasing “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:4–6 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:24–26 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121 and deliver the product.”); id. at 2:15–18 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”). Patent Owner’s argument that the Specification uses the “word ‘or’ to refer to things that are synonymous to each other” is not persuasive. See Resp. 10; Sur-reply 4 (citing Epic Games, Inc. v. Ingeniosh, LLC, IPR2022- 00202, Paper 29, 18–19 (PTAB May 19, 2023)). As noted above, the Specification uses the phrasing “purchase or otherwise acquire.” Ex. 1001, 5:4–6, 7:24–26 (emphasis added); see also id at 2:15–18 (similar). By including the adverb “otherwise,” the Specification makes clear that purchase and acquire are not used synonymously, but rather that acquiring is broader and encompasses other ways of obtaining a product. See Ex. 1039, 1 (“otherwise” means “in a different way or manner”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner has also articulated a sufficient rationale for combining these elements of Park and Kim. See Pet. 22–25 (citing exhibits). Kim identifies a problem with purchasing a product from a website, i.e., that the product delivered to the customer may not match the images or videos of that product on the website. Ex. 1006, 2. Kim teaches this problem can be overcome by having the delivery service provider operate a MDAS to transmit an image of the actual product in real time to the customer so that after receiving the image the customer can send instructions back to the delivery service provider confirming that is the product they delivered. Id. We credit Dr. Houh’s testimony that, based on these teachings, a POSITA would have been motivated to incorporate those same steps into Park’s system and methodology to “enhance the reliability of the delivery,” “increase customer satisfaction,” and “save[] resources” by preventing the delivery of goods that, upon viewing, the customer might reject. Ex. 1003 ¶¶ 62–67. Moreover, a POSITA would have had a reasonable expectation of success in combining these teachings because Park’s system was already configured to send live video and images to the customer’s computer. Ex. 1003 ¶ 69. Indeed, while Park primarily discusses transmission of video and images of the delivery process to the customer, it expressly teaches that its objective is to “allow customers to interactively view, in real-time, the progress of his order, from reception to compilation to delivery though the route taken by the delivery agent.” Ex. 1005, 4:26–32 (emphasis added). reach Petitioner’s backup argument that this “clause . . . is a non-limiting statement of intended purpose.” See Reply 15–17; Tr. 29:12–30:6 (Petitioner acknowledging this is a “backup position”). Incorporating Kim’s teachings regarding elements 1.3–1.5 would further this objective, allowing the customer to interactively view images of the actual products compiled for delivery and, if acceptable, send approval for the delivery agent to purchase and deliver those goods. See Ex. 1003 ¶ 68 (explaining that the combination allows Park’s system to perform the same intended functionality “in a more reliable way”).” slip op. at 31
Patent outcomesUS 9,202,191 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,202,191 - PTAB · Feb 26, 2024 · IPR2023-01275 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, and 8 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Clark and Manner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Nonetheless, we give little weight to his testimony on this point because he does not disclose the underlying facts or data on which the opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Ex. 2001 ¶ 22. Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’650 patent and the prior art. Our Decision would be not be affected if we were to apply Patent Owner’s definition.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“C. Mr. Kemnitzer’s Testimony Patent Owner contends that we should give little to no weight to Mr. Kemnitzer’s testimony because his “education and experience is in industrial design, rather than mechanical engineering.” Prelim. Resp. 57 (citing Ex. 1003 ¶¶ 4–6). According to Patent Owner, “[s]uch qualifications are directed more toward aesthetics than hard science,” while “[m]echanical engineering concerns are at the core of certain deficiencies in Mr. Kemnitzer’s analysis.” Id. (citing Ex. 2001 ¶ 58). Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1003 ¶ 5. Thus, on the present record at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner contends that “the ’650 patent is obvious under any reasonable construction of the claims.” Pet. 9. Petitioner points out that it contends in district court that the term “an actuator for controlling the driver” is indefinite for invoking means-plus-function claiming without providing corresponding structure. Id. (citing Ex. 1023, 36–40; Ex. 1024, 28–32). Petitioner, however, adopts Patent Owner’s construction of this term for the purposes of this proceeding—“a mechanism to activate or control equipment, e.g., by use of pneumatic, hydraulic, or electronic signals.” Id. at 10 (quoting Ex. 1012, 3–4). Petitioner also points out that in the district court, the parties’ proposed constructions of “work surface” also differ. Id. Specifically, Petitioner advocates that the term should be construed as “a curved surface at the top of a cart large enough to dispense medication or hold work papers,” while Petitioner characterizes Patent Owner’s position as advocating “for a broader ‘plain and ordinary meaning’ construction. Id. (citing Ex. 1012, 8–9). Petitioner, however, states that it “includes alternate grounds using Gillis to demonstrate how the claims are invalid under either Petitioner or Patent Owner’s construction.” Id. Patent Owner contends that Petitioner fails to expressly adopt or set forth any claim definitions aside from the term “work surface.” Prelim. Resp. 17. Patent Owner, however, contends that the claimed invention is valid under any reasonable construction. Id. Patent Owner also contends that the term “compartment” should be construed as “an enclosed space for containing an item” and that the construction of “work surface” is not dispositive here. Id. at 18–20. We agree with Patent Owner that it is not necessary to construe “work surface” at this stage of the proceeding because the construction of the term does not resolve 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,215,650 - PTAB · Feb 26, 2024 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Institution
Instituted review of claims 3 and 4 on all grounds; the Board found a reasonable likelihood that claims 3 and 4 would be unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, Preliminary Reply, Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in showing at least one claim of the ’668 patent is unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’668 patent on all grounds stated in the Petition. See 37 C.F.R. § 42 (“When instituting . . . 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.”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (interpreting the relevant statutory provisions, in light of SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Ex. 2001 ¶ 22. Nonetheless, we give little weight to his testimony on this point because it 9 Patent Owner is reminded that arguments may not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). does not disclose the underlying facts or data on which the opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1004 ¶ 5. Thus, on the present record and at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to construe “work surface” expressly at this stage of the proceeding because the construction of the term does not resolve 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,594,668 - Netflix, Inc. v. Divx, LLCNo claims unpatentablePTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand
The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52
- Strike new argumentNew argument disregardedDecided for petitioner
“I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62
- ExcludeMotion to exclude, grantedMixed
“7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5
Patent outcomesUS 10,225,588 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,225,588 - PTAB · Feb 9, 2024 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 1–6 on all petition grounds; the Board found a reasonable likelihood of success on obviousness over Szrek and did not reach the Llach–Szrek ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than at issue in IPR2020-00084. Second, although the parties may have gained insight as to how the Board would handle challenges based on the same references asserted in the earlier proceeding, that insight (to the extent it gives an advantage) applies to both parties. Third, the first proceeding was a post-grant review that had a specific timing requirement (see 35 U.S.C. § 321(c)), in contrast to the present proceeding in which the filing of the Petition did not have the same or similar time constraint.6 In these circumstances, we find it appropriate to give less weight to factors based on the mere passage of time such as whether Petitioner knew of the prior art at the time of filing the petition in PGR2020- 00084 (clearly Petitioner did because two of the same references are asserted here) and whether Petitioner had received Patent Owner’s preliminary response from PGR2020-00084 at the time of filing the instant Petition. Accordingly, we decline to exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we do not dive headfirst into these matters that are better addressed by the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 2–3 (citing Ex. 1003 ¶ 13).7 Patent Owner does not propose a level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. 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 re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner contends that we should follow the Board’s decision in PGR2020-00084 and construe “transaction processor” and “data package” in accordance with each term’s plain and ordinary meaning. Pet. 13; see id. at 13–19. Patent Owner does not take a position as to claim construction at this stage of the proceeding. See generally Prelim. Resp. In PGR2020-00084, the Board construed “transaction processor”8 in accordance with its plain meaning as “a processor . . . that processes transactions between two devices” and specifically “decline[d] to limit processors . . . to ‘third party’ processors . . . because the intrinsic record does not justify such a modification and it would create uncertainty.” Ex. 1008, 22. And, as Petitioner indicates, the Board determined that “data package” also is understood in accordance with its plain and ordinary meaning. Id. at 22–24; see id. at 24 n.10. At this stage of the proceeding 8 In that proceeding, the Board also construed “transaction processor system.” Ex. 1008, 13–22. and on the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00950 · APJ Robert L Kinder · IPR · Institution
Instituted inter partes review of claims 1–22 on all petitioned grounds; the Board found a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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 Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Markel – to accomplish Markel’s goal of a concealed electrode – is a reasonably sufficient basis or reason to combine the references. On this record, Petitioner demonstrates that a person of ordinary skill in the art would have reason to apply Nissilä’s electrode structure having a distinct exterior surface to the teachings of Markel because of the similarities in electrode structure and to achieve a stated goal of Markel. Nissilä’s electrode structure uses an external layer of “metal, electrically conductive plastic or a similar conductive material.” Ex. 1006, 5:32–37; Ex. 1003 ¶ 355 (“both references disclose an intermediate conductive material made of conductive plastic”). Petitioner has shown this structure could be adopted by Markel’s “hidden” electrode having a main body portion formed from conductive plastic and a person having ordinary skill in the art would be motivated to do so in order to achieve Markel’s stated goal of an electrode that is substantially concealed (or hidden) from a user. See Ex. 1003 ¶ 354. Even if a goal of Nissilä’s device is for the user to be aware of the electrodes to place them on their chest, as Patent Owner alleges, Petitioner shows that Markel’s concealment objective could be suitably achieved by use of Nissilä’s structure, even if Nissilä does not share a similar concealment objective. Id. ¶ 355 (“Markel’s hidden electrode is desirable because it increases aesthetics of the device while protecting the electrode from bumps or other damage.”). Based on the record before us, Petitioner has also shown sufficiently that a POSITA would be motivated to combine Markel and Nissilä to satisfy limitations [1.c.i], [1.c.ii], and [1.c.iii].” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in education. Petitioner’s definition is consistent with both the scope of the claimed invention and the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“With respect to the preamble “[a]n electronic device for detecting a user’s cardiac signal,” as recited in elements [1.pre] and [15.pre], Petitioner submits that the language provides antecedent basis that defines language in the claim body. For example, [1.pre] and [15.pre] each recite “a user’s cardiac signal,” which is referred back to later in the claim bodies as “the user’s cardiac signal” . . . The phrase “a user” in [1.pre] and [15.pre] is referred back to in the claim bodies as part of “the user’s skin’s contact” . . . As another example, [15.pre] recites “An electronic device,” which is referred back to later in the claim body as “the electronic device” . . . Consequently, a person of ordinary skill in the art would have understood that the language “An electronic device for detecting a user’s cardiac signal” in [1.pre] and [15.pre] is limiting and should receive its plain and ordinary meaning. Pet. 5 (citing Ex. 1003 ¶ 77). We find Petitioner’s contentions with respect to the preamble of claims 1 and 15 persuasive. Petitioner has shown that the claim preamble, when read in the context of the entire claim, recites limitations of the claim, and is necessary to give life, meaning, and vitality to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00949 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR of claims 11–20 on all petition grounds, finding a reasonable likelihood that Kim anticipates or renders obvious at least claims 11, 14, 16, and 19.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims in this proceeding.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Our Trial Practice Guide explains that, as is the case here, for parallel petitions challenging the same patent “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. The CTPG also recognizes “that there may be circumstances in which more than one petition may be necessary.” Id. The CTPG provides some exemplary reasons for multiple petitions, for instance “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. The CTPG further compels a petitioner filing multiple petitions to identify: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a). Id. at 60. We focus our analysis on part (2) and “why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions.” Id.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we expressly construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. (“[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))). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally, Petition; Prelim. Resp. For purposes of this Decision where no claim terms are in dispute we need not explicitly construe any claim terms.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the ’619 patent would have been a person with a working knowledge of physiological monitoring technologies, a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, and training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies. Pet. 8 (Ex. 1003 ¶¶ 37–38). Petitioner also asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not expressly address the level of ordinary skill in the art. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 10,866,619 - Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00948 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–10 and all petition grounds, finding a reasonable likelihood that Kim anticipates or renders obvious at least claims 1, 5, 9, and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims in this proceeding.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Analysis Two things can be true—first, the Board’s word and page count can be necessary to limit Petitioner’s to a reasonable articulation and advancement of the challenges with respect to the claims of a particular patent. 37 C.F.R. § 42.24; see also CTPG II.A.3. (“parties should . . . focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). Second, as recognized in the CTPG, a single petition, limited in this way, may at times be insufficient to convey all of the necessary information for the Board to correctly consider and evaluate the prior art and claims at issue. See CTPG 59 (“there may be circumstances in which more than one petition may be necessary.”). With this in mind, and for the following reasons, we find Petitioner’s explanations and arguments for filing two petitions persuasive and, based on the facts and circumstances in this case, institute both parallel petitions.” slip op. at 23
Discretionary denialPatents in suitUS 10,866,619
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.