- Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationSome claims unpatentablePTAB · Oct 4, 2021 · IPR2020-00734 · APJ Jason W Melvin · IPR · Final written decision
Claims 8, 10, and 13 are unpatentable as obvious; claims 14–16 were not shown unpatentable because the asserted combinations did not establish the claimed concurrent mapping and cleaning.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits that a person of ordinary skill in the art “would have at least a four-year degree in mechanical engineering, electrical engineering, or a closely related field and at least one year of experience in the design and implementation of robotics and embedded systems.” Pet. 4. Patent Owner does not contest that definition, and we apply it in our analysis, as it appears consistent with the prior art and challenged patent.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Reply 9–12. Further, Petitioner takes issue with Patent Owner’s characterizations asserting that claim 10 would read on “navigating based solely on features such as physical attributes of one or more points such as color/size, or information encoded in the points, even when there is no consideration of the robot’s location relative to the points.” See Pet. Reply 10–11 (quoting PO Resp. 9–10). We agree that Patent Owner’s statement stretches our view of the claim scope. The claim language states that the device must navigate “based on a location of the . . . device relative to the points.” Ex. 1001, 20:16–19. That language requires location-based navigation and our Institution Decision did not hold otherwise. Rather, when we stated that the claim requires using a captured image “to determine the robot’s position,” that implied the claimed requirement that the “position” is relative to the captured points (and thus relative to the room). Inst. 11–12;” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“begin cleaning as soon as the claimed command is received. We are not persuaded that the claim language and specification are consistent with Patent Owner’s construction. The claim language requires that the device “initiate the area rug cleaning operation” “responsive to receiving data indicative of a user-selected command.” We view the “responsive to” language as sufficiently ambiguous as to intervening steps such that we should look to the specification for guidance. The specification describes that a user may select “area rug” mode, after which the remote indicates “AREA RUG MODE ACTIVE” and “ROBOT WILL CLEAN THE RUG ONLY,” and cleaning does not start until the user places the robot appropriately and presses “CLEAN.” Ex. 1001, Figs. 21A, 21B, 17:63–18:10. Because the claim language requires data indicative of a “command to initiate an area rug cleaning operation,” some aspect of the command must be specific to area-rug cleaning. Pressing the “CLEAN” button does not satisfy that requirement, as nothing about the command itself indicates the claimed operation.10 Patent Owner contends that “what command is going to be sent” “depends on what mode you’re in” (Tr. 25:13–19), but we find no support for that in the specification. Indeed, Patent Owner agrees that the specification does not go into such detail but submits that we “can infer that the command and the data that’s sent associated with that command is different.” Tr. 27:16–28:2. We do not agree and determine that, instead, the specification is consistent with a command to initiate area-rug cleaning that indicates to the robot the desired mode but does not immediately start cleaning. That is, the claimed command is described as selecting an “AREA RUG” mode, which does not 10 In this regard, Patent Owner’s proposed construction would suffer from a similar deficiency as Petitioner’s mapping to Toshiba’s priority mode discussed below. See infra at 10. In that mapping, Toshiba’s device would clean an area rug if it happens to lie in a map grid selected for cleaning. Similarly, the “CLEAN” button would initiate area-rug cleaning if the “AREA RUG” mode happens to have been selected prior to that. We think the claim language requires more, in both instances. cause the robot to begin operation; a later-issued generic “CLEAN” command causes the robot to begin operation. Ex. 1001, 17:63–18:10.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“mapping first, then using that map to clean, we consider the claim language to the contrary. The claim does not use any punctuation that would suggest “to perform the one or more cleaning operations” modifies anything other than the preceding phrase—“navigating the autonomous robotic cleaning device about the home.” And, as Patent Owner identifies (see Tr. 33:8–34:10), the specification supports a claim to mapping while cleaning. It states that the vehicle may “improve its cleaning function . . . to roughly mark areas . . . where large obstacles exist, so that those areas can potentially be avoided in future runs.” Ex. 1001, 11:36–41. That describes mapping during cleaning because marking areas is a form of mapping and “in future runs” shows that the mapping was performed during a “run,” or cleaning operation. Another passage relates to Figure 6, which depicts how the “vehicle uses a number of signals for headings to move from room to room.” Id. at 12:17–19, Fig. 6. The specification addresses when the vehicle’s “power level drops below a predetermined level, requiring its return to a base charging station 622.” Id. at 12:20–23. The returning vehicle continues cleaning during the return. See id. at 12:54–58 (“Upon detecting the unique marker associated with a particular working space, the autonomous vehicle may alter its cleaning function.”). The returning vehicle “detects and stores information about each coded signal that it detects along its route.” Id. at 13:23–26. By doing so, the “vehicle can create a map.” Id. at 13:26–29. Therefore, “[a]fter charging, the autonomous vehicle can return to the room it was working in prior to returning to its base” using the map. Id. at 13:29– 32. Based on the specification passages, we conclude the claim language, which has ordinary meaning requiring cleaning while mapping, is consistent with the specification. Toshiba’s sequential process is not the same as the concurrent process recited by claim 14. Nor does Petitioner account for the differences. See Pet. 57–58; accord Pet. Reply 21 (arguing that Toshiba discloses claim 14’s additional limitations only under Petitioner’s construction). Because we do not agree with Petitioner’s claim construction, we conclude that Petitioner has not proven claim 14 would have been obvious.” slip op. at 15
Patent outcomesUS 9,921,586 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,921,586 - Intel Corporation v. Pact XPP Schweiz AGSome claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00539 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 5, 6, 8, 12, 14–24, 28, 30, and 33 are unpatentable under the Nicol and Nicol–Bhatia obviousness grounds; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“2. Reason to combine Nicol and Bhatia Intel argues that a person of ordinary skill in the art “would have been motivated to combine the complementary teachings of Nicol and Bhatia” for the following four reasons: (1) both references “are directed to interrelated thermal and power management aspects that are critical and ubiquitous in processor-based systems,” Pet. 52–53 (citing Ex. 1008, code (54); Ex. 1009, 1:6–8; Ex. 1001 ¶¶ 231–233); (2) the references “both describe a flexible multiprocessor architecture in which software residing in a controller is programmed to selectively control the power supply of each processor, notably by dynamically adjusting the processor’s clock frequency during operation,” Pet. 53–54 (citing Ex. 1008, 2:18–27, 3:13–18; Ex. 1009, 1:57– 59, 2:28–31, 3:23–28, 3:33–38, 12:26–37; Ex. 1001 ¶¶ 231–233); (3) since Nicol “does not discuss over-temperature protection,” which is “critical for high-performance systems such as Nicol’s multiprocessor system,” a person of ordinary skill in the art “would have been motivated to consult Bhatia, which discusses well-known techniques of providing over-temperature protection,” Pet. 54–55 (citing Ex. 1008, 3:9–20, 4:11–13; Ex. 1009, 2:18– 22, 3:33–46; Ex. 1001 ¶¶ 231–233); and (4) a person of ordinary skill in the art “would have been motivated to consult Bhatia [to implement] low activity states in Nicol’s system as . . . means to further minimize power consumption,” Pet. 55 (citing Ex. 1009, 12:58–64; Ex. 1001 ¶¶ 231–233). In its Response, PACT argues that Intel’s four arguments “amount to little more than a suggestion that Nicol and Bhatia manage aspects of a computer system and it would be beneficial to combine these aspects,” which, “without any showing of actual motivation is plainly insufficient,” and “evidences application of impermissible hindsight bias.” PO Resp. 43– 44 (citing Ex. 2027 ¶ 110; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)). PACT also argues that Intel “makes no attempt to explain how a system combining Nicol and Bhatia would function, likely due to the fact that managing a plurality of metrics to create an efficient processing system is extremely difficult.” PO Resp. 44 (citing Ex. 2027 ¶ 111). Citing Dr. Mangione-Smith’s testimony, Patent Owner contends that a person of ordinary skill in the art “might spend their entire career developing intricate systems for managing processor temperature and clock frequency among a plurality of processors, and [Intel] dismisses it as a mere triviality.” Id. at 44–45 (citing Ex. 2027 ¶ 111).” slip op. at 58
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). For a combination of known elements that are not explicitly found together in the prior art, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2020).” slip op. at 16
Patent outcomesUS 9,552,047 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,552,047 - Callminer, Inc. v. Nice Ltd.Some claims unpatentablePTAB · Jul 12, 2021 · IPR2020-00245 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1, 2, and 4 are unpatentable as obvious over Margulies I and Wentink; claims 5 and 6 were not shown unpatentable because the references do not establish the claimed quota.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disagrees with Petitioner’s assessment of the level of ordinary skill, asserting that the educational background is too narrow and that the work experience is incorrect. PO Resp. 8–10. Specifically, Patent Owner asserts that an ordinarily skilled artisan “would have held a bachelor’s degree in electrical engineering, computer engineering, telecommunications engineering, computer science, or a related field, and would have had 1 to 3 years of experience working in call or contact center design and operations, including work force quality management.” PO Resp. 9–10 (citing Ex. 2005 ¶ 29). Like Petitioner, Patent Owner asserts that “[a]dditional formal technical education could substitute for less technical experience, and vice versa.” Id. at 10. Neither party asserts that the patentability issues turn on the level of ordinary skill that we adopt. See Tr. 36:14–19; Ex. 2005 ¶ 25 (Patent Owner’s declarant stating that, “[w]hile I disagree with Petitioner’s proposed definition of a [person of ordinary skill in the art, my opinions would not change if Petitioner’s level of ordinary skill was adopted in this proceeding”). We determine that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art and we therefore adopt that level for purposes of our analysis below.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Patent Owner that the statement in the specification on which Petitioner relies for its construction is not definitional, because it states how the quality task “may be viewed” rather than how the task is necessarily viewed. See Ex. 1001, 6:5–9. Also, because the passage from the specification is a broad description of what the quality plan may encompass, we do not find Petitioner’s proposal helpful in delineating the scope of “quality task” in the context of the patentability issues raised in this proceeding. However, we do acknowledge that the ’872 patent describes a “quality task” quite broadly, and provides options for what a quality task may encompass. As explained below, we are not persuaded that we should adopt Patent Owner’s construction because the specification does not clearly describe the quality task itself as performing a quality evaluation for one or more interaction recordings. Rather, the patent describes a quality task as facilitating a person such as a manager to perform the evaluation. Figures 2A–2E of the ’872 patent illustrate examples of computer screens used to define a quality task. Ex. 1001, 6:13–14. Figures 2A and 2B show that defining a quality task includes defining “various aspects of a quality task’s logic.” Id. at Figs. 2A, 2B, 6:26–30. Figures 2A and 2D illustrate that “an evaluation form may be associated with a quality task.” Id. at Figs. 2A, 2D, 8:10–28. According to the ’872 patent, the “associated evaluation form may be provided to a quality manager who may use the evaluation form to evaluate an interaction.” Id. at 8:11–13.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Petitioner provides persuasive reasoning with rational underpinning for combining the teachings of Margulies I (incorporating Margulies II) and Wentink. Pet. 44, 47, 48–49 (citing Ex. 1006 ¶¶ 97, 106–108). Petitioner persuasively shows that it would have been obvious to a person of ordinary skill in the art to substitute the manual selection of interaction recordings disclosed in Margulies I and Margulies II “with a system that automatically and non-randomly selects the interaction recordings for evaluation, using certain predetermined criteria, as disclosed in Wentink.” Pet. 44 (citing Ex. 1006 ¶ 97) (emphasis omitted). An ordinarily skilled artisan would have made this substitution (replacing a manual selection process with an automated, business rules-driven process) to cure the inefficiency disclosed in Wentink that “quality management systems in the prior art ‘often require additional personnel and distract contact center employees from their primary task of speaking with customers.’” Ex. 1005 ¶ 4; Ex. 1006 ¶ 108. Moreover, the substitution would have no unexpected results and would have required nothing more than a straightforward software modification of replacing the manual selection code disclosed in Margulies I and II with automated rules to determine which interaction recordings to select based on parameters defined by a user, as disclosed in Wentink. Ex. 1006 ¶¶ 106– 108.” slip op. at 26
Patent outcomesUS 8,553,872 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,553,872 - Callminer, Inc. v. Nice Ltd.Some claims unpatentablePTAB · Jun 16, 2021 · IPR2020-00221 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–10 are unpatentable as obvious under § 103; CallMiner did not show claims 11–17 unpatentable because its petition lacked sufficiently specific § 112(f) structure analysis.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’475 Patent, the background technical field, and the prior art, we adopt Patent Owner’s submission on the level of ordinary skill in the art. We agree with Petitioner that the minor change in the level of ordinary skill in the art does not affect whether the cited art demonstrates the patentability of the challenged claims. As such, we determine that a person of ordinary skill in the art the time of the invention would have had (1) a Ph.D. in electrical engineering, computer science, linguistics, or a related field; (2) a Master’s degree in the same with one year of experience implementing systems performing speech analysis; or (3) a Bachelor’s degree in the same with three years of experience implementing systems performing speech analysis.” PO Resp. 8. However, even under Petitioner’s definition of the level of ordinary skill, we reach the same conclusions below regarding patentability of the challenged claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under Phillips, we begin with the language of the claim itself. Phillips, 415 F.3d at 1314 (“the claims themselves provide substantial guidance as to the meaning of particular claim terms”). Here, claim 1 recites “performing an initial processing on the audio signal for locating an at least one event within the audio signal,” and “performing additional processing on a part of the audio signal.” Ex. 1001, 10:43–44, 47–48. It is clear from the claim that the processing events, i.e., initial and additional processing steps, are separate processing steps, although the language of claim 1 does not recite the distinctiveness that Patent Owner asserts, i.e., that there cannot be any overlap in techniques that fall under the different processing steps. The initial processing must “locat[e] an at least one event,” and the additional processing must “provide[e] output related to the audio signal,” per claim 1. Id. Given the language of the claim, including the “comprising” recitation, we are not persuaded that the initial processing could not also provide some output related to the audio signal, of which the location of the event would generally fall under a type of output related to that signal. In other words, we are not persuaded that each processing step is fulfilled by a separate and distinct set of analysis processes.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“We concur with Patent Owner’s assertions that elements of claims 11– 17 should be properly construed under 35 U.S.C. § 112 ¶ 6. We find Dr. Cohen’s testimony to be helpful in that he testifies that the “component” language of claims 11 and 13 are “functional terms,” and although those claims do not use the word “means,” he testifies that “a skilled artisan would need to review the specification to understand the scope and meaning of these terms.” Ex. 2004 ¶ 86. Dr. Stern’s testimony provides citations to the Specification, and attempts to provide the corresponding structure in Petitioner’s “alternative constructions.” See Ex. 1005 ¶¶ 60–61. As such, both parties acknowledge the functional natures of claims 11–17 and suggest the possibility that the claims need to be evaluated under § 112 ¶ 6. Weighing the testimony of both declarants and reviewing the language of independent claim 11 and claims dependent thereon, we are persuaded that those claims recite structures in functional terms such that they recite meansplus-function limitations. We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22
- BurdenNot shown unpatentable
“We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22
Patent outcomesUS 7,599,475 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,599,475 - Unified Patents Inc. v. S.I.Sv.El. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A.Some claims unpatentablePTAB · Jun 25, 2020 · IPR2019-00471 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1, 4, 8, 11–13, and 16–18 are unpatentable as obvious over Easty and Hendricks, and Easty, Hendricks, and Kittaka; claim 10 was not shown unpatentable.
RulingsFinal written decision- Skill levelOther
“that a person of ordinary skill would have had “(i) an undergraduate degree in computer science, computer engineering, or similar technical field; and (ii) one to two years of experience in analysis, design, or development related to recommender systems and collaborative filtering, with additional education substituting for less experience and vice versa.” Pet. 6 (citing Ex. 1003 (Terveen Decl.) ¶¶ 22–24). Patent Owner contends the applicable level of ordinary skill in the art would have had “(i) a B.S. in Computer Science or a closely related field with three or more years of experience in either embedded systems or recommendation systems or (ii) at least an M.S. in Computer Science. Additional education or experience may serve as a substitute for these requirements.” PO Resp. 19 (citing Ex. 2001 (Pazzani Decl.) ¶ 24) (internal citations omitted). Although these contentions differ slightly in the amount of required experience, they are very similar, and neither party contends that these differences are material to any issue in dispute.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We are also guided by the principle that we only construe claim terms if, and to the extent that, it is necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). In the Petition, Petitioner proposes constructions for “implicit filtering” and “explicit filtering.” Pet. 8–9. Patent Owner does not dispute Petitioner’s proposed constructions. Prelim. Resp. 33. Patent Owner does not dispute Petitioner’s showing that the cited art teaches “implicit filtering” and “explicit filtering” as used in the context of the claims of the ’680 patent. See generally PO Resp. Thus, we do not discern any dispute between the parties regarding these terms. As construction of these terms is not necessary in order to resolve this proceeding, we do not explicitly construe these terms.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We do not agree. First and foremost, the Specification does not provide that this “metaphor” or “pictorial representation” is a limiting contrary. The Specification states: “While the library metaphor is a particularly useful personalized visualization of heterogeneous media, other useful visualizations are possible. Other possible visualizations include, for example, simple nested menus and an office and file drawer metaphor.” Id. at 5:11–15. Patent Owner does not explain, and we do not discern, how the alternative visualizations of “simple nested menus” or “an office and file drawer metaphor” support Patent Owner’s proposed construction. Second, the description of the “virtual library” metaphor in the Specification does not support Patent Owner’s proposed construction. With regard to that portion of Patent Owner’s proposed construction that provides “a personalized collection of information,” the same paragraph Patent Owner cites states, “The types of floors in the virtual library, the types of stacks populating each floor, and the specific media items on each of the stacks preferably are selected based on the user’s profile, although they may also be based on all of the information that is available to the metabrowser when the available information is a relatively small and manageable amount.” Ex. 1001, 3:10–15 (emphasis added). The alternative of displaying “all of the information that is available to the metabrowser,” as opposed to content “selected based on the user’s profile,” does not support limiting “virtual library” to require personalization.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“providing that a disclaimer of claim scope during prosecution must be clear and unmistakable. PO Resp. 5 (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“Although a patent’s prosecution history is relevant to the claim construction analysis, any disclaimer of claim scope based on prosecution history must be ‘clear and unmistakable.’”)). Patent Owner does not argue or explain how or why the passages it quotes from the prosecution history constitute a clear and unmistakable disclaimer. See PO Resp. 21–22. These passages were used by the Applicant in its patentability arguments. See Ex. 1002, 124, 125, 151, 153. In response to these arguments, the Examiner found the Applicant was arguing unclaimed features of the invention. Id. at 177–178. The Examiner wrote: As per Appellant’s argument that a meta-browser is not an obvious variant of a browser, Appellant is arguing matter not explicitly claimed in the claims of the specification. Appellant further argues that the claimed invention involves searching a multitude of sources, where Rapaport[17] teaches searching the single source of the Internet. However, Appellant does not distinguish in claims what that [sic] a multitude of sources are searched in addition to the Internet. Applicant further argues that the meta-browser “preferably monitors for data events even if the user engages in other activities such as…” Appellant continues to argue features not claimed in the claims of the specification. As per Appellant’s argument that the virtual library of the claimed invention searches outside the scope of the Internet and is more than just a text-based search engine, Appellant is arguing features not claimed in the claims of the specification. Id., see also id. at 367. And, on appeal from this rejection, this argument was evaluated and rejected by a predecessor of the Board, the Board of” slip op. at 18
Patent outcomesUS 7,734,680 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,734,680
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.