• Quantum Metric, Inc. / Decibel Insight, Ltd. et al. v. Content Square Israel Ltd. (F/K/A Clicktale Ltd.)Some claims unpatentable
  PTAB · Aug 2, 2022 · IPR2021-00530 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–5, 7–17, and 19–23 are unpatentable as obvious; claims 6 and 18 were not shown unpatentable over the asserted combinations.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “3. ALLEGED REASONS FOR COMBINING THE TEACHINGS OF THE REFERENCES Petitioner explains that in the proposed combination, “the system of Seolas-Krishnamoorthy is modified such that the rendering system 175 identifies and discards near-duplicate pages, according to the teachings of Jain, when creating a sample of page views as part of its website health audit process.” Pet. 48 (citing Ex. 1003 ¶ 66; Ex. 1005, 15:17–19; Ex. 1010, 1:8–10, 1:58–2:6); see Ex. 1003 ¶ 66. Petitioner identifies reasons that would have prompted an ordinarily skilled artisan to combine Jain’s teachings with the teachings of Seolas and Krishnamoorthy in the way Petitioner proposes. See Pet. 48–50. Dr. Cooperstock’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 67–70. Patent Owner disputes that an ordinarily skilled artisan would have” slip op. at 94

  • Skill levelDecided for petitioner

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 11

  Patent outcomesUS 9,792,365 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,792,365
• Quantum Metric, Inc. / Decibel Insight, Ltd. et al. v. Content Square Israel Ltd. (F/K/A Clicktale Ltd.)Some claims unpatentable
  PTAB · Jul 1, 2022 · IPR2021-00364 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–8, 14–18, and 24 are unpatentable as obvious over Phillips and Zambonini; claims 9–13 and 19–23 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “IV. PETITIONER’S MOTION TO EXCLUDE Petitioner moves to exclude the Declaration of Christopher Schmandt” slip op. at 113

  • Skill levelDecided for petitioner

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Dr. Cooperstock testifies that a person of ordinary skill in the art would have had “a Bachelor of Science or Engineering degree in Computer Science, Computer Engineering, or another academic discipline emphasizing the design or development of web-related technologies, in combination with training or at least one to two years of related work experience with web-related technologies.” Ex. 1003 ¶ 15. Further, Dr. Cooperstock testifies that “the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Mr. Schmandt testifies that a person of ordinary skill in the art would have had “a Bachelor of Science (or equivalent degree) in Computer Science or Computer Engineering, in combination with at least two years of additional experience with technologies related to media or web-based technology, or equivalent work experience.” Ex. 2007 ¶ 25. The descriptions of an ordinarily skilled artisan articulated by” slip op. at 18

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

    “C. Claim Construction 1. GENERALLY We construe claim terms “using the same claim construction” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed

    “Conclusion About Obviousness/Nonobviousness for Claim 1 For the reasons discussed above, the combined disclosures in Phillips” slip op. at 79

  Patent outcomesUS 10,063,645 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,063,645
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentable
  PTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand

  On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …

  RulingsRemand decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21

  Patent outcomesUS 6,901,498 mixed
  § 103 obviousness
  Patents in suitUS 6,901,498
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.Some claims unpatentable
  PTAB · Sep 10, 2018 · IPR2017-00934 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1, 4–11, and 14–24 are unpatentable as obvious; claims 2, 3, 12, and 13 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22

  Patent outcomesUS 8,768,147 mixed
  § 103 obviousnesscites Graham
  Patents in suitUS 8,768,147
• Bungie, Inc. v. Worlds Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01268 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 5–7, 10–12, 14, 15, 17, and 19 are unpatentable as anticipated by Funkhouser and Durward; claims 4, 8, 13, and 16 were not shown obvious over Funkhouser and Funkhouser ’93.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “1. Funkhouser’s Status as Prior Art We begin by addressing Funkhouser’s status as prior art to instituted claims 1–8, 10–17, and 19 of the ’690 patent. In this inter partes review, Petitioner has the burden of persuasion to establish unpatentability— including “all issues relating to the status of [Funkhouser] as prior art,” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576–78 (Fed. Cir. 1996)—by a “preponderance of the evidence,” see 35 U.S.C. § 316(e); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015). This burden of persuasion remains with and never shifts from Petitioner, while the burden of production—the burden of going forward with evidence, which “may entail producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record”—shifts between the parties. Dynamic Drinkware, 800 F.3d at 1378–80 (internal quotations and citation omitted); see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–29 (Fed. Cir. 2008); Mahurkar, 79 F.3d at 1576–77. Here, Petitioner argues that Funkhouser qualifies as prior art to claims 1–8, 10–17, and 19 of the ’690 patent under 35 U.S.C. § 102(a). Pet. 4, 13; Reply 17–21. Patent Owner contests Funkhouser’s status as prior art only with respect to claims 1 and 11. Resp. 55–59; see Ex. 2017 ¶ 50.d.xi. Section 102(a) provides, in relevant part, “[a] person shall be entitled to a patent unless . . . the invention was . . . described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” 35 U.S.C. § 102(a). In the Petition, Petitioner argues that Funkhouser constitutes prior art under § 102(a), because Funkhouser was published no later than April 12, 1995—before the earliest possible effective filing date of the ’690 patent, the November 13, 1995 filing date of the ’296 provisional. See Pet. 4, 13; Ex. 1001, Cert. of Corr. In Response, Patent Owner does not dispute Petitioner’s position that Funkhouser constituted a printed publication by April 12, 1995. See generally Resp. Patent Owner, however, instead argues that under Petitioner’s proposed interpretation of the determining steps of the ’690 patent claims—with which we have agreed above—the subject matter of claims 1 and 11 of the ’690 patent was invented before Funkhouser’s publication. See id. at 55–59; Ex. 2017 ¶ 50.d.xi. Specifically, Patent Owner contends, with documentary and testimonial evidence proffered in support of its assertions, that (1) the inventors actually reduced to practice the subject matter recited in claims 1 and 11 of the ’690 patent “no later than April 11, 1995,” or alternatively, (2) the inventors “conceived of [the recited subject matter] no later than April 11, 1995 and th[r]ough reasonable diligence, actually reduced them to practice no later than April 25, 1995.” Resp. 55–59. In Reply, Petitioner contests Patent Owner’s proffered arguments and evidence of prior conception and reduction to practice. See Reply 17–21.” slip op. at 54

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “relevant field to combine the elements in the way the claimed new invention does.” Id. An obviousness determination “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 93

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “F. REAL PARTY IN INTEREST Patent Owner argues Activision Publishing, Inc. (“Activision”) is an” slip op. at 127

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “specifically Exhibits 1033, 1034, 1037, 1041, and 1042. See generally Mot. We have not relied on four of these exhibits—Exhibits 1033, 1034, 1037, and 1042—in reaching our decision and, therefore, Patent Owner’s arguments as to these exhibits are moot. For Exhibit 1042, in particular, we note that Petitioner does not cite this exhibit in its Petition or its Reply and, thus, has not proffered any argument relying on this exhibit. See id. at 9; Opp. 11; see generally Pet.; Reply. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot as to Exhibits 1033, 1034, 1037, and 1042.” slip op. at 129

  Patent outcomesUS 7,181,690 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,181,690
• Actifio, Inc. v. Delphix Corp.Some claims unpatentable
  PTAB · Apr 13, 2016 · IPR2015-00016 · APJ Minn Chung · IPR · Final written decision

  Claims 2, 3, 24–26, 29, 31, 35, 36, 51, 53, 54, and 56 are unpatentable as obvious; claims 27 and 52 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “1152, we do not, and need not, consider such evidence. We have determined, as discussed above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to those additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1138, 1139, 1144–1146, 1148, 1153, 1156, 1158–1161, and 1165 is dismissed as moot. We consider Patent Owner’s motion to exclude with respect to each of the remaining exhibits below.” slip op. at 100

  Patent outcomesUS 8,150,808 mixed
  Nonecites Phillips · KSR · Graham
  Patents in suitUS 8,150,808
• Apple Inc. v. Virnetx Inc.Some claims unpatentable
  PTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.

  RulingsFinal written decision

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

    “We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3

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

    “understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableMixed

    “of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21

  Patent outcomesUS 7,188,180 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180
• Customplay, LLC v. Clearplay, Inc.Some claims unpatentable
  PTAB · Jul 21, 2015 · IPR2014-00383 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–22 and 24–29 are unpatentable as obvious over Abecassis and Malkin; claim 23 was not shown unpatentable.

  RulingsFinal written decision

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

    “The Specification states that “navigation objects” “define portions of the multimedia content that should be filtered.” Ex. 1001, col. 4, ll. 52–54. The Specification also discloses that each navigation object contains a start position, a stop position, and a filtering action to be performed on the portion of the multimedia content that is defined by the start position and stop position. Id. at col. 4, ll. 54–56. Independent claims 1 and 15 mirror this language, requiring that each navigation object comprise a start indicator associated with a first position, an end indicator associated with a second position, and at least one filtering action. The challenged claims also require the at least one filtering action of the navigation object to include a “skip filtering action.” Accordingly, the broadest reasonable construction of the phrase “navigation object” in light of the Specification of the ’318 patent is information that defines both (1) a portion of multimedia content to filter and (2) at least one filtering action to be taken on a defined portion of multimedia content, the filtering action including, but not limited to, a skip filtering action.” slip op. at 6

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). Dr. Kiaei opines that a person having ordinary skill in the art on October 23, 2000 would typically have (i) a M.S. degree in electrical engineering or computer science (or a related field) with at least a 2-3 years of experience working with signal, video, or data processing, or (ii) a B.S. in electrical engineering or computer science (or a related field) with significant practical experience (4 or more years) working with signal, video, or data processing. Ex. 2001¶ 15. The prior art also reflects a skill level in the relevant technology. Okajima, 261 F.3d at 1355. Petitioner does not propose a specific level of ordinary skill. Based on our review of the ’318 patent, the types of problems and solutions described in the ’318 patent and cited prior art, and the testimony of Dr. Kiaei, we agree with Dr. Kiaei and adopt the level of ordinary skill proposed by Dr. Kiaei.” slip op. at 21

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

    “Here, it is clear, based on the reference disclosures, that Abecassis discloses filtering actions taken with respect to the segments defined by start and end indicators (but not included with the indicators in a single “navigation object”). Whether those filtering actions are provided by the end-user, as suggested by Abecassis, or are pre-programmed as part of the video map, as suggested by Malkin, would have been an obvious choice for a person of ordinary skill and creativity. The rationale for the modification comes from the references. First, Abecassis identifies the desirability of incorporating “capabilities and environments that automatically customize the playing of videos to satisfy the particular video requirement” of various viewers, and that deliver “a more enjoyable video experience without requiring the level of active participation inherent in interactive systems.” Ex. 1004, col. 1, ll. 45–52. Abecassis also states the desirability for “automated selective retrieval of non-sequentially stored, parallel, transitional, and overlapping video segments” (id. at col. 2, ll. 1–3); “automated capabilities for efficiently retrieving and playing only a specified class, category, or subject matter included in segments within the selected video” (id. at col. 2, ll. 50–53); and “intermittent content skipping methods” (id. at col. 3, l. 2).” slip op. at 24

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusDecided for petitioner

    “7. Objective Indicia of Non-Obviousness Patent Owner argues, without citation to any supporting evidence, that “secondary considerations [of commercial success] support the validity of the claims.” PO Resp. 61. Objective criteria, such as commercial success, constitute independent evidence of non-obviousness. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2013). The objective indicia, however, must establish a nexus with the claimed subject matter. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). Here, Patent Owner provides argument, but no evidence, of the alleged commercial success.8 See, e.g., PO Resp. 61 (“[s]ince 2001, [Patent Owner] has had gross sales of $21 million”). Patent Owner also fails to provide any evidence of the relevant market share, that the sales were due to the claimed navigation objects as argued, or that the alleged commercial success is due to the patented invention rather than other factors.” slip op. at 32

  Patent outcomesUS 7,543,318 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,543,318
• Ricoh Americas Corporation / Xerox Corporation v. MPHJ Technology Investments, LLCSome claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00302 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–5 and 7–11 are unpatentable because the XNS Manual anticipates them; Petitioner did not show that the XNS Manual or Salgado anticipates claim 6.

  RulingsFinal written decision

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

    “Accordingly, a “software application” is a program, or group of programs, which operate together in a system to perform a function or functions, and the programs can be stored in a variety of places on a variety of devices, and operate in a distributed manner. An application may include software and hardware and performs a function or functions.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner’s arguments are not persuasive. As explained in the Overview section, the application layer itself contains multiple protocols for each application, i.e., mailing, printing, filing, and gateway access. See Ex. 1002, 14–16, Fig. 2-4. Even if lower layer protocols do not “disturb[]” upper layer protocols, as Patent Owner contends, and even if an application layer does not contain multiple protocols (which Patent Owner does not contend), different layers of protocols generally communicate with, or at least “use the resources of,” lower layers through “interfaces.” Id. at 14, 11 (“[A] commonly-accepted perspective is that the functions of one layer use the resources of the lower layers to complete their assigned tasks.”). In any event, the application layer protocols comprise several types of application protocols. Id. at 15 (Fig. 2-4), 16.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTION TO EXCLUDE Patent Owner moves to exclude Dr. Melen’s testimony on re-direct during his deposition. Paper 40. We do not consider any of the re-direct testimony, rendering the motion moot. Therefore, we dismiss it.” slip op. at 49

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “Even if Patent Owner’s assertions raise doubt as to Dr. Melen’s use of the XNS Manual to support his opinion that it anticipates claim 6, see id. at 9–12, Patent Owner does not show how this translates to undermining Dr. Melen’s opinion regarding the other claims. Throughout his analysis of the XNS Manual, Dr. Melen’s declaration provides specific and accurate citations to the XNS Manual (Ex. 1002), supporting his opinion and showing that he relies on the XNS Manual’s disclosure. See Ex. 1008 ¶¶ 29–47. In addition, because Petitioner has not shown that the XNS Manual or Salgado anticipates claim 6, Dr. Melen’s opinion about claim 6 is not of significant consequence. In reciprocal fashion, Petitioner maintains that “the Board should give no weight to Mr. Weadock’s Declaration.” Pet. Reply 7–8. Mr. Weadock’s testimony is not necessary to reach our decision with regard to claim 6, and we did not consider it in reaching the decision about claim 6. Given the finding of anticipation of claims 1–5 and 7–11, the issue is moot. Nevertheless, as this Final Decision implies, we afforded Mr. Weadock’s declaration and Dr. Melen’s declaration due weight in reaching the finding that the XNS Manual anticipates claims 1–5 and 7–11.” slip op. at 50

  Patent outcomesUS 7,986,426 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 7,986,426
• Hewlett-Packard Co. v. MPHJ Technology Investments, LLCSome claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00309 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–12, 14, and 15 are unpatentable as anticipated by Cotte; Petitioner did not show claim 13 unpatentable over Cotte or SJ5.

  RulingsFinal written decision

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

    “In our Institution Decision, we interpreted phrases of the type “at least one of A and B” and “at least A and B” in the alternative, i.e., “one or more A or B.” Dec. on Inst. 11. The parties do not challenge this interpretation. Patent Owner agreed with it during the oral hearing, stating that “as Petitioner stated, these are alternative claim elements. Patent Owner takes no issue with that interpretation, that either - - that claim element 1.3 [at least one input module] and 1.4 [at least one module communicable] are claimed in the alternative.” Tr. 31:6–9 (see supra claim 1). Patent Owner’s declarant, Mr. Weadock, also agrees with this general construction outlined in the Petition. See Ex. 2002 ¶ 17.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The record shows that Mr. Wibbels possesses “at least . . . ‘ordinary skill in the art’” (Ex. 1005 ¶ 20): the level of ordinary skill in the art of the ’381 [Patent] at the time of the effective filing date is a person with a bachelor of science degree and two years experience in research or development (e.g., engineering, product development, requirements analysis) in fields or industries pertinent to the art (e.g., digital imaging systems, such as scanners or printers). With more education, for example post-graduate degrees and/or study, less industry experience is needed to attain an ordinary level of skill. Id. ¶ 19. The claims of the ’381 Patent generally recite systems for processing and transmitting electronic images with “counterparts” in conventional printing systems. The ’381 Patent Specification also summarizes the disclosed invention as involving C-level software. See Ex. 1001, col. 3, ll. 35–67. Firmware skill, contrary to Patent Owner’s arguments, skill in creating computer algorithms, and other languages, including C-level, represent relevant skill. Mr. Weadock testifies that the requisite level of skill incudes experience in “printing, networking, scanning, and e-mail.” Ex. 2002 ¶ 15. Patent Owner acknowledges that Mr. Wibbels had “formal education” in software languages including C-level. PO Resp. 10. The record, including the prior art, which is directed to similar systems as the claimed invention, show that Mr. Wibbels has the requisite engineering education, and experience at least in imaging art, encompassing printer, scanning, and networking––“digital imaging systems.” Ex. 1005 ¶ 19. Mr. Wibbels invented systems as specified in several relevant patents generally involving computer based imaging. See Ex. 1012, 1–2. Patent Owner has not demonstrated through cross-examination or otherwise that Mr. Wibbels’s testimony is unreliable. Mr. Wibbels qualifies to aid in the Board’s understanding and his opinion is entitled to due weight.” slip op. at 23

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner’s assertions bolster the record evidence and show that Mr. Wibbels has experience and education in software. Patent Owner does not qualify “high level” software. Patent Owner had the opportunity to challenge the declaration of Mr. Wibbels through cross-examination and competing testimony. See In re TMI Litig., 193 F.3d 613, 692 (3d Cir. 1999) (“So long as the expert’s testimony rests upon ‘good grounds,’ it should be tested by the adversary process—competing expert testimony and active cross-examination.” (quoting Ruiz-Troche v. Pepsi Cola of P. R. Bottling Co., 161 F.3d 77, 85 (1st Cir.1998))). In addition to having a Master’s degree in engineering, Mr. Wibbels has been a “Distinguished Technologist/Strategist” at Hewlett Packard Company since 2004. Mr. Wibbels is “an inventor of 17 issued U.S. Patents” and has “spent approximately 20 years working on product development of HP scanning and printing solutions.” Ex. 1012, 1–2; Ex. 1005, 2.” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “claim 13. In its Reply, Petitioner contends that “[c]laim 13 . . . only references other modules in a manner that lacks antecedent basis.” Pet. Reply 7. Claim 13 references “said . . . modules,” however, Petitioner’s explanation falls short of explaining how a list of modules cannot be afforded patentable weight. In its Petition, Petitioner asserts that Cotte discloses a list of menu options “used at startup of a copier.” Pet. 46 (citing Ex. 1011, col. 15, ll. 36–42, col. 18, ll. 43–51, col. 22, ll. 53–61, col. 23, ll. 19–25; Ex. 1005 ¶ 308). Nevertheless, Petitioner does not point out the specific list or show it is read on start-up. For example, the menu cited at column 15, lines 36–42, appears to be generated in response to an interrupt from the input device. See Ex. 1011, col. 15, ll. 30–32. Mr. Wibbels appears to rely on inherency “in a Windows implementation,” Ex. 1005 ¶ 308, but Petitioner does not provide a citation or persuasive evidence that shows that Cotte employs a Windows implementation. See PO Resp. 31. On this record, Petitioner does not show how Cotte discloses the claimed list of modules, or the list read on start-up. Petitioner thus does not show by a preponderance of evidence that Cotte anticipates claim 13.” slip op. at 45

  Patent outcomesUS 6,771,381 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,771,381

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.