• Intel Corporation / Opensky Industries, LLC v. VLSI Technology LLCAll claims unpatentable
  PTAB · May 12, 2023 · IPR2022-00366 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 14, 17, 18, 21, 22, and 24 are unpatentable as obvious over the Shaffer-based and Chen-based grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

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

    “We do not read the specification’s disclosure of alternative embodiments as establishing that the claimed “request” mandates deciding whether to act on the request. Nothing in the specification describes a request that itself requires independent assessment. Stated otherwise, although any given “request” could be evaluated to determine what, if any, action to take in response, any such evaluation does not depend on the nature of the request. The claims do not include language restricting how a request is processed, but instead read on systems or methods in which a certain 7 As noted, Patent Owner hinges its arguments on construing “request.” See Tr. 50:16–18. Independent claim 14’s programmable clock controller includes instructions to perform a method that, like claim 1’s method, receives the request provided by the first master device and provides the claimed outputs without reciting any intervening assessment of the request. Independent claim 18 similarly recites that a clock controller coupled to an arbiter is configured to adjust a variable clock frequency of the bus in response to receiving the request from the first master device, without reciting any intervening assessment of the request. specification is consistent with a system that makes no independent assessment of a request. The example states that “[t]he clock controller can output a variable clock frequency that varies in response to one or more inputs from the at least one master device.” Id. at 2:38–40. This exemplary embodiment supports Petitioner’s contention that we should not construe “request” as requiring independent assessment before acting on the request.” slip op. at 8

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

    “While Chen does not expressly disclose power savings, the record supports a finding that skilled artisans would have understood power savings as an important consideration. See Ex. 1056, 386:2–4 (Patent Owner’s expert, Dr. Conte, testifying in the litigation that “power savings in designing a processor” is “extremely important”). Indeed, Terrell discloses the minimum frequency that allows the processing elements to function correctly while using the least amount of power.” Ex. 1005 ¶ 5. We conclude therefore that the prospect of achieving power savings would have motivated skilled artisans to operate Chen’s system at a reduced clock frequency when not required by performance demands. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797–99 (Fed. Cir. 2021))). Patent Owner contends that Chen and Terrell have opposite goals because Chen focuses on increasing frequency for performance while Terrell focuses on reducing frequency for power savings. PO Resp. 32–37. Petitioner, however, explains how the teachings would work together to “select a clock frequency that increases the devices’ frequency only when needed, to reduce power consumption, even if the devices can use higher speeds.” Pet. 45. Such a combination is consistent with Chen’s teachings of increasing frequency for certain operations, and also consistent with Terrell’s teachings of reducing frequency when possible. In this way, we credit Dr. Jacob’s testimony that the combination would have balanced “the inherent trade-off between highest performance at the highest cost, and lower (but perhaps still acceptable) performance at a lower cost.” Ex. 1055 ¶ 112. Thus, the combined system Petitioner asserts would have been able to operate at reduced frequency (conserving power) in low-activity times and increased frequency when the system required higher performance. Id. ¶ 117. performance demand, we do not agree with Patent Owner that the combination defeats Chen’s intended purpose. See PO Resp. 37–42. Patent Owner’s interpretation, that Chen requires maximum speed at all times, is implausible in light of Terrell’s recognition that systems may spend time in an idle state (Ex. 1004 ¶ 54), and Chen’s disclosure of operating devices below their maximum speed (Ex. 1003, 3:42–43 (“I/O devices which normally operate at 66 M[H]z can be operated at 50 M[H]z.”)). We conclude that Chen’s “principle of operation and stated goal” are preserved by the asserted combination, in which bus speed is reduced when performance needs allow and then increased to the limit of a device’s capabilities when required.” slip op. at 32

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

    “The IEEE article cited by Patent Owner is not sufficient evidence to demonstrate the requisite nexus. Intel’s employee testified that it takes years and thousands of engineers to build a new generation of processors because such devices include thousands of features and enhancements. Ex. 1058, 811:2–12. Petitioner notes that Patent Owner accused only the Speed Shift feature of infringing the ’759 patent and that Patent Owner’s damages expert, Dr. Sullivan, “conceded that many of the thousands of other features ‘have nothing to do with what [Patent Owner] accuses.’” Pet. Reply 23 (quoting Ex. 1057, 690:19–691:24). Petitioner additionally points out that, in a subsequent trial, Patent Owner’s expert agreed that Intel would have sold the accused products regardless of the alleged infringement. Id. (citing Ex. 1061, 771:13–22 (testifying that Intel would have made the same sales, even if the jury found the products not to infringe)). The record before us does not show that Intel’s product or products underlying the infringement verdict are coextensive with “the invention disclosed and claimed.” See Fox Factory, 944 F.3d at 1373, 1377; see Facebook, Inc. v. Express Mobile Inc., IPR2021-01457 Paper 38 at 76–80 (PTAB March 14, 2023) (concluding an infringement verdict was insufficient to establish nexus). Rather, the record shows that the accused products contained many features beyond those relevant to the ’749 patent. Ex. 1057, 690:19–691:24; Ex. 1058, 815:16–816:21. information that would allow us to weigh the extent of Intel’s commercial success based on the alleged sales of products infringing the claimed invention. In particular, the record does not reflect whether the infringing device represented an increase in market share over a prior, noninfringing device or any other aspect that would allow us to place the verdict’s amount in context. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (“An important component of the commercial success inquiry in the present case is determining whether Applied had a significant market share.”). On this record we do not find evidence of commercial success sufficient for purposes of establishing non-obviousness.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner and deny Patent Owner’s motion because Dr. Jacob’s cross-examination and his confirmation of the declarations in this proceeding address Patent Owner’s hearsay concern.11 IPR testimony is 10 Petitioner does not dispute that Dr. Jacob’s Original Declarations are offered “to prove the truth of the matter asserted.” PO Mtn. Exclude 3; Fed. R. Evid. 801(c)(2). 11 Patent Owner’s argument that OpenSky did not contact Dr. Jacob before filing its Petition with Dr. Jacob’s Declarations is not persuasive in light of his willingness to testify in this proceeding. PO Mtn. Exclude 6–10. not allow an expert to “testify” in person at an IPR hearing. See 37 C.F.R. § 42.53 (a)–(b)(1); 35 U.S.C. § 316(a)(5); 35 U.S.C. § 23. Testimony is instead submitted as evidence in the form of affidavits and deposition transcripts. See 37 C.F.R. §§ 42.53, 42.63. Our rules, therefore, contemplate that declarants in IPRs do not “testify” in the traditional sense of giving live testimony in a courtroom. As other Board decisions have noted, “[w]ithout exception, the Board accepts the filing of sworn witness declarations in lieu of live testimony in administrative patent trials.” Grünenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00062, Paper 32 at 15 (PTAB Oct. 29, 2019). Our procedures adopt that practice for its efficiency and ensure fairness by allowing cross-examination. See id.; 37 C.F.R. § 42.51(b)(ii). Dr. Jacob has made himself available for cross-examination and confirmed that the declarations express his opinions here, in this proceeding. Thus, in these respects, the Original Declarations are no different than the other testimony relied on by the parties, and are not hearsay subject to exclusion.” slip op. at 41

  Patent outcomesUS 7,725,759 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,725,759
• Intel Corporation / Opensky Industries, LLC v. VLSI Technology LLCAll claims unpatentable
  PTAB · May 12, 2023 · IPR2021-01064 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 14, 17, 18, 21, 22, and 24 are unpatentable as obvious over the asserted Shaffer- and Chen-based grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

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

    “We do not read the specification’s disclosure of alternative embodiments as establishing that the claimed “request” mandates deciding whether to act on the request. Nothing in the specification describes a request that itself requires independent assessment. Stated otherwise, although any given “request” could be evaluated to determine what, if any, action to take in response, any such evaluation does not depend on the nature of the request. The claims do not include language restricting how a request is processed, but instead read on systems or methods in which a certain” slip op. at 8

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

    “While Chen does not expressly disclose power savings, the record supports a finding that skilled artisans would have understood power savings as an important consideration. See Ex. 1056, 386:2–4 (Patent Owner’s expert, Dr. Conte, testifying in the litigation that “power savings in designing a processor” is “extremely important”). Indeed, Terrell discloses the minimum frequency that allows the processing elements to function correctly while using the least amount of power.” Ex. 1005 ¶ 5. We conclude therefore that the prospect of achieving power savings would have motivated skilled artisans to operate Chen’s system at a reduced clock frequency when not required by performance demands. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797–99 (Fed. Cir. 2021))). Patent Owner contends that Chen and Terrell have opposite goals because Chen focuses on increasing frequency for performance while Terrell focuses on reducing frequency for power savings. PO Resp. 32–37. Petitioner, however, explains how the teachings would work together to “select a clock frequency that increases the devices’ frequency only when needed, to reduce power consumption, even if the devices can use higher speeds.” Pet. 45. Such a combination is consistent with Chen’s teachings of increasing frequency for certain operations, and also consistent with Terrell’s teachings of reducing frequency when possible. In this way, we credit Dr. Jacob’s testimony that the combination would have balanced “the inherent trade-off between highest performance at the highest cost, and lower (but perhaps still acceptable) performance at a lower cost.” Ex. 1055 ¶ 112. Thus, the combined system Petitioner asserts would have been able to operate at reduced frequency (conserving power) in low-activity times and increased frequency when the system required higher performance. Id. ¶ 117. performance demand, we do not agree with Patent Owner that the combination defeats Chen’s intended purpose. See PO Resp. 37–42. Patent Owner’s interpretation, that Chen requires maximum speed at all times, is implausible in light of Terrell’s recognition that systems may spend time in an idle state (Ex. 1004 ¶ 54), and Chen’s disclosure of operating devices below their maximum speed (Ex. 1003, 3:42–43 (“I/O devices which normally operate at 66 M[H]z can be operated at 50 M[H]z.”)). We conclude that Chen’s “principle of operation and stated goal” are preserved by the asserted combination, in which bus speed is reduced when performance needs allow and then increased to the limit of a device’s capabilities when required. Patent Owner argues additionally that the asserted combination would have required modifying devices to support reduced speed, and that the required modifications would increase cost and complexity such that skilled artisans would not have made the combination. PO Resp. 42–47. Petitioner responds, on the other hand, that devices with thousands of transistors were commonplace at the time of the ’759 patent’s invention. Pet. Reply 18 (citing Ex. 1055 ¶¶ 118–119). We agree with Petitioner that the added complexity required by the asserted combination would not have risen to a level that skilled artisans would have been dissuaded from making the combination. In particular, we agree that, by 2005, when the application resulting in the ’759 patent was filed, Terrell’s approach did not present a significant technological obstacle to a skilled artisan seeking to modify Chen’s system. See Pet. Reply 18. We credit Dr. Jacob’s testimony that technology had advanced considerably following Chen’s mid-1990s disclosure such that the modification would have imposed a modest likewise would minimize any challenge skilled artisans would have had with modifying Chen’s master devices. See PO Resp. 42–43. Those devices would have required only modest changes to work with the modified system, and skilled artisans implementing Chen’s system in 2005 would have done so with integrated devices, thus eliminating Patent Owner’s asserted need to modify a host of disparate devices. See Ex. 1055 ¶¶ 119, 132–137. Patent Owner further challenges Petitioner’s reliance on Terrell’s statement that its teachings apply to “[a]n on-chip bus that hosts two or more bus masters, all of which share a common bus clock.” Ex. 1004 ¶¶ 6, 8; PO Resp. 47–48 (citing Pet. 46). Patent Owner points out that Chen’s bus 40 is a peripheral, off-chip bus and implicates different design constraints. Id. Petitioner contends that, regardless of whether Chen’s bus is itself an on-chip bus, technological progression after Chen resulted in master devices moving on-chip and using an on-chip bus. Pet. Reply 19 (citing Ex. 1055 ¶¶ 132–137). Notwithstanding Dr. Jacob’s testimony that Chen’s system would be implemented differently by the time of the ’759 patent, the dispute does not change our determination because, as discussed above, Petitioner has shown that skilled artisans would have made the asserted combination, aside from Terrell’s statement about on-chip buses. Terrell’s statement of particular applicability to on-chip buses does not undermine its separate statement regarding the desirability of reducing power consumption by reducing clock frequency when possible. Ex. 1004 ¶ 5. That express teaching shows that skilled artisans understood the possibility of reducing power by reducing frequency. We conclude that skilled artisans had reason to arrive at the asserted combination.” slip op. at 32

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

    “When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming 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.” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))).” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner and deny Patent Owner’s motion because Dr. Jacob’s cross-examination and his confirmation of the declarations in this proceeding address Patent Owner’s hearsay concern.11 IPR testimony is 10 Petitioner does not dispute that Dr. Jacob’s Original Declarations are offered “to prove the truth of the matter asserted.” PO Mtn. Exclude 3; Fed. R. Evid. 801(c)(2). 11 Patent Owner’s argument that OpenSky did not contact Dr. Jacob before filing its Petition with Dr. Jacob’s Declarations is not persuasive in light of his willingness to testify in this proceeding. PO Mtn. Exclude 6–10. not allow an expert to “testify” in person at an IPR hearing. See 37 C.F.R. § 42.53 (a)–(b)(1); 35 U.S.C. § 316(a)(5); 35 U.S.C. § 23. Testimony is instead submitted as evidence in the form of affidavits and deposition transcripts. See 37 C.F.R. §§ 42.53, 42.63. Our rules, therefore, contemplate that declarants in IPRs do not “testify” in the traditional sense of giving live testimony in a courtroom. As other Board decisions have noted, “[w]ithout exception, the Board accepts the filing of sworn witness declarations in lieu of live testimony in administrative patent trials.” Grünenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00062, Paper 32 at 15 (PTAB Oct. 29, 2019). Our procedures adopt that practice for its efficiency and ensure fairness by allowing cross-examination. See id.; 37 C.F.R. § 42.51(b)(ii). Dr. Jacob has made himself available for cross-examination and confirmed that the declarations express his opinions here, in this proceeding. Thus, in these respects, the Original Declarations are no different than the other testimony relied on by the parties, and are not hearsay subject to exclusion. Indeed, during his cross-examination, Dr. Jacob confirmed that the Original Declarations set forth his opinions regarding the ’759 patent. Ex. 2066, 69:12–17 (identifying Ex. 1002), 72:11–21 (identifying Ex. 1046), 73:4–10 (confirming the declarations set forth his opinions). In Intel’s proceeding asserting the same grounds and seeking joinder, Dr. Jacob filed a declaration reaffirming his Original Declarations and confirming that he would appear for cross-examination. IPR2022-00366, Ex. 1049. We noted that Dr. Jacob’s reaffirming declaration and availability for cross-examination allayed concerns about hearsay. Paper 43 (joinder decision), 15. While the reaffirming declaration is not of record in this proceeding, opinions serve the same role. Patent Owner has suffered no prejudice from Dr. Jacob’s Original Declarations. We have considered Patent Owner’s other arguments (Paper 95) and find them just as unavailing. The fact that the Jacob declarations were prepared for another proceeding is immaterial in this case because Dr, Jacob has expressly adopted them for this proceeding. Id. at 1–3. Nor is a hearsay exception necessary, as the reaffirmance of the prior testimony by Dr. Jacob and his cross-examination in this proceeding overcomes any plausible hearsay argument or the necessity for a hearsay exception. Id. at 3–5. Finally, there is no merit to Patent Owner’s suggestion (id. at 5) that reliance on Dr. Jacob’s reply declaration is somehow contrary to our procedures, which specifically provide for replies by the petitioner (including new declarations). See USPTO Consolidated Trial Practice Guide 73 (Nov. 2019).12 For the reasons given, we deny Patent Owner’s Motion to Exclude.” slip op. at 41

  Patent outcomesUS 7,725,759 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,725,759
• Trend Micro Inc. v. Cupp Computing AsSome claims unpatentable
  PTAB · Apr 14, 2023 · IPR2019-00561 · APJ Thomas L Giannetti · IPR · Remand

  On remand, claim 16 was held unpatentable as obvious over APA and Sikdar; claim 7 was not shown unpatentable over Sikdar and Wright.

  RulingsRemand decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner contended “[a] person of ordinary skill in the art at the time of the alleged invention of the ’272 patent (i.e., May 30, 2007) . . . would have had a Bachelors’ degree in computer science, electrical engineering, or a comparable field of study, plus at least two years of professional experience with computer security systems and networks, or the equivalent.” Pet. 8 (citing Jakobsson Decl. ¶ 49). In our Final Written Decision, we adopted Petitioner’s description of the person of ordinary skill over an alternative formulation by Patent Owner’s expert, Dr. Medvidovic. FWD 17. However, we decided that we would reach the same result even under Dr. Medvidovic’s alternative formulation. Id. The level of ordinary skill adopted by us has not been further disputed by the parties, nor is it discussed in the Federal Circuit’s Decision. We therefore apply the same formulation for the reasons given in our Final Written Decision.” slip op. at 15

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

    “Patent Owner asserts that in Petitioner’s analysis of claim 16, “Petitioner reads out any distinctions between ‘at least a subset’ and ‘a subset.’” PO Resp. 45. Petitioner responds that “[t]he Board should reject Patent Owner’s argument that ‘the subset’ must be a ‘proper subset,’ i.e., a set that is less than the full set of outgoing data.” Pet. Reply 5. Petitioner cites dictionary definitions and other additional authorities to support this conclusion. Pet. Reply 5–6 (citing, e.g., Exs. 1022, 1023, 1024). For example, A Dictionary of Computing defines “subset” as “[a] set T whose members are all members of S,” and contrasts this with a “proper subset.” Ex. 1023, 3. Petitioner further points out that the antecedent basis of “at least a subset” for “the subset” in claim 16 supports its construction. Pet. Reply 6. In our Final Written Decision, after considering Petitioner’s evidence and the language of the claim, we found that the references to “subset” in claim 16 should be construed broadly enough to read on providing any portion of the outgoing data, up to and including all the data, and not a proper subset. FWD 24–25. For the reasons summarized above and those given in our Final Written Decision, we find that the term “subset” in claim 16 does not limit the claim to a “proper subset,” i.e., the claimed subset may include all the members of the set.” slip op. at 16

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

    “Applying the Federal Circuit’s “flexible” standard, we find that for the reasons given that Petitioner demonstrates a motivation to combine Sikdar and the APA, as proposed by Petitioner, with a reasonable expectation of success. We disagree with Patent Owner’s arguments and find that a person of ordinary skill would have been motivated to add Sikdar’s NAT/PAT capability to the prior art network system of Figure 18, disclosing a software-based firewall. Pet. 55–58; Pet. Reply 23–25. As Petitioner points out, Sikdar’s RSP “does not include any NICs . . . , which are a separate hardware component.” Pet. Reply 24. We agree with Petitioner that Patent Owner’s argument is not convincing. More importantly, however, Patent Owner’s argument fails because in Ground 3, Petitioner does not propose combining “any device containing two NICs with the APA.” Id. Petitioner proposes combining “the RSP’s NAT/PAT functionality with the APA.” Id. at 24–25 (citing Pet. 55–58) (emphasis added). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).” slip op. at 34

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

    “non-obviousness, including long-felt need, failure of others, and skepticism by experts in the industry. PO Resp. 50–52. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Before reaching a decision on obviousness of claim 16, we must weigh these secondary considerations. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075–76 (Fed. Cir. 2012). “The patentee bears the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). To determine whether the patentee has met that burden, we consider the correspondence between the objective evidence and the claim scope. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citation omitted). We concluded, in our Final Written Decision, that Patent Owner had failed to meet its burden. FWD 47–50. We agreed with Petitioner that Patent Owner had failed to establish the required nexus to its claims. Id. at 49. We agreed also that Patent Owner had not provided convincing evidence supporting the existence of such objective indicia. Id. We find that, for the reasons given in our Final Written Decision, which we adopt for this Final Written Decision on Remand, Patent Owner’s evidence of secondary factors is insubstantial and unconvincing, and we therefore give it minimal weight in considering the obviousness of the challenged claims.” slip op. at 40

  Patent outcomesUS 8,365,272 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,272
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01601 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both listed combinations; the contingent motion to amend is granted, replacing them with substitute claims 3 and 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated we would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Institution Dec. 19. We reasoned that our review of the ’199 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’199 patent on more general principles of cellular communications and signaling. Id. at 19– 20. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and therefore, we concluded that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “device associated with a driver at all.” PO Resp. 39 (citing Valenti III Decl. ¶ 94). Patent Owner continues, “Petitioner’s expert acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Williams Dep. 128:14–129:25, 132:1–8). This is a misrepresentation of Mr. Williams’s testimony. He was not asked whether Lalancette “discloses” a mobile communication device; he was asked to agree whether Lalancette “identi[fies] the mobile computer as a mobile communication device.” Williams Dep 129:10–13. He explained his response later in his testimony: “In the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing Smartphones.” Id. at 132:5–8. We do not agree with Patent Owner’s argument that this limitation is not met by Lalancette and we do not find the testimony of its expert, Dr. Valenti, credible or helpful. See Valenti III Decl. ¶¶ 94 (“Lalancette does not disclose a mobile device associated with a driver at all.”). As Petitioner points out, the argument supported by Dr. Valenti is an “attempt to improperly narrow the definition of a mobile device to only mean a smartphone of the driver.” Pet. Reply 24. We find that this argument and the supporting expert testimony are contradicted by the ’199 patent specification. See id, at 24–25 (quoting Ex. 1001, 3:10–11, defining mobile communication device broadly). We, therefore, find that the mobile computer disclosed in Lalancette meets the requirement of this claim limitation for a “mobile communication device associated with the driver.” We find for the reasons given that Petitioner demonstrates that Lalancette and Kemler meet limitation 1E.” slip op. at 45

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

    “We declined to adopt this implicit construction (and the related construction “actively generate”). Institution Dec. 23. The claims themselves do not require the controller to “actively formulate” a new indicator for the same rider requesting a subsequent trip for that second trip, or that “a new signal be actively formulated each time a ride is dispatched,” as Patent Owner’s analysis asserts. See infra. Nor is it clear how this construction is supported by the ’199 patent specification. The ’199 patent describes the controller as “communicatively coupled to the transceiver.” Ex. 1001, 2:10–11. Further, “[t]he controller is adapted to generate a first signal to be transmitted by the transceiver to a mobile communication device.” Id. at 2:12–14. Elsewhere in the patent, “controller” is defined as “any type of computing device, computational circuit, or any type of processor or processing circuit capable of executing a series of instructions that are stored in a memory associated with a with the controller.” Id. at 3:6–10. The operation of the controller is also described as follows: “The controller 110 may generate a first signal (also referred to herein as a ‘notification signal’) that is transmitted via the transceiver 120 to the mobile communication device 150 associated with the driver D.” Id. at 5:14–17. Still further, “[t]he controller 110 generates four different notification signals, NOTIFICATION-A, NOTIFICATION-B, NOTIFICATION-C, and NOTIFICATION-D, to be transmitted by the transceiver 120 to a first DRIVER'S MOBILE DEVICE 150A, a second DRIVER'S MOBILE DEVICE 150B, a third DRIVER'S MOBILE DEVICE 150C, and a fourth DRIVER'S MOBILE DEVICE 150D, respectively.” Id. at 6:39–46. And further, “[i]n other embodiments, wherein the vehicle identification system 11 is utilized, an indicatory signal to the rider's mobile communication device may be generated by the controller 110.” Id. at 7:4–7. In none of these descriptions of the controller’s operation is there” slip op. at 15

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–25. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-demand service system can also use location information from the driver’s device and/or transport information . . . to automatically determine the driver’s state or state of the transport service.” Id. at 22 (citing Ex. 1006 ¶¶ 29, 35). Petitioner explains that in Kalanick, “[w]hen a service application on the driver’s device determines that the transport service is to change state, such as to ‘arriving now,’ based on a determination that the driver is within a predetermined distance, the service application can trigger the indication device to output the user’s specific color.” Id. at 23 (citing Ex. 1006 ¶ 37). Thus, Kalanick’s system can “control the indication device to output the user’s color or other unique distinctive indicator based on the transport state.” Id. (citing Ex. 1006, ¶ 38). Petitioner explains that Kemler describes a central dispatching system in which one or more server computing devices of the centralized dispatching system may select a vehicle to be dispatched based upon the location of the client computing device. Id, (citing Ex. 1008, 10:3–33). Thus, Petitioner explains that Kemler, like Kalanick, “discloses ride-matching based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. Petitioner demonstrates that “a [person of ordinary skill] would find it obvious to modify Kalanick’s vehicle identification system in view of Kemler, at least because both systems disclose substantially similar ride-matching techniques based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. at 23–24. Petitioner also explains that a person of ordinary skill would “anticipate success of such a modification.” Id. at 24. Petitioner explains that “the controller in Kalanick is already in communication with the car and could easily send a signal to activate the display with the unique code.” Id. (citing Williams I Decl. ¶ 121). Petitioner recognizes that although both Kalanick and Kemler “focus” slip op. at 28

  Patent outcomesUS 10,559,199 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,559,199
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15

  Patent outcomesUS 9,892,637 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,892,637
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12

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

    “Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13

  Patent outcomesUS 10,169,987 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,169,987
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01602 · APJ John D Hamann · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Lalancette; the Board did not reach the anticipation or Kalanick–Kemler obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’417 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt. The parties’ statements made during the oral hearing are consistent with this point. See Tr. 75:17–18 (Patent Owner stating that “[i]t’s not clear to us that the level of ordinary skill arguments actually matter”), 106:12–17 (Petitioner stating that its arguments do not depend on which definition we adopt). In sum, we maintain Petitioner’s definition, as qualified, for the level of one of ordinary skill in the art, and employ it in our analysis of the parties’ unpatentability arguments.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 12

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

    “Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. 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 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. 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 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). slip op. at 11

  Patent outcomesUS 10,748,417 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,748,417
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 1, 2023 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 10, 12, 13, and 15 were not shown unpatentable because Petitioner failed to prove a rational reason to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDenied

    “We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2007 ¶ 33. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 51 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2008, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 42

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’036 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 46–47).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “in the District Court Case entered a Markman order construing the Recognizes Limitation, among others. See Ex. 2006, 16–18, 21–22.4 Specifically, the court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). As explained in our Institution Decision (Dec. 17–19), we have reviewed the district court’s reasoning, as well as the ’036 patent and other evidence of record before us, and agree that for reasons given by the district court, the Recognizes Limitation should be given the same construction as determined by the district court. Neither 4 Unless otherwise specified, citations to exhibits use the page numbers assigned by the parties, not the original page numbers. party since has urged (or persuaded) us to revise this construction. Based on the complete record before us, we continue to construe the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” See Dec. 17–19; Ex. 2006, 21–22. Both parties adopt this construction for purposes of their post-institution arguments in this case. See PO Resp. 18–19 (“Patent Owner and its expert apply this claim construction in their analysis in the remainder of this IPR, but do not necessarily agree it is correct.”); see generally Pet. Reply (arguing “matching” as per this construction); Pet. (same).” slip op. at 14

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

    “modifier. The definite article “the” can be used to modify something plural, e.g., “the digital representations.” Although in claim 1, “the” is used to modify a “digital representation,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional digital representations while one “digital representation” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one digital representation or “no more” than one digital representation, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’036 patent analyzes only a single digital representation, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’036 patent with regard to “a digital representation” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one digital representation. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a digital representation” as recited in claim 1 does not preclude involvement of an additional digital representation or digital representations in the analysis.” slip op. at 17

  Patent outcomesUS 8,478,036 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,036
• Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Jan 30, 2023 · IPR2022-01319 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution for all challenged claims under § 325(d), finding Beyda had been presented to the Office and Microsoft had not shown material Examiner error.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Here, Petitioner does not dispute Patent Owner’s evidence that Beyda was previously presented to the Office. Ex. 1004, 295. Thus, the first criterion of the Advanced Bionics framework (same art or arguments) is met. Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS),”). The second inquiry in the Advanced Bionics framework asks whether the Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8–9. As Patent Owner points out, “although the Petition admits that the Examiner considered Beyda during prosecution, it fails to make any allegation whatsoever that the Examiner erred (let alone erred in a material way) in his consideration of Beyda.” Prelim. Resp. 18. As to Narin, Patent Owner argues that Petitioner “does not offer any explanation” why that reference is not “substantially the same” as art considered by the Examiner, “let alone how or why the Examiner materially erred in considering that art to not be invalidating.” Id. We agree that Petitioner has failed to demonstrate that the Office erred in its evaluation of the cited art. See Advanced Bionics, Paper 6 at 8–9 (“If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.”). Here, the Beyda prior art that was before the Examiner during the examination is identical to the art cited here.3 There is no argument or evidence before us that Beyda was concealed from the Examiner. The Examiner ultimately made a determination that the claims were patentable. Ex. 1004, 49, 92. As cautioned by Advanced Bionics, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Advanced Bionics, Paper 6 at 9. Advanced Bionics goes on to explain the rationale for this rule: “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. Having considered the record presented by Patent Owner and the absence of any substantive showing from Petitioner, we are not persuaded of material Examiner error. Petitioner’s assertion that the prior art references in the Petition “were not substantively considered during the prosecution of the ’139 Patent, or in the prior CBM challenge,” without further explanation, is insufficient. In summary, applying the two-part framework of Advanced Bionics, we are persuaded to deny the Petition under 35 U.S.C § 325(d).” slip op. at 10

  Discretionary denial
  Patents in suitUS 8,671,139
• Forescout Technologies, Inc. v. Fortinet, Inc.Some claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01329 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 15, and 16 are unpatentable as obvious over Mahaffey; the other challenged claims were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal on the level of ordinary skill.” slip op. at 7

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

    “We find that the specification, therefore, supports Patent Owner’s argument that the term “web content filtering” differs from “web filtering”” slip op. at 10

  • BurdenDecided for patent owner

    “particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring IPR petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)) (emphasis added). This burden does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an IPR). By not providing a claim construction for a key term, “web content filtering,” Petitioner failed to live up to its obligation to provide an understandable explanation of the element-by-element specifics of the unpatentability challenges, including the particular portions of prior art supporting those challenges. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3)– (4); Harmonic Inc., 815 F.3d at 1363–64; Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intel. Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)); see also MModal LLC v. Nuance Communicatons, Inc., 846 Fed. Appx. 900, 906 (Fed. Cir. 2021) (non-precedential).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by these belated arguments, as they are based entirely on testimony by Dr. Cole as to what a person of ordinary skill “would understand” that is unsupported by any citations to Syvanne or other evidence of record. Such unsupported opinions are not entitled to any weight. 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 Consolidated Trial Practice Guide 35 (November 2019)8 (“The Board has broad discretion to assign weight to be accorded expert testimony. . . . However, the testimony must be based on sufficient facts and data.”); Fed. R. Evid. 702(b). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications. In other words, 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. substitute for disclosure in a prior art reference itself.” Consolidated Practice Guide at 36.” slip op. at 26

  Patent outcomesUS 9,894,034 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,894,034

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.