- Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Jul 15, 2024 · IPR2022-00734 · APJ Garth D Baer · IPR · Remand
On remand, the Board held claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 unpatentable as obvious over Heller and Quam, and over Heller, Quam, and Deaton.
RulingsRemand decision- RemandOther
“After our Final Written Decision (Paper 41) found no challenged claims unpatentable, the Director vacated our Decision and remanded the case back to the Board. Paper 43. With our authorization, Petitioner and Patent Owner filed Briefs on Remand. Paper 45 (“Pet. Remand Br.”), Paper 48 (“PO Remand Br.”). We have jurisdiction under 35 U.S.C. § 6. This decision is a Final Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we discuss below, we determine that Petitioner has proven by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’737 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4–5. 1 Because the parties agree that the challenged claims of the challenged patent have an effective filing date before March 16, 2013, we apply the pre- AIA (“America Invents Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). 2 Heller, “The Site-Model Construction Component of the RADIUS Testbed System,” in Proceedings: ARPA Image Understanding Workshop (1997) (Ex. 1004, “Heller”). 3 Quam, “The Radius Common Development Environment,” in RADIUS: Image Understanding for Imagery Intelligence (1997) (Ex. 1005, “Quam”). 4 U.S. 2006/0235611 A1, Pub. Oct. 19, 2006 (Ex. 1006, “Deaton”). Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. at 5. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that “this limitation should be interpreted broadly enough to encompass transmitting roof measurement information between components of the same computer system,” Pet. 11, whereas Patent Owner contends this limitation requires “transmitting the roof measurement information outside the roof estimate report system . . . such as to third-party systems.” PO Resp. 18. We agree with and adopt Petitioner’s construction. As we explained in IPR2016-00592, “[t]he claim term at issue requires only ‘transmit[ting]’ roof measurement information—it does not specify any particular source or destination for the transmission.” Ex. 1010, 20. In addition, the ’737 patent’s specification states that “the roof [report] generation engine 813 may transmit roof measurement information” and “some portion of the contents . . . of the [Roof Estimation System] 810,” which includes roof report generation engine 813, “may be stored on and/or transmitted over the other computer readable media 805.” Ex. 1001, 17:16–17, 16:13–17 (emphasis added), Fig. 8. Thus, because the ’737 patent’s specification expressly recognizes transmitting roof-estimate content between components of the same computer system, we maintain our construction from IPR2016-00592— that “transmission” includes transmission within the same system. See Ex. 1010, 20.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“The at-issue language appears in preambles, which as a general rule are not limiting unless they are “necessary to give life, meaning and vitality to the claim.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (internal quotation marks omitted). Because claims 16 and 26 describe structurally complete inventions without their preambles, we find the preambles not limiting. In addition, even if the preambles were limiting, the Petition’s analysis, along with Dr. Forsyth’s supporting declaration, plainly indicate that the Heller-Quam RADIUS system includes these generic computing features because RADIUS is a software platform executed by a processor on a computer that utilizes memory. See, e.g., Pet. 20 (explaining that RADIUS is a “workstation-based image processing system,” that “runs on both SunMicrosystems and Silicon Graphics RISC-based workstations,” “utilizes ‘memory,’” and “comprises over 200,000 lines [of code]”); see also Ex. 1041 ¶¶ 36, 38–40. Thus, we agree with Petitioner that the Heller-Quam system teaches the preambles in claims 16 and 26.” slip op. at 11
Patent outcomesUS 9,135,737 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,135,737 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Apr 8, 2024 · IPR2023-00030 · APJ James P Calve · IPR · Final written decision
Claims 1–22 are unpatentable under § 103 over the Wang-based and Chambers-Terrill-based combinations listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“The parties substantially agree on the level of ordinary skill in the art. Consistent with their proposals, we adopt Petitioner’s definition with Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant work or research experience also suffice. PO Resp. 7 (asserting that “Patent Owner’s description of the level of ordinary skill in the art is essentially the same as that of Petitioner”). This level of ordinary skill is consistent with the description of the relevant field of invention and background art in the ’941 patent (see Ex. 1001, 1:14–3:51) and the prior art. However, the outcome of our Decision would be the same under either party’s proposal.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner
“The ’941 patent describes prior art firewalls as “often used to provide segmentation within internal networks [to] help stop the spread of attacks” and provide “the ability to see and control internal network traffic [that] can be lost” when firewalls move to the cloud. Ex. 1001, 1:35–40 (emphasis added). Thus, prior art firewalls can control internal network traffic between endpoints within the network. Nor does the claim language exclude prior art firewalls from controlling endpoint to endpoint connections. 4. Conclusion We determine that the ’941 patent does not clearly and unmistakably disavow legacy firewalls. The sole use of that term in the specification does not identify what features are disavowed (Ex. 1001, 4:52–67; Reply 2), and the ’941 patent describes prior art firewalls as having features and functions that P/PoPs perform (id. at 3–5) including segmenting internal networks and controlling internal network traffic. Ex. 1001, 1:35–40; see Tr. 12:18–15:1. Thus, we determine that “controlling endpoint to endpoint connections within the enterprise network” has its ordinary and customary meaning, which may include controlling endpoint to endpoint connections via firewalls. We discuss this limitation further in Section III.D.2.c. infra.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“5. Analysis We find that Petitioner’s asserted modifications with Pasdar would have improved Wang because Wang provided services at the firewall level, but Pasdar “implement[ed] these services at the P/PoP(s), offloading some tasks from individual firewalls and thus . . . enhancing performance.” Reply 17 (“Patent Owner ignores other benefits, like the flexibility and granular customization, that Pasdar’s P/PoP system would offer to Wang’s system.”). We find that Pasdar’s P/PoPs would customize Wang’s initial settings to enhance security as the network expands and would have allowed Wang’s distributed devices to leverage a single global perimeter policy for security, privacy, and application resiliency and availability as Pasdar teaches. Pet. 45 (quoting Ex. 1005 ¶ 31; citing Ex. 1002 ¶ 106); id. at 43–45; Reply 20. We agree with Dr. Lee’s testimony that a skilled artisan would have been motivated to add Pasdar’s functionalities to route communications to a P/PoP and customize a P/PoP’s security stack to Wang. Ex. 1002 ¶ 106. The upgrade would have improved Wang’s similarly and would have had a reasonable expectation of success by using Wang’s calls to modify a P/PoP’s security stack to implement a policy, and combining these known prior art elements according to their known functions would have yielded predictable results as Dr. Lee testifies. Id. ¶ 107. See KSR, 550 U.S. at 416.” slip op. at 35
Patent outcomesUS 10,826,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,826,941 - Meta Platforms, Inc. v. Almondnet, Inc.All claims unpatentablePTAB · Mar 13, 2024 · IPR2022-01436 · APJ Lynne H Browne · IPR · Final written decision
Claims 11, 13–16, 19, and 20 are unpatentable: the Board found them obvious over the stated Rosenberg combinations, reaching neither Merriman ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention of the ’582 Patent “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 12. (citing Ex. 1002 ¶¶ 10–14). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not challenge this definition of the level of skill. PO Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “does not believe an express claim construction is necessary at this time for this IPR” and Patent Owner “agrees that claim construction is not necessary to resolve any issue . . . and that the plain and ordinary meaning of the claim language should be applied.” See Pet. 13 (citing Ex. 1002 ¶ 37); PO Resp. 6. We agree with the parties that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“(5) Discussion of Limitation (b) We agree with Petitioner and find that Rosenberg meets limitation (b) under either theory advanced in the Petition and credit the testimony of Dr. Schmandt that Rosenberg discloses automatic URL redirection as required by this limitation. Ex. 1002 ¶ 117. During oral argument, Petitioner noted that “[t]he specific embodiment in Rosenberg [that] is being relied on which uses frame tags” discloses URL redirection and argued that “[t]he fact that you could bypass [URL redirection] with an edge case air scenario where maybe you can type a URL directly . . . doesn’t prevent [Rosenberg] from meeting the claim limitation.” Tr., 16:25–17:4. Even if we assume for both theories that Patent Owner is correct that Rosenberg discloses instances where the partial profile is received without URL redirection, that does not negate the fact that Rosenberg discloses instances wherein the partial profile is received as a result of automatic URL redirection. Ex. 1003, 5:36–38, 8:56–68. We agree with Petitioner that Rosenberg’s disclosure of such instances is sufficient to meet the requirements of limitation (b) because “prior art that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.” Hewlett-Packard Co., 340 F.3d at 1326.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner’s argument that Petitioner’s reasoning in support of its challenge only applies to two servers is undermined by Dr. Sherwood’s testimony that “a POSITA would seek to create a system that could have been scaled to an arbitrary number of servers, because Rosenberg, Zeff, and Sterne all teach the desirability of such scaling.” Ex. 2001 ¶ 59. Patent Owner’s argument also ignores the fact that Rosenberg repeatedly discloses that its method can be applied to multiple servers. See, e.g., Ex. 1003, 4:16– 19. Moreover, Patent Owner’s argument assumes that one of ordinary skill in the art would not have known how to implement Rosenberg’s method with more than one server. Such arguments are unconvincing, because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. (b) Alleged Additional Reasons Why Petitioner’s Reasoning Lacks Rational Underpinning Regarding Patent Owner’s contention that “the Petition’s ‘visible frame’ approach significantly increases visual clutter,” we agree with Petitioner that this argument does “nothing more than confirm the unremarkable fact that the frame tag embodiment, as with almost all user interface decisions, would have offered both benefits and trade-offs.” PO Resp. 26; Pet. Reply 10. We credit Dr. Schmandt’s testimony that “[a]n ordinarily skilled artisan would thus have been motivated, depending on the needs of the particular system, to employ the frame tag embodiment in Rosenberg to obtain benefits not offered by the other disclosed alternatives.” Ex. 1019 ¶ 23. We further credit Dr. Schmandt’s testimony that any “so-called increase in ‘visual clutter’ also results in an increase in the amount of usable information that can be displayed to the user within the browser window.” Id. ¶ 24.” slip op. at 37
Patent outcomesUS 8,244,582 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,244,582 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Mar 6, 2024 · IPR2022-01587 · APJ James P Calve · IPR · Final written decision
Claims 1–8 and 11–18 are unpatentable as obvious under § 103 over the asserted combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review of claims 1–8 and 11–18 (the “challenged claims”) of U.S. Patent No. 10,237,282 B2 (“the ’282 patent”) (Ex. 1001). Paper 2 (“Pet.”), 1. Fortinet, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying the standard in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims on all grounds asserted in the Petition. Paper 9 (“Dec. Inst.”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“3. Motivation to Combine and Expectation of Success Petitioner asserts a skilled artisan would have combined Nagayama” slip op. at 19
Patent outcomesUS 10,237,282 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,237,282 - Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Jan 9, 2024 · IPR2022-01090 · APJ Garth D Baer · IPR · Final written decision
Claims 1–42 and 46–66 are unpatentable as obvious over Littleworth, Linder, Middlebrook, and Nishitani; claims 5, 23, and 38 on the Heller ground were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4. Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. Although Patent Owner presents its own formulation, see PO Resp. 23, Patent Owner notes that “there does not appear to be any meaningful distinction between” the parties’ formulations. PO Sur-reply 29– 30. We adopt Petitioner’s description as it is consistent with the prior art and ’436 patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Our decision would not change under either party’s definition of the level of ordinary skill.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not propose a construction for this limitation. We agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“B. WHETHER LITTLEWORTH AND LINDER ARE PRIOR ART Patent Owner asserts Petitioner failed to demonstrate that Littleworth and Linder are prior art. PO Resp. 9–19; PO Sur-reply 9–11. We addressed this issue based on the same arguments in IPR2022-01009. See PO Resp. 9– 19; Pet. Reply 31–35; IPR2022-01009, Paper 28 at 21–27, 28–31. As we explained, the evidence of record supports that Littleworth and Linder were publicly available before the critical date. IPR2022-01009, Paper 28 at 25– 27, 31. Thus, for the same reasons explained in IPR2022-01009, we maintain Petitioner has shown sufficiently that Littleworth and Linder were publicly available before the critical date.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“been motivated to correlate the images described in Littleworth based on the selected control points in order to allow the images to be utilized in the threedimensional model generation process, as taught by Linder.” Pet. 29. Patent Owner argues that one of ordinary skill would not have been motivated to combine Littleworth and Linder as Petitioner proposes because Linder is limited to corresponding stereoscopic images and would not have been suitable for correlating Littleworth’s non-stereoscopic imagery. PO Resp. 40–46. We addressed this issue based on the same arguments in IPR2022-01009. See PO Resp. 40–46; Pet. Reply 10–22; IPR2022-01009, Paper 28 at 48–57. As we explained there, the evidence of record, including Dr. Forsyth’s testimony and relevant passages from Linder, supports that Linder’s correlation method applies more broadly than to just stereoscopic images, and none of the additional material Patent Owner cites undermines Petitioner’s proposed combination. See IPR2022-01009, Paper 28 at 52–54, 56–67. Thus, for the same reasons explained in IPR2022-01009, we maintain Petitioner has articulated sufficient rationale to support that its proposed combination of Littleworth and Linder would have been obvious.” slip op. at 19
Patent outcomesUS 8,078,436 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,078,436 - Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Dec 14, 2023 · IPR2022-01009 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 2, 7, 8, 21, 22, 24, 25, 27, and 29 are unpatentable as obvious over Littleworth, Linder, and Middlebrook.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the foregoing reasons, we find that Petitioner has made a” slip op. at 57
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“support the conclusion that Linder has no applicability to Littleworth. For example, Dr. Bajaj references Linder’s example on page 11 of a series of images taken by an airplane and “photographed strip by strip, turning around the aircraft after every strip, so that the strips are taken in a meander-like sequence.” Ex. 2010 ¶¶ 65, 67 (citing Ex. 1012, 10–11). Dr. Bajaj points to Linder’s statement that “[t]he two images of each model have a longitudinal overlap of approximately 60 to 80%,” “neighbouring strips have a lateral overlap of normally about 30%,” and that “this is not only necessary for stereoscopic viewing but also for the connecting of all images of a block within an aerial triangulation.” Id. This portion of Linder, however, is only an example, and merely illustrates that there needs to be a certain amount of overlap between the images in order to correlate them. It is consistent with Littleworth, which also contemplates that the overlapping images are correlated by identifying and coordinating “suitable control points” among the images “to create the three-dimensional model.” Ex. 1005, 755–756; see Ex. 1028 ¶¶ 34–35, 37.” slip op. at 54
- Obviousness (§103) › Analogous artAnalogous artUnpatentable
“support the conclusion that Linder has no applicability to Littleworth. For example, Dr. Bajaj references Linder’s example on page 11 of a series of images taken by an airplane and “photographed strip by strip, turning around the aircraft after every strip, so that the strips are taken in a meander-like sequence.” Ex. 2010 ¶¶ 65, 67 (citing Ex. 1012, 10–11). Dr. Bajaj points to Linder’s statement that “[t]he two images of each model have a longitudinal overlap of approximately 60 to 80%,” “neighbouring strips have a lateral overlap of normally about 30%,” and that “this is not only necessary for stereoscopic viewing but also for the connecting of all images of a block within an aerial triangulation.” Id. This portion of Linder, however, is only an example, and merely illustrates that there needs to be a certain amount of overlap between the images in order to correlate them. It is consistent with Littleworth, which also contemplates that the overlapping images are correlated by identifying and coordinating “suitable control points” among the images “to create the three-dimensional model.” Ex. 1005, 755–756; see Ex. 1028 ¶¶ 34–35, 37.” slip op. at 54
Patent outcomesUS 8,670,961 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,670,961 - Meta Platforms, Inc. / Amazon.Com, Inc. et al. v. Almondnet, Inc.All claims unpatentablePTAB · Nov 28, 2023 · IPR2023-00384 · APJ Kristen L Droesch · IPR · Final written decision
Claims 9–12 are unpatentable under § 103 over Meyer, Zeff, Edlund, and Fisher; the Board did not reach the alternative ground adding Tittel.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com Services LLC, Inc. filed a motion for joinder and a petition in IPR2023-00384, which were granted. Accordingly, Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com Services LLC have been joined as a petitioner in this proceeding.” slip op. at 1
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not agree with Patent Owner’s construction for “automatically with the BT computer system.” Under Phillips, the starting point for the analysis is the language of the claims themselves. See Phillips, 415 F.3d at 1314. Claim 9 recites “automatically with the BT computer system” and does not otherwise recite or require the acts recited in the claims that follow, such as “arranging for a third party computer system . . . to electronically tag a first computer of a first visitor visiting a website . . .” to be performed in whole or part by the BT computer system. Accordingly, based on the record evidence, we decline to adopt Patent Owner’s proposed construction for “automatically with the BT computer system.” As demonstrated in the analysis below, we need not further explicitly construe “automatically with the BT computer system” to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“provide support for its construction, we do not agree that the proposed construction for “profile information” “derives directly from the specification of the ’615 Patent.” Patent Owner’s proposed construction has a broader in scope than the ’615 Patent Specification disclosures cited by Patent Owner as support. Without explanation, Patent Owner’s proposed property” and “demographic information about a visitor to a media property” (PO Resp. 7–8) (emphasis added), while the cited ’615 Patent Specification discloses that the “visitor’s profile “could be the observed behavior of the visitor on the media property, demographic information collected on the media property.” Ex. 1001, 3:37–44 (emphasis added); see also, e.g., Ex. 1001, 4:16–21, 4:64–67. In other words, without explanation, Patent Owner’s proposed construction for “profile information” encompasses the observed behavior, in general, of a media property visitor and the demographic information, in general, about a media property visitor, and is therefore broader than the cited ’615 Patent Specification, which more narrowly discloses the visitor’s observed behavior on the media property and the visitor’s demographic information collected on the media property. Patent Owner does not direct us to disclosure in the ’615 Patent Specification to support the full scope of Patent Owner’s proposed construction for “profile information.” In sum, based on the record evidence, we decline to adopt Patent Owner’s proposed construction for “profile information,” because the broad scope of the proposed construction is not supported by Patent Owner’s citations to the ’615 Patent Specification disclosure. Consistent with the cited ’615 Patent Specification disclosures, we instead construe “profile information” as “the observed behavior of the visitor on the media property, demographic information collected on the media property, or both.”8” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNo construction neededDecided for petitioner
“system.” Under Phillips, the starting point for the analysis is the language of the claims themselves. See Phillips, 415 F.3d at 1314. The language of claim 9 does not include limitations precluding the later occurring transfer of any profile information as a result of tagging the first computer of a first visitor visiting a first website. See Ex. 1001, 14:7–40. We also agree with Petitioner’s arguments that the language of claim 9, by use of the transitional phrase “comprising,” does not preclude the occurrence of “transferring to the third party computer system any profile information” after the step of “arranging for a third party computer system . . . to electronically tag a first computer of a first visitor visiting a first website, which occurs “at a first time.” See id. We also do not agree with Patent Owner’s arguments that the ’615 Patent Specification supports its construction. Although Patent Owner directs attention to the ’615 Patent Specification disclosures that the BT computer company stores a visitor’s collected profile information and does not transfer it to the second media property, but asks the second media property to tag the visitor or arrange for a tag to be placed (see PO Resp. 10; Ex. 1001, 9:47–54), and further discloses that the BT company has no economic incentive to transfer profile information to the second media property (see PO Resp. 11; Ex. 1001, 9:54–65), these disclosures do not provide sufficient support for Patent Owner’s requirement that “arranging for a third party computer system . . . to electronically tag a first computer of a first visitor visiting a first website” must not result in transfer of visitor profile information to the third party computer system. See PO Resp. 10–11.” slip op. at 16
Patent outcomesUS 9,830,615 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,830,615 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - Nearmap US, Inc. v. Pictometry International Corp.All claims unpatentablePTAB · Oct 20, 2023 · IPR2022-00733 · APJ Garth D Baer · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Kennedy, Florance, and Kreft; the Board did not reach the two alternative obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. PRELIMINARY MATTERS A. LEVEL OF ORDINARY SKILL Petitioner contends a person of ordinary skill in the art at the time of the ’880 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 7. Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. The plain meaning of the limitation at issue requires only displaying (“providing visual access”) to images that have come from an aerial image database (“images of an aerial imagery database”). As Petitioner notes, however, nothing in the term’s plain language requires accessing a database. Id. Moreover, as Petitioner notes, the doctrine of claim differentiation undermines Patent Owner’s construction because dependent claim 3 expressly recites the database-access step Patent Owner seeks to add to claim 1, which does not have that language. Id. at 5. See, e.g., InterDigital Commc’ns, LLC v. ITC, 690 F.3d 1318, 1324 (Fed. Cir. 2012) (“The doctrine of claim differentiation is at its strongest in this type of case, ‘where the limitation that is sought to be “read into” an independent claim already appears in a dependent claim.’” (quoting Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)). Thus, for the reasons above, we agree with Petitioner that the claimed “providing visual access to one or more oblique images of an aerial imagery database” step in claim 1 does not require accessing an aerial imagery database to retrieve the one or more oblique images.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner because even if Florance addresses accuracy in pre-defined geographic-search areas rather than images, that does not undermine Petitioner’s general contention that using Florance’s method (i.e., moving a marker from a preliminary position to a property’s center) would ultimately improve accuracy and exclude unwanted properties in Kennedy’s oblique images. Likewise, even if Kennedy never asserts that location information is often inaccurate, that does not undermine Petitioner’s rationale because Petitioner’s reason to combine references need not be explicit in the prior art. See KSR, 550 U.S. at 419. Given Petitioner’s accuracy-improvement rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that including Florance’s movable markers in Kennedy’s system would have been obvious to one skilled in the art. See id. at 418, 419.” slip op. at 13
- BurdenFwd all claims unpatentableUnpatentable
“Other than the arguments addressed above, Patent Owner does not additionally challenge Petitioner’s obviousness showing based on Kennedy, Florance, and Kreft. We have reviewed Petitioner’s arguments and evidence and, based on that analysis, we find Petitioner has shown by a preponderance of the evidence that claims 1–20 would have been obvious over Kennedy, Florance, and Kreft.” slip op. at 16
Patent outcomesUS 8,542,880 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,542,880 - Metacluster LT, Uab v. Bright Data Ltd.All claims unpatentablePTAB · Oct 4, 2023 · IPR2022-00687 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–14, 16, 17, 20–24, and 26–32 are unpatentable as obvious over Kocherlakota, alone or with RFC 1122; the Board did not reach the Cohen ground.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“record supports the district court’s construction for “first server” as “server that is not the client device or the web server” that we find to apply here in view of the full record. Conversely, we find that the evidence of record does not support Patent Owner’s position that a “first server” is a “server that is not a client device.” a. Claim Language Under Phillips, the starting point for our analysis is the language of the claims themselves. See Phillips, 415 F.3d at 1314. In claim 1, the steps of the method are performed “by the first server.” Ex. 1001, 19:23–24; see PO Resp. 18 (citing Ex. 2041 ¶ 87). In steps 1[a], the 1[e] of claim 1, the first server, “receiv[es], from the first client device, the first URL,” and “receiv[es], from the first client device, the second URL.” See Ex. 1001, 19:25, 19:33. Consistent with the district court’s claim construction for “first server” as “server that is not the client device or the web server,” which we find applies here, steps 1[a] and 1[e] of claim 1 confirm that the first server is not the first client device.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art as of October 8, 2009[]—the ’622 Patent’s earliest claimed priority date—would have had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems. The prior art and the ’622 Patent also evidence this level of ordinary skill. Here, the background technology described in Section VII [of the Petition] and the prior art described in Section IX [of the Petition] demonstrate that a [person or of ordinary skill in the art] would have been familiar with the underlying principles of Web, Internet, network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols. Pet. 12 (citing Ex. 1002 ¶¶ 33, 34, 36). Patent Owner asserts that a person of ordinary skill in the art “would, as of 10/8/2009, have a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” PO Resp. 2 (citing Ex. 2041 ¶ 25). According to Patent Owner, “Patent Owner’s analysis herein does not change under the Board’s preliminary definition of a [person of ordinary skill in the art].” Id. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’622 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 8
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (emphasis omitted)). In other words, a presumption of nexus is appropriate “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand, “‘[w]hen the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process,’ the patentee is not entitled to a presumption of nexus.” Id. Additionally, “[a] finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations.” Fox Factory, 944 F.3d at 1373. Even in the absence of a presumption, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74.” slip op. at 47
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia outweighedDecided for petitioner
“c. Commercial Success In any event, even if Patent Owner established nexus, which we do not find, Patent Owner’s evidence of commercial success is lacking. For example, Patent Owner relies on the testimony of Dr. Williams to support its assertion of $22,136,000 revenue in the year 2021. See PO Resp. 75 (citing Ex. 2041 ¶ 271). Dr. Williams’s does not provide an underlying factual basis for this testimony, and, therefore, it is entitled to little weight. See Ex. 2041 ¶ 272; 37 C.F.R. § 42.65(a). In addition, Patent Owner fails to explain or otherwise allege that its advertising of “enterprise-grade scaling,” “770,000+ Datacenter IPs” “99.99% success rate” and “ #1” rating constitutes evidence of commercial success. See PO Resp. 75; PO Sur-reply 26; Ex. 2041 ¶ 270; Ex. 2039, 1–2, 5. d. Conclusion For the reasons explained above, we conclude that Patent Owner’s evidence purportedly showing commercial success is insufficient because it does not show nexus with the claimed invention. Thus, the objective indicia of nonobviousness is insufficient to outweigh Petitioner’s evidence of obviousness of challenged claims 1, 14, 17, 20–24, and 27–32 on the basis of Kocherlakota. Accordingly, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 1–7, 10, 14, 16, 17, 20–24, and 26–32 would have been obvious over Kocherlakota. 5. Summary After considering the parties’ arguments, the entire record, and weighing the objective indicia of nonobviousness, we determine that Petitioner’s showing of obviousness is strong and outweighs the minimally weighted evidence of commercial success. Accordingly, based on the entire record, Petitioner has established by a preponderance of the evidence that claims 1–7, 10, 14, 16, 17, 20–24, and 26–32 are unpatentable under 35 U.S.C. § 103 over Kocherlakota. E. Challenge to Claims 8, 9, and 11–13 over Kocherlakota and RFC 1122” slip op. at 53
Patent outcomesUS 11,190,622 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,190,622
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.