- Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentablePTAB · Jun 11, 2024 · IPR2023-01194 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–6 are unpatentable as obvious: claims 1–5 over their listed combinations of Jiang, Smyth, Nguyen, Boike, or Baumgartner, and claim 6 over Jiang, Smyth, Nguyen, Boike, and Baumgartner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention “would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field,” and would have had “at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 4 (citing Ex. 1003 ¶ 24). Patent Owner indicates that it does not “dispute the Petition’s proposed level of skill for a person of skill in the art,” but also emphasizes that such artisans who possess “ordinary skill in the field of speech recognition, [would] not [be] one of extraordinary creativity.” PO Resp. 4. We continue to determine, as we did in the Institution Decision, that Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Inst. Dec. 7; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The recitation of claim 1 that FVs are extracted and/or derived means that FVs may not only be extracted from the digital audio stream, thus obtaining a FV based on the scale of the FV (“representing a point in an N-dimensional space,” depending on the value of N (Ex. 1001 13:19–23)). Such FVs, per claim 1, may also be representations of the digital audio stream, i.e., quantities derived therefrom. Any such derived quantities would perhaps even be lossy. See Ex. 1001, 13:13–18. As such, FVs, according to independent claim 1, are not limited to pure feature vectors, which are quantities extracted from the digital audio stream, but also include quantities derived from the stream, which are representations” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring the adjudicator to provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Furthermore, Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“above, we determine that Jiang uses codewords, which are representative feature vectors within the scope of claim 1, and those codewords are used to calculate distances. The Petition discusses a motivation to modify Jiang to use Smyth’s DSP device to perform distance calculations (Pet. 40-41), but it does so in the context of “[t]o the extent Patent Owner argues that Jiang does not teach calculating distances.” Id. at 40. Given that we determine that Jiang does teach performing distancing calculations that meet the claim limitations, Patent Owner’s contention is not persuasive. Rather, we are persuaded by Petitioner’s motivation for using Smyth’s dedicated DSP to perform Jiang’s distance calculations, namely, for the benefit of allowing for segmentation of higher-load processing, resulting in a faster, more efficient, ¶¶ 176–180; Ex. 1004, 6:39–42). We agree with Mr. Schmandt, that “[i]t would have been obvious to modify Jiang’s tree search engine, which performs both distance calculation and word determination, to include Smyth’s distinct processors for performing each respective functionality,” because such a modification “results in a more efficient, faster, and more accurate speech recognition process by segmenting higher-load processing tasks.” Ex. 1003 ¶ 180 (citing Ex. 1012, 19, Ex. 1005, 5:49–53, 6:5–8, 6:43–51; Ex. 1004, 4:60–5:3). Additionally, Patent Owner argues that using Smyth’s probability calculation in the system of Jiang will dramatically increase the computation burden of the calculations, and this is contrary to the purpose of Jiang to reduce computational requirements, as evinced by the use of lossy codewords. PO Resp. 16–19 (citing Ex. 1002 ¶¶ 54–59). Petitioner asserts, with respect to this latter argument, that “the Board need not consider this argument if the Board determines that Jiang teaches limitation 1(g).” Pet. Reply 14. We agree with Petitioner. Given the discussion with respect to limitation 1(g) above, and that Jiang is sufficient to teach or suggest element 1(g), we need not further consider the combination of Smyth and Jiang in the claimed calculation of distances. Therefore, we determine that the motivation proffered by the Petition is sufficient to combine the teachings of Jiang and Smyth, as disclosed in the Petition.” slip op. at 30
Patent outcomesUS 10,062,377 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,062,377 - Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentablePTAB · Jun 11, 2024 · IPR2023-00035 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–6 are unpatentable as obvious: claims 1–6 under the listed combinations of Jiang, Smyth, and the additional references for dependent claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The recitation of claim 1 that FVs are extracted and/or derived means that FVs may not only be extracted from the digital audio stream, thus obtaining a FV based on the scale of the FV (“representing a point in an N-dimensional space,” depending on the value of N (Ex. 1001 13:19–23)). Such FVs, per claim 1, may also be representations of the digital audio stream, i.e., quantities derived therefrom. Any such derived quantities would perhaps even be lossy. See Ex. 1001, 13:13–18. As such, FVs, according to independent claim 1, are not limited to pure feature vectors, which are quantities extracted from the digital audio stream, but also include quantities derived from the stream, which are representations 8). Given such a definition, vector quantization, which reduces the plurality of quantities in a FV to a single codeword that is associated with a codebook entry, representing multiple values, would also comprise “derived” representations of the “quantities from said digital audio stream” as recited in the claim. Although Patent Owner’s declarant, Dr. Anderson, provides that “[c]odewords are the result of vector quantization (VQ) of the original feature vectors, and are thus not the feature vectors themselves” (Ex. 2020 ¶ 39), that comports with one alternative of what encompasses a FV as recited in claim 1, namely, “extracted quantities,” but not the more expansive definition that includes “derived quantities” provided in independent claim 1. The vector quantization of a feature vector results in a vector quantized feature vector, or codeword, that still represents a multitude of values “derived . . . from said digital audio stream,” but is more computationally expedient. See Ex. 1003 ¶¶ 140–141. We agree with Dr. Anderson that persons of ordinary skill in the art would have understood that calculating distances from a feature vector comprising extracted quantities was distinct from computing probabilities from a codeword (Ex. 2020 ¶ 43), but that, again, does not take into consideration the broader definition of “feature vector” confirmed by the claims. Rather, we agree with Petitioner and Mr. Schmandt, that a person of ordinary skill in the art would have understood that a codeword is a representative feature vector. Pet. 22 (citing Ex. 1003 ¶¶ 140–141). A codeword, or representative feature vector, “comprises a plurality of . . . derived,” or vector quantized, “quantities from said digital audio stream” within the meaning of claim 1. claim 1, comprises a plurality of extracted qualities from the digital audio stream during the defined audio time frame, and/or derived quantities that are representative of the digital audio stream during the defined audio time frame, such as the derived values of a codeword.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Mr. Schmandt’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field,” and would have had “at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 4 (citing Ex. 1003 ¶ 24). Patent Owner indicates that it does not “dispute the Petition’s proposed level of skill for a person of skill in the art,” but also emphasizes that such artisans who possess “ordinary skill in the field of speech recognition, [would] not [be] one of extraordinary creativity.” PO Resp. 4. We continue to determine, as we did in the Institution Decision, that Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Inst. Dec. 7; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We are not persuaded by Patent Owner’s arguments. As discussed above, we determine that Jiang uses codewords, which are representative feature vectors within the scope of claim 1, and those codewords are used to calculate distances. The Petition discusses a motivation to modify Jiang to use Smyth’s DSP device to perform distance calculations (Pet. 40-41), but it does so in the context of “[t]o the extent Patent Owner argues that Jiang does not teach calculating distances.” Id. at 40. Given that we determine that Jiang does teach performing distancing calculations that meet the claim limitations, Patent Owner’s contention is not persuasive. Rather, we are persuaded by Petitioner’s motivation for using Smyth’s dedicated DSP to perform Jiang’s distance calculations, namely, for the benefit of allowing for segmentation of higher-load processing, resulting in a faster, more efficient, ¶¶ 176–180; Ex. 1004, 6:39–42). We agree with Mr. Schmandt, that “[i]t would have been obvious to modify Jiang’s tree search engine, which performs both distance calculation and word determination, to include Smyth’s distinct processors for performing each respective functionality,” because such a modification “results in a more efficient, faster, and more accurate speech recognition process by segmenting higher-load processing tasks.” Ex. 1003 ¶ 180 (citing Ex. 1012, 19, Ex. 1005, 5:49–53, 6:5–8, 6:43–51; Ex. 1004, 4:60–5:3). Additionally, Patent Owner argues that using Smyth’s probability calculation in the system of Jiang will dramatically increase the computation burden of the calculations, and this is contrary to the purpose of Jiang to reduce computational requirements, as evinced by the use of lossy codewords. PO Resp. 16–19 (citing Ex. 1002 ¶¶ 54–59). Petitioner asserts, with respect to this latter argument, that “the Board need not consider this argument if the Board determines that Jiang teaches limitation 1(g).” Pet. Reply 14. We agree with Petitioner. Given the discussion with respect to limitation 1(g) above, and that Jiang is sufficient to teach or suggest element 1(g), we need not further consider the combination of Smyth and Jiang in the claimed calculation of distances. Therefore, we determine that the motivation proffered by the Petition is sufficient to combine the teachings of Jiang and Smyth, as disclosed in the Petition.” slip op. at 30
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Weighing the evidence proffered by both parties, we are not persuaded that Jiang discloses feedback-based pruning. Petitioner’s declarant disputes that Jiang teaches feedback-based pruning (Ex. 2016, 18:16–19:14), and Jiang itself, within its entire discussion of pruning (Ex. 1004, 8:52–64, 10:65–11:15), never discusses feedback of pruned results. We are left with Patent Owner’s assertions that such feedback-based pruning is implicitly taught by Jiang, and we determine that to be insufficient to require a disclosure that is not explicit. We acknowledge that Patent Owner’s declarant (Ex. 2020 ¶ 64–76) provides testimony, based on the teachings of Jiang and contemporaneous teachings in the art, that Jiang’s pruning requires feedback from the search stage to the calculation stage, but we are not persuaded that Jiang must operate with such feedback. We are also persuaded by Petitioner’s point that Jiang computes a score for each phoneme branch considered in the tree, that contradicts Patent Owner’s theory that scores are computed for only active, non-pruned phoneme Lastly, Patent Owner seems to rely, at least partially, that “Jiang never states it does not use feedback-based pruning” (PO Sur-reply 25), but an absence of evidence is not evidence of absence. As such, given that we are not persuaded that Jiang must employ feedback-based pruning, we are not persuaded that the methods of Nguyen cannot be used in the combination of Jiang and Smyth, as proffered by the Petition with respect to claims 2 and 3. In addition, we agree with Petitioner that Jiang discloses that “a pruning technique can be used,” and find that Jiang’s pruning technique is optional. Pet. Reply 16; Ex. 1004, 8:52–64. Although Patent Owner contends that Mr. Schmandt includes Jiang’s pruning as part of his combination theory (PO Resp. 20–22), we agree with Petitioner that the Petition does not rely on Jiang’s pruning technique in mapping Jiang’s process to the search stage of independent claim 1. Pet. Reply 16; see Pet. 44–61. We find that the Petition does not rely on the portions of Mr. Schmandt’s testimony that consider Jiang’s pruning. Further, even under Mr. Schmandt’s combination theory, Mr. Schmandt testifies that the pruning “threshold value can be set at any desired level, based primarily on desired memory and computational savings, and a desired error rate increase caused by memory and computational savings.” Ex. 1003 ¶ 174 (quoting Ex. 1004, 2:25–46). Mr. Schmandt testifies that “if the speech recognition system is programmed to carry more hypotheses forward in the tree (because a relatively lower threshold value is set), the system has a higher recognition accuracy.” Id. ¶ 177. Mr. Schmandt testifies that modifying Jiang’s tree search engine 74 to comprise two digital signal processors, where a first processor performs distance calculations and the second performs other speech recognition tasks, yields the benefit of given that using two digital signal processors allows the first processor to increase accuracy by reducing the pruning threshold, and given that the pruning threshold can be set to any desired level based on a desired error rate, a person of ordinary skill in the art would have set the pruning threshold to zero for the benefit of increasing recognition accuracy and lowering the error rate as much as possible. With the pruning threshold set to zero, the combination does not perform pruning, even under Mr. Schmandt’s combination theory.” slip op. at 35
Patent outcomesUS 10,062,377 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,062,377 - Askeladden L.L.C. v. Liberty Peak Ventures LLCAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00422 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1, 3–5, and 7–16 as anticipated by Foss; claims 2, 6, and 17–20 as obvious over Foss and Hirka.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12 (citing Ex. 1003 ¶¶ 159–161). Patent Owner does not submit a contrary skill definition. See PO Resp. Patent Owner asserts that Petitioner’s skill definition is not “well-grounded in the facts,” but this assertion is conclusory and unpersuasive. See id. at 11. We discuss this assertion again below in the context of Patent Owner’s merits arguments. We are persuaded that Petitioner’s proposal is generally consistent with the problems and solutions in the ’301 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. We adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“possession when the same dictionary proposes other definitions, such as “[a]ssociated with.” See PO Resp. 6–7. Nor does Patent Owner point to any disclosure in the ’301 patent specification that supports its more restrictive construction. When discussing “account information” in connection with an “account,” the specification merely describes “account information for the account.” Ex. 1002, 1:54–55, 10:49–50 (emphasis added). The phrase “account information of the separate account” does not occur in the specification, and neither party addresses any relevant prosecution history. There is no basis in the intrinsic record, then, for reading a restrictive interpretation of this phrase. Patent Owner overlooks that where the specification does not use a term restrictively, “the broader dictionary definition . . . is preferable.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1377 (Fed. Cir. 2014); see also Phillips v. AWH Corp., 415 F.3d, 1303, 1322–23 (Fed. Cir. 2005) (en banc) (“[J]udges are free to . . . rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.” (internal quotation omitted)). As noted above, the parties point to no intrinsic evidence, whether in the specification or prosecution history, that informs the meaning of the term “of.” And the definition “associated with” in Patent Owner’s proffered dictionary is a broader definition than the definition “possessing.” See Ex. 2001, 2. Accordingly, we agree with Petitioner that the phrase “account information of the separate account” in claims 1 and 7 at least encompasses “account information associated with the separate account.”” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We disagree with Patent Owner that this limitation is not inherently disclosed by Foss based on the possibility of Foss’s system sending debit account information instead of overdraft account information. That is because “account information of the separate account” encompasses “account information associated with the separate account,” under the correct claim construction. See Ex. 1003 ¶ 387 (citing Ex. 1008 ¶ 17). As noted above, Mr. Zatkovich testifies that “the account information request would necessarily include account information associated with the overdraft account.” Id. ¶ 386 (emphasis changed). Foss’s linkage between debit and overdraft accounts means that Foss’s debit account information would necessarily be information associated with the overdraft account. See id. ¶ 387; Ex. 1008 ¶ 17. Thus, under the proper construction of the word “of,” Patent Owner’s assertion that Foss’s system could have sent a debit card number, rather than an overdraft account number, effectively proves Petitioner’s inherency argument. In other words, Foss’s system necessarily must have sent either debit account information or overdraft account information as part of its authorization request. Otherwise, Foss’s system would not have been able to determine which overdraft account to authorize. Foss therefore inherently teaches “sending, using the computer-based authorization system, an account information request that includes account information of the separate account.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner contends that dependent claims 2, 6, and 17–20 would have been obvious over the combination of Foss and Hirka. Pet. 68–84. Petitioner provides a detailed analysis explaining where the combination of Foss and Hirka discloses the limitations in claims 2, 6, and 17–20 and why a person of ordinary skill in the art would have combined the teachings of Foss and Hirka. Patent Owner does not dispute these assertions except to raise the same argument it made for claim 1. PO Resp. 18–19. We have reviewed Petitioner’s contentions and supporting evidence and find them persuasive. Thus, we determine that Petitioner has proven by a preponderance of the evidence that claims 2, 6, and 17–20 would have been obvious over the combination of Foss and Hirka.” slip op. at 19
Patent outcomesUS 8,905,301 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,905,301 - Askeladden L.L.C. v. Liberty Peak Ventures LLCAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00421 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Gopinathan and Hirka; the Board did not reach anticipation over Gopinathan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on these and other disclosures in Hirka, Mr. Zatkovich testifies, and we agree, that Hirka discloses the debit card aspect of the authentication limitation. Ex. 1003 ¶¶ 170, 188–189.7 For example, Mr. Zatkovich states that Hirka “demonstrate[s] that a debit card used in the transaction . . . is associated with both a demand deposit account (e.g., a ‘cash account’) and an overdraft account.” Id. ¶ 188. Mr. Zatkovich’s opinions are well-supported by record evidence, including the citations to Hirka we discuss above. Patent Owner does not address these disclosures in Hirka and does not rebut Mr. Zatkovich’s testimony with expert testimony of its own. See PO Resp. 15–16. Patent Owner’s assertion that “the combination suggests only authenticating a transaction against an available credit limit” entirely overlooks Hirka’s disclosure regarding debit cards and demand deposit 6 No line numbers are provided on Hirka’s first page. 7 Mr. Zatkovich also relies on the teachings of Hirka ’404 (Ex. 1007), which was cited by the Examiner during prosecution. E.g., Ex. 1003 ¶¶ 170, 188. Although Hirka ’404 further supports Mr. Zatkovich’s findings, we view Mr. Zatkovich’s testimony sufficiently supported by the combined teachings of Gopinathan and Hirka. accounts. See id. at 16. Patent Owner’s argument therefore fails to undermine Petitioner’s persuasive arguments and supporting evidence.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 11–12 (citing Ex. 1003 ¶¶ 159–161). Patent Owner does not submit a contrary skill definition. See PO Resp. We are persuaded that Petitioner’s proposal is generally consistent with the problems and solutions in the ’100 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. We adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes constructions for the “authenticating” step of claim 1 as well as for the terms “demand deposit account” and “overdraft account.” PO Resp. 6–7. Petitioner does not dispute these constructions, and Patent Owner does not appear to rely on them in its arguments. See Reply; PO Resp. Accordingly, we determine that no claim terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner, as supported by the testimony of Mr. Zatkovich, that one of ordinary skill in the art would have been motivated to combine Gopinathan and Hirka at least “because doing so would have protected cardholders and card issuing systems from fraud associated with debit cards with overdraft protection.” Pet. 32 (citing Ex. 1003 ¶ 191). In other words, in the combination, Hirka’s debit cards with overdraft protection would benefit from Gopinathan’s fraud protection disclosure. See id. And conversely, Gopinathan’s system would benefit from Hirka’s overdraft protection. See id. Patent Owner does not squarely address Petitioner’s rationales to combine. In asserting that “the teachings of Hirka add nothing to the teachings already present in Gopinathan,” Patent Owner overlooks that Hirka would provide the benefit of overdraft protection to Gopinathan’s fraud detection system. See PO Resp. 15; Reply 17 (arguing that “a POSITA would have been motivated to combine Gopinathan with Hirka to protect cardholders from fraud ‘associated with debit cards’ and ‘overdraft protection’”); Ex. 1003 ¶ 191. We further agree with Petitioner that Hirka would have provided the benefit of debit cards to Gopinathan’s fraud detection system. Reply 19 (“[I]t would have been obvious (and a POSITA would have been motivated to) to modify Gopinathan with the ‘debit card’ system as taught in Hirka in order to expand the reach and applicability of the fraud detection system taught.” (citing Ex. 1014 ¶¶ 654–662)). And vice versa, Gopinathan would have provided the benefit of fraud protection to Hirka’s debit card and overdraft accounts. Reply 17 (citing Ex. 1003 ¶ 171); Pet. 24.” slip op. at 16
Patent outcomesUS 7,837,100 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,837,100 - PTAB · May 10, 2024 · IPR2024-00200 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted grounds, finding a reasonable likelihood of prevailing based on the Hays obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use the following two-part framework in determining whether to exercise our discretion under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 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 the Preliminary Response shows “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 institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 65–69). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 65–69). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’056 patent and the asserted prior art, except that we change qualifier “at least” to “about” to avoid including experience levels that exceed the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction Neither party proposes any claim terms for construction. On this record, we determine that no terms need express construction to determine whether we should institute. 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” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,117,056 - PTAB · May 10, 2024 · IPR2024-00171 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“proceeding if the challenge to the patent is based on matters previously presented to the Office. 35 U.S.C. § 325(d) states, in pertinent part, “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use the following two-part framework in determining whether to exercise our discretion under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons discussed above and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that claim 1 is unpatentable as obvious over the teachings of Hays.7” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “Hays is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., its publication date, which notably, is after the June 26, 2007 priority date of the ’958 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” Prelim. Resp. 41–44. We disagree with Patent Owner’s statutory interpretation. Hays is a printed publication, having been published on May 1, 2008, as Patent Owner acknowledges. See Ex. 1005, code (43); see also Prelim. Resp. 41 (acknowledging publication date). On this record, we are persuaded by Petitioner’s contention that Hays is prior art under pre-AIA 35 U.S.C. § 102(e), having been filed “by another . . . in the United States before the invention by the applicant for patent.” See Pet. 8. Thus, Petitioner asserts a permissible ground of unpatentability by arguing that claims 1–14 are unpatentable under 35 U.S.C. § 103(a) “on the basis of prior art consisting of patents or printed publications” (35 U.S.C. § 311(b)), specifically based on Hays, which is prior art and a printed publication.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction Neither party proposes any claim terms for construction. On this record, we determine that no terms need express construction to determine whether we should institute. 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))). Nevertheless, we note two issues of claim interpretation for the parties to consider. First, the parties may wish to address the interpretation of the phrase “pre-selected in-game advertising” during the trial for the reasons discussed below in §§ II.E.2 and II.F.1. Second, the parties may wish to address the interpretation of the subject matter of dependent claims 5 and 12 reciting “wherein the message is pre-selected by the server based on a model type associated with the mobile communication device, a service subscription associated with the mobile communication device, or a service provider for the service subscription associated with the mobile communication device.” In particular, the parties may wish to address what it means to be “pre-selected” in this context.” slip op. at 8
Claim construction§ 102 anticipationDiscretionary denialcites KSRPatents in suitUS 10,617,958 - PTAB · May 10, 2024 · IPR2024-00209 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
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 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“focuses on a high-level comparison of the references. See Prelim. Resp. 14– 19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. Instead, Patent Owner must demonstrate that the references relied on in the Petition are substantially the same in all material respects to the prior art the Examiner actually relied on. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”).” slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“We disagree with Patent Owner’s statutory interpretation. Ho is a printed publication, having been published in January 2008, as Patent Owner acknowledges. See Ex. 1004, code (43) (publication date of January 17, 2008); see also Prelim. Resp. 45 (acknowledging publication date). On this record, we are persuaded by Petitioner’s contentions that Ho is prior art under 35 U.S.C. § 102(e), having been filed “by another . . . in the United States before the invention by the applicant for patent.”11 See Pet. 7 (“For purposes of this Petition, Petitioner uses a June 26, 2007 priority date” for the ’662 patent); see also Ex. 1004, code (22) (filing date of July 12, 2006). Thus, Petitioner asserts a permissible ground of unpatentability” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“claim 115 and that a person having ordinary skill in the art would combine the relevant teachings of Ho and Aoki. See Pet. 17–26, 30. With the exception of “hot spot” and “hot spot information,” which we discussed above in Section II.G.3(a), at the present time Patent Owner does not dispute that Ho teaches those limitations. See Prelim. Resp. 26–35. After reviewing Petitioner’s arguments and information regarding the limitations identified above, including the Zagal Declaration, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that Ho teaches limitations 1(pre), 1(a), (1)(b)(1), 1(d), and 1(e) and that a person having” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - Wiz, Inc. v. Orca Security LtdInstitution deniedPTAB · May 9, 2024 · IPR2024-00220 · APJ Richard M Lebovitz · IPR · Institution
The Board denied institution because the Patent Owner disclaimed all challenged claims, leaving no claims eligible for inter partes review.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o inter partes review will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). See also Raytheon Technologies Corporation v. General Electric Company, 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2
NonePatents in suitUS 11,431,735 - PTAB · Apr 30, 2024 · IPR2024-00132 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’202 patent. Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is instituted as to claims 1–9 of the ’202 patent on all of the grounds set forth in the Petition; and” slip op. at 34
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Petitioner. The prior Board decision observed that Willis discloses sending advertising content based on physical geographic location but does not teach “checking what updated video-game content to send based on one of the factors including a type of the mobile 3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1 Patent Owner contends that Dr. Zagal’s Declaration “simply parrots the Petition” and, thus, should not be entitled to any weight. Prelim. Resp. 28– 33. The testimony quoted by Patent Owner (Prelim. Resp. 30–32) includes citations to the prior art to support the opinions set forth and, thus, “disclose[s] the underlying facts or data on which the opinion is based” (37 C.F.R. § 42.65(a)). See Ex. 1003 ¶¶ 95, 103, 118, 165–166 (citing Ex. 1005 ¶¶ 25, 51; Ex. 1008 ¶¶ 5, 6, 123, 127). We decline, at this stage of the proceeding, to discount Dr. Zagal’s testimony in its entirety and will give that testimony the appropriate weight on the points for which it is offered.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,731,202 - PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.Institution deniedPTAB · Apr 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent necessary, we address the parties’ implicit claim constructions in the context of the arguments on the merits of the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate degree in game design, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development,” and that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 67–72). Petitioner’s recitation of the level of ordinary is consistent with the invention disclosed in the ’089 patent. It is also not disputed by Patent Owner at this time. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art, with the exception of the open-ended phrase “at least” which we change to “about.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 3 above is an example of the embodiment of Ho showing a wings button, a car, and a hamburger monster in the foreground. Ex. 1004, 5:1–5, Fig. 3. Ho describes how the various interactive information elements are used for game play. See id. at 5:11–38. For example, hamburger monster 56 may be engaged when character 52 fights and successfully slays the hamburger monster, car 58 may be engaged when character 52 enters the car, and “wings” button 54 may be engaged (for example when character 52 wishes to fly) by clicking on icon 54 using a pointer, or by using an enclosure moving between different icons to highlight icon 54 to engage the icon. Id. Because Petitioner has not shown persuasive evidence that a user would not have expected those objects to be ones that the user could interact with, Petitioner has not shown them to be background objects. Petitioner also argues that Ho teaches that activating the interactive information elements “does not disrupt gameplay” and is therefore “outside the primary focus of game play.” Pet. 31–32 (quoting 5:36–38). We do not find that argument persuasive for two reasons. First, we do not see how the fact that activating an element without disrupting game play means the element is in the background. Petitioner and its expert simply make a statement without any explanation. See id.; Ex. 1003 ¶ 122. Such conclusory statements are not persuasive. Second, the language in Ho Petitioner relies on is not about the interactive information element, which Petitioner maps to the hotspot. Instead, Ho describes a sub-screen that appears after the user interacts with one of the interactive information elements, namely when the user slays the hamburger monster: “Similarly, making the character 52 slay the hamburger monster 56 may generate a sub-screen showing an advertisement of a chain of fast food restaurants. The sub-screen may also be overlain on the game environment and may not be disruptive to gameplay.” Ex. 1004, 5:35–38. Petitioner does not persuasively explain how a nondisruptive sub-screen that appears after an interaction with an object makes the object a background object.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089
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.