- Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00780 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 are unpatentable as obvious over Hogeg.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 21–23), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 23). We did not construe that term in the Decision on Institution (Dec. Inst. 26–27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 19. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 19–20 (citing Parulski Pet. Decl. ¶¶ 173–174). Prior to institution, Patent Owner did not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. In the Decision on Institution, we adopted Petitioner’s proposed definition, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 26. In the Response, Patent Owner also does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp 10–11. We maintain the definition of the level of ordinary skill in the art adopted as of institution.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“The record supports Petitioner’s argument that the system in Hogeg “targets a group of end-users” in that it assesses which of the users are, for example, at a specific location and then sends only those users a visual editing function relevant to the users’ location. For example, in a passage cited by Petitioner as to a “conditional selection process to select/distribute a subset of functions” (Pet. 33), Hogeg discloses that “if the positional data is indicative that the visual content was captured in New York, a visual content editing function which provides an overlay of the statue of liberty and/ or a sound overlay of the song New York [N]ew York may be provided.” Ex. 1004 ¶ 58, cited at Pet. 33. This system “target[s] a group of end-users” in New York based on sensor data in that other end-users—such as ones indicated as being in California—do not receive the New York overlay. Patent Owner attempts to distinguish Hogeg’s process in that the content editing functions are sent in response to image selection by the user. See PO Resp. 16 (“Thus, what Hogeg discloses is a process for sending content editing functions ad hoc based on the characteristics of specific pieces of content that are manually identified by a user. Nothing in Hogeg, however, teaches a system or process capable of targeting a group of end-users based on a sensor data condition from their mobile devices.”). This distinction, however, is not supported by the claims. Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 21
Patent outcomesUS 10,108,986 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Amphenol Corp. v. PPC Broadband, Inc.InstitutedPTAB · Oct 26, 2022 · IPR2022-00721 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–6, 8–19, 21–33, 35–43, 45–50, and 52–62 on both grounds, finding a reasonable likelihood of obviousness over Youtsey, Lionetto, and Horak.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“When applying § 325(d), we utilize a two-part framework. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Id. Second, “if either condition of [the] first part of the framework is satisfied,” we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. In the second part, we consider: (i) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (ii) whether Petitioner has pointed out sufficiently how the Examiner erred in evaluating the asserted prior art; and (iii) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art. Id. at 10–11 (citing factors (c), (e), and (f) of Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential)).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s piecemeal arguments in response to Petitioner’s analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent 9 Lionetto teaches that leaf spring 22 also provides electrical contact through the conductors. Ex. 1008, 2:34–36. from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). We do not agree with Patent Owner that one of ordinary skill in the art would have been led in a direction divergent from that taken by Patent Owner. Although we agree with Patent Owner that Lionetto attributes importance to annular leaf spring 22, Lionetto also attributes importance to conductive elastomer gasket ring 34. In particular, Lionetto expressly attributes the electrical contact to both the spring and the gasket ring. See Ex. 1008, 2:34–36 (“the electrical contact is essentially through the leaf spring 22 and a conductive elastomer 34 against which the tapered surface 27 abuts”). And, Lionetto’s claims repeat the importance of both structures in providing continuous electrical contact and RFI suppression. See id. at 2:50–58 (claim 1) (“an annular electrical spring contact member which functions to provide continuous annular outer conductor electrical contact and RFI suppression . . . even during slight conductor misalignment”), 3:14–20 (“A connector of claim 1, and further comprising an electrically conductive elastomer gasket ring, carried on said male member against which said outer end taper of said female member may engage and compensates for misalignment of said male and female connector halves when fully engaged, providing continuous circumferential electrical contact and RFI suppression.”). Thus, Lionetto supports a finding that one of ordinary skill in the art would have been prompted to use an annular spring, a conductive gasket ring, or both to provide continuous electrical contact and RFI suppression across the connector. But, we disagree with Patent Owner that Lionetto would have led one of ordinary skill in the art away from using a conductive gasket ring in Youtsey, as proposed by Petitioner, because, as explained above, Lionetto uses a conductive gasket ring and expressly attributes the benefits noted above to its use (i.e., continuous electrical contact and RFI suppression). slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,225,083 - Platform Science, Inc. v. Omnitracs, LLCAll claims unpatentablePTAB · Jun 2, 2022 · IPR2021-00187 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Moses; the Board did not reach the alternative Levesque ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had at least a Bachelor of Science degree (or equivalent) in . . . electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the field of vehicle telematics systems.” Pet. 9–10 (citing Ex. 1003 ¶¶ 25–27). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. PO Resp. 8. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’335 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. However, only terms that are in controversy need to be expressly construed and only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that the terms in the Challenged Claims are properly understood to have their ordinary and customary meaning. Pet. 2. Patent Owner does not dispute this contention. See generally PO Resp. Therefore, because no controversy regarding claim construction exits, it is not necessary for us to construe expressly any claim term.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“attempts to map to the CVP System (see PO Resp. 56–59)—Petitioner has established that Moses discloses or suggests the subject matter of those claims. The proposed combinations are not based on hindsight reconstruction; rather, they are straightforward and logical. Moses indisputably discloses a response management system with automated rule-based alert notifications and response deployment capabilities. The only arguable differences Patent Owner alleges are whether Moses discloses storing information about something happening/occurrence versus more general information and whether Moses discloses providing responses that recommend a particular action be taken versus responses that are merely informational. We find Petitioner’s evidence from Moses to be particularly strong that a skilled artisan would have known to store information about occurrences and provide responses including recommended actions. Thus, for all the reasons discussed above (supra § III.B.1) and here, we give Petitioner’s evidence of obviousness substantial weight. Additionally, we disagree with most of Patent Owner’s arguments in response and we do not give Patent Owner’s evidence of objective indicia of nonobviousness substantial weight for the reasons discussed above (supra § III.C). But, even if we were to have found that Patent Owner established a nexus, given its tenuous connection to the only difference Patent Owner alleges to exist between the systems disclosed by the prior art and the claimed invention, we find that the evidentiary weight favoring obviousness significantly outweighs the most probative weight that could be given to the objective evidence presented. We also find that the balance weighs strongly in Petitioner’s favor regarding claims 2–7, 9–16, and 18–22 for the same reasons discussed above and additionally because Patent Owner has not established that the CVP System practices any of these claims or that there is a nexus between the objective indicia of nonobviousness and any of these claims. Accordingly, on balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1–22 of the ’335 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 52
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As stated in Fox Factory, “presuming nexus is appropriate when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Fox Factory, 944 F.3d at 1373 (quotations omitted). Patent Owner does not assert that the CVP System is entitled to a presumption of nexus. See generally PO Resp. 55–61. Furthermore, Patent Owner does not provide any evidence or argument to even suggest that the CVP System and the claimed invention are coextensive. Id. Exhibit 2015 evidences that the CVP System includes a myriad of features that would allegedly provide important benefits to its customers. Therefore, Patent Owner is not entitled to a presumption of nexus because, even presuming the CVP System incorporates the patented invention, it cannot be disputed that the claimed invention is only one of many components included in the CVP System. See generally Ex. 2015. Of course, our nexus inquiry does not end there because Patent Owner is still afforded an opportunity to prove nexus by showing that the alleged commercial success achieved with the CVP System is in some way a direct result of the unique characteristics of the claimed invention. But on this front, Patent Owner again fails to provide any foundational basis to establish a link between the claimed invention and the evidence of commercial success. Instead, Patent Owner simply states, “[b]ecause the [CVP System] embodies all the limitations of the independent claims of the ’335 patent, sufficient nexus exists between [Patent Owner’s] commercial success and the claims.” PO Resp. 55. And after Petitioner pointed out that Patent Owner had failed to establish any specific link between the claimed invention and commercial success evidence (Pet. Reply 25–26), Patent Owner responded as follows: “It is not necessary, however, that the patented invention be solely responsible for the commercial success, in order for this factor to be given weight appropriate to the evidence, along with other pertinent factors.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991); see also Oren Techs., LLC v. Proppant Express Invs. LLC, No. 2019-1778, 2021 WL 3120819, at *7 (Fed. Cir. July 23, 2021). As [Patent Owner] explained, [Petitioner’s CVP System] is commercially successful at least in part due to the advertised remote vehicle monitoring functionality. See Exs. 2016-2023. This is more than adequate to establish commercial success. Oren Techs, 2021 WL 3120819, at *7. PO Sur-reply 25–26. Patent Owner has not persuasively shown by a preponderance of the” slip op. at 47
Patent outcomesUS 9,147,335 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,147,335 - Airbus Americas, Inc. v. Harper Engineering CompanyInstitution deniedPTAB · May 20, 2022 · IPR2022-00195 · APJ James A Tartal · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we conclude that the information does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art in light of the subject matter of the ’244 patent, which is not limited to “aeronautical” or “aerospace” applications, claims a “stowage bin assembly” and a “hinge assembly,” and expressly refers broadly to “transportation vehicles” as typically including “overhead storage compartments,” identifying “airplanes” only as an “example” of a “transportation vehicle.” Ex. 1001, code (57), 1:12–15, 7:31–8:64. Patent Owner’s argument appears to be no more than a transparent attempt to baselessly suggest that Dr. Codd should be excluded from testifying because he lacks “the proper background or sufficient experience in the field” under Patent Owner’s unreasonable proposed level of ordinary skill. See Prelim. Resp. 17–18. Dr. Dershowitz’s testimony in support of Patent Owner on the level of ordinary skill is not credible because it is inconsistent with the ’244 patent and the asserted art. Ex. 2001 ¶¶ 58–63. For example, Dr. Dershowitz acknowledges that “[h]inges are common to many mechanical systems,” but then suggests “being familiar with hinges in general may not directly apply to the specifics of this invention” without identifying anything “specific” to the ’244 patent that requires the level of skill Dr. Dershowitz endorses. Id. ¶ 62. Dr. Dershowitz suggests “hinges used in storage solutions that are stationary have fewer requirements related to mass and volume and are not subject to the same forces and stresses that are experienced on an aircraft,” however, the challenged claims of the ’244 patent do not preclude “stationary” storage solutions, do not require anything pertaining to “mass and volume,” and are not required to withstand any “forces and stresses” experienced on an aircraft. Dr. Dershowitz’s opinion that “[d]ue to the unique environment and specialized nature of the technology at issue” a person of ordinary skill in the art would have needed “to have an educational background and experience that is specific to the aerospace field” is not supported by the ’244 patent or the asserted art. See id. ¶ 63; see also Ex. 1005 ¶ 2 (Rheaume stating it “relates to a hinge assembly and, more particularly to a hinge assembly for retaining a door of a storage bin”); Ex. 1006 ¶ 2 (Savian stating it “relates generally to overhead storage bin assemblies”); Ex. 1008, 3:24–27 (Frazier stating it discloses “improvements to standard luggage and storage bins commonly found in commercial aircraft as well as other aircraft, buses, passenger vans, and other vehicles”). Dr. Dershowitz’s misapprehension of the appropriate level of ordinary skill in the art is a consideration we apply in weighing his opinion of how a” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Dr. Dershowitz’s testimony in support of Patent Owner on the level of ordinary skill is not credible because it is inconsistent with the ’244 patent and the asserted art. Ex. 2001 ¶¶ 58–63. For example, Dr. Dershowitz acknowledges that “[h]inges are common to many mechanical systems,” but then suggests “being familiar with hinges in general may not directly apply to the specifics of this invention” without identifying anything “specific” to the ’244 patent that requires the level of skill Dr. Dershowitz endorses. Id. ¶ 62. Dr. Dershowitz suggests “hinges used in storage solutions that are stationary have fewer requirements related to mass and volume and are not subject to the same forces and stresses that are experienced on an aircraft,” however, the challenged claims of the ’244 patent do not preclude “stationary” storage solutions, do not require anything pertaining to “mass and volume,” and are not required to withstand any “forces and stresses” experienced on an aircraft. Dr. Dershowitz’s opinion that “[d]ue to the unique environment and specialized nature of the technology at issue” a person of ordinary skill in the art would have needed “to have an educational background and experience that is specific to the aerospace field” is not supported by the ’244 patent or the asserted art. See id. ¶ 63; see also Ex. 1005 ¶ 2 (Rheaume stating it “relates to a hinge assembly and, more particularly to a hinge assembly for retaining a door of a storage bin”); Ex. 1006 ¶ 2 (Savian stating it “relates generally to overhead storage bin assemblies”); Ex. 1008, 3:24–27 (Frazier stating it discloses “improvements to standard luggage and storage bins commonly found in commercial aircraft as well as other aircraft, buses, passenger vans, and other vehicles”). Dr. Dershowitz’s misapprehension of the appropriate level of ordinary skill in the art is a consideration we apply in weighing his opinion of how a person of ordinary skill in the art would have understood the prior art at issue.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms require construction. Pet. 10 (citing Ex. 1003 ¶¶ 64–66). Patent Owner proposes an express construction for “stowage bin door” and “self-opening mechanism.” Prelim. Resp. 13– 17. We find no claim term requires an express construction in reaching our decision for the reasons below to deny institution of inter partes review. See Vivid Techs., 200 F.3d at 803.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,801,244 - Airbus Americas, Inc. v. Harper Engineering CompanyInstitution deniedPTAB · May 20, 2022 · IPR2022-00192 · APJ James A Tartal · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 2–6 or 12–17 were unpatentable; claims 1 and 7–11 had been disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“obvious over Rheaume and Savian. Pet. 32–51. Each of claims 2–6 and 12–17 requires a “hinge assembly” that includes “a self-opening mechanism.” Ex. 1001, 7:47–8:8, 8:27–64. Petitioner relies only upon Savian as teaching a “self-opening mechanism.” Pet. 32–34, 45. We focus our discussion on the “self-opening mechanism” limitation because it is dispositive and, for the reasons that follow, we determine that Petitioner has not shown sufficiently that Savian teaches this limitation.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“More importantly, Petitioner provides no sufficient reasoning and cites no support for construing the required “self-opening mechanism” to be so broad as to include a mechanism that provides “only some damping against gravity to be ‘self-opening.’” Reply 2. We agree with Patent Owner that, contrary to Petitioner’s assertion, a component that only opposes opening is not a “self-opening mechanism.” See Sur-reply 2. In short, as shown by Patent Owner, the plain and ordinary meaning of “self-opening mechanism” in the context of the ’315 patent, as required by claims 2–6 and 12–17, is a mechanism that acts on its own accord to open the stowage bin door. See Prelim. Resp. 16 (citing Ex. 2006). An express construction of any other claim term is not necessary for” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“obvious over Rheaume and Savian. Pet. 32–51. Each of claims 2–6 and 12–17 requires a “hinge assembly” that includes “a self-opening mechanism.” Ex. 1001, 7:47–8:8, 8:27–64. Petitioner relies only upon Savian as teaching a “self-opening mechanism.” Pet. 32–34, 45. We focus our discussion on the “self-opening mechanism” limitation because it is dispositive and, for the reasons that follow, we determine that Petitioner has not shown sufficiently that Savian teaches this limitation.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“9 Patent Owner also argues that we should exercise our discretion under 35 U.S.C. §325(d) to deny institution of inter partes review. Prelim. Resp. 36–46. We deny institution of inter partes review for the reasons provided above and, therefore, do not reach Patent Owner’s arguments regarding discretionary denial.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,760,315 - Hulu, LLC v. Divx, LLCInstitution deniedPTAB · Mar 15, 2022 · IPR2021-01419 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7, 8, 10, and 13–16 were unpatentable over either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has not established a reasonable 1 This Petition is Petitioner’s second petition challenging claims 1, 2, 4, 7, 8, 10, and 13–16 of the ’443 patent. As noted below, Petitioner also filed a petition challenging the same claims of the ’443 patent in IPR2021-01418. Petitioner filed a Ranking and Explanation of Material Differences Between Petitions (Paper 3), where Petitioner discusses the two petitions. Because of the determination we reach on the merits, we do not address the parties’ arguments as to whether two petitions are necessary. likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Bajaj, however, testifies that he disagrees with Dr. Storer’s definition of the level of ordinary skill because the definition “exceeds the qualifications of a person of ordinary skill in the art.” Ex. 2002 ¶ 25. Nonetheless, Dr. Bajaj does not propose a specific level of ordinary skill in the art and states that, for purposes of his declaration, he applies Dr. Storer’s definition of the level of ordinary skill in the art. Id. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’443 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt and apply Petitioner’s position as to the level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“prosecution history sheds substantial light on how the applicants understood the disputed claim language. As set forth above, in response to rejections based on Candelore-II, the applicants raised two primary arguments. First, the applicants argued that Candelore-II “does not . . . appear to disclose partial encryption of encoded frames of video by encrypting at least one block of data within the partially encrypted frame so that only a portion of the encoded frame is encrypted.” Ex. 1103, 250. Second, and importantly, the applicants argued that Candelore-II’s failure to disclose partial encryption of encoded frames of video “is highlighted by the Candelore patent’s failure to disclose DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame as recited in claim 1.” Id. at 251 (first emphasis added). Critically, the very next sentence begins with the word instead, and states, “[i]nstead, the Candelore patent discloses pointers that point to the location of encrypted portions of the video data relative to the file.” Id. (emphases added). These two sentences from the applicants’ argument directly contrast the recited “offset value” language with Candelore-II’s disclosure. Specifically, the applicants sought to distinguish Candelore-II because its pointers are relative to the file. We find that by contrasting Candelore-II’s pointers, the applicants “ma[d]e clear that the invention does not include a particular feature”— pointers that are relative to the file. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). And, we also find that the applicants’ arguments constitute a “clear and unmistakable disclaimer” of an offset value that points to the start of an encrypted block within an encoded frame, where the offset value is relative to the file. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012). Although we agree with Petitioner that the applicants “never raised a distinction between offset values ‘relative to a file’ and offset values ‘relative to a frame’ at any point during prosecution,” we do not agree with Petitioner that the applicants “never said that offset values relative to a file are excluded from the scope of the claim.” Prelim. Reply 10. Rather, we find no other way to interpret the applicants’ arguments. As noted above, the applicants specifically stated that Candelore-II fails to disclose “DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame’” and then stated that “[i]nstead,” Candelore-II “discloses pointers that point to the location of encrypted portions of the video data relative to the file.” The applicants’ argument specifically identifies the claim language at issue here and specifically says that it is not disclosed because Candelore-II discloses something else instead.11 Accordingly, for these reasons, we find that the applicants disclaimed “pointers that point to the location of encrypted portions of the video data relative to the file.”” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“regarding the meaning of “an offset value that points to the start of an encrypted block within an encoded frame,” we determine that the applicants disclaimed an offset value that is relative to the file. See supra § II.A.2. On the present record, we find Patent Owner’s argument and evidence persuasive regarding Candelore-II’s disclosure. In particular, Patent Owner identifies the teachings of Candelore-II directed to its pointers, and Candelore-II’s description and Figure 3 support Patent Owner’s argument that Candelore-II’s pointers are relative to the file. See, e.g., Prelim. Resp. 42 (citing Ex. 1106 ¶ 31, Fig. 3). Additionally, Petitioner does not contest Patent Owner’s position that Candelore-II teaches pointers that are relative to the file. See generally Pet.; Prelim. Reply. Further, as applied to the combination, Petitioner does not propose modifying Candelore-II’s pointers such that they are not relative to the file. See, e.g., Pet. 30–36 (discussing motivation and reasonable expectation of success), 41–53 (discussing, inter alia, limitations [1f], [1h], [1i], and [1j]). Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution of the ’443 patent, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [1j] and, hence, claim 1. d. Independent Claim 7 and Dependent Claims 2, 4, 8, 10, 14, and 16 As noted above, limitation [7j] of independent claim 7 recites the same “offset value” language as limitation [1j] and Petitioner relies on its arguments and evidence directed to limitation [1j] in its discussion of limitation [7j]. See Pet. 72–73 (limitation [7j]). For the same reasons discussed above, we find that the same deficiency regarding claim 1 applies equally to claim 7 and the claims that depend from claim 1 or claim 7— claims 2, 4, 8, 10, 14, and 16. Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [7j] and, via their dependency from claim 1 or claim 7, the subject matter of dependent claims 2, 4, 8, 10, 14, and 16.” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,257,443 - Interactive Communications International, Inc. v. Blackhawk Network, Inc.All claims unpatentablePTAB · Mar 15, 2022 · PGR2020-00084 · APJ Frederick C Laney · PGR · Final written decision
Claims 1–19, 21–42, and 44–53 are unpatentable as obvious over Szrek; claims 20 and 43 are unpatentable as obvious over Szrek and Gilmore.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s contention persuasive. We agree that the description of a POSA in this case, which is most consistent with the scope and content of the ’894 patent and the prior art, properly includes a working knowledge of both POS activation systems and lottery systems. Therefore, the level of skill in the art for this case is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Although Patent Owner’s proposal most accurately reflects the background of the hypothetical person of ordinary skill in the art, the differences between the parties’ proposed formulations are not material to any issue in dispute and the parties do not contend otherwise. All of the findings and conclusions set forth below would have been the same had we instead adopted Petitioner’s proposed formulation.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“After considering the parties’ arguments and evidence, we determine that the plain meaning of “transaction processor”/“transaction processor system” applies, which is a processor [system] that processes transactions between two devices.8 We agree with Petitioner that adding “third party” to the plain meaning simply creates uncertainty. For example, it is unclear whether “third party” imports a limitation for the owner/manufacturer of the processor/system to be a different entity than the owner/manufacturer of the retailer and lottery administration devices (which is unrelated to the functionality or structure of the processor/system) or whether “third party” 8 Rather than “between two devices,” Patent Owner refers to “between a lottery administration system and retailer.” PO Resp. 20. Because other elements in the claims dictate the particular devices with which the transaction processor communicates, we determine that it would be improper to import that limitation into the meaning of “transaction processor”/“transaction processor system.” Nevertheless, even if those particular devices were imported, it would not change our obviousness analysis because no issue rests on whether the alleged transaction processor in the prior art is processing a transaction between a lottery administration system and retailer. imports a limitation for the processor/system to be a separate and distinct device from the retailer point of sale and lottery administration devices. Although Patent Owner’s counsel made clear that the latter interpretation was intended (Tr. 41:10–42:7, 43:2–43:15), we do not agree that the use of the words “third party” in Figures 7 and 8 of the ’894 patent limits the “transaction processor” and “transaction processor system” to being a separate and distinct device from the retailer and lottery administration devices. Identifying the transaction processor as a “Third Party Processor” in two illustrative figures depicting a process (Ex. 1001, Figs. 7, 8), without anything more in the written description to explain why a “third party processor” may be an important or significant aspect of the transaction processor or invention as a whole, does not justify limiting the plain meaning of a “transaction processor” to the “third party processor” shown. Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (explaining that an invention will only be limited to its preferred embodiment when “the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Therefore, we construe “transaction processor” and “transaction processor system” in accordance with their plain meaning, which is a processor [system] that processes transactions between two devices. Additionally, we decline to limit “transaction processor” and “transaction processor system” to “third party” processors or systems because the intrinsic record does not justify such a modification and it would create uncertainty. However, we do construe the “transaction processor”/“transaction processor system,” “retailer”/“retailer POS,” and “lottery administration system” as separate and distinct components.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“processing unit, causes payment confirmation for the pre-printed lottery ticket to be provided to the lottery administration system. And Patent Owner disputes whether Petitioner has sufficiently shown Szrek discloses the transaction processor (store back office 240) provides payment confirmation to the lottery administration system (game provider 250). PO Resp. 13–14, 48–53; Sur-reply 19–20. We are persuaded by Petitioner, however, that Szrek’s description of the inter-operational characteristics of store back office 240, cash register/POS terminal 230, and game provider system 250 would have suggested to a skilled artisan at the time of the invention that store back office 240 would include an instruction to cause payment confirmation for the pre-printed lottery ticket to be provided to the game provider system 250. Ex. 1007, 4:28–29, 4:56–67, 5:17–20, 6:44–47; Ex. 1005 ¶¶ 62–64.” slip op. at 43
Patent outcomesUS 10,769,894 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,769,894 - Netflix, Inc. / Hulu, LLC v. Divx, LLCAll claims unpatentablePTAB · Jan 26, 2022 · IPR2020-00614 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–6, 9, 10, and 13–19 are unpatentable as obvious over Ueno, Fetkovich, and Demos.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“function” as recited in claim 1 to teach or suggest the “frame decryption function” recited in claim 14. See, e.g., Pet. 76. This reliance is due, in part, to the fact that the cited “references teach using symmetric algorithms,” which use the same key for encrypting and “decrypting the selected portions of encrypted frames in accordance with the frame decryption information.” Id. at 78 (citing Ex. 1004, 1:16–20; Ex. 1005, 6:52–56; Ex. 1006, 27:65– 28:1; Pet. §§ VI.A.1, VI.A.5 (claim 4); Ex. 1003 ¶ 257). Accordingly and as we determined in our Institution Decision, “the encryption parameters are the same for encryption and decryption” in Petitioner’s challenge. Inst. Dec. 8.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“that Patent Owner “is not entitled to a presumption of nexus when the claimed features constitute a small part of the claimed product and are far from coextensive.” Id. Patent Owner asserts and Dr. Nielsen testifies that “DivX implemented its inventive partial encryption [method or approach] into DivX’s Digital Right Management Systems” and each cite to Exhibit 2020, a claim chart comparing challenged claims 1, 2, 4, 5, 10, 14, and 17–19 of the ’673 patent to features of DivX’s Decoder Software Development Kit (SDK). PO Resp. 11; Ex. 2008 ¶ 61. Patent Owner does not assert or explain that it is arguing secondary considerations of non-obviousness, does not attempt to establish a nexus between the claimed features and Patent Owner’s commercial product, and does not discuss or explain Exhibit 2020 in any level of detail. See generally PO Resp.; see also Pet. Reply 26 n.15 (citing Ex. 1029, 131:25–132:20) (Petitioner arguing that “Exhibit 2020 was not prepared by an expert witness or discussed in briefing”). For these reasons, we determine that a presumption of nexus is inappropriate here––Patent Owner does not provide an analysis demonstrating that its product(s) are coextensive (or nearly coextensive) with the challenged claim. See Lectrosonics, Paper 33 at 33. As such, we proceed to the second step of the analysis under Fox Factory.” slip op. at 52
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“Exhibits 2004, 2005, 2006, 2010, and 2020 for not being authenticated (Fed. R. Evid. 901(a)), containing inadmissible hearsay (Fed. R. Evid. 801(c), 802; 37 C.F.R. § 42.53), improper opinions (Fed. R. Evid. 701, 602), and lacking relevance (Fed. R. Evid. 402). Mot. Ex. 6–10. Petitioner’s Motion to Exclude is dismissed as moot with respect to Exhibit 2020 because our decision would not be affected by the admission or exclusion of that exhibit—we do not rely on it in reaching our conclusion as to the patentability of the challenged claims.” slip op. at 77
Patent outcomesUS 7,295,673 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,295,673 - Intel Corporation v. Parkervision, Inc.All claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01265 · APJ Bart A Gerstenblith · IPR · Final written decision
Claim 3 is unpatentable under §103 over Tayloe and the TI Datasheet; the Board did not reach the Tayloe and Kawada ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“proposes that it be construed to mean “an element that stores a nonnegligible amount of energy from an input electromagnetic (EM) signal.” Pet. Reply 10. Petitioner contends that its proposed construction expressly tracks the definition provided in the ’551 patent for “storage element,” which the parties agree is synonymous with “storage module.” Id.; see id. at 10 n.2. In particular, Petitioner asserts that the ’551 patent states: “Storage modules . . . refer to systems that store non-negligible amounts of energy from an input EM signal.” Id. (quoting Ex. 2007, 66:65–67). Petitioner notes that the ’551 patent also states that “the ‘goal of the storage modules’ is ‘to store non-negligible amounts of energy transferred from the EM signal’” and that the patent “specifically distinguishes storage elements from holding elements on this basis.” Id. at 10–11 (quoting Ex. 2007, 66:59–67 (“Holding modules . . . identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of ‘holding’ a voltage value. Storage modules . . . on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal.”)). Thus, Petitioner contends “‘storage element’ should be construed accordingly.” Id. at 11 (citation omitted).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Owner fails to “establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. In particular, neither Patent Owner nor Dr. Steer makes any attempt to establish nexus with the elements recited in claim 3 based on a presumption of co-extensiveness or otherwise. Each instance in which Dr. Steer mentions claim 3, he only ties the discussion to energy transfer systems or energy sampling in general, which is based on Patent Owner’s proposed claim construction that we do not adopt. See, e.g., Ex. 1022 ¶¶ 229 (“energy transfer (energy sampling) system – of claim 3”), 230 (“energy sampling as set forth in claim 3”), 233 (“[u]sing energy sampling . . . as set forth in claim 3”), 234 (“energy sampling as set forth in claim 3”), 235 (same), 236 (same), 237 (“using the energy transfer (energy sampling) system of claim 3”), 238 (same), 239 (“energy sampling system as set forth in claim 3”). Thus, we find that Patent Owner fails to establish that a presumption of nexus is warranted and similarly fails to establish nexus absent the presumption. Accordingly, for the reasons above, Patent Owner has not satisfied its burden to establish nexus. See WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999) (patent owner “bears the burden of showing that a nexus exists”).” slip op. at 64
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - Veeam Software Corp. v. Hybir Inc.Some claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision
Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76
Patent outcomesUS 8,051,043 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,051,043
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.