- Google LLC v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Mar 20, 2024 · IPR2022-01413 · APJ Hubert C Lorin · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Carmel; the Board did not reach the three alternative obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We observe that Patent Owner cites no intrinsic evidence to support its “clarification” to Petitioner’s description of a person of ordinary skill in the art. See PO Resp. 6; Ex. 2002 ¶ 13. Be that as it may, our analysis would not change if we adopted Patent Owner’s “clarification” to Petitioner’s description of a person of ordinary skill in the art. As Petitioner indicates, Patent Owner’s “clarification” would increase the level of ordinary skill. See PO Resp. 6; Ex. 2002 ¶ 13. “[I]t is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). Accordingly, we adopt Petitioner’s proposed definition for the level of skill in the art possessed by a person of ordinary skill in the art because it comports with the technology and claims in the ’636 patent and the asserted references and appears reasonable. C. Claim Construction” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For the foregoing reasons, we are unpersuaded that the intrinsic evidence requires a construction that limits the plain and ordinary meaning of 1[c]–1[c(ii)] as Patent Owner proposes. 4 Referring to Ex. 1001, 8:13–15 (“Once a connection is made to a user’s computer (e.g., user computer 18), server 12 sends the media data to the user computer in the following manner.”) See Ex. 1103, 97:15–17 (referring to 8:15–17 of the ’824 patent). We determine that 1[c]–1[c(ii)] are to be construed broadly, consistent with the plain and ordinary meaning, which covers a request specifying “one” serial identifier of the requested “more” elements, which is in line with Petitioner’s construction. See Pet. Reply 6. They do not require pulling every slice subsequent after the requested starting slice. We will apply that construction in analyzing Petitioner’s challenge under the asserted ground.” slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Conclusion as to Claim 1 For the reasons discussed above, we determine that a preponderance of the evidence supports Petitioner’s position that Carmel renders obvious the subject matter of claim 1 of the ’636 patent. 3. Independent Claims 5 and 9 Claims 5 and 9, drawn to a “server system” and a “computer program product,” respectively, parallel “method” claim 1 discussed above. Petitioner indicates that claim 5 “presents no material differences from claim 1 in terms of the basic functions it recites.” Pet. 49. “Claim 9 is materially the same as claim 1 except it is written as a computer program product instead of a method.” Id. at 53. Patent Owner does not provide any specific arguments as to these claims. See PO Resp. 36–56. For the reasons discussed with respect to claim 1, we determine that a preponderance of the evidence supports Petitioner’s position that Carmel” slip op. at 59
- ExcludeMotion to exclude, deniedDenied
“Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.” Consolidated Trial Practice Guide5 79–80. Petitioner moves to exclude the following exhibits: 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. • Ex. 2003 (Declaration of Dr. Henry Houh filed in IPR2022-01228 (Ex. 1002)); • Ex. 2004 (May 23, 2023 Deposition of Dr. Kevin Jeffay filed in IPR2022-01430 and -01433); • Ex. 2008 (In re Certain Fitness Devices, Streaming Components Thereof, and System Containing Same, Inv. No. 337-TA-1265, Initial Determination (ITC Sept. 9, 2022) (CALJ Clark S. Cheney); and, • Ex. 2009 (In re Certain Fitness Devices, Streaming Components Thereof, and System Containing Same, Inv. No. 337-TA-1265, Evidentiary Hearing - Volume III (ITC March 14, 2022). Mot. Excl. 1–2. Petitioner states, inter alia, that “Exhibits 2003, 2004, and 2009 are a declaration, deposition, and hearing transcript containing testimony of experts not involved in this IPR and from cases not involving [Petitioner].” Id. at 2. Petitioner contends that Mr. Hoarty should not be allowed to rely on any of these exhibits as the bases of his expert testimony. Id. at 2. “Exhibit 2008 is an Initial Determination from the ITC, which should be excluded under FRE 401 as irrelevant.” Id. at 3. We have not relied on any of these exhibits in reaching our decision. Accordingly, we need not determine whether to exclude the challenged material. Therefore, the Motion to Exclude is dismissed as moot. slip op. at 63
Patent outcomesUS 9,762,636 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,762,636 - Google LLC v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Mar 20, 2024 · IPR2022-01412 · APJ Hubert C Lorin · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Carmel alone; the Board did not reach the alternative Carmel–Ravi and Carmel–Narayan grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“However, a plain reading of 1[e] yields another possibility; that is, a request specifying “one” serial identifier of the requested “more” elements.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We have reviewed the record and find Petitioner has the stronger position. The claim does not recite “push” or “pull,” even though the parties agree that 1[e] reflects a “pull” technique (PO Resp. 1; Pet. Reply 1). What the claim recites is “receiving requests at the server system” (i[e]) and “responsive to the requests, sending, by the server system, the one or more media data elements . . . to the requesting user systems corresponding to the requests via one or more data connections over the Internet, for one or more of the media data elements” (1[f]). Petitioner must show that Carmel teaches this claimed technique, not necessarily a “pull” technique as Patent Owner characterizes it. In that regard, Petitioner shows, inter alia, that Carmel teaches that “[r]esponsive to a user input, client 30 selects an appropriate starting slice and begins to download and decode (decompress) files 42, 44, 46, etc.” Ex. 1003, 10:44–47; Pet. 24 (also quoting Ex. 1003, 11:5–7 (“Responsive to the [user] selection, server 36 begins to transmit data slices [to the client 30]”)). This disclosure satisfies the technique that is claimed; that is, “sending, by the server system, the one or more media data elements” “responsive to receiving requests at the server system.”” slip op. at 40
- ExcludeMotion to exclude, deniedDenied
“Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.” Consolidated Trial Practice Guide5 79–80. slip op. at 61
Patent outcomesUS 9,742,824 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,742,824 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2023-00813 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds and dismissed the motion to exclude as moot.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“We decline to read in a requirement that the “program” of the preambles must be an “entire program.” In particular, we do not agree with Patent Owner that the limitation directed to “additional requests . . . during playing” or the mention in the specification of “additional data requests for the duration of playing” necessarily requires that the “playing” refers to an entire program. For example, the recited requests could relate to playing a portion of a program, a premise with which both declarants agree. Ex. 1103, 22:22–24:9; Ex. 1111 ¶¶ 13–16. Thus, we reject Patent Owner’s “entire program” interpretation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2022-01411 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We decline to construe limitations 1b(i)–1b(ii) other than to agree with both parties (PO Resp. 11, 28–29; Pet. Reply 5) that the recited “data rate” refers to the capability of the data connection. See, e.g., Ex. 1001, 4:40–43 (“The bandwidth requirement of audio or video media refers to the data rate in bits per second that must be transmitted and received in order to listen to or view the material uninterrupted.”); Ex. 1002 ¶ 126; Ex. 1103, 26:19–29:7; Ex. 1111 ¶ 24. This is sufficient to dispose of the instant case. See Realtime Data, 912 F.3d at 1375.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · Feb 26, 2024 · IPR2023-01338 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). B. Level of Ordinary Skill in the Art slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we adopt that definition for our analysis in this decision. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. We determine that the level reflected in the prior art is consistent with Petitioner’s definition. C. Claim Construction” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find that the evidence on this record does not sufficiently support the reasons Petitioner presents as demonstrating that a person of ordinary skill in the art would have had a reason to combine Haggerty, Demsey, and Khanna in the manner claimed in claim 1.” slip op. at 18
- Expert testimonyPetitioner expert discountedOther
“But how Demsey’s Internet ad techniques would increase the reach of Haggerty’s marketing efforts is not explained. Petitioner relies on Dr. Houh’s testimony but that testimony simply repeats a desired result as in the Petition without further elaboration. Cf. Pet. 30, Ex. 1002 ¶ 86. Petitioner does not adequately explain how Demsey’s web-based ad-serving technology, when incorporated into Haggerty, would increase the reach of Haggerty’s marketing efforts and/or help Haggerty better target advertisements to particular users such that one of ordinary skill would have been motivated to incorporate Demsey’s technique in Haggerty.” slip op. at 19
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,416,887 - Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 15, 2024 · IPR2022-01433 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Carmel, Feig, and Willebeek.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, an ordinarily skilled artisan would have had a reasonable” slip op. at 97
Patent outcomesUS 9,762,636 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,762,636 - Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 15, 2024 · IPR2022-01430 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Carmel, Feig, and Willebeek under § 103(a).
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“C. Claim Construction We construe claim terms “using the same claim construction” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, an ordinarily skilled artisan would have had a reasonable” slip op. at 98
Patent outcomesUS 9,742,824 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,742,824 - The Walt Disney Company / Disney Streaming Services LLC et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Jan 31, 2024 · IPR2022-01228 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–12 are unpatentable under § 103(a) as obvious over Carmel alone and over Carmel combined with Shteyn.
RulingsFinal written decision- Expert testimonyOther
“H. Testimonial Evidence To support its challenges, Petitioner relies on the Declaration of” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“and Shteyn teach the subject matter in independent claims 1, 5, and 9 as well as the subject matter in dependent claims 2–4, 6–8, and 10–12. See supra §§ III.D.2(a)–(i), III.D.2(k), III.D.3, III.D.4(a)–(b), III.E.2(a)–(b). Moreover, an ordinarily skilled artisan would have been motivated to combine Shteyn’s teachings with Carmel’s teachings in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.E.3. Hence, Petitioner has shown by a preponderance of the evidence that claims 1–12 are unpatentable under § 103(a) as obvious over Carmel and Shteyn.” slip op. at 124
Patent outcomesUS 9,742,824 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,742,824 - The Walt Disney Company / Disney Streaming Services LLC et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Jan 31, 2024 · IPR2022-01227 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–12 are unpatentable under § 103(a) as obvious over Carmel and separately over Carmel in combination with Shteyn.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“4. CONCLUSION ABOUT OBVIOUSNESS For the reasons discussed above, the combined disclosures in Carmel and Shteyn teach the subject matter in independent claims 1, 5, and 9 as well as the subject matter in dependent claims 2–4, 6–8, and 10–12. See supra §§ III.D.2(a)–(i), III.D.2(k), III.D.3, III.D.4(a)–(b), III.E.2(a)–(b). Moreover, an ordinarily skilled artisan would have been motivated to combine Shteyn’s teachings with Carmel’s teachings in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.E.3. Hence, Petitioner has shown by a preponderance of the evidence that claims 1–12 are unpatentable under § 103(a) as obvious over Carmel and Shteyn.” slip op. at 122
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“segments” would “further enhance the buffer efficiency for uninterrupted playback” without altering how the client uses time stamps (sequence numbers) to determine an ordering for the downloaded slices/segments. See Ex. 1002 ¶ 176; Ex. 1004, 2:15–17, 10:50–54; Ex. 1008, 3:14–19, 3:31–36. In particular, with the downloaded and ordered slices/segments “buffered in a sequence or linked list of buffers,” the next slice/segment “is passed on from the buffer to the decoding/playing module” upon “completion of playing out” the previous slice/segment using a pointer to the next slice/ segment. Ex. 1008, 3:14–19, 3:31–36; see Ex. 1002 ¶ 171. 4. CONCLUSION ABOUT OBVIOUSNESS For the reasons discussed above, the combined disclosures in Carmel and Shteyn teach the subject matter in independent claims 1, 5, and 9 as well as the subject matter in dependent claims 2–4, 6–8, and 10–12. See supra §§ III.D.2(a)–(i), III.D.2(k), III.D.3, III.D.4(a)–(b), III.E.2(a)–(b). Moreover, an ordinarily skilled artisan would have been motivated to combine Shteyn’s teachings with Carmel’s teachings in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.E.3. Hence, Petitioner has shown by a preponderance of the evidence that claims 1–12 are unpatentable under § 103(a) as obvious over Carmel and Shteyn.” slip op. at 122
Patent outcomesUS 9,762,636 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,762,636 - Fanduel, Inc. v. Winview Inc.All claims unpatentablePTAB · Jan 29, 2024 · IPR2022-01307 · APJ Michael R Zecher · IPR · Final written decision
Claims 1, 2, 9, 14–16, 20, 21, 23, 24, 26, 27, 31–33, 40, 41, 43, and 49 are unpatentable as anticipated by Vänskä or obvious over Vänskä, alone or with Barros.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. Based on the fully developed trial record, we are able to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Rubin, FanDuel argues that “a person of ordinary skill in the art . . . as of June 20, 2005 [(the filing date of the ’356 application)], would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development.” Pet. 13 (citing Ex. 1003 ¶¶ 20, 21). In its Patent Owner Response, WinView does not address the level of ordinary skill in the art. See PO Resp. Accordingly, we maintain our preliminary determination regarding the level of ordinary skill in the art. Dec. on Inst. 9–10. That is, we adopt FanDuel’s proposed assessment of the level of ordinary skill in the art because Dr. Rubin’s supporting testimony is consistent with the ’543 patent and the asserted prior art. We apply this assessment of the level of ordinary skill in the art in our anticipation and obviousness evaluations below.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“particular issue, the evidence demonstrates that it was well-known to a person of ordinary skill in the art that GPRS provides Internet connectivity. We address each piece of relevant evidence in turn. First, as evidence of the general background knowledge in the art, FanDuel introduced a document with its Reply that explicitly defines GPRS and, in particular, discusses the difference between using GSM and GPRS protocols. Ex. 1011. According to this document, “GPRS revolutionized GSM by providing real data capability and enabling emails and simple web browsing – albeit at speeds much slower than the current standard.” Id. at 1. This document further states that “GPRS provided . . . uninterrupted connectivity to the internet for mobile phones.” Id. FanDuel argues—and we agree—that this document is evidence that a person of ordinary skill in the art would have understood that GPRS provides Internet connectivity to mobile phones. See Pet. Reply 13.” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Given that controlling case law mandates that we must consider the explicit and inherent disclosures in Vänskä, “together with the knowledge of one of ordinary skill in the pertinent art” (In re Paulsen, 30 F.3d at 1480), we find that evidence of record supports a finding that Vänskä’s mobile terminal 100 connects to the Internet via a cellular data network when downloading the disposable mini-applications over mobile WAN 130 using GPRS. Stated differently, Vänskä’s mobile terminal 100 connects to the Internet via the mobile WAN 130 using GPRS and, therefore, describes the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” We do not agree with WinView’s argument that FanDuel fails to explain how Vänskä discloses an actual or direct connection to the web or Internet purportedly required by the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” See PO Resp. 15–19; PO Sur-reply 3–6. Apart from the “mobile . . . computing device” being “web-connected,” the “loading,” “selecting,” and “downloading” steps of independent claim 1 do not require explicitly an actual or direct transmission of data over the web. See Ex. 1001, 12:19–42. Similarly, apart from the “mobile . . . computing device” being “Internet-connected,” the “transmitting” and “receiving” steps of independent claim 49 do not require explicitly an actual or direct transmission of data over the Internet. Id. at 15:3–26. The specification of the ’543 patent supports our view in this regard because it discloses that “the [computing] device connects via the cellular network and/or Internet to the service provider’s server.” Id. at 8:5–9, Fig. 1 (step 106); see also id. at 10:64–65 (stating that, when downloading the “Activity Client,” “the cell phone connects through the cellular network and Internet to a game server”). Therefore, contrary to WinView’s arguments, the specification of the ’543 patent contemplates that the mobile computing device connects to the Internet via a cellular network—it does not require an actual or direct connection to the Internet. The method steps of independent claims 1 and 49 reflect this broad scope because, as we explain above, they do not require an actual or direct transmission of data over the web or Internet. Given the broad scope of the specification and the plain language of independent claims 1 and 49, we agree with FanDuel that Vänskä properly accounts for the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device” because it discloses that mobile terminal 100 connects to the Internet via the mobile WAN 130 using GPRS. We also do not agree with WinView’s argument that, because Vänskä does not disclose any of the browsers, servers, or protocols necessary for web or Internet connectivity, it cannot disclose the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” See PO Resp. 20–22, PO Sur-reply 7. WinView fails to recognize that, apart from a single instance in the specification that is labeled as an “example,” the ’543 patent also fails to disclose any browsers, servers, or protocols necessary for web or Internet connectivity. See Ex. 1001, 6:48 (“An example protocol implemented is TCP.”). Put simply, WinView seeks a level of detailed description in Vänskä that is not otherwise provided in the ’543 patent. We decline to impose such a heightened standard on Vänskä, especially when neither the specification nor the claims of the ’543 patent sufficiently describe the purported invention as requiring the use of browsers, servers, or protocols necessary for an actual or direct web or Internet connectivity.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In its Petition, FanDuel contends that, “[f]or purposes of this proceeding only, [FanDuel] does not believe any claim construction is necessary to resolve [its unpatentability] analysis.” Pet. 12 (citing Ex. 1003 ¶ 41). In its Patent Owner Response, WinView agrees with FanDuel by stating that “no [claim] terms require construction,” and that each claim term should be giving its ordinary and customary meaning. PO Resp. 11. Based on the fully developed trial record, there is no controversy between the parties that requires us to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Patent outcomesUS 10,721,543 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,721,543
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.