• Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentable
  PTAB · Aug 1, 2024 · IPR2020-01504 · APJ Scott B Howard · IPR · Remand

  On remand, the Board held claims 1–20 unpatentable as obvious over Wedekind and Ehlers and denied Petitioner’s motion to exclude Dr. Palmer’s testimony.

  In the decision

  …is not whether . . . the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Patent Owner further argues that “[e]ven if Ehlers did…

  RulingsRemand decision

  • RemandOther

    “Circuit held that we erred in construing limitation 1m. According to the Federal Circuit, In sum, both the claim language and the specification support a broader construction than the Board accorded the [1m] limitation. The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. We agree, then, with Google’s proposed construction, which simply “require[s] that each of the five inputs be used at some point during the determination of the first time prior to said target time.” Appellant Br. 52 (emphasis and quotation marks omitted). Id. at 1059 (alteration in original). The Federal Circuit further ordered that we “apply this construction on remand.” Id. Following the issuance of the mandate, we held a conference call with the parties. See Paper 51, 2 (Order on Conduct of Proceedings on Remand). As noted in the previous paragraph, the Federal Circuit instructed us to apply Petitioner’s construction for limitation 1m on remand. Google, 92 F.4th at 1059. Because the construction was implicitly argued in the Petition, the parties had notice and opportunity to be heard. Paper 51, 5. Therefore, in accordance with PTAB Standard Operating Procedure 3,4 we “determine[d] that additional briefing [was] not warranted in this proceeding.” Id. at 4.5 We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a 4 Available at https://www.uspto.gov/sites/default/files/documents/ptab_ sop_3-2023-oct.pdf. 5 Neither party requested to submit additional evidence or have an oral hearing on remand. Ex. 3002 (Email from the parties to the Board). unpatentable.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the one hand, Patent Owner’s formulation is attorney argument without any supporting evidence. See PO Resp. 5–6. Although not cited in the Response, when Dr. Palmer testifies to the level of skill in the art, he opinion: EcoFactor contends that a person of ordinary skill in the arts at the time of the invention would have had a (a) bachelor's degree in engineering, computer science, or a comparable field of study, and (b) at least 2 years of professional experience in electronic thermostats, HVAC controls, building energy management and controls or other similarly relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa. Ex. 2002 ¶ 22 (emphasis added). It is well settled that mere attorney arguments and conclusory statements that are unsupported by factual evidence are generally entitled to no probative value. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney’s argument is no substitute for evidence.”). On the other hand, Petitioner’s proposal is supported by Mr. Shah’s testimony. See Pet. 26 (citing Ex. 1002 ¶¶ 26–27). Because Mr. Shah’s testimony is based on his years of experience, we give it some weight. See Ex. 1002 ¶¶ 2–10. Accordingly, we are persuaded that Petitioner’s formulation, except for the qualifier “at least,” is correct.9” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “After briefing, we issued an order inviting supplemental briefing regarding the preambles of the challenged claims. Paper 28. In the Order, we proposed that the preamble of each of the challenged claims was not limiting. Id. at 2–3. In supplemental briefing, both Petitioner and Patent Owner agreed with that construction. PO Claim Constr. Br. 1; Pet. Claim Constr. Br. 5. We adopt the parties undisputed construction that the preamble of each of the claims is not limiting. In doing so, we conclude that the preamble is not limiting because it is “only a statement of purpose and intended result” and “[t]he expression does not result in a manipulative difference in the steps of the claim.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375–76 (Fed. Cir. 2001).” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “s) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Wedekind and Ehlers. 4. Analysis of Claims 2–4, 6–20 Petitioner argues that the combination of Wedekind and Ehlers teaches the limitations recited in claims 2–4 and 6–20 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 61–62, 64–75. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Shah. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 61

  Patent outcomesUS 8,498,753 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,498,753
• Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedAll claims unpatentable
  PTAB · Jun 5, 2024 · IPR2021-00237 · APJ Iftikhar Ahmed · IPR · Remand

  Claims 1–12 are unpatentable as obvious over Wiltshire and Saha, with Chen or PC Magazine additionally applied to the specified dependent claims.

  In the decision

  …objective evidence of nonobviousness. 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…

  RulingsRemand decision

  • RemandOther

    “Petitioner filed a Notice of Appeal of the Final Written Decision with the Federal Circuit. See Paper 39. On October 13, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Sony, 2023 WL 6773879. The Federal Circuit found that our determination that Petitioner’s asserted reference Wiltshire does not disclose the “generating” limitation of claims 1 and 8 was not supported by substantial evidence. Id. at *2–4. The Court vacated our Final Written Decision and remanded for further proceedings consistent with the Court’s opinion. Id. at *5. After the Federal Circuit issued its mandate, we asked the parties to propose a procedure on remand. Ex. 3001, 2. The parties proposed an agreed-upon procedure to allow post-remand briefing with no additional evidence or expert declarations. Id. at 1. We issued an Order authorizing each party to file opening and responsive briefs. Paper 43. The parties then filed the following briefs: Petitioner’s Opening Brief Pursuant to Paper No. 43 (Paper 47, “Pet. Remand Br.”), Patent Owner’s Opening Brief on Remand (Paper 46, “PO Remand Br.”), Petitioner’s Response Brief Pursuant” slip op. at 3

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

    “6773879, at *4. The Federal Circuit concluded that was improper. As the Court explained, “the existence of those examples does not exclude other examples where new images are created,” and “[a]lthough both parties agree[d] the game Doom requires creating new images, [we incorrectly] determined that listing Doom in the specification was not a sufficient disclosure.” Id. Contrary to Patent Owner’s assertion, the logical conclusion from the Federal Circuit’s reasoning is that our finding that Wiltshire is silent as to the content of that compressed MPEG stream has now been rejected. We must “credit[] Wiltshire’s disclosure of applying its system to video games like Doom, which require ‘generating’ new images.” Id. Based on that reading of Wiltshire, Petitioner persuasively shows that the combination of Wiltshire and Saha teaches compressing those new images using MPEG and transmitting those as compressed frames. Dr. Fuchs testifies that a person of ordinary skill in the art would have understood from Wiltshire’s disclosure that “if the image is displayed or updated, it is then sent to the client in the form of a ‘video stream,” and that “[t]ransmitting the updated images as a video stream allows Wiltshire’s system to be used with the wide variety of games it contemplates, including arcade games (like Doom) that continually update images on the screen.” Ex. 1033 ¶ 46; see also id. ¶ 49 (“The video stream must be dynamically generated because Wiltshire system must be capable of playing real-time interactive games like Doom.”); Pet. Reply 13–16. We find Dr. Fuchs’s testimony persuasive and consistent with the Court’s guidance as to Wiltshire’s disclosure.” slip op. at 48

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

    “objection to excluding Exhibit 1024 from the record. Id. Accordingly, Patent Owner’s motion to exclude as to Exhibit 1024 is granted.” slip op. at 89

  Patent outcomesUS 10,681,109 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,681,109
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · May 30, 2024 · IPR2020-00712 · APJ James A Tartal · IPR · Remand

  Claims 3–6, 9–12, and 15–18 were not proven unpatentable because the petitioner failed to show the required two inputs in the asserted prior art.

  In the decision

  …objective evidence of nonobviousness. 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…

  RulingsRemand decision

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

    “The Specification of the ’148 patent states that “an alignment measurement may be made by measuring a value, e.g., current or voltage, associated with, e.g., proportional to, the current passing through [the] rechargeable power source.” Id. at 21:3–6. We therefore find that the Specification expressly identifies “current or voltage” as examples of “a value.” Id. In the FWD, we stated that “[a]lthough the ’148 patent makes clear that ‘a value’ may include, for example ‘voltage,’ we agree with Patent Owner that the two independent limitations should be construed such that the Value Limitation does not render superfluous the Signal Limitation or the Measured Voltage Limitation.” FWD 26. We further determined that “the Value Limitation and the Signal Limitation, as well as the Value Limitation and the Measured Voltage Limitation both require two separate inputs to the external power source.” Id. That determination is not at issue here. See Axonics, 75 F.4th at 1379–80 (stating that Petitioner did “not argue the Board erred in adopting the two-input claim construction”). 2. Additional Claim Terms We find no additional claim term requires express construction. See 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 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references . . . is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.3 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a value associated with current passing through the internal battery, as required by the Value Limitation, is not in dispute. Dr. Mihran, for example, states that “Schulman discloses that the sole input provided to the external power” slip op. at 34

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Patent Owner argues, and we agree, that the measured current through R9 is the only input to the external power source Schulman APO Sur-reply 14–15. Patent Owner further argues, and we further agree, that the voltage across output leads 51 and 52 of Schulman is not an input to the external power source separate from the measured current through R9 in Schulman. See APO Sur-reply 11–16 (citing, e.g., Ex. 1003 ¶ 75; Ex. 2002 ¶ 46; Ex. 1005, 6:35–38; Ex. 2010 ¶¶ 4–7). In support of Patent Owner, Dr. Mihran states that “[t]he voltage between nodes 51 and 52 is never provided to the external power source in Schulman.” Ex. 2010 ¶ 4. According to Dr. Mihran, “Schulman discloses that the sole input provided to the external power source that the external power source uses to automatically regulate its power output is the input that derives from the amount of current flowing through the current sampling resistor R9.” Id. ¶ 5 (emphasis omitted) (citing Ex. 1005, 4:45–53, 6:35–38; Ex. 2002 ¶ 46). Dr. Mihran further states as follows: My understanding of Dr. Panescu’s opinion is that he does not contend that the voltage between nodes 51 and 52 is ever sent to the external power source as an input, and instead simply asserts that if “the voltage across leads 51 and 52 exceeds a predetermined amount,” then the current through R9 increases, which in turn “causes the power supplied by the external power source to decrease.” (Ex. 1012 at ¶16.) This does not represent a separate input, however, because the input derived from the current flowing through the current sampling resistor R9 (i.e. the load modulation frequency of telemetry circuit 12, the components of which “form a free-running multivibrator”) is what Dr. Panescu also identifies as satisfying the first input, “a value associated with said current passing through said internal battery.” (Ex. 1012 at ¶14 (“when the current through the internal battery . . . increases above a predetermined target value, the current regulator turns on, increasing the current through current sampling resistor R9.”) operating conditions may influence the value” of the amount of current flowing through current sampling resistor R9, and the current through R9 is the “only value that is communicated to the external power source,” corresponding to a single input that “cannot satisfy both of the two inputs required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent.” Id. ¶ 6. Dr. Mihran further states as follows: I understand Dr. Panescu’s opinion to be that, because Schulman discloses that the current through R9 is used by the external charger to automatically vary its output, any “value” that influences the amount of current through resistor R9 is a “separate respective input[] used by the external power source as a basis for automatically varying its power output.” ([Ex. 1012 ¶14].) In other words, Dr. Panescu simply identifies a voltage across two points in the circuit that he claims affects the current through R9 and contends that that voltage satisfies one of the two required separate inputs based on its alleged indirect impact on the output of the external charger. This strained interpretation of the claims renders superfluous the two separate inputs to the external power source required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent: (1) “a value associated with said current passing through said internal battery” and (2) “a signal proportional to said current passing through said internal battery” (claims 3, 9, and 15) and “measured voltage associated with said current passing through said internal battery” (claims 6, 12, and 18). In any circuit, there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor. For example, in Schulman the current drawn by the stimulation portion of the implant circuit will influence the amount of current through R9. Dr. Panescu’s interpretation that a voltage or current at these components represents a “separate input” in Schulman is incorrect, because the sole input that is telemetered back to the external charger is the input derived from the amount of current flowing through R9.” slip op. at 35

  Patent outcomesUS 8,738,148 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,738,148
• Netflix Inc. v. Divx, LLCAll claims unpatentable
  PTAB · Apr 17, 2024 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Remand

  On remand, the Board held claims 1, 5, 8, 9, 13–15, 18, and 21–23 unpatentable as obvious over Zetts and Kaku, with claims 5, 18, and 21 also obvious over Zetts, Kaku, and Seo.

  In the decision

  …objective evidence of nonobviousness. 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…

  RulingsRemand decision

  • RemandDecided for petitioner

    “the Federal Circuit. Paper 49. On September 11, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Netflix, 80 F.4th at 1362. The Federal Circuit determined that we abused our discretion in finding that Petitioner had failed to articulate a field of endeavor. Id. at 1359. The Federal Circuit remanded to allow us to decide the “factual question of whether Kaku is directed to the same field of endeavor as the patent-in-suit.” Id. at 1361. The Federal Circuit, however, did not address the other three issues raised by Patent Owner since we did not decide those issues in the Final Written Decision and they were not presented for appeal. See generally Netflix.” slip op. at 3

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art In the Final Written Decision, we stated the following:” slip op. at 10

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

    “Petitioner has not shown that one of the prior art references is analogous to the claimed invention.” Final Dec. 9. On remand, the construction of this claim is an issue that must be decided to reach a conclusion on the patentability of the Challenged Claims of the ’792 patent.” slip op. at 12

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “1. Analogous Art – Field of Endeavor Before turning to Petitioner’s analysis of the claims, we address” slip op. at 29

  Patent outcomesUS 8,472,792 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,792
• Netflix, Inc. v. Divx, LLCAll claims unpatentable
  PTAB · Mar 21, 2024 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Remand

  On remand, the Board held claims 1–3, 5, 6, 10–12, 14, and 15 unpatentable as obvious over the asserted combinations of Chen and Grab-333 with Candelore or Kocher.

  In the decision

  …limitation 1[c] of claim 1. 6 Id. at 22–45. Even though the Petition includes citations to and discussion of Chen and Grab-333, we focused on Chen’s teachings because the parties’ arguments throughout the proceeding were centered on Chen and we did not read the Petition as presenting a combination…

  RulingsRemand decision

  • RemandOther

    “I. INTRODUCTION This case is on remand from the United States Court of Appeals for the Federal Circuit to address the patentability of claims 1–3, 5, 6, 10–12, 14, and 15 (“the Challenged Claims”) of U.S. Patent No. 9,184,920 B2 (Ex. 1001, “the ’920 patent). Netflix, Inc. v. DivX, LLC, No. 2022-1043, 2023 WL 3115576 (Fed. Cir. Apr. 27, 2023) (nonprecedential). For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims are unpatentable.” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” [Inst.] Dec. 12– 15. Additionally, we need not construe other claim terms to resolve the present controversy before us.” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 5, 6, 10, 12, 14, and 15 of the ’920 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 103

  Patent outcomesUS 9,184,920 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,920
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand

  The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.

  In the decision

  …main arguments raised by Patent Owner—whether Petitioner established that one of ordinary skill in the art would have been motivated to combine the teachings of the references as proposed by Petitioner with a reasonable expectation of success.6 Id. at 9–28. We did not decide two other issues…

  RulingsRemand decision

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

    “We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13

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

    “I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52

  • Strike new argumentNew argument disregardedDecided for petitioner

    “I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62

  • ExcludeMotion to exclude, grantedMixed

    “7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5

  Patent outcomesUS 10,225,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Intel Corporation v. Qualcomm IncorporatedAll claims unpatentable
  PTAB · Mar 21, 2023 · IPR2018-01334 · APJ Daniel J Galligan · IPR · Remand

  On remand, the Board held claims 1–9, 12, 16, and 17 unpatentable as obvious over the instituted prior-art combinations.

  In the decision

  …1001, 2:23–34, 4:43–47, 5:31–35). The Federal Circuit stated that, “[a]lthough the Board correctly noted that the specification describes prior art teaching of use of ‘temporary’ buffers, it did not explain precisely what ‘temporary’ means or how the 14 IPR2018-01334 Patent 8,838,949 B2…

  RulingsRemand decision

  • RemandOther

    “I. INTRODUCTION This case is on remand from the Court of Appeals for the Federal Circuit to address the patentability of claims 1–9, 12, 16, and 17 of U.S. Patent No. 8,838,949 B2 (“the ’949 patent,” Ex. 1001). See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 814 (Fed. Cir. 2021). For the reasons discussed below, we determine that Petitioner has proven by a preponderance of the evidence that claims 1–9, 12, 16, and 17 are unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”).” slip op. at 2

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

    “B. Claim Interpretation In this proceeding, we give the claims the broadest reasonable” slip op. at 9

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

  Patent outcomesUS 8,838,949 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,838,949
• Netflix, Inc. v. Divx, LLCSome claims unpatentable
  PTAB · Feb 3, 2023 · IPR2020-00052 · APJ Iftikhar Ahmed · IPR · Remand

  On remand, claims 1 and 17–19 are unpatentable as obvious over Vehviläinen; the Board did not reach anticipation.

  In the decision

  …condition to its “low-activity-block filtering scheme.” See Ex. 1002, 104 (quoting Ex. 1010, 8:43–56). 8 17 IPR2020-00052 Patent 8,139,651 B2 teachings). We are therefore not persuaded that the applicant broadly distinguished whether or not to apply a given filter, as argued by Patent Owner.…

  RulingsRemand decision

  • RemandOther

    “Federal Circuit. Netflix, 2022 WL 2298983 at *1. The Federal Circuit vacated our Decision as to claims 1 and 17–19 and remanded for further consideration of whether claims 1 and 17–19 are unpatentable in light of the court’s construction of a disputed limitation recited in claim 1. Id. at *7. The Federal Circuit affirmed our Decision as to claims 2 and 4, and thus, those claims are not before us on remand. Id. The parties proposed filing a joint brief, with six pages per side, limited to identifying the issues that remain on remand and identifying relevant portions of the existing record, without submitting any new evidence or arguments, and we authorized the joint brief. Paper 87; Ex. 1028. Accordingly, the parties filed a joint brief. Paper 88 (“Joint Brief”). For the reasons discussed below, we conclude, in view of the Federal Circuit’s claim construction and the complete record before us, that Petitioner has shown, by a preponderance of the evidence, that claims 1 and 17–19 are unpatentable.” slip op. at 3

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

    “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons below, we disagree with Patent Owner that the plain and ordinary meaning of “selecting a filter to apply” excludes determining whether or not to apply a given filter. We begin with the claim language at issue. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). When considering the language of the claim overall, the usage of “selecting a filter” in the claims does not in any way indicate whether the filter has to be selected from among multiple filters. Claim 1 recites “selecting a filter to apply to determined level of detail.” Ex. 1001, 13:20–22 (emphasis added). Patent Owner argues that “the claim language confirms that ‘selecting a filter’ means choosing from a number of alternative filters, not merely deciding whether or not to apply a filter,” (PO Resp. 34), but we see nothing in the claim language that suggests such a requirement. Patent Owner also points us to claim 19, arguing that selecting is not merely deciding whether to apply a filter, “since that determination is already made in [c]laim 19 by virtue of the initial sub-step of ‘exceed[ing] the threshold.’” Id. Again, we see nothing in claim 19 that suggests the determination of the threshold being exceeded requires a specific manner of filter selection. Instead, similar to claim 1, claim 19 recites: “when the level of detail exceeds the threshold, selecting a filter to apply to predetermined pixels.” Ex. 1001, 16:8–9. Thus, we are not persuaded that the claim language necessarily requires selecting a filter from among multiple filters. slip op. at 14

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

    “because Vehviläinen performs additional analysis before selecting a moderate or high activity filter, it does not teach selecting from among multiple filters. As discussed above, we do not agree with Patent Owner’s claim interpretation, and even if we did, we are persuaded that a person of ordinary skill in the art would have easily modified Vehviläinen’s filter selection to use a single area, e.g., the smooth area of Figure 5A, and a decision branch based on the level of detail for that single area. Vehviläinen discloses that “increasing the amount of selection branches makes the system more adaptive to the nature of the blocking effect but also increases control logic.” Ex. 1004, 8:15–27. Vehviläinen states that “[a] good embodiment,” but of course, “the invention can be utilized with less than three branches.” Id. at 8:18–21. Dr. Bove testifies that a person of ordinary skill in the art “would have been motivated to reduce complexity and the required control logic by using fewer branches, as taught by Vehviläinen, including for example just one branch, particularly for applications running on performance-constrained platforms such as low-end computer processors or mobile platforms, which often had constraints on thermal dissipation, power consumption, and cost.” Ex. 1003 ¶ 120 (citing Ex. 1004, 11:7–22). He further testifies that a person of ordinary skill in the art “would have been motivated to determine the level of detail for just the ‘smooth’ area and then select the smooth filter, if the area is smooth, or the high-activity filter otherwise.” Id. Dr. Bove illustrates that modification with the following pseudocode: if ( IsSmooth (Figure_5A) == TRUE) { Select (SmoothFilter); } else { Select (HighActivityFilter); } Id. He further testifies that such a modification would have been obvious and well within [a person of ordinary skill in the art’s] level of skill, and [such a person] would have had a reasonable expectation of success given that [the] modification involves a simple reordering of elements taught by Vehviläinen, the fact that Vehviläinen expressly teaches the have had with these basic filtering and thresholding techniques. Id. On this aspect, we credit Dr. Bove’s testimony because it is based on the express teachings of Vehviläinen and addresses a straightforward modification in view of those teachings.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “a) Patent Owner Has Not Established that It is Entitled to a Presumption of Nexus We determine that Patent Owner has not demonstrated a nexus between the evidence presented and claims 1 and 17–19. Patent Owner’s arguments and evidence are directed broadly to the DivX6 codec’s deblocking scheme and not specifically to the deblocking aspects covered by the challenged claims. We agree with Petitioner that the claimed features constitute only a small part of the commercial product and the two are far from being coextensive. See Pet. Reply 31 (citing Ex. 1017, 133:10–24; Ex. 1018, 34:4–35:1). As Dr. Bajaj explained, the “DivX [codec] included a lot of things” other than deblocking, and the DivX documentation details “only a fraction of the things that were there in the codec.” Ex. 1017, 133:10–24.” slip op. at 48

  Patent outcomesUS 8,139,651 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,139,651
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentable
  PTAB · Feb 3, 2023 · IPR2021-00044 · APJ Eric C Jeschke · IPR · Remand

  Claims 1–24 are unpatentable under §103 based on AAPA, Petersen, and Zilberman, and on other grounds shown in the decision.

  In the decision

  …above, Petersen is analogous art to the ’746 patent and thus, “a person of ordinary skill would reasonably have consulted . . . and applied [its] teachings in seeking a solution to the problem that the inventor was attempting to solve.” Heidelberger Druckmaschinen AG v. Hantscho Comm. Prod.,…

  RulingsRemand decision

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

    “Petitioner responds that (1) the phrase “closed case” should be construed as a “case that does not currently permit user passage or entry” and that (2) the term “permanently” need not be construed, but if it is, it means “in such a manner that one would not expect it to be removed in the normal course of use.” First Pet. Reply 5 (with emphasis to show differences from Patent Owner’s positions); Second Pet. Reply 6–7 (same except without “user” in (1)). For the reasons below, the record more strongly supports Petitioner’s construction of “closed case” and Patent Owner’s proposed construction of “permanently.”” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Resp. 41–42; First Pet. Reply 20. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 110–112, cited at First PO Resp. 41–43. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373 (2020).” slip op. at 65

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part

    “motion to consolidate the two proceedings, each of which challenges claims 1–24 of the ’746 patent. See First IPR, Paper 25; Second IPR, Paper 17. Over Patent Owner’s oppositions (First IPR, Paper 26; Second IPR, Paper 18), we granted in part the motions to consolidate, maintaining the two proceedings as administratively separate proceedings. First IPR, Paper 30; Second IPR, Paper 23. In the motions to consolidate, Petitioner also requested a good-cause extension of the one-year statutory deadline for the final written decision in the First IPR, which was granted. First IPR, Papers 28 & 29.” slip op. at 3

  Patent outcomesUS 8,155,746 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,155,746
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentable
  PTAB · Feb 3, 2023 · IPR2020-01016 · APJ Eric C Jeschke · IPR · Remand

  Claims 1–24 are unpatentable under § 103(a), based on the AAPA–Petersen–Zilberman and Crosby–Petersen grounds.

  In the decision

  …above, Petersen is analogous art to the ’746 patent and thus, “a person of ordinary skill would reasonably have consulted . . . and applied [its] teachings in seeking a solution to the problem that the inventor was attempting to solve.” Heidelberger Druckmaschinen AG v. Hantscho Comm. Prod.,…

  RulingsRemand decision

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

    “Petitioner responds that (1) the phrase “closed case” should be construed as a “case that does not currently permit user passage or entry” and that (2) the term “permanently” need not be construed, but if it is, it means “in such a manner that one would not expect it to be removed in the normal course of use.” First Pet. Reply 5 (with emphasis to show differences from Patent Owner’s positions); Second Pet. Reply 6–7 (same except without “user” in (1)). For the reasons below, the record more strongly supports Petitioner’s construction of “closed case” and Patent Owner’s proposed construction of “permanently.”” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Resp. 41–42; First Pet. Reply 20. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 110–112, cited at First PO Resp. 41–43. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373 (2020).” slip op. at 65

  • RemandFwd all claims unpatentableUnpatentable

    “challenges claims 1–24 of U.S. Patent No. 8,155,746 B2 (Ex. 10012, “the ’746 patent”), which is assigned to Patent Owner, Advanced Bionics AG. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of all of the challenged claims.” slip op. at 2

  Patent outcomesUS 8,155,746 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,155,746

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.