- PTAB · Jul 24, 2024 · IPR2024-00701 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Samsung’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In its Motion for Joinder, Samsung contends that joinder is appropriate because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 1–2; see also Ex. 1020 (comparing Petition and Meta IPR Petition). Stated differently, Samsung asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Samsung further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 4–9. Samsung also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. Given that Patent Owner did not file an opposition to Samsung’s Motion for Joinder, and Samsung agrees to consolidate all filings and discovery with Meta (Joinder Mot. 4–9), Samsung has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Samsung’s Motion for Joinder and, as a result, join Samsung as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - PTAB · Jul 24, 2024 · IPR2024-00666 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Roku’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We incorporate our previous analysis in our Decision on Institution in IPR2023-01281 regarding the asserted grounds of unpatentability, and conclude that Roku has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’878 patent challenged in the Petition for the same reasons. See Meta IPR Dec. on Inst. 23–24. Accordingly, we determine that Roku has met its burden of showing that joinder is appropriate, and that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 4–6. Stated differently, Roku asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Roku further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 7–9. Roku also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. at 9–10. Given that Patent Owner did not file an opposition to Roku’s Motion for Joinder, and Roku agrees to consolidate all filings and discovery with Meta (Joinder Mot. 7–9), Roku has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Roku’s Motion for Joinder and, as a result, join Roku as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - PTAB · Jun 27, 2024 · IPR2024-00368 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds: anticipation and obviousness over Horie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–9 (the “challenged claims”) of the ’564 patent on all grounds of unpatentability presented.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“and evidence that the receipt of the request and the notification of the customer each occurs via a “distinct” transmission channel. See Ex. 1006 ¶¶ 39–41 (details of communication), 44, 54, 76, 78 (sending notification), Fig. 1, Fig. 9; Ex. 1003 ¶¶ 213–215, 221, 223–227. Although Patent Owner shows that Petitioner relies on certain duplicate elements in Petitioner’s identified first and second transmission channels, the transmission channels identified include different elements as well, and thus, on the current record 7 Although Patent Owner argues that “Petitioner incorporates hundreds of paragraphs from a 139-page expert declaration in the Petition, including extensive use of block cites and diagrams,” on this record and without more specific references we do not discern improper incorporation by reference in the Petition. Prelim. Resp. 15–16 (citing 37 C.F.R. § 42.6(a)(1)(i) and (a)(3)); see also Consolidated Trial Practice Guide 40 (“The Board expects that most petitions and motions will rely upon affidavits of experts.”) (The Consolidated Trial Practice Guide is available at https://www.uspto.gov/TrialPracticeGuideConsolidated). and preliminarily, we determine that they are “distinct” as required in limitation 1d. Pet. 27. With respect to Patent Owner’s argument that that Petitioner does not show that the channels are completely separate and that Figure 1 of the ’564 patent and/or other disclosed embodiments in the ’564 patent include completely separate channels (see Prelim. Resp. 4, 10–12), these arguments by Patent Owner are not commensurate with the scope of the claim, which requires that “the second transmission channel [be] distinct from the first transmission channel.” To the extent that Patent Owner argues that a specific claim construction should be accorded to limitation 1d of claim 1 that excludes Horie’s partially overlapping channels, on the present record we discern no evidence or argument regarding such a claim construction. And, to the extent that Patent Owner argues a distinction between Horie and the ’564 patent disclosure (rather than the claim), such arguments are inapposite. With respect to the requirement of limitation 1e that authorization occur without requiring of a response from the customer, on the present record and for the purpose of institution, Petitioner sufficiently shows that Horie discloses this in its disclosure of a pre-authorization notification. See Pet. 29–308; Ex. 1006 ¶ 73 (sending notification during the card authentication process as opposed to after that process is complete); Ex. 8 While Patent Owner argues that Petitioner only argues that Horie “suggests” this embodiment (as opposed to disclosing it, as required for an anticipation ground) (see Prelim. Resp. 7 n.1 (quoting Pet. 29)), even given the appearance of the verb “suggests” in one instance in the Petition, we understand Petitioner’s argument is that Horie discloses a pre-authorization notification. See Pet. 29 (“Horie . . . discloses . . . the [notification] e-mail can also be sent . . . during the card authorization process”), 20 (“Horie discloses each element of claims 1 through 9”). 1003 ¶¶ 232–233. Having considered Patent Owner’s argument that “if Horie notifies a customer prior to authorization, the system requires a response” (Prelim. Resp. 8), for institution, we credit Dr. Akl’s uncontroverted testimony that the embodiment of Horie’s paragraph 73 does not require any affirmative action on the part of the customer to process a transaction but merely discloses the possibility of canceling a transaction rather than disclosing a requirement for a positive response from a recipient to authorize the transaction. Ex. 1006 ¶ 73 (“[T]he e-mail can also be sent . . . during the card authentication process . . . [to make] it possible to issue a transaction cancellation request to the authentication hosts.”); Ex. 1003 ¶ 233. We additionally do not agree with Patent Owner’s allegation that Horie does not enable the disclosure of paragraph 73. Prelim. Resp. 8–9 n.2. While Petitioner asserts that Horie does not disclose the details regarding a transaction cancellation request (Pet. 18), we note that the issuance of a transaction cancellation request is not part of the claimed invention, and determine that on this record, Petitioner’s argument (or admission) in the Petition regarding the disclosure of Horie is not sufficient to cast doubt on the likelihood of Petitioner’s success before us by removing the presumption of enablement. See Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008) (establishing a presumption that an anticipating disclosure in a prior art patent is enabling); Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 449 (Fed. Cir. 2021) (adopting this for AIA trial proceedings). For these reasons, upon consideration of the preliminary record, we determine that Petitioner has sufficiently shown a likelihood of success in showing claim 1 to be anticipated by Horie.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“While Petitioner’s argument with respect to claim 1d is presented as an obviousness argument, we do not discern that Petitioner presents any argument distinct from its analysis for anticipation. Id. at 39–42. While Petitioner cites Dr. Akl’s testimony to support its arguments regarding what Horie discloses, Petitioner does not discuss Dr. Akl’s testimony regarding obviousness or provide any suggestion of what a modification of Horie would be or discuss, e.g., motivation or expectation of success for a modification. Compare Pet. 39–42 with Ex. 1003 ¶ 229 (“[The] differences between the channels described in Horie would have suggested to a person of ordinary skill in the art that separate lines of communication could be employed in Horie’s system.”). Similarly, Petitioner’s arguments with respect to claim 2 do not appear to address obviousness.” slip op. at 25
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,783,564 - PTAB · Jun 27, 2024 · IPR2024-00367 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–4 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Horie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’310 patent has an application filing date of March 11, 2005, we apply the pre-AIA version of the statutory basis for unpatentability. See Ex. 1001, code (22). 2 Japanese Patent Application 2002-133100, published May 10, 2002 (Ex. 1009). All citations are to the Petitioner-provided English translation. Ex. 1006. claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’310 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue this ground. Those challenges, in our view, are best left for trial after full development of the record.10 10 As guidance to the parties, we note that it is unclear that the Petition, unlike Dr. Akl’s testimony, argues how a person having ordinary skill in the art would have modified Horie. Compare Ex. 1003 ¶ 98 (arguing that the differences between the first and second transmission channels in Horie “would have suggested to a person of ordinary skill in the art that separate and independent lines of communication could be employed in Horie’s system for the sending/receiving of requests and notifications.”), with Pet. 32–33 (not making the argument in Dr. Akl’s testimony). The parties should address in the Response and Reply (1) whether the Petition argues how and why a person having ordinary skill in the art would have modified Horie and (2), if not, whether we can rely on the argument in Dr. Akl’s testimony that is not made in the Petition.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no claim terms require an express construction.” Pet. 9 (citing Ex. 1003 ¶ 62). 3 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. 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.”). For the purposes of this Decision, we need not expressly construe any claim terms.4, 5 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,357,310 - PTAB · Jun 27, 2024 · IPR2024-00369 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–7 based on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). We may institute inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition and the evidence of record, we institute an inter partes review as to claims 1–7 of the ’706 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated to combine Horie and Kobayashi, specifically to improve Horie’s confirmation option. Pet. 18–21. For example, Petitioner asserts Horie discloses sending a card transaction notification to a user device, with the option to issue a transaction cancellation request. Id. at 19 (citing Ex. 1006 ¶ 73). But, Petitioner notes that Horie does not disclose details on cancelling a transaction. Id. So Petitioner asserts that one of skill in the art would have looked to Kobayashi’s known techniques for preventing fraudulent transactions. Id. (citing Ex. 1003 ¶¶ 72–73). Specifically, Petitioner cites to Kobayashi’s method for verifying user identity, by notifying a user of a transaction using a pre-registered mobile phone number. Id. (citing Ex. 1007 ¶ 57; Ex. 1003 ¶ 74). In response, the user indicates whether or not the card can be used by entering a number determined at the time of card creation and a predetermined operation button. Id. at 19–20 (citing Ex. 1007 ¶¶ 60, 61; Ex. 1003 ¶¶ 73–74). Petitioner contends that implementing Kobayashi’s fraud prevention interface with Horie applies a known technique to improve a similar system in the same way. Id. at 20 (Ex. 1003 ¶¶ 75, 76). Petitioner concludes that, given the similarity between Horie and Kobayashi, one of ordinary skill in the art would have had a reasonable expectation of success in combining the disclosures. Id. at 20–21 (Ex. 1003 ¶¶ 75, 76). On this record and for purposes of institution, we determine that Petitioner has presented sufficient motivation to combine Horie and Kobayashi and reasonable expectation of success in doing so.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms require an express construction.” Pet. 8. Instead, Petitioner addresses what it asserts is a typographical error in claim 1, which twice recites the term “merchant’s.” Id. (citing Ex. 1001, 5:54); see also Ex. 1001, 5:56. The possessive term “merchant’s” is not followed by a subject noun. See id. Although not identified by Petitioner, claim 6 also includes the recitation of “merchant’s” without a subject noun. See Ex. 1001, 6:52. Petitioner contends that during prosecution of the parent patent, U.S. Patent No. 7,357,310 B2, “the applicant explained that the ‘secure network and the ‘payment guarantee’ channel are illustrated between the acquirer 8 [sic] and the modem 5 of the merchant’s terminal.’” Id. (citing Ex. 1013, 45). Accordingly, Petitioner asserts that both instances of “merchant’s” should be read as “merchant’s terminal.” Id. We accept Petitioner’s argument at this stage of the proceeding. The parties should address this apparent typographical error in claims 1 and 6 during trial, including (1) whether there is an obvious typographical error and (2) whether we should correct it. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003); Pavo Solutions LLC v. Kingston Tech. Co., 35 F.4th 1367 (Fed. Cir. 2022); Beable Education, Inc. v. Achieve3000, Inc., IPR2021-01169, Paper 34, 10–11 (PTAB Jan. 3, 2023) (Final Written Decision). At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) at the time the invention was made “would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have at least one or two years of experience with wired and wireless networks used to securely process requests for authorization of activity such as financial transactions.” Pet. 7–8 (citing Ex. 1003 ¶ 22). Additionally, Petitioner contends that “[l]ess experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. 6 In the present record, neither party presents arguments or evidence relating to secondary considerations. On this record and for the purposes of institution, we determine this level of skill, with the exception of the open-ended phrase “at least,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’706 patent and the prior art of record.7” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,954,706 - PTAB · Jun 11, 2024 · IPR2024-00251 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that claims 1–3 and 5–9 are obvious over Neibauer and Cheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based upon the present record, we determine that Petitioner has made a sufficient showing that one of ordinary skill in the art would have had a reason to combine the asserted art in the manner described by Petitioner. We, therefore, find that Petitioner has shown sufficiently for purposes of institution that a person of ordinary skill in the art at the time of the claimed invention would have had reason to combine the teachings Neibauer and Cheng in the manner described in the Petition, and would have had a reasonable expectation of success in so doing.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cheng is sparse. Neibauer and Cheng were among dozens of other references identified on information disclosure sheets submitted during prosecution, and there is no clear evidence of record that Neibauer and Cheng were ever discussed substantively. See generally Ex. 1022. Petitioner argues that “the Examiner erred by overlooking [Neibauer and Cheng] and the compelling grounds of unpatentability they provided.” Prelim. Reply 1. “Neibauer and Cheng were stronger prior art because they disclosed the limitations the Examiner thought were missing from Chow, including the “uploading,” “reformatting,” and “automatically generating” limitations that he highlighted in the Notice of Allowance.” Id. In light of this sparse record, Petitioner’s showing on the merits with respect to Neibauer and Cheng is sufficient to demonstrate that the Office erred with respect to its consideration of these references during prosecution of the ’427 patent. To the extent the Office substantively considered Neibauer and Cheng and concluded that their combination does not teach claim 1, this was material error. It is also notable that the Office cited and relied on both Neibauer and Cheng in the reexamination of U.S. Patent No. 8,135,801 B2, a parent in the same family as the ’427 patent, which resulted in cancellation of all claims of that patent. For the reasons discussed below with respect to the merits, the asserted combination of Neibauer and Cheng sufficiently teaches claim 1. Given the Petition’s detailed analysis, including the supporting testimony of Dr. Madisetti, and the sparse record developed by the Office addressing Neibauer and Cheng during prosecution of the ’427 patent, Petitioner has shown sufficiently that the Office materially erred when it found that the prior art does not teach claim 1.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 17. Petitioner’s description of a person of ordinary skill in the art is consistent with the ’427 patent and the prior art before us and is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Given this preliminary record, we do not see a basis for adopting Patent Owner’s proposed meaning of “uploading” as “data sent from a client to a server.” We do not discern a rationale in the claims or the intrinsic record to include the term “client” within the meaning of “uploading.” Rather, given the current record, we preliminarily determine that the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent and would have been understood by someone of ordinary skill in the art at the time of the claimed invention is “transferring data from an external data source to a set of servers.” This preliminary determination does not preclude the parties from proposing, presenting evidence, or arguing a different meaning for the term “uploading” during trial. To the extent the parties disagree with this preliminary determination, the parties should present their evidence and arguments as permitted by our rules.4 A final determination as to the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent will be made after the close of all the evidence and after any oral hearing in this matter.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,839,427 - PTAB · Jun 11, 2024 · IPR2024-00250 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Neibauer, Ausems, and Cheng combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006).” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. There is no dispute that Ausems and McElfresh were not considered by the Office. See Prelim. Resp. 8–12; Ex. 1001, code (56). Moreover, we do not agree with Patent Owner that Ausems is substantially the same as Rensin and that McElfresh is substantially the same as Dowling. For example, Petitioner relies on Ausems for a mobile communications device that incorporates a digital camera for recording, storing, and transmitting digital images. Pet. 24. The disclosures of Rensin 3 Petitioner’s citation to “POPR 13 (quoting Dowling, ¶0064)” on page 3 of Petitioner’s Preliminary Reply appears to be an error. Patent Owner addresses Dowling on page 11 of its Preliminary Response. cited by Patent Owner identify a camera as a PDA expansion slot device, but do not disclose expressly that captured images can be stored and transmitted as Ausems does. Compare e.g., Ex. 1006, 2:5–11, 5:17–22 with Ex. 2003, 2:2–21. We agree with Petitioner that Ausems was thus more relevant to the challenged claims, and more applicable to a prior art reference such as Neibauer, that disclose the ability of the user to upload photos to a remote server. Petitioner also relies on McElfresh for its teaching of selecting and delivering advertisements and integrating those advertisements with other content on the same webpage. See Pet. 52–60. For example, Petitioner describes how McElfresh’s “ad server or Rad Server 112 ‘performs the overall function of gathering the necessary information regarding a particular ad (or set of ads) and the particular user and generating a set of ads which have been optimized for placement on a webpage,’ based on (among other things) calculated click-through-percentage rates.” Pet. 55 (quoting Ex. 1014, 6:42–48). In contrast, Dowling’s disclosure cited by Patent Owner4 describes how a user may log into “a geographically controlled web site and configures the packet filter to display information related to a user’s needs,” such that that when the user drives along a mall, “a web page comes up and provides directions to the shopping mall and optionally provides an inside map of the mall to include directions to the desired store.” Ex. 3001 ¶ 64; 4 Patent Owner cites to Exhibit 2004 as Dowling (US 2005/0177645). Prelim. Resp. 11. However, Exhibit 2004 is U.S. Patent App. 2005/0171645, directed to a “Household Energy Management System,” listing inventors as Oswald and Tamsett. See Ex. 2004, codes (10), (54), 76. Dowling appears to have been filed as Exhibit 1030, not Exhibit 2004. Prelim. Resp. 11 (citing Ex. 2004 ¶ 64). Dowling’s disclosure is substantially different from McElfresh’s teaching of using a server to select and integrate particular advertisements onto a webpage. We have reviewed the portions of Rensin and Dowling cited by Patent Owner and do not see substantially the same structures or functionality relied upon by Petitioner in Ausems or McElfresh.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices. Pet. 5–6 (citing Madisetti Decl. ¶¶ 14–18). Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA [(“person having ordinary skill in the art)].” Prelim. Resp. 16. We regard Petitioner’s definition as consistent with the ’348 patent and the prior art before us and supported by testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006). Dr. Madisetti articulates this very rationale by testifying that [t]he techniques of Cheng would have provided a distinct technological advantage by allowing the club system described in Neibauer to be delivered to mobile devices by converting web pages provided via Neibauer, thus obviating the need for the Yahoo! server to generate multiple different versions of those web pages (including potentially multiple mobile versions based on different mobile device and browser types), thus making it considerably simpler to provide club functionality to the web browsers of mobile devices. Ex. 1002 ¶ 106.” slip op. at 25
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,922,348 - PTAB · Jun 11, 2024 · IPR2024-00249 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19, 21, and 22 on all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Neibauer, Ausems, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that neither Harvey nor Ausems was considered by the Office, nor that Harvey is not substantially the same as any reference that was before the Office. Prelim. Resp. 9–10; Prelim. Reply 3. Further, we do not agree with Patent Owner that Ausems is substantially the same as Rensin. Specifically, Petitioner relies on Ausems to teach the incorporation of a camera into a mobile device, permitting the recording, storage, and transmission of digital images. Pet. 23; Prelim. Reply 3. We have reviewed the section of Rensin to which Patent Owner directs us (Ex. 2003, 2:2–21), and we do not see substantially the same functionality. Although Rensin teaches that “PDA expansion slots may be used to enhance the PDA capabilities with a digital camera,” Patent Owner does not explain, and it is not clear from our review of Rensin, that Rensin discloses the use of the mobile device to transmit the images recorded by the camera. Ex. 2003, 2:2–21. Accordingly, we are not persuaded that Rensin is substantially the same as Ausems. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person of ordinary skill in the art would have combined the teachings of Ausems with those of Neibauer in the manner described above. See Ex. 1002 ¶¶ 114–117. Specifically, a person having ordinary skill in the art would have combined Ausems’s ability to share photos captured by a mobile device with Neibauer’s Yahoo! club in order to “dramatically expand[] the universe of image data that the club based on the current record, a person of ordinary skill in the art would have had a reasonable expectation of success. Id. ¶ 117. Accordingly, on the present record, the combination of Neibauer and Ausems teaches limitation 1a.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage, Patent Owner “applies Petitioner’s characterization of a person of ordinary skill in the art.” See Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed and implement the teachings of the ’578 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Madisetti. See Ex. 1002 ¶¶ 14–18.8” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 25–27, 65–66. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required.” Prelim. Resp. 16. 8 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. claim terms.9 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,619,578 - PTAB · Jun 11, 2024 · IPR2024-00248 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 19–23 on all asserted grounds, finding a reasonable likelihood that claim 19 would be unpatentable as obvious over Neibauer, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Neibauer, Cheng, and Squibbs. Pet. 3, 12–48. Based on the current record, we are sufficiently persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 19.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, it would have been obvious to a person having ordinary skill in the art to use the features of the Yahoo! club (information channels) with a mobile device, thus sending the photo “from a mobile device” and “permitting interaction between a user of the mobile device and one or more additional users,” as recited in claim 19. See Ex. 1002 ¶ 91. A person having ordinary skill in the art would have known that a person could use a conventional computer, such as a laptop computer, to run a web browser to visit pages on the internet, such as Yahoo!, including Yahoo! Clubs. Id. Because the ’039 patent describes a laptop computer as a “mobile device,” (Ex. 1001, 4:24–32), submitting a photo to a Yahoo! club from a laptop computer results in the receipt of the photo from a mobile device, as recited in claim 19.” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,032,039 - PTAB · Jun 11, 2024 · IPR2024-00247 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–25 on all asserted grounds; the Board found a reasonable likelihood that claim 1 would be unpatentable as obvious over Neibauer, Miller, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that Miller was not considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶96.) Pet. 18–19 (emphasis added).11 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Neibauer, Miller, Cheng, and Squibbs. 6. Analysis of Claims 2–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’801 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Based on the current record, the combination of Neibauer and Miller teaches “control[ling] activation of a mobile information channel,” as recited in claim 1. As discussed above, the first user can create a Yahoo! Club by supplying the necessary information and selecting “Yes! I accept.” Neibauer is silent on whether the user can select which specific mobile information channels are associated with the Yahoo! Club. However, Miller teaches a similar collaborative web-based system in which the group’s creator can use an interface to choose specific communication pathways to allow: FIG. 16 shows one possible user interface for selecting communication tools to be made available to group members. This screen can be presented to the user creating the environment after the group has been identified and its members selected. It is contemplated that a variety of communication tools can be provided, including a bulletin board service; advertisements; white pages (e.g., a listing of members, their e-mail addresses, telephone numbers, and the like); yellow pages (e.g., a listing of promotional and contact information); document security (e.g., shared access secure document storage services); anonymous e-mail (described above with respect to the first embodiment); threaded dialogs; a group newsletter creation tool; videoconferencing; and even other user-provided applications that can be specified by name an location (e.g., URL). Ex. 1004, 47:31–48:10 (emphasis added); see also id. at 42:29–32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”); Ex. 1002 ¶ 96. The combination of Miller’s teaching of selecting different methods of communication with Neibauer’s teaching of Yahoo! Clubs would allow the founder to select specific mobile information channels for the group to use. See Ex. 1002 ¶¶ 95–100. Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 97–100. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 99. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 100. Accordingly, the combination of Neibauer and Miller teaches” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’801 patent.8” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,825,801
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.