- Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Nov 27, 2019 · IPR2019-01125 · APJ Jameson Lee · IPR · Institution
The Board denied institution on claim 5 because its ambiguous scope prevented a reliable merits assessment and made trial resource intensive.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Id. at 2:29–42. Thus, within the context of both the claim and the Specification, a radio system and a station are not the same. It is unclear what is referred to by the reference in claim 5 to “radio systems in accordance with the first radio interface standard.”” slip op. at 14
- Other 314aInstitution denied discretionary otherDenied
“Because the claim language is ambiguous as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds 5 We recognize that in limited circumstances, clear errors in claims can be corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly does not meet that standard. What the Applicant for patent intended by the language used is subject to much speculation and conjecture. of unpatentability. If the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63. Furthermore, given that any trial instituted here would address a single claim that we regard to be ambiguous, that issue would likely become the sole focus of that trial. That seems problematic given that Petitioner may not request to cancel any claim based on an assertion of indefiniteness. See 35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).” slip op. at 16
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,016,676 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentablePTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision
Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18
Patent outcomesUS 8,351,798 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,351,798 - Procon Analytics, LLC v. Spireon, Inc.Institution deniedPTAB · Nov 22, 2019 · PGR2019-00051 · APJ John P Pinkerton · PGR · Institution
The Board denied institution of PGR on claims 1–14 because the Petition did not show it was more likely than not that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“element in a claim, arranged 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). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged 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). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“element in a claim, arranged 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). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged 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). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“is conclusory and not supported by the evidence. Prelim. Resp. 32, 37–40. Petitioner’s argument relies on Dr. Wilhelm’s testimony, Jefferies, and the knowledge of a person of ordinary skill in the art. See Pet. 28. Dr. Wilhelm testifies that “[c]onventional vehicle inventory management systems associate information with a particular identifier; the systems are agnostic as to whether that identifier represents a financial institution or dealer.” Ex. 1029 ¶ 73. Based on this testimony, Petitioner argues “it does not matter whether that identifier represents a bank or dealer.” Pet. 28. Petitioner then argues Jefferies teaches that a location device may be marked as “available/in inventory” to be associated with a vehicle. Id. Finally, Petitioner argues that, in view of these teachings, a person of ordinary skill “would have sought to manage various types of vehicle inventories for several types of owners, including dealers.” Id. As stated, we agree with Patent Owner that Petitioner’s argument that the “ownership” requirement would have been obvious is conclusory and not supported by the evidence of record. Initially, we note that Dr. Wilhelm’s testimony concerning conventional vehicle inventory management systems is conclusory and unsupported by factual evidence. Thus, we give little, if any, weight to Dr. Wilhelm’s opinion testimony that such systems are “agnostic” to whether equipment identifiers are associated with lending institutions or auto dealers. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”). In any event, Dr. Wilhelm’s testimony adds nothing in this regard because, as discussed supra, Boling discloses equipment identifiers, such as UINs, are associated with the ID number of banks and auto dealers. See Ex. 1005, 6:22–26; 6:29–33.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,089,598 - PTAB · Nov 22, 2019 · IPR2019-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 20 and 69 because the petition was time-barred under § 315(b), finding Amazon was in privity with at least one petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Worlds Inc. v. Bungie, the context of a real party in interest analysis); see also Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 4−5 (PTAB Jan. 24, 2019) (precedential) (placing “the burden on IPR petitioners to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a privy more than a year before a petition is filed”). “The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner.” Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019) (emphases added). In the Federal Circuit’s view, the language of the statute makes privity and real parties in interest relationships that may arise “before institution relevant to the § 315(b) time-bar analysis.” Id. at 1315 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“More importantly, upon consideration of the parties’ contentions and evidence before us, we similarly determine that Amazon is a privy of several Petitioner Entities under the Taylor framework. See Taylor, 553 U.S. at 894−95. Here, at least the second, third, and fifth categories of Taylor support our determination that these Petitioner Entities are in privity with Amazon, a time-barred party. Second Taylor Category As to the second Taylor category, the record shows a pre-existing substantive legal relationship between Amazon and several Petitioner Entities—namely, PayPal, Strava, Valassis, Upwork Global, and RetailMeNot. The evidence of record shows that the relationship between Amazon and these Petitioner Entities went beyond typical transactions between supplier and buyer because there exists a substantive legal relationship between them that is defined by legal obligations and a sufficient degree of commonality of interest.” slip op. at 20
Discretionary denialPatents in suitUS 7,802,310 - Guardiar Solutions, Inc. v. Rsa Protective Technologies, LLCInstitution deniedPTAB · Nov 21, 2019 · IPR2019-01161 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“structural components of Kogyo’s base to which the alleged bollards are secured are configured to retain within the base supporting media introduced into the base when the base is mounted in the excavation, as required by the “retaining supporting media” limitation of claim 1. Instead, Petitioner appears to treat the elements of claim 1 as a list of separate structural requirements and ignores the relationship between the requirements. This approach is fatal to Petitioner’s position with respect to claim 1 under this ground. Specifically, Petitioner identifies member 32 as the at least one first structural member to which support column 36—the alleged bollard—is attached and member 33 as the at least one structural member when discussing the “secured bollard” limitation. Pet. 50–51. Petitioner then identifies first base 21 (and specifically, member 22 or 23) as the structural component configured to retain supporting media (concrete) with respect to the “retaining supporting media” limitation. Pet. 60–61. The Petition fails to explain adequately how Kogyo’s member 32 or 33 of second base 31 can satisfy the “secured bollard” limitation and member 22 or 23 of first base 21 can satisfy the “retaining supporting media” limitation when the claim requires the same structure to satisfy both of these limitations (the at least first structural member or the at least one structural member). Accordingly we determine, on the record before us, that the information in the Petition fails to demonstrate a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 over Kogyo and Carlyle.9” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“structural components of Kogyo’s base to which the alleged bollards are secured are configured to retain within the base supporting media introduced into the base when the base is mounted in the excavation, as required by the “retaining supporting media” limitation of claim 1. Instead, Petitioner appears to treat the elements of claim 1 as a list of separate structural requirements and ignores the relationship between the requirements. This approach is fatal to Petitioner’s position with respect to claim 1 under this ground. Specifically, Petitioner identifies member 32 as the at least one first structural member to which support column 36—the alleged bollard—is attached and member 33 as the at least one structural member when discussing the “secured bollard” limitation. Pet. 50–51. Petitioner then identifies first base 21 (and specifically, member 22 or 23) as the structural component configured to retain supporting media (concrete) with respect to the “retaining supporting media” limitation. Pet. 60–61. The Petition fails to explain adequately how Kogyo’s member 32 or 33 of second base 31 can satisfy the “secured bollard” limitation and member 22 or 23 of first base 21 can satisfy the “retaining supporting media” limitation when the claim requires the same structure to satisfy both of these limitations (the at least first structural member or the at least one structural member). Accordingly we determine, on the record before us, that the information in the Petition fails to demonstrate a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 over Kogyo and Carlyle.9” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We note that, for the nine disputed claim terms construed by the District Court, the court adopted the purported plain and ordinary meaning of the claim term. Ex. 1026, 4–17. We also apply the plain and ordinary meaning to these terms, as that meaning would have been understood by a person having ordinary skill in the art at the time of the invention, when read in context of the Specification. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (“We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention . . . in the context of the entire patent, including the specification.”). We determine, for the purposes of this Decision, that none of the terms require an express construction here to resolve the parties’ dispute. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art: would have at least a bachelor’s degree or a technical degree in a field such as mechanical or civil engineering or physics and at least several years of experience in designing or manufacturing vehicle barrier systems, but numerous years of experience in the design or manufacture of vehicle barriers, particularly anti-ram systems, could substitute for formal education. Pet. 31 (referencing Ex. 1003 ¶¶ 71–76 (providing Mr. Roland’s testimony regarding the level of ordinary skill in the art)). Patent Owner does not dispute this characterization of the level of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we accept Petitioner’s characterization of the level of ordinary skill in the art, which we find is consistent with the level of skill reflected in the prior art of record.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,215,865 - PTAB · Nov 21, 2019 · IPR2019-01093 · APJ Denise M Pothier · IPR · Institution
The Board denied institution for challenged claims 46, 48, 52, and 55 because Amazon was a privy of at least one petitioner and its 2011 service made the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“B. Principles of Law Section 315(b) of Title 35 of the United States Code provides: (b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioner entities “bear[] the ultimate burden of persuasion to show that [their] petitions are not time-barred under § 315(b) based on a complaint served on an alleged [privy of Petitioner entities] more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). “[S]ervice of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 6 (PTAB Aug. 23, 2019) (precedential); id. at 24. This one-year trigger under 35 U.S.C. § 315(b) also applies to Petitioner entities’ privies or real parties in interest. See id. at 14 (“[T]he text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.”) (quoting Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1332 (Fed. Cir. 2018) (en banc in part)).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“We recognize that the mere existence of an indemnity agreement might not be enough to find privity. See, e.g., WesternGeco, 889 F.3d at 1321. However, as is clear from the MDL record (summarized above), Amazon performed pursuant to the indemnity agreement and secured summary judgment related to infringement of the ’544 patent in favor of several of Petitioner entities. See, e.g., Ex. 2012, 3 (including the ’544 patent as part of the infringement action), 9 (listing “Category 3” infringement), 14 (“As to the effect of the indemnification agreement, it is undisputed that: . . . (2) sometime following PersonalWeb’s filing of complaints in the customer cases, Amazon agreed to indemnify its customers”), 16 (“Amazon assumed the indemnification of its customers prior to the consolidation of the MDL, and Amazon has not turned away any customer who has asked for indemnification”), 23 (finding that claim preclusion applied because, inter alia, the 2011 Amazon case involved the same parties or privies as the MDL proceeding), 26 (granting the DJ action “with respect to the Category 3 allegations involving use of . . . S3”). Thus, unlike in WesternGeco, in which the existence of an obligation to indemnify was ambiguous and undefined and, therefore, insufficient, 889 F.3d at 1321, Amazon actually assumed control of the lawsuits involving its customers, defended them, and secured relief on their behalf. We find this to be much stronger evidence of a pre-existing legal relationship than that shown in WesternGeco.” slip op. at 18
Discretionary denialPatents in suitUS 7,945,544 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - Google LLC v. Agis Software Development, LLCAll claims unpatentablePTAB · Nov 19, 2019 · IPR2018-01079 · APJ Christa P Zado · IPR · Final written decision
Claims 1 and 3–9 are unpatentable as obvious over Kubala and Hammond; the Board did not find them unpatentable over the Hammond, Johnson, and Pepe combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in the field” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“2. Terms to be Construed Expressly Petitioner proposes that we construe as means-plus-function under 35 U.S.C. § 112, ¶ 6, the terms in claim 1 that include the word “means,” i.e., limitations 1.2 and 1.5 to 1.9. Pet. 10–12. Patent Owner agrees these terms should be construed as means-plus-function, and further argues we should adopt the constructions entered in the district court proceeding for the purposes of consistency across proceedings. Prelim. Resp. 9–14.10” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“creating a forced message alert”) (emphasis added); see also Ex. 1001, 10:14–17 (claim 6, “creating the forced message alert on said sender PDA/cell phone by attaching a voice or text message to a forced message alert application software packet to said voice or text message”) (emphasis added). Accordingly, by the very language of the claims, a message is forced because it is attached to a forced message alert software packet. Nothing in the claim language indicates that what makes the message forced is forcing its display without any action on the part of the recipient.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Accordingly, we are persuaded that “implementing Hammond’s” slip op. at 38
Patent outcomesUS 8,213,970 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,213,970 - Apple Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Nov 18, 2019 · IPR2018-00884 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left intact the unpatentability of claims 1–17 and 23–25 under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“suggested by the Examiner to express more clearly the applicants’ intention to convey that the network entity is not the intended end recipient device. Final Dec. 11–12. As we explained, our interpretation that “a network entity intercepting a signaling message associated with a call between a sender device of the message and an intended recipient device of the message” means that the network entity receives the message and the network entity is not the intended end recipient device is supported by the prosecution history: [T]his interpretation is consistent with the prosecution history of the application resulting in the ’552 patent, which reveals that the patent examiner suggested using the word intercepting in the claims to further clarify the applicants’ intention to convey that “the independent claims involve a network entity receiving and filtering messages that are sent between two end users.” Ex. 1002, 364–65 (first emphasis added); see also id. at 367–68 (distinguishing an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message). Id. Thus, rather than ignoring the amendment “as if it had never happened” (Req. Reh’g 3), we explained our interpretation that the Examiner suggested using “intercepting” to more clearly convey that the recited network entity is not one of the intended end user devices between which the signaling message is sent. Although Patent Owner argues that the Decision “d[oes] not appear to apply the presumption that the applicant’s decision to narrow claim 1 by amendment gave rise to a general disclaimer of the territory between the original claim and the amended claim” (Req. Reh’g 4 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740, (2002)), Patent Owner does not identify the alleged “disclaimer of the territory,” and thus fails to specifically identify how we allegedly erred. See 37 C.F.R. § 42.71(d). Nor are we apprised that we misapprehended or overlooked any matter by Patent Owner’s assertions regarding the applicants’ comments about the amendment. See Req. Reh’g 4. Patent Owner characterizes the comments as “distinguish[ing] ‘intercepting’ in this context from the disclosure in a cited reference2 directed to merely receiving a message at a network entity.” Id. This characterization is incomplete, as the reference describes a “service request [that] is sent from the service-used apparatus directly to the service-provider apparatus, not to some other apparatus.” Ex. 1002, 368 (emphasis added). As we explained in the Decision, the applicants “distinguish[ed] an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message.” Final Dec. 12 (citing Ex. 1002, 367–68).” slip op. at 4
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner’s declarant is entitled to little weight: Dr. Easttom’s declaration testimony interpreting “receiving” fails to consider the full disclosure and prosecution history of the ’552 patent, as explained above, and, thus is not entitled to substantial weight. See, e.g. Ex. 2001 ¶¶ 8–9; see also PO Resp. 6 (citing same). Additionally, Patent Owner hindered or prevented Petitioner from cross-examining Dr. Easttom, further undermining the weight given to Dr. Easttom’s testimony. See, e.g., Pet. Reply 2–6; Exs. 1011–24. Final Dec. 12 n.9.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“[t]he intercepting of call control server 112 at least includes seizing a message, which is not sent directly . . . from a client 104 to the server 112, 2 US 2003/0177363 (“Yokota”). and obstructing the message from progress while authentication processes are performed.” Req. Reh’g 5 (citing Paper 14, 4–5 (PO Sur-Reply)). Although Patent Owner cites to its Sur-Reply, we see no argument there regarding “seizing” and “obstruction.” As this was not an argument on which Patent Owner previously relied, it was not an argument that we could have misapprehended or overlooked. slip op. at 5
Claim constructionPatents in suitUS 8,539,552
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.