• Oracle America Inc. / Oracle Corporation et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jan 8, 2018 · IPR2016-01434 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable as obvious; claim 14 was not shown unpatentable because the cited personal notes were not “content contributed.”

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “While the parties use slightly different language, we are unable to discern any substantive differences between the proffered levels of skill and basic qualifications of a person of ordinary skill in the art. Accordingly, we adopt Dr. Papakonstantinou’s articulation of the level of ordinary skill as our own, if for no other reason then for its conciseness, with the understanding that the differences between the proffered levels of ordinary skill are limited and inconsequential in our analysis.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “above-identified single statement in the specification, which uses permissible language such as “can be” and “does not need to be,” is sufficient to justify Patent Owner’s assertions, which for all practical purposes, is a disavowal of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”) We also credit the testimony of Dr. Almeroth over that of Dr. Papakonstantinou, because, among other reasons, Dr. Almeroth supports his testimony with relevant citations to the specification, while Dr. Papakonstantinou largely repeats that which is set forth in the Patent Owner Response, without further analysis. graphical fields that allow the input of administrative information without programming” are advantageous over “cumbersome programming performed in the past.” Ex. 2002 ¶¶ 44, 47. We treat this argument as subsumed within Patent Owner’s argument that the specification disparages prior art systems that require HTML programming to perform administrative tasks.” slip op. at 16

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

    “224, 232 encompasses a “link to content.” In application, however, “what is a wireless LAN?” 224, 232 is actually two separate components: (1) the underlying technical set of computer instructions that, upon clicking the link associated with “what is a wireless LAN?” 232, transports a user to a web page associated with “what is a wireless LAN?” 232; and (2) the words “what is a wireless LAN?” 224 itself displayed on the computer display, but separate from the technical set of computer instructions set forth in (1). In this example, (1) is “link to content, but not itself ‘content,’” however, (2) is itself “content.” More precisely, when we now consider “what is a wireless LAN?” 224, 232 in relation to the aforementioned construction of “content” as “electronic data embodying information for an individual or individuals,” it becomes clear that “what is a wireless LAN?” 224, 232 is both “links to content” and “content.” Specifically, component (1) of “what is a wireless LAN?” 232 is “links to content,” but not “content” itself, because the underlying technical set of computer instructions is not “electronic data embodying information for an individual or individuals,” but for a computer. By contrast, component (2) of “what is a wireless LAN?” 224 is “content,” as it is clearly “electronic data embodying information for an individual or individuals,” in that the words “what is a wireless LAN?” are intended to convey information to an individual. So, as a practical matter, we discern that every disclosure of a “link to content” that includes “electronic data embodying information for an individual or individuals” (i.e., any information associated with a “link” that is separate from a generic indication of the “link” itself), is “content.” See also Ex. 3001, 6–16 (providing further analysis concerning construction, which we expressly incorporate herein). Accordingly, we determine that a proper construction of “content” is “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. We are persuaded that “administrative interface” is broader than the “administrative page” mentioned in the specification, in that an “administrative interface” may encompass 9 While discussing “graphical user interface” during oral argument, Patent Owner stated that it was not disclaiming claim scope. Tr. 47:20–22 (“We’re not arguing that the claim terms have been disclaimed in some phrase.”). something other than an “administrative page.” We are also persuaded that the specification’s disclosure of a non-limiting embodiment, that of a highlyautomated and browser-based “administrative page,” does not require that a proper construction of “administrative interface” include “graphical user interface.” As admitted by Patent Owner, these pages are “example[s]” only, and, at best, merely “impl[y]” the presence of a “graphical user interface.” See PO Resp. 8–9 (citing Ex. 1002, 16:39–44; Ex. 2002 ¶ 40). We are persuaded that an “implied example” does not belong in a proper construction of a claim term. Indeed, Petitioner asserts that Patent Owner’s factual premise, concerning the above “implied example,” is flawed, as the specification’s “reference to automation and a browser provides no basis for restricting the claimed ‘administrative interface’ to a graphical user interface.” Pet. Reply 5–6 (citing Ex. 1033 ¶ 15) (Dr. Almeroth testifies that “automation of computer systems does not require a graphical user interface.”). More specifically, Dr. Almeroth identifies other automated “interfaces” in the specification, such as “a networked cash register, bar code scanner or electronic product code reader” (Ex. 1002, 13:8–15, 14:51–52) that do not require a “graphical user interface.” Ex. 1033 ¶ 14. We agree with Dr. Almeroth’s analysis of the specification. Dr. Almeroth asserts further, and we agree, again, that “[o]ne of ordinary skill would understand that that cash register could be connected to a server that is accessible only via a command line interface, and that administrators could use command-line tools . . . to group content on that server.” Ex. 1033 ¶ 14. Patent Owner cites In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–1150 (Fed. Cir. 2012) for its finding of an implicit definition of a” slip op. at 13

  Patent outcomesUS 7,516,177 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,516,177
• Talari Networks, Inc. v. Fatpipe Networks India LimitedSome claims unpatentable
  PTAB · Nov 1, 2017 · IPR2016-00976 · APJ Stacey G White · IPR · Final written decision

  Claims 4, 5, and 7–15 are unpatentable; claim 19 was not shown unpatentable, because Karol anticipates some claims and Karol, alone or with Stallings, renders others obvious.

  RulingsFinal written decision

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

    “selecting paths. See id. 5:48–50. These methods allow for the selection to “be performed once per packet, or a given selection may pertain to multiple packets.” Id. at 14:40–46 (emphasis added). Thus, we find that the specification discloses both selection for each individual packet and selection for a group of packets.” slip op. at 8

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

    “with either a manual or an automated environment. The cited passage distinguished routing by departments from dynamic load balancing by stating that the department-based routing is not dynamic because in dynamic load balancing the “router loads dynamically in response to actual traffic.” Id. at 2:63–64. We find that the cited passages show that the contemplated load balancing is performed based on actual traffic, but are insufficient to establish that the Patentee intended load balancing to be equated with a manual selection process. See Id. at 2:61–65, 7:31–32. Further, we are not convinced by Patent Owner’s arguments regarding the alleged requirement that traffic be assessed at some point after the packet’s arrival. The portion of the specification cited in support of this assertion refers to multiple scenarios or “cases.” See PO Resp. 16 (citing Ex. 1001, 14:53–58). The specification states that in one of those cases the path may be determined after the packet arrives and states that, for example, the path determination may be done using dynamic load balancing. See Ex. 1001, 14:53–58. This passage does not provide any specific temporal limitation to the term “dynamic load balancing,” but rather it illustrates an example of when load balancing could be used. It is improper to limit the claims to this one exemplary embodiment without more express language in the claims or the specification that would narrow the scope of this term. Thus, we find that the proper construction of dynamic load balancing is “distributing packets based on actual traffic.”” slip op. at 12

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

    “selection for each packet then Karol would have rendered this limitation obvious. Pet. 45. Petitioner asserts that this limitation would have been obvious because (1) modifying Karol to select networks on a per-packet basis would have amounted to nothing more than the simple substitution of one known element for another to obtain predictable results (id. at 45); and (2) the combination of Karol and the knowledge of one of ordinary skill in the art would have been obvious to try (id. at 46).” slip op. at 19

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We are not persuaded by Petitioner’s contention that Karol discloses sending different packets of a given message to different parallel networks. Karol does not describe any logical grouping of datagrams into a message. Ex. 2001 ¶¶72–74. On behalf of Patent Owner, Mr. Williams testifies that “Karol . . . never describes dividing up messages and sending those across disparate networks.” Id. ¶ 73. We note, that Karol uses the terms datagram and message in an interchangeable manner. See Ex. 1006, 1:10, 3:34–35 (“datagrams (sometimes hereinafter called messages)”). Karol also interchanges the terms packet and datagram. See id. 5:23–25. Thus, the mere use of the term “message” in Karol is not sufficient to show that Karol uses the term in the same manner as it is used in claim 19. We find Karol’s use of the terms datagram, packet, and message to be consistent with the ’235 patent’s use of the term packet because Karol treats these terms as disclosing a discrete unit of transmission that may be stored, halted, or turned around. Petitioner’s discussion of UDP segments is insufficient to establish that packets from a given message are sent to different networks because it is not clear from Karol’s disclosures that these UDP segments should be considered to be a “message.” Thus, we determine that Petitioner has not demonstrated by a preponderance of the evidence that claim 19 is anticipated by Karol.” slip op. at 37

  Patent outcomesUS 6,775,235 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 6,775,235
• Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Some claims unpatentable
  PTAB · Aug 14, 2017 · IPR2016-00591 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 3, 6, 9, 12-14, 16, 19, 22, and 23 are unpatentable as anticipated by Avrahami; claims 10, 15, and 25 were not shown obvious.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. Avrahami describes its algorithm as providing “for semi-automatic 3D spatial polygon extraction from a pair of colored aerial images with a known external model solution.” Ex. 1004, 43 (emphasis added). Avrahami touts that one of the advantages of its system is that “the operator can identify at a glance which buildings can be mapped by this method so as to combine it with traditional manual extraction or other semi-automatic method.” Id. at 48 (emphasis added). Further to this point, Figure 1 shows a side-by-side comparison of the images in the pair. See id. at Fig. 1 (displaying left and right polygons going through Avrahami’s iterative matching process). Further, we credit the testimony from Petitioner’s Expert, Mr. Schuch, that one skilled in the art would understand Avrahami’s images to be what “you see . . . on a computer screen” as “part of the production.” Ex. 2017, 69:20–21; see also id. at 71:2–4 (explaining that “[t]his is an actual production image”). Therefore, we find that Petitioner has proffered sufficient evidence that Avrahami discloses the disputed limitation.” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “We are persuaded by Patent Owner’s extensive evidence of nexus between its Render House and Twister products and the challenged claims. Patent Owner steps through each challenged claim on an element-by-element basis and directs us to images and specific passages from its Render House and Twister user guides that it argues embody the limitations of each challenged claim. PO. Resp. 50–58. Patent Owner also supports its assertion of nexus with testimony in the form of a Declaration from Dr. Chandrajit L. Bajaj that includes a claim chart detailing where each limitation of the challenged claim is found in its Twister and Render House products. Ex. 2010, 44–91.5 The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Patent Owner has put forth sufficient evidence to show that its Twister and Render House products embody the elements of the challenged claims and thus, we look to Petitioner to rebut this presumed nexus and acknowledge that the presumption “cannot be rebutted with mere argument; evidence must be put” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “with the purportedly unique characteristics of the claimed invention and that for which there is alleged commercial success.” Reply 23–24. Our reviewing court has held that for evidence of commercial success to be relevant, “the patentee must establish a nexus between the evidence of commercial success and the patented invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). As noted above, however, Patent Owner has provided extensive evidence that the Twister and Render House products are coextensive with claims 10, 15, and 25 and that the reports sold were created using the Twister and Render House products. Thus, we are persuaded that nexus exists between the challenged claims and the commercially successful products at issue. Petitioner also asserts that “Patent Owner has failed to make any showing as to market share, thus rendering their sales figures irrelevant and not adequately defined.” Reply 24. Patent Owner provided unrebutted evidence that “approximately 96 percent of the top 25 insurance carriers rely on [Eagle View Technologies 3D aerial roof measurement reports] in their claims departments.” Ex. 2020, 1; see also Ex. 2029, 8 (Verisk Analytics presentation noting that 24 of top 25 insurance companies and 30,000 contractors are Eagle View customers). In addition, Patent Owner’s evidence shows that its products are used by “about one-fifth of the roofing contractor market, according to an estimate by market researcher IbisWorld.” Ex. 2024. Patent Owner’s financial reports show both that it sold a significant number of roofing reports and that its sales grew significantly between 2009 and 2015. See PO Resp. 60–61. We find that this information, taken together with statement from others in the industry (see Ex. 2029) gives us a view of Patent Owner’s place in the relevant market and persuades us that Patent Owner’s Twister and Render House products experienced significant commercial success and wide-spread use in the industry.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for patent owner

    “iii. Industry Praise Praise from industry participants, especially competitors, is probative as to obviousness because such participants “are not likely to praise an obvious advance over the known art. Thus, if there is evidence of industry praise of the claimed invention in the record, it weighs in favor of the non-obviousness of the claimed invention.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053 (Fed. Cir. 2016). Petitioner described Patent Owner’s products as “[u]sing aerial photography and patent-pending software [to] accurately calculate[] measurements for the roof’s ridges, rafters, valleys, slopes and more.” Ex. 2021, 1. Petitioner further noted that the “process saves contractors and roofers hours of time spent measuring and scoping a roof.” Id.” slip op. at 23

  Patent outcomesUS 8,209,152 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,209,152
• Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision

  Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10

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

    “For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12

  Patent outcomesUS 7,397,363 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 7,397,363
• Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCSome claims unpatentable
  PTAB · Jan 26, 2017 · IPR2015-01611 · APJ Stacey G White · IPR · Final written decision

  Claims 91 and 92 are unpatentable over Kniffin; the petitioner did not show claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “second signal, wherein the second signal is at least one of generated by and transmitted from a second control device.” Ex. 1001, 80:9–10; see also id. 83:25–26 (similar language in claim 42), 85:15–18 (claim 48), 99:13–14 (claim 138). Thus, in each of independent claims 26, 42, 48, and 138, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 13–14. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “second signal, wherein the second signal is at least one of generated by and transmitted from a second control device.” Ex. 1001, 80:9–10; see also id. 83:25–26 (similar language in claim 42), 85:15–18 (claim 48), 99:13–14 (claim 138). Thus, in each of independent claims 26, 42, 48, and 138, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 13–14. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point.” slip op. at 13

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

    “have modified Kniffin to use the Internet because “conventional wisdom at the time of the effective filing date of the ’130 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 32. In support of this position, Patent Owner cites a 1996 Morgan Stanley “Internet Report” that noted concerns about security and potential limits to Internet access. Id. at 32–34 (citing Ex. 2005, 24).” slip op. at 19

  • Skill levelSkill level board ownDecided for petitioner

    “have modified Kniffin to use the Internet because “conventional wisdom at the time of the effective filing date of the ’130 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 32. In support of this position, Patent Owner cites a 1996 Morgan Stanley “Internet Report” that noted concerns about security and potential limits to Internet access. Id. at 32–34 (citing Ex. 2005, 24).” slip op. at 19

  Patent outcomesUS 6,549,130 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,549,130

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.