• Motorola Mobility LLC v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00501 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 7, 9–12, and 16–18 were held unpatentable; claims 4–6, 8, 13–15, and 19–21 were patentable because the cited art did not disclose the required transmission behavior.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “With respect to entitlement to any earlier effective priority date, a party must identify, specifically, the disclosure in ancestral applications “which do not share the same disclosure,” and which allegedly show § 112 support for the relied-upon priority date. See, e.g., Polaris Wireless, Inc. v. TruePosition, Inc., Case IPR2013-00323, slip. op. at 29 (PTAB Nov. 15, 2013) (Paper 9). To link the Ayyagari Provisional with Ayyagari ’508, Petitioner relates the claims of the ’392 patent to Ayyagari ’508, and then, separately, relates the claims of the ’392 patent to the Ayyagari Provisional. This triangulation does not meet Petitioner’s burden of showing that Ayyagari ’508 is entitled to the earlier filing date of the Ayyagari Provisional. Specifically, while the cited portions of the Ayyagari Provisional and Ayyagari ’508 may each disclose a certain claim limitation, the disclosures may be in different embodiments or contexts such that the cited portion of the Ayyagari Provisional does not provide an adequate ancestral basis for the cited portion of Ayyagari ’508. Petitioner should not expect the Board to search the record and cull the evidence necessary to support Petitioner’s arguments. Amazon.com, Inc. v. Personalized Media Comm., LLC, Case IPR2014-01533, slip op. at 6 (PTAB April 20, 2015) (Paper 16); cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Petitioner has not, in its case-in-chief, linked the Ayyagari Provisional disclosure with the Ayyagari ’508 disclosure in a sufficient manner to meet its burden. Petitioner has not shown that Ayyagari ’508 is entitled to a priority date any earlier than its actual filing date of February 22, 2001.” slip op. at 8

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “explain the alleged reduction to practice embodied in Exhibit F. In evaluating a Patent Owner’s reliance on a declaration, we take into consideration whether Petitioner has had an opportunity to cross-examine the declarant. Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014- 00360, slip op. at 4 (PTAB December 3, 2014) (Paper 39). If Patent Owner does not produce a declarant for cross-examination, we will give that declaration little to no weight. See Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., Case IPR2013-00576, slip op. at 3 (PTAB Sept. 5, 2014) (Paper 36). Petitioner, upon requesting deposition availability for Mr. Wentink, was informed by Patent Owner that “[w]ith respect to Mr. Wentink, Patent Owner does not believe it is required, under the rules, to produce Mr. Wentink for deposition.” Ex. 1017 (corrected), 1. No further explanation of Patent Owner’s interpretation of the rules, or regarding availability of Mr. Wentink for deposition, is before us. Although we have no reason to question Dr. Tewfik’s credentials, his value as a witness is compromised heavily by his distance from and post hoc evaluation of the circumstances of the alleged reduction to practice of the invention. Patent Owner is correct that it was not required, under the rules, to make Mr. Wentink available for cross-examination. Under these circumstances, however, we accord Mr. Wentink’s declaration little weight.” slip op. at 12

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

    “Although the ultimate determination of whether a document is a printed publication is a question of law, it is a question that is closely based on the underlying facts and circumstances surrounding the disclosure of a document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-bycase basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 16

  • ExcludeMotion to exclude, deniedMixed

    “The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013) (Paper 15); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39). Patent Owner’s objections to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017 go more to the weight that the information disclosed therein should be afforded, rather than to its admissibility. It is within our discretion to assign the appropriate weight to be accorded to the information in Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). We, thus, decline to exclude Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. Moreover, we agree with Petitioner that Exhibits 1010, 1013, and 1014 are evidence that properly responds to arguments made by Patent Owner in its Response. Resp. to Mot. to Excl. 11, 12–14; 37 C.F.R. § 42.23. Regarding Exhibit 1006, we are persuaded by Petitioner’s arguments that the testimony of Mr. Worstell (Ex. 1010) authenticates Exhibit 1006. Resp. to Mot. to Excl. 7–8. Similarly, we are persuaded that Exhibit 1010, paragraphs 13–15, reflect testimony based on Mr. Worstell’s personal knowledge and should not be excluded. Accordingly, the Motion to Exclude is dismissed as to paragraphs 23 and 59 of Exhibit 1008, paragraph 6 of Exhibit 1019, and Exhibit 1016, and denied as to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017.” slip op. at 31

  Patent outcomesUS 7,136,392 mixed
  § 102 anticipation
  Patents in suitUS 7,136,392
• Apple Inc. v. THX Ltd.Some claims unpatentable
  PTAB · Jun 9, 2015 · IPR2014-00235 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Tomonori and Sadaie; claim 3 was not shown unpatentable over Tomonori, Virva, and Sadaie.

  RulingsFinal written decision

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

    “In sum, the ’483 patent describes and claims a sound reflecting surface that redirects sound waves output from the speaker towards the elongate output slot, whereas sound damping material absorbs standing waves inside the sound duct. The ’483 patent goes to great lengths to distinguish a sound reflecting surface from a sound damping surface. Furthermore, given that “sound damping material” is different from a “sound reflecting surface” and both are recited as separate claim limitations, it follows that a sound reflecting surface is not made of sound damping material. For the reasons given above, we construe “sound reflecting surface,” in the context of claim 1 and in light of the ’483 patent specification, as “a surface that redirects sound waves output from a speaker, not made of sound damping material.”” slip op. at 12

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

    “2. Other Terms Petitioner proposes to construe additional claim terms. Pet. 11–14. We determine that no express construction of these additional terms is necessary for purposes of this decision.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “suppress standing waves inside a duct. Pet. 44 (citing Ex. 1002 ¶ 112). Dr. Vipperman identifies the reason for Sadaie’s use of side wall sound damping as enabling “the sharpness of a fundamental wave resonance of a standing wave determined by the length of the sound path . . . to be suppressed because a substantial length of the sound path cannot be primarily determined.” Ex. 1002 ¶ 112 (citing Ex. 1003, 14). We agree with Petitioner’s reasoning, therefore, that “[e]xtending the damping material of Tomonori along the sidewalls of the duct,” as taught by Sadaie, would have been one of a limited number of known solutions further minimizing the presence of spurious resonances and standing waves inside the duct. Id. at 45 (citing Ex. 1002 ¶ 113). The quoted statements of Petitioner and Dr. Vipperman with respect to Tomonori and Sadaie are consistent with the principles set forth in KSR.10 Petitioner and Dr. Vipperman provide an analysis of why one of ordinary skill in the art of speaker design would have been motivated by Sadaie’s disclosure of side wall sound damping to modify Tomonori’s narrow sound duct, such that sound damping material forms the sides of the sound duct but not the bottom (sound reflecting) surface. In particular, Dr. Vipperman’s Declaration provides a sufficient analysis to support the obvious modification of Tomonori’s narrow profile speaker, by a speaker designer of ordinary skill, such that “sound damping material form[s] sides of the sound duct” to help suppress the presence of spurious resonances and standing waves inside the duct. Ex. 1002 ¶¶ 112, 113.” slip op. at 28

  Patent outcomesUS 7,433,483 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,433,483
• Groupon, Inc. v. Blue Calypso, LLCAll claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00034 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–5 are unpatentable as anticipated by Paul; the Board rejected the Ratsimor anticipation and obviousness grounds because Ratsimor was not proven publicly accessible.

  RulingsFinal written decision

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

    “1. “subsidy” Independent claim 1 recites “recognizing a subsidy, according to the subsidy program, for the subscriber.” The ’670 patent does not set forth a special definition for “subsidy.” Accordingly, we look to the ordinary meaning of the term “subsidy”—financial assistance given by one to another.5 The ’670 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’670 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, col. 3, ll. 39-45 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’670 describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, col. 4, ll. 59-65 (referring to Fig. 3); see id. at col. 4, ll. 16-17. In an example of a bi-directional endorsement process, the ’670 patent further describes an advertiser calculating the amount to” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree the preamble is limiting. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 1 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 1 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 17 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 1. Accordingly, we conclude that the preamble of independent claim 1 is entitled to patentable weight.” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “Having reviewed the parties’ arguments and supporting evidence, we do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude the Ratsimor paper is not a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”).” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Although the elements must be arranged 30 or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 30

  Patent outcomesUS 8,457,670 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,457,670
• ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentable
  PTAB · Jul 1, 2014 · IPR2013-00138 · APJ Michael R Zecher · IPR · Final written decision

  ZTE did not prove claims 1–18, 20–38, and 40–56 unpatentable because neither Leroux nor EP ’139 disclosed the required repository behavioral integrity.

  RulingsFinal written decision

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

    “the specification of the ’736 patent that allegedly support its proposed claim construction. Id. at 17–20 (citing Ex. 1001, 4:23–24, 6:65–7:2, 12:45–54, 13:51–53, 14:4–9, and 52:18–23). When instituting trial, we construed “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.” Dec. 13. For reasons discussed below, we adhere to the same interpretation for this final written decision. The specification provides a glossary that explicitly sets forth a definition for “repository.” For convenience, that glossary definition is reproduced below: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 52:20–23 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence also is relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We do not credit the testimony of ContentGuard’s expert, Dr. Michael T. Goodrich, in paragraphs 40 and 41 of his Declaration (Ex. 2013). In those paragraphs, Dr. Goodrich attests that, in his opinion, a person of ordinary skill in the art in 1994 would have understood that the term “repository software” in the ’736 patent identifies and refers to the operating software of the repository, and not the software digital works the usage rights of which are controlled by the repository. Dr. Goodrich’s testimony is unpersuasive because it does not account for the disclosure of the specification, discussed above, which conveys that some repositories are rendering depositories that run and execute the software digital works the rights of which they control, such as a new version of a “player.”” slip op. at 21

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

    “based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 30

  Patent outcomesUS 7,139,736 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,139,736
• ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentable
  PTAB · Jul 1, 2014 · IPR2013-00137 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–5, 9–11, 15–17, 19, 21–33, 37–38, 42–44, 46, 48–62, 66–67, 71–73, 75, and 77–84 were not shown unpatentable as anticipated by Leroux under § 102(e).

  RulingsFinal written decision

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

    “The specification provides a glossary which recites the following meaning for “repository”: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 50:47-51 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence is relevant also to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 8

  • Expert testimonyPetitioner expert discountedMixed

    “Ex. 1025, ¶ 25. We are not persuaded that Dr. Madisetti’s conclusion is credible, because, even though we agree with the underlying facts in the aforementioned portions of Leroux cited by Dr. Madisetti, those underlying facts do not support adequately his conclusion. In particular, Dr. Madisetti asserts that software uploaded to service center 1 from the vendor will include a digital certificate, so that later the software can be identified by microcomputer 2 running the identification and authorization procedures to load the software from the service center 1 to the microcomputer 2. However, these facts are inapposite to Dr. Madisetti’s conclusion for several reasons. First, there is no indication that only a vendor is capable of uploading software to service center 1. Leroux is silent as to whether software uploaded into service center 1 by a non-vendor requires a digital certificate. Behavioral integrity requires that all software uploaded to service center 1 include a digital certificate, whether from a vendor or a nonvendor. Second, just because the uploaded software includes a digital certificate does not indicate that the digital certificate is required to upload the software. In other words, there is no indication in Leroux that the digital certificate has any relationship to the uploading process, itself, when it is uploaded with the software into service center 1, as would be required for “behavioral integrity.”” slip op. at 28

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “As an initial matter, we note that the ground of unpatentability is based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 25

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

    “removable carrier 4 does not constitute the “distributed repository,” as recited by each of independent claims 1, 29, and 58, because ZTE has not persuaded us that the identification and authentication procedures used to interrogate the right of access associated with the software stored on removable carrier 4 necessarily includes a digital certificate that authenticates the source of the software. In addition, Leroux’s database service center 1 does not constitute the “another distributed repository,” as recited by each of independent claims 1, 29, and 58, because ZTE has not persuaded us that a digital certificate is required necessarily to upload software from a software vendor into database service center 1. For the foregoing reasons, we conclude that ZTE has not demonstrated by a preponderance of the evidence that independent claims 1, 29, and 58 are anticipated by Leroux.” slip op. at 32

  Patent outcomesUS 6,963,859 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,963,859
• ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentable
  PTAB · Jul 1, 2014 · IPR2013-00133 · APJ Michael R Zecher · IPR · Final written decision

  ZTE did not prove claims 1–25 unpatentable because EP ’139 did not disclose a digital certificate required for the claimed repository’s behavioral integrity.

  RulingsFinal written decision

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

    “The specification provides a glossary that explicitly sets forth a definition for “repository.” For convenience, that glossary definition is reproduced below: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 51:34–37 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence also is relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 10

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

    “Physical integrity refers to the integrity of the physical devices themselves. Physical integrity applies both to the repositories and to the protected digital works. Thus, the higher security classes of repositories themselves may have sensors that detect when tampering is attempted on their secure cases. In addition to protection of the repository itself, the repository design protects access to the content of digital works. In contrast with the design of conventional magnetic and optical devices-such as floppy disks, CD-ROMs, and videotapes-repositories never allow non-trusted systems to access the works directly. A maker of generic computer systems cannot guarantee that their platform will not be used to make unauthorized copies. The manufacturer provides generic capabilities for reading and writing information, and the general nature of the functionality of the general computing device depends on it. Thus, a copy program can copy arbitrary data. This copying issue is not limited to general purpose computers. It also arises for the unauthorized duplication of entertainment “software” such as video and audio recordings by magnetic recorders. Again, the functionality of the recorders depends on their ability to copy and they have no means to check whether a copy is authorized. In contrast, repositories prevent access to the raw data by general devices and can test explicit rights and conditions before copying or otherwise granting access. Information is only accessed by protocol between trusted repositories. Ex. 1001, 12:1–26 (emphases added).” slip op. at 10

  • Expert testimonyPatent owner expert discountedPatent owner expert creditedMixed

    “We do not credit the testimony of ContentGuard’s expert, Dr. Michael T. Goodrich, in paragraph 48 of his Declaration (Ex. 2013). In that paragraph, Dr. Goodrich attests that, in his opinion, a person of ordinary skill in the art in 1994 would have understood that the term “repository software” in the ’072 patent identifies and refers to the operating software of the repository, and not the software digital works, the usage rights of which are controlled by the repository. Dr. Goodrich’s testimony is unpersuasive because it does not account for the disclosure of the specification, discussed above, which conveys that some repositories are rendering depositories that run and execute the software digital works the rights of which they control, such as a new version of a “player.”” slip op. at 18

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

    “1. Principles of Law To establish anticipation under § 102(b), “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze the ground of unpatentability based on anticipation by EP ’139 with the principles stated above in mind.” slip op. at 22

  Patent outcomesUS 7,523,072 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,523,072
• Microstrategy, Inc. v. Zillow, Inc.Some claims unpatentable
  PTAB · Mar 27, 2014 · IPR2013-00034 · APJ Michael W Kim · IPR · Final written decision

  Claims 2-11, 13-17, 26, 28-33, 35-37, 39, and 40 are unpatentable; claims 12, 27, 34, and 38 were not shown unpatentable.

  RulingsFinal written decision

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

    “19-26. Petitioner counters that “automatic valuation of a distinguished home” is not a term of art, and should be construed as “a calculation of a value of a distinguished property or home performed without human intervention.” Reply 5-9. We agree with Petitioner for the reasons set forth below. The Specification of the ‟674 patent does not set forth expressly a definition of “automatic valuation.” Nor is it apparent what definition is implicit within the Specification. The parties also do not identify any prosecution history that purportedly would offer a definition for the term. Instead, Petitioner proposes that “automatic valuation of a distinguished home” should be construed with its ordinary and customary meaning as “a calculation of a value of a distinguished property or home performed without human intervention.” For support, Petitioner cites the testimony of their expert, Dr. Borst (Ex. 1023 ¶¶ 13-18). This construction is consistent with the Specification, which discloses using computer system 100 to perform home valuations (Ex. 1001, Fig. 1), and thus is appropriately broad and reasonable in light of the Specification, as required by our rules. It is also consistent with dictionary definitions of “automatic”2” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “Furthermore, even if a tribunal were permitted, generally, to take into account a disavowal made during the same proceeding, as opposed to a prior, completed proceedings, absent extraordinary circumstances, we are not persuaded that such same proceeding disavowals are proper in a proceeding where amendments are available. This is because when claim amendments are available, a patent owner has an opportunity to amend claims to a scope it desires, so as to have the substance of any purported same proceeding disavowal reflected in the claim language expressly. The public should not be burdened with inadequate notice concerning the scope of claims, where the Patent Owner has been provided with an opportunity to amend claims to reflect the scope it desires. If Patent Owner chooses not to avail itself of the opportunity to amend, it is reasonable to accord the claims their scope under the broadest reasonable construction, without regard to the substance of any same proceeding disavowal.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 23

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

    “replace the appraiser of Dugan and Kim with the “owner,” as recited in independent claim 2, because both Dugan and Kim are directed to appraisal processes which must be controlled by an appraiser. PO Resp. 26-28. Petitioner counters that both Dugan and Kim disclose that the discussions of appraisers in the process are merely exemplary, and that there is nothing preventing a non-appraiser from using the systems set forth in Dugan and Kim. We agree with Petitioner. Dugan discloses the following: “[o]nce the system 10 is formatted, step 30, the operator, here an appraiser, will have two options.” Ex. 1003, 7:44-45. By using the term “operator” in conjunction with system 10, and indicating that an example of an “operator” is an appraiser, Dugan at least suggests that operators other than appraisers are contemplated. Furthermore, Dugan discloses that because the appraisals are relied upon by sellers, buyers, appraisers, bankers, investors and the like, it is desirable that the appraisal is trustworthy. Ex. 1003, 4:30-33. Accordingly, we are persuaded that it would have been obvious to have a seller as an operator in Dugan because the seller would have interest in obtaining an accurate 32 valuation of his or her property. And as set forth above in our construction of “owner,” a seller is merely an owner who is selling their property. Similarly, Kim discloses the following: “login page 200 includes a name field and a password field in which a user (e.g., an appraiser) enters his/her name and password to access the appraiser valuation engine.” Ex. 1004 ¶ 42 (emphasis added). Patent Owner asserts that the use of the term “e.g.,” by itself, does not show that the system in either Dugan or Kim was intended for use by someone other than an appraiser. Petitioner counters that the use of the term “e.g.” signals exactly that: that both Dugan and Kim contemplated users other than an appraiser. We agree with Petitioner. When words are used they are presumed to convey meaning, and we find that the deliberate use of the term “e.g.” shows that Kim explicitly contemplates users other than the appraiser. And as an owner would have interest in obtaining an accurate valuation of their property, we are persuaded that it would have been obvious to replace the appraiser with the owner as the user in Kim. Patent Owner cites the testimony of Dr. Kilpatrick in support of its position. PO Resp. 26-28 (citing Ex. 2001 ¶ 31). Petitioner counters that Dr. Kilpatrick acknowledges that sellers could use the systems of Dugan and Kim. Reply 12-14 (citing Ex. 1022, 152:22- 153:8, 156:3-157:4). We have reviewed Dr. Kilpatrick‟s testimony and agree with Petitioner. 33 Fundamentally, independent claim 2 recites a “computer readable medium,” which is, at best, an apparatus claim. As an apparatus claim, Petitioner only needed to show that Dugan and Kim suggest a system capable of receiving input from an owner. To counter, Patent Owner needed to show not only that Dugan and Kim disclose an appraiser controlling the appraisal process, but also that Dugan and Kim disclose systems that could not be used by individuals other than appraisers. Patent Owner has failed to do so, as Dr. Kilpatrick agrees that both buyers and sellers could use the systems disclosed in Dugan and Kim. Ex. 1022, 152:15-153:8, 156:3- 157:4.” slip op. at 32

  Patent outcomesUS 7,970,674 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,970,674

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.