• Unified Patents, LLC v. Divx, LLCAll claims unpatentable
  PTAB · Jan 20, 2023 · IPR2021-01476 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1 and 10 are unpatentable as obvious over Biderman and Gigliotti; the Board did not reach the alternative Sood-based ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with streaming media applications or related fields (e.g., network applications),” where a “lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4-5 years).” Pet. 8 (citing Ex. 1003 ¶¶ 47–51). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. consistent with the ’987 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 8

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

    “construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). construction. Pet. 10; see generally PO Resp. We need not expressly construe any claim terms to decide the issues in this proceeding.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “artisan would have had reason to combine the teachings of Biderman and Gigliotti in the manner proposed by Petitioner. Pet. 23–28. Petitioner persuasively argues that a person of ordinary skill in the art would have been motivated to combine Biderman’s teachings of switching from one stream to another with Gigliotti’s teachings of ensuring the buffer is sufficiently full before switching because a person of ordinary skill in the art “would have recognized that, without a technique for measuring the amount of content in the buffer, Biderman’s client might switch to the second playlist content without sufficient content stored in the buffer, which might result in an Ex. 1019 ¶ 11; Ex. 1020 ¶ 13; Ex. 1003 ¶¶ 122–125). Petitioner’s contention that there would be a reasonable likelihood of success in doing so is supported by Dr. Reddy’s testimony. See Ex. 1003 ¶¶ 125–126 (citing Ex. 1009, 5).” slip op. at 40

  Patent outcomesUS 10,326,987 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,326,987
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18

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

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17

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

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 17, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 12–15, and 17–20 are unpatentable as obvious over the prior-art combinations; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’835 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 13

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

    “preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24

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

    “the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26

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

    “differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55

  Patent outcomesUS 7,292,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,292,835
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 17, 2022 · IPR2021-00985 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board held claims 1, 12–15, and 17–20 unpatentable as obvious, including over Hulkko and Gibson and over Gibson and Schiltz.

  RulingsFinal written decision

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

    “preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24

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

    “the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26

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

    “differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55

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

    “argument regarding the second alternative persuasive. In particular, the distinction Patent Owner seeks to draw between Hulkko and Gibson generally, does not undermine Petitioners’ argument and evidence that the particular structures proposed for combination are substantially similar, operate in a similar manner, and would have been expected, by one of ordinary skill in the art, to function predictably and with a reasonable expectation of success, once combined. Notably, we find particularly persuasive Hulkko’s teaching to use its switched capacitors as a mixer to perform down-conversion, which is the same function as Gibson’s mixers. See Ex. 1004, 5:39–49 (“switched capacitor switching elements . . . are used to implement the mixer 11 which directly demodulates the IF-signal into a base-frequency signal”). Accordingly, we find that the combination of Hulkko and Gibson teaches element [1B] and that one of ordinary skill in the” slip op. at 42

  Patent outcomesUS 7,292,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,292,835
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00781 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 3, 18, and 20 are unpatentable as obvious over Hogeg; claims 3, 7, 17, 20, 24, and 34 are unpatentable as obvious over Hogeg and Arujunan.

  RulingsFinal written decision

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

    “Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 22–25), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 25). We did not construe that term in the Decision on Institution (Dec. Inst. 27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end-users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).7 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11

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

    “Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 22

  Patent outcomesUS 10,108,986 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,108,986
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00780 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 are unpatentable as obvious over Hogeg.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11

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

    “Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 21–23), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 23). We did not construe that term in the Decision on Institution (Dec. Inst. 26–27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 19. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 19–20 (citing Parulski Pet. Decl. ¶¶ 173–174). Prior to institution, Patent Owner did not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. In the Decision on Institution, we adopted Petitioner’s proposed definition, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 26. In the Response, Patent Owner also does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp 10–11. We maintain the definition of the level of ordinary skill in the art adopted as of institution.” slip op. at 9

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

    “The record supports Petitioner’s argument that the system in Hogeg “targets a group of end-users” in that it assesses which of the users are, for example, at a specific location and then sends only those users a visual editing function relevant to the users’ location. For example, in a passage cited by Petitioner as to a “conditional selection process to select/distribute a subset of functions” (Pet. 33), Hogeg discloses that “if the positional data is indicative that the visual content was captured in New York, a visual content editing function which provides an overlay of the statue of liberty and/ or a sound overlay of the song New York [N]ew York may be provided.” Ex. 1004 ¶ 58, cited at Pet. 33. This system “target[s] a group of end-users” in New York based on sensor data in that other end-users—such as ones indicated as being in California—do not receive the New York overlay. Patent Owner attempts to distinguish Hogeg’s process in that the content editing functions are sent in response to image selection by the user. See PO Resp. 16 (“Thus, what Hogeg discloses is a process for sending content editing functions ad hoc based on the characteristics of specific pieces of content that are manually identified by a user. Nothing in Hogeg, however, teaches a system or process capable of targeting a group of end-users based on a sensor data condition from their mobile devices.”). This distinction, however, is not supported by the claims. Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 21

  Patent outcomesUS 10,108,986 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,108,986
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00779 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 1, 2, and 4–10 as obvious over Hogeg; claim 3 as obvious over Hogeg and Arujunan; and claim 11 as obvious over Hogeg and Svendsen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 23–24. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 186–187). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 7–8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’866 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “a network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 11 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:50–51. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 9–11.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “specification with persuasive testimony from the vantage point of one of ordinary skill in the art. See Pet. Reply 3–6; Parulski Reply Decl. ¶¶ 20–30. Mr. Parulski testifies that “other than this order of operations, claim 1 imposes no temporal limitation on when the received GPS location information was actually obtained by the mobile device (before it is sent to the server).” Parulski Reply Decl. ¶ 22. Mr. Parulski also testifies that the ’866 patent specification discloses obtaining location indications prior to any distribution of the processing function. Id. ¶¶ 26–28. We find Mr. Parulski’s testimony credible and persuasive because it finds support in the claim language and ’866 patent specification. Based on the foregoing, we decline to adopt Patent Owner’s proposed construction. Instead, we apply the ordinary meaning of the limitation, which does not require a location indication of each device at the time of distribution.7” slip op. at 15

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

    “We find, based on the complete record, that Petitioner has demonstrated by a preponderance of the evidence that Hogeg, as modified, satisfies the remaining limitations in claim 1. We also determine that Petitioner has adequately explained why one of ordinary skill in the art would have modified Hogeg and that there would have been a reasonable expectation of success. e. Conclusion as to Claim 1 “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a “any arguments for patentability not raised in the response may be deemed waived”). preponderance of the evidence, that claim 1 of the ’866 patent is unpatentable as obvious over Hogeg.” slip op. at 42

  Patent outcomesUS 9,639,866 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,639,866
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00778 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–12 are unpatentable: claims 1, 2, and 4–12 as obvious over Hogeg, and claim 3 as obvious over Hogeg and Arujunan.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’412 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:3–4 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As Patent Owner persuasively argues, this language expresses an intent to define the “distribution rule” limitation. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 22 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in claim 1 in the manner proposed” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “said network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 13 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:15–17. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 11–13. Second, none of the other language in the claim addresses when the mobile devices acquire a GPS location indication. Patent Owner relies on later claim language in support of its construction that requires forwarding the processing function to a “mobile device having a GPS location indication which matches said geographic location,” but that limitation does not address when the device acquires the GPS location indication. See Ex. 1001, 23:27–29. The “device having a GPS location indication” refers back to one of the plurality of devices providing a GPS location indication without further modifying that limitation, and the “geographic location” refers back to a “distribution rule defining a geographic location,” which does not refer to when a device acquires a GPS location indication. See id. at 23:13–17, 23:27–29. Third, the specification of the ’412 patent does not require reading the limitation as Patent Owner proposes. As Petitioner points out, the ’412 patent depicts several steps in its process and suggests that the devices may acquire GPS location indications at the time a user captures images, which occurs prior to any time of distribution. See Pet. Reply 6–7 (referring to Ex. 1001, Fig. 7) (citing Parulski Reply Decl. ¶¶ 36–38). This disclosure conflicts with Patent Owner’s construction, and shows that the specification lacks any clear disclosure tying the device GPS location indication to the time of distribution. Patent Owner does not respond to this argument in its Sur-reply. See PO Sur-reply 6–8.” slip op. at 16

  • 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 Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a preponderance of the evidence, that claim 1 of the ’412 patent is unpatentable as obvious over Hogeg.” slip op. at 51

  Patent outcomesUS 9,355,412 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,355,412
• Platform Science, Inc. v. Omnitracs, LLCAll claims unpatentable
  PTAB · Jun 2, 2022 · IPR2021-00187 · APJ Frederick C Laney · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Moses; the Board did not reach the alternative Levesque ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had at least a Bachelor of Science degree (or equivalent) in . . . electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the field of vehicle telematics systems.” Pet. 9–10 (citing Ex. 1003 ¶¶ 25–27). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. PO Resp. 8. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’335 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 8

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

    “construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. However, only terms that are in controversy need to be expressly construed and only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that the terms in the Challenged Claims are properly understood to have their ordinary and customary meaning. Pet. 2. Patent Owner does not dispute this contention. See generally PO Resp. Therefore, because no controversy regarding claim construction exits, it is not necessary for us to construe expressly any claim term.” slip op. at 13

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

    “attempts to map to the CVP System (see PO Resp. 56–59)—Petitioner has established that Moses discloses or suggests the subject matter of those claims. The proposed combinations are not based on hindsight reconstruction; rather, they are straightforward and logical. Moses indisputably discloses a response management system with automated rule-based alert notifications and response deployment capabilities. The only arguable differences Patent Owner alleges are whether Moses discloses storing information about something happening/occurrence versus more general information and whether Moses discloses providing responses that recommend a particular action be taken versus responses that are merely informational. We find Petitioner’s evidence from Moses to be particularly strong that a skilled artisan would have known to store information about occurrences and provide responses including recommended actions. Thus, for all the reasons discussed above (supra § III.B.1) and here, we give Petitioner’s evidence of obviousness substantial weight. Additionally, we disagree with most of Patent Owner’s arguments in response and we do not give Patent Owner’s evidence of objective indicia of nonobviousness substantial weight for the reasons discussed above (supra § III.C). But, even if we were to have found that Patent Owner established a nexus, given its tenuous connection to the only difference Patent Owner alleges to exist between the systems disclosed by the prior art and the claimed invention, we find that the evidentiary weight favoring obviousness significantly outweighs the most probative weight that could be given to the objective evidence presented. We also find that the balance weighs strongly in Petitioner’s favor regarding claims 2–7, 9–16, and 18–22 for the same reasons discussed above and additionally because Patent Owner has not established that the CVP System practices any of these claims or that there is a nexus between the objective indicia of nonobviousness and any of these claims. Accordingly, on balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1–22 of the ’335 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 52

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

    “As stated in Fox Factory, “presuming 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.” Fox Factory, 944 F.3d at 1373 (quotations omitted). Patent Owner does not assert that the CVP System is entitled to a presumption of nexus. See generally PO Resp. 55–61. Furthermore, Patent Owner does not provide any evidence or argument to even suggest that the CVP System and the claimed invention are coextensive. Id. Exhibit 2015 evidences that the CVP System includes a myriad of features that would allegedly provide important benefits to its customers. Therefore, Patent Owner is not entitled to a presumption of nexus because, even presuming the CVP System incorporates the patented invention, it cannot be disputed that the claimed invention is only one of many components included in the CVP System. See generally Ex. 2015. Of course, our nexus inquiry does not end there because Patent Owner is still afforded an opportunity to prove nexus by showing that the alleged commercial success achieved with the CVP System is in some way a direct result of the unique characteristics of the claimed invention. But on this front, Patent Owner again fails to provide any foundational basis to establish a link between the claimed invention and the evidence of commercial success. Instead, Patent Owner simply states, “[b]ecause the [CVP System] embodies all the limitations of the independent claims of the ’335 patent, sufficient nexus exists between [Patent Owner’s] commercial success and the claims.” PO Resp. 55. And after Petitioner pointed out that Patent Owner had failed to establish any specific link between the claimed invention and commercial success evidence (Pet. Reply 25–26), Patent Owner responded as follows: “It is not necessary, however, that the patented invention be solely responsible for the commercial success, in order for this factor to be given weight appropriate to the evidence, along with other pertinent factors.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991); see also Oren Techs., LLC v. Proppant Express Invs. LLC, No. 2019-1778, 2021 WL 3120819, at *7 (Fed. Cir. July 23, 2021). As [Patent Owner] explained, [Petitioner’s CVP System] is commercially successful at least in part due to the advertised remote vehicle monitoring functionality. See Exs. 2016-2023. This is more than adequate to establish commercial success. Oren Techs, 2021 WL 3120819, at *7. PO Sur-reply 25–26. Patent Owner has not persuasively shown by a preponderance of the” slip op. at 47

  Patent outcomesUS 9,147,335 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,147,335

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.