• Trend Micro Inc. v. Cupp Computing AsAll claims unpatentable
  PTAB · Jan 17, 2023 · IPR2021-01236 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 9, 16, and 24 are unpatentable as obvious over Hall, Hall and Meenan, Joseph, or Joseph and Meenan, as applicable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “of the alleged invention of the ’632 patent (i.e., August 4, 2008) . . . would have had a bachelor’s degree in computer science, electrical engineering, or a comparable field of study, plus at least two years of professional experience with computer security systems, or the equivalent.” Pet. 12 (citing Jakobsson Decl. ¶ 60).” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. power management mode (all challenged claims) This term has been construed in the 765 IPR and in district court litigation involving the ’595 patent as “a mode where the mobile device conserves power.” Pet. 12; PO Resp. 18–19. There is no dispute over this construction. See Ex. 1006, 6.5 The construction is supported by the ’632 patent specification. See Ex. 1001, 21:62–64 (“A power management mode is a mode wherein the mobile device conserves power.”). We, therefore, agree with this construction, and we adopt it for this decision.” slip op. at 10

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

    “We are persuaded to adopt Petitioner’s construction. Petitioner’s construction reflects its position that “[i]n no place do the claims recite that the ‘security administrator device’ must manage the ‘security system,’ let alone manage the security of the security system.’” Pet. Reply 12. We agree that a security administrator device need not “manage” the security of a security system as Patent Owner asserts. PO Resp. 15. Our construction is consistent with the term’s plain language as well as the ’632 patent claims and is supported by expert testimony. Jakobsson Decl. ¶ 65.” slip op. at 11

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

    “Petitioner provides a rationale for combining the references. According to Petitioner, “[a person of ordinary skill] also could have removed unauthorized programs after a Joseph laptop receives a wake signal, just as Joseph discloses performing other security services after receiving a wake signal.” Id. (citing Jakobsson Decl. ¶ 180). Patent Owner’s response to this challenge presents no additional arguments, referring back to its prior arguments addressing claims 1 and 16. PO Resp. 40. For the reasons given, we find that Petitioner has demonstrated a motivation to combine Joseph and Meenan with a reasonable expectation of success. Pet. 67–69; Jakobsson Decl. ¶¶ 180–183. Furthermore, we find that Petitioner has demonstrated that each element of claims 9 and 24 is taught by that combination of references. Pet. 66, 68; Jakobsson Decl. ¶¶ 179, 184. For the reasons given, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 9 and 24 would have been obvious in light of Joseph and Meenan.” slip op. at 38

  Patent outcomesUS 10,951,632 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,951,632
• Trend Micro Inc. v. Cupp Computing AsAll claims unpatentable
  PTAB · Oct 14, 2022 · IPR2021-00813 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Groenendaal because the reference teaches or suggests every challenged limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill. Dr. Goodrich, however, provides the following testimony: “In my opinion, a person of ordinary skill in the art in the field of the ’344 Patent as of its priority date would be someone with a bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Goodrich Decl. ¶ 31. The two formulations differ only slightly. For example, Dr. Jakobsson is more specific in requiring “professional experience with computer security systems, or the equivalent.” Jakobsson Decl. ¶ 52. Petitioner’s definition is supported by credible expert testimony and is more consistent with the prior art and the patent specification before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We, therefore, adopt Petitioner’s description, but without the qualifier “at least.”5 However, we would reach 5 Including “at least” suggests a broader and open-ended level of ordinary skill than that expressly stated by Petitioner. This change, however, does not affect the outcome of our analysis. the same result under either the formulation proposed by Petitioner or that suggested by Dr. Goodrich.” slip op. at 9

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

    “The term “security services” does not appear in the written description of the ’344 patent. However, in the Figure 3 embodiment, described supra, the mobile security device is described as effectively “a mobile internet gateway on behalf of the mobile device 310c.” Ex. 1001, 5:32–34. Furthermore, the specification of the ’344 patent describes how the security administrator manages the mobile device by providing updates to the mobile security system. See, e.g., the following description of the Figure 3 embodiment from the ’344 patent: In this embodiment, because the security administrator 325 is capable of remotely communicating with the mobile security system 345b, IT can monitor and/or update the security policies/data/engines implemented on the mobile security system 345b. The security administrator 325 can centrally manage all enterprise devices, remotely or directly. Further, the security administrator 325 and mobile security systems 345 can interact to automatically translate enterprise security policies into mobile security policies and configure mobile security systems 345 accordingly. Because the mobile security system 345 may be generated from the relevant security policies of the enterprise 340, the mobile device 310c currently traveling may have the same level of protection as the devices 305/310 within the trusted enterprise 340. Ex. 1001, 5:46–60 (emphasis added). In this example from the specification, the security administrator provides security services to a mobile device by monitoring and updating the security policies implemented on the mobile security system and by interacting with the mobile security system to automatically translate enterprise security policies into mobile security policies and configuring mobile security systems accordingly. The ’344 patent explains also that the security administrator and the security system “can interact to automatically translate enterprise security policies into mobile security policies and configure mobile security systems . . . accordingly.” Id. at 5:52–55. Therefore, we agree with Petitioner and find that the proper construction of “provide security services to a mobile device” in claims 1 and 10 includes sending security information to the mobile device, as it is consistent with the description in the specification of the security administrator managing the security of the mobile devices. Patent Owner does not address directly this proposed construction. See generally PO Resp. 12–26. However, in discussing Groenendaal, Patent Owner implicitly challenges this construction by making the argument that “Groenendaal teaches the well-known prior art technique of transferring security policies to a mobile device without any separate security system processing security information and implementing security services on its behalf.” Id. at 12; see also id. at 28 (“Groenendaal is directed to pushing security profiles from a server to a mobile device, where the mobile device itself implements any attendant security services.”). We disagree with this argument by Patent Owner implicitly limiting” slip op. at 14

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

    “We do not agree that these arguments by Patent Owner distinguish Groenendaal’s disclosures from the challenged claims. For the reasons presented supra, we construe “provide security services to a mobile device” as including providing security information to the mobile device. See supra, Section II.C.1. We find that under this construction, Groenendaal meets this claim limitation, for example, by providing updated security information to the mobile devices. Pet. 6 (citing Jakobsson Decl. ¶ 57; Ex. 1001, 2:34–37). But even if we had adopted a more restrictive construction for this limitation that would exclude sending security information to a mobile device, we find that Petitioner’s example of configuring or implementing firewall protection for the mobile devices would meet the limitation. Pet. 24; Pet. Reply 20; Jakobsson Decl. ¶ 101. Patent Owner’s attempt to distinguish the firewall example by arguing that Groenendaal’s firewall is not implemented on the server because a gateway is involved is unavailing. See, e.g., Hearing Tr. 55:23–56:2; see also discussion of “additional security services” in Section II.C.4, supra. As discussed in that Section, we do not agree with Patent Owner’s contention that due to the presence of the gateway, the server does not provide the claimed security services to the mobile device. We find that for the reasons given by Petitioner, summarized supra, these additional services, and particularly processing on the server to set up the firewall for the mobile device in Groenendaal, meet this claim limitation. Jakobsson Decl. ¶¶ 101–103. As Dr Jakobsson testifies, “[e]ach of these services is implemented by the security server processor by processing the stored security code, security policies, and security data, as established for limitation 1.4.” Id. ¶ 105.” slip op. at 29

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “8. Summary Claims 1 and 19 We have considered the entire record including Petitioner’s analysis of claims 1 and 19 in relation to Groenendaal and the arguments presented by Patent Owner. Considering the evidence presented in the Petition and Patent Owner’s responses, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1 and 19 would have been obvious in light of Groenendaal. C. Claims 10 and 20 Petitioner’s analysis of claims 10 and 20 tracks its analysis of claims 1 and 19. Pet. 53–55. Patent Owner does not specifically address claim 10 or distinguish between claims 19 and 20 in its response. PO Resp. 28–36. Accordingly, for the reasons given above for claims 1 and 19, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 10 and 20 would have been obvious in light of Groenendaal. Jakobsson Decl. ¶¶ 160–167.” slip op. at 37

  Patent outcomesUS 10,621,344 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,621,344
• Ringcentral, Inc. v. Estech Systems IP, LLCAll claims unpatentable
  PTAB · Oct 4, 2022 · IPR2021-00573 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 6–15, and 17–31 are unpatentable as obvious over Itoh alone, Itoh with Turnbull, Itoh with Ladd, or Itoh with Turnbull and Ladd.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “6 Turnbull et al., US 5,590,189, issued Dec. 31, 1996 (Ex. 1005). 7 Ladd et al., US 5,117,451, issued May 26, 1992 (Ex. 1006). 8 Citing the testimony of Dr. Houh, Petitioner proposes that a person of ordinary skill in the art with respect to the technology described in the ’349 patent in the 1997 timeframe “would have a working understanding of telephone devices, switched telephone networks, PBX telephone systems, and voicemail systems” and “would have had at least a four-year degree in electrical engineering, telecommunication engineering, or a related field and two years of relevant experience in developing or implementing switched telephone systems and/or PBX systems.” Pet. 14 (citing Ex. 1003 ¶¶ 16–” slip op. at 6

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

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

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

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

    “As stated above, we construe claim terms only to the extent necessary to resolve the issues in dispute (see supra § III.B.1 (citing Nidec Motor, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803)), and we agree with Petitioner that these additional terms do not require construction to resolve the issues before us.” slip op. at 10

  Patent outcomesUS 6,067,349 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,067,349
• Ringcentral, Inc. v. Estech Systems IP, LLCAll claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00574 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–12 and 17–19 are unpatentable as obvious over Chang and Byrne, or Chang, Byrne, and Imielinski for claim 6.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We credit Petitioner’s definition as it is consistent with the prior art and patent specification before us and is supported by credible expert testimony, but without the qualifier “at least.”4 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We therefore adopt Petitioner’s proposal. 4 Including “at least” suggests a broader level of ordinary skill than that expressly stated by Petitioner. This change, however, does not affect the outcome of our analysis.” slip op. at 7

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

    “Patent Owner did not provide a construction of these terms, and stated that it “accepts Petitioner’s proposed claim constructions.” Prelim. Resp. 11. We, therefore, adopted Petitioner’s construction of IP telephone for our Institution Decision, finding that it is consistent with the patent specification and other evidence of record. Institution Dec. 17. Patent Owner’s Response states that “for the purposes of this IPR, Patent Owner accepts Petitioner’s proposed claim constructions.” PO Resp. 5. For the reasons given in our Institution Decision, we maintain our construction of IP Telephony as “any apparatus, device, system, or computer that can communicate multimedia traffic using IP telephony technology.”” slip op. at 9

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

    “2. workstation Although neither party asked us to construe “workstation,” in view of Patent Owner’s arguments, for the purposes of our Institution Decision, we adopted the definition from the ’298 patent: “Herein, the term ‘workstation’ can refer to any network device that can either receive data from a network, transmit data to a network, or both.” Institution Dec. 17–18 (citing Ex. 1001, 2:60–62). We noted that the term “workstation” is discussed further in the ’298 patent specification in relation to IP telephones: “[A]n IP telephone is not 5 Unless otherwise specified, citations to exhibits refer to the page numbers assigned by the parties, and not the original page numbers. limited to the configurations described herein. For example, all of the functionality of the present invention can be implemented in a workstation.” Id. at 18 (citing Ex. 1001, 3:15–17). For the purposes of our Institution Decision, we adopted this statement from the ’298 patent describing the relationship between IP telephones and workstations. Id. For the reasons given in our Institution Decision, we maintain this construction of “workstation,” including the statement that the functionality of an IP telephone can be implemented with a workstation.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We find Dr. Houh’s testimony consistent with the prior art cited and credible and Patent Owner’s arguments to the contrary unavailing, as they are predicated on a misunderstanding of Chang’s teachings. For example, as Petitioner points out, Patent Owner’s “reduced bandwidth” argument glosses over the fact that Chang already teaches a directory that is physically stored in a distributed fashion and requires exchanging messages. Pet. Reply 11. We, therefore, find that Petitioner demonstrates that Chang and Byrne meet the limitations of claim elements 1[g] and 1[h], and that Petitioner has demonstrated that a person of ordinary skill would have combined the teachings of those references as described by Petitioner.” slip op. at 29

  Patent outcomesUS 8,391,298 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,391,298
• Hulu, LLC v. Sito Mobile R&D IP, LLC, And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 17, 2022 · IPR2021-00298 · APJ Kevin W Cherry · IPR · Final written decision

  The Board held claims 1–4 and 7–10 unpatentable as obvious over the identified prior-art combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningDecided for petitioner

    “and extrinsic evidence provided and cited above. Accordingly, we construe “content distribution network” as “a distributed network of servers.”” slip op. at 9

  • Skill levelOther

    “D. LEVEL OF ORDINARY SKILL” slip op. at 18

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

    “3. Motivation to Combine McCanne, AAAF, and Wolfe Petitioner contends a person of ordinary skill would have been motivated to modify McCanne and AAAF to incorporate Wolfe’s teachings of “bundling targeted advertisements based on subscriber information . . . as well as Wolfe’s tracking information for billing and sharing revenue between entities” with a reasonable expectation of success. Pet. 44–45; Houh Decl. ¶¶ 193–197. Dr. Houh testifies that “A POSITA would have been motivated to implement targeted advertising because, as Wolfe discloses, ‘bundling of such programmed [media] with advertisement copy tailored to the individual . . . underwrite[s] the cost of supplying to members of the public valuable music and other data containing information.’” Houh Decl. ¶ 195. He further testifies that “[i]n other words, a POSITA would have recognized that tailored advertisements have more profit-generating potential than advertisements that are not tailored to the consumer.” Id. ¶ 196. We find that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine McCanne, AAAF, and Wolfe. See Pet. 44–45; Houh Decl. ¶¶ 195– 197. We address Patent Owner’s arguments below. Patent Owner argues that a person of ordinary skill in the art would not have been motivated to combine McCanne, AAAF and Wolfe because they are “fundamentally different systems.” PO Resp. 57. Patent Owner argues that “McCanne is directed to a content delivery system for receiving a request for content from clients and serving those requests,” and “[t]he content delivery system of McCanne has no specific knowledge of clients or user profiles nor does it have a need to contain such knowledge.” Id. Patent Owner asserts that Wolfe, in contrast, “describes a system for inserting targeted advertisements into audio streams,” where the advertisements are selected based on information contained in a database of subscriber “dossiers.” Id. at 58. We disagree that McCanne and Wolfe are so “fundamentally different” that a person of ordinary skill would be led away from the combination. Both references are directed to media streaming. See Ex. 1044, 1:14–19 (“The present invention relates to a method and apparatus for transmitting and receiving programmed music to and from the Internet to Subscribers of the programmed music, where the programmed music received by the Subscribers includes targeted advertising according to predetermined criteria.”); Ex. 1053, 1:31–36 (“The present invention relates to efficient transmission of data in an internetwork, such as the global internetwork known as the ‘Internet’. More specifically, the present invention relates to moving live or stored “broadcast data Streams from content producers to large numbers of recipients of those data Streams.”). This is the same field of endeavor as the ’846 patent. See Ex. 1001, 1:46–47 (“The present invention is related to the fields of management and administration of media streaming.”). McCanne recognizes that streaming can be supported by advertising (Ex. 1053, 10:37–44), and Wolfe provides a detailed description of how to do so (Ex. 1044, 1:55–60, 5:26–44). Thus, we find that the evidence establishes that both references are in the same field of endeavor as the claimed invention.” slip op. at 48

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “references individually to account for the limitation. See Fleming, 28 F.4th at 1222 (“That the proposed combination . . . —rather than one of the individual references—discloses the disputed claim limitations does not defeat the Board’s conclusion of obviousness.”). Here, Petitioner explains that “Madison teaches that a streams table ‘includes records identifying each item of content, as identified by the stream ID.’” Pet. 72 (citing Ex. 1051 ¶ 32). Petitioner also notes that “[o]ne of the fields included in this record is an ‘ad tag (which specified where an advertisement is to be inserted).’” Pet. 72–73 (quoting Ex. 1051 ¶ 32). As we discussed above, Madison teaches generating a redirector file containing URLs to all of the media in the playlist, identifying media servers based at least in part on the geographic relationship between the end user and the media server. See supra II.I.2.b.iv. Petitioner also submits that Wolfe teaches the advertising server. See Pet. 73 (citing Ex. 1044, 3:48–56, 3:62–4:11; Houh Decl. ¶¶ 243–244). In view of these teachings, Petitioner contends it would have been obvious to simply include an identification of the Wolfe advertising server as it would include the identification of any other media server. Id. (citing Houh Decl. ¶ 244). Thus, although Patent Owner is correct that neither Madison nor Wolfe by themselves disclose this limitation, Petitioner has accounted for this limitation through the combined teachings of the references.” slip op. at 80

  Patent outcomesUS 10,171,846 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,171,846
• Hulu, LLC v. Sito Mobile R&D IP, LLC, And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 17, 2022 · IPR2021-00304 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–4 and 7–10 are unpatentable under § 103(a) over the stated combinations of McCanne, AAAF, Wolfe, Goldszmidt, and Madison.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “C. Level of Ordinary Skill in the Art 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 8 Neither party presents evidence or arguments regarding objective evidence of non-obviousness at this stage. workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Further, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, Petitioner asserts that a person of ordinary skill in the art of the ’637 patent “would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent, and at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Pet. 8 (citing Ex. 1003 ¶¶ 57–60). Patent Owner provides a similar assertion, “(a) a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or media streaming, or (b) at least five years of work experience and training in the design and development of distributed network systems and/or media streaming.” Resp. 3–4 (citing Ex. 2012 ¶ 28 (Adams Decl.)).” slip op. at 11

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

    “that the combination of McCanne and AAAF as applied to claims 1–4 and 9 teaches or suggests each limitation of the claims, without relying on a hindsight reconstruction of the claims, and that Petitioner has set forth sufficient rationale to combine the references as applied. Accordingly, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1–4 and 9 are obvious over the combination of McCanne and AAAF.” slip op. at 35

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS 10,009,637 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,009,637
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision

  Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.

  RulingsFinal written decision

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

    “The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

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

    “is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableUnpatentable

    “added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20

  Patent outcomesUS 9,591,360 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,591,360
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00219 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–5, 7, 11–13, 17, 18, 20, and 22 are unpatentable as obvious over Eyal and ASX Files and over Madison and Holtz.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art of the ’635 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent, and at least two years of experience in distributed systems, multimedia streaming, and various HTTPrelated technologies, or an equivalent amount of relevant work or research experience.” Pet. 20 (citing Houh Decl. ¶¶ 57–60). Patent Owner contends a person of ordinary skill “would have: (a) a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or media streaming, or (b) at least five 5 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. 14 years of work experience and training in the design and development of distributed network systems and/or media streaming.” PO Resp. 6–7. Neither party points out any meaningful difference between the” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “have been obvious to combine two references. Reply 14. We do not agree with Patent Owner’s argument, that just because Eyal’s system “works perfectly well,” a person of ordinary skill would not seek to improve its performance. We rely, instead, on Dr. Houh’s testimony, summarized above, that there would be advantages in combining the teachings of Eyal and ASF Files. Houh Decl. ¶¶ 140–141. For example, as discussed supra, Dr. Houh testifies that a person of ordinary skill would have been motivated to modify Eyal to utilize the ASX files “to improve the ability of its play-lists to work effectively with Windows Media Player end user terminals.” 23 Id. ¶ 140. Further, we credit his testimony that a person of ordinary skill would have been motivated to combine Eyal’s disclosure with ASX Files to improve advertising features disclosed in Eyal. Id. at 141. He testifies that a person of ordinary skill would have had “a reasonable chance of success” because the ASX file format is XML, “a common format for data exchange on a network.” Id. ¶ 142. In contrast, Mr. Adams testifies that “there is no motivation to add the use of ASX files to Eyal.” Adams Decl. ¶ 139. Mr. Adams supports this testimony by asserting that “the Eyal system builds a simple play list and nothing more.” Id. We disagree with this assertion by Mr. Adams and with the implication that follows, that because the Eyal system is “simple,” a person of ordinary skill would not seek to improve it. See discussion of Dr. Houh’s testimony, supra. We are also not persuaded by Mr. Adams’s testimony that Eyal’s disclosure of Windows Media Player is “not in [and] of itself” a reason to consider using ASX files in Eyal, “when Eyal works perfectly well without it.” Adams Decl. ¶ 141. This testimony is unavailing for several reasons. First, the evidence of record links Windows Media Player with use of ASX Files. See Ex. 1017, 1 (“ASX files are simply text files that act as links from Web pages to ASF files on Windows Media Services or HTTP servers.”). Also, Mr. Adams’s testimony assumes (incorrectly) that because Eyal may work with other files, a person of ordinary skill would ignore the teachings that ASX files are used by Windows Media Player.” slip op. at 23

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “filing date because the ’519 application does not disclose the claimed “play script” or the claimed “instructions.” Pet. 11–12; Reply 11–14. We agree and find that the ’635 patent is not entitled to that earlier date for the reasons given by Petitioner. As Petitioner points out, the ’519 application does not refer to a play script. Reply 8. The written description of the play script was not added until 2002. Id. Patent Owner contends that in the priority documents, “play script is used interchangeabl[y] with play list.” PO Resp. 34–45. Patent Owner fails to demonstrate persuasively that lacking the 11 description added in 2002, the “play list” disclosed in the ’519 application has the required elements of the play script claimed in the ’635 patent. Reply 12. One of those required elements of the claimed play script is “one or more instructions for use by the communication device together with the at least one URL to cause the at least one portion of the requested media to be streamed to the communication device.” See claim element 1.c.4, Ex. 1001, 51:8–11. We find that there is inadequate written description in the ’519 application of “instructions . . . to enable the communication device to obtain the at least one portion of the requested media.” Reply 8–9. We agree with Petitioner that the “presentation identification” relied on by Patent Owner (Ex. 2015, 7) does not provide “instructions…to enable the communication device to obtain the at least one portion of the requested media.” Reply 13. Instead, the “presentation identification” “identifies a particular presentation . . . and its associated media.” Id. (quoting PO Resp. 36). Absent an adequate written description in the ’519 application of these claimed features, Patent Owner’s attempt to obtain the benefit of the filing date of that application for the challenged claims of the ’635 patent fails. “It is elementary patent law that patent claims are entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008).” slip op. at 11

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

  Patent outcomesUS 9,135,635 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,135,635
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00206 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 are unpatentable as obvious over the stated prior-art combinations.

  RulingsFinal written decision

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

    “U.S. Patent No. 8,825,887 (“the ’887 patent”). The claims of that patent include the same term referring to “at least one portion,” and the ’887 patent shares its written description with the ’636 patent. In our Final Written Decision in CBM2020-00028 (Paper 33, 9−13), we found that the plain and ordinary meaning of this term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” CBM2020-00028, Paper 33 at 10–11. We declined to adopt Patent Owner’s implicit claim construction because it improperly imports extraneous limitations into the claims and excludes a preferred embodiment. Id. at 11–” slip op. at 8

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

    “as “a file containing one or more media references and other information used by a communication device to obtain media.” PO Resp. 14–17. Patent Owner contends that “a play script is not itself limited to being a list.” Id. at 15. Patent Owner argues that a script “is a file, which can be processed by a computer to obtain media” because the claims recite that the play script contains “instructions.” Id. Patent Owner also cites the district court’s adoption of this construction. Id. at 13–14. Whether or not a playlist is a file is not a meaningful distinction for the purposes of this Final Written Decision. As Petitioner notes, all of the “play scripts” identified by Petitioner in the prior art are files. Reply 6. We agree with Petitioner that we need not determine which party’s construction applies for purposes of our analysis. Nidec, 868 F.3d at 1017.” slip op. at 13

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

    “reservation. Patent Owner now proposes the following construction: “arrangement regarding reserved resources of a streaming system.” PO Resp. 17. Patent Owner cites the specification and Mr. Adam’s testimony 13 for support. Id. (citing Ex. 1001, 10:33−37; Adams Decl. ¶ 110). Mr. Adam relies on the ’636 patent specification, which states that “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37. Further, “[t]he reservation uniquely identifies the viewer 118 or 120 and the customized play script.” Id. at 10:27–28, 10:34–37. The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Based on the description in the specification, we construe “reservation” as “a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37.” slip op. at 13

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Neither party points out any meaningful difference between the parties’ assessments. We therefore apply Patent Owner’s more detailed assessment on the level of ordinary skill in the art. This proposal is consistent with the ’636 patent, the prior art of record, and is supported by 16 the testimony of Mr. Adams. Adams Decl. ¶¶ 27–29. However, our analysis would be the same under either party’s description.” slip op. at 16

  Patent outcomesUS 9,135,636 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,135,636
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · Apr 25, 2022 · IPR2021-00308 · APJ Joni Y Chang · IPR · Final written decision

  Claims 39, 40, 45, 47, 52, 68, 98–101, 103, 105, 111, and 115–117 are unpatentable as obvious over the asserted prior-art combinations.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “streaming media. When asked “what is the point of having commercials in streaming media” during cross-examination, Mr. Adams admitted that “[t]here are a number of different reasons why you might want to include commercials,” such as “to generate revenue for the service.” Ex. 1083, 40:10–18 (emphasis added). We agree with and credit Dr. Houh’s testimony that such an artisan would have recognized the benefits of applying Wolfe’s teachings of targeted advertisements, revenue sharing, and settlement recording to Madison’s system—e.g., “tracking played advertisements to more accurately report effectiveness and tailor billings and revenues based on ad impressions by making ‘an accounting . . . of the total advertising air time used and . . . [billing] advertisers . . . accordingly.’” Ex. 1003 ¶¶ 295– 296, 309; Ex. 1044, 1:24–31, 1:43–48, 1:55–60, 5:37–44. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 418 (quoting Sakraida, 425 U.S. at 282).” slip op. at 76

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “’887 patent makes clear that the presentation itself, not the presentation ID, “may include special instructions, such as special media sequencing instructions, late binding media instructions, and/or special routing instructions.” Ex. 1001, 8:27–32. Therefore, Patent Owner’s argument that the presentation ID is an instruction executed by the communication device “to obtain at least one portion of the requested media,” as required by the claims, is not supported by the ’993 application, the ’519 application, or the draft application, and it is also inconsistent with the Specification of the ’887 patent. For the foregoing reasons, we find that none of the three applications provides adequate written description for the claimed “instructions.”” slip op. at 52

  Patent outcomesUS 8,825,887 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,825,887

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.