- PTAB · Jun 23, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review on the petition’s challenges and granted Micron’s motion to join IPR2022-00999, with its grounds and schedule unchanged.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00999 (“999 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 999 IPR, Papers 1, 11. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be joined as a petitioner in the 999 IPR. Petitioner represents that Samsung, the petitioner in the 999 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion.” slip op. at 2
NonePatents in suitUS 11,232,054 - Crowdstrike, Inc. v. Open Text Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00124 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7–10, 12, and 15–18 on all asserted grounds; Morris-based grounds met the institution threshold, while Capalik-based grounds did not.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv at 9. The parties agree that, according to median time-to-trial statistics in the Western District of Texas, where the related litigation is pending, the expected trial date for the related litigation is mid-July 2024. Pet. 70; Prelim. Resp. 9. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 9 (District Court Order Granting Third Amended Scheduling Order); Prelim. Resp. 9–10. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about two months later than the deadline for the Board to issue a final written decision. See Pet. 71. This time difference is sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under § 325(d), we apply a two-part analysis, first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- BurdenInstitutedInstituted
“3. Summary In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Morris alone as well as over Petitioner’s proposed combination of Morris and van Oorschot. Claims 2–4, 9, 10, and 12 depend from claims 1 or 8. Having reviewed Petitioner’s arguments asserting that claims 2, 4, 9, 10, and 12 would have been obvious over Morris alone as well as Petitioner’s arguments asserting that claims 2– 4, 9, 10, and 12 would have been obvious over Morris in combination with van Oorschot, (see Pet. 25–30, 32–35), we also determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to these dependent claims.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On the record before us, at this stage of the proceeding, there does not appear to be any claim construction dispute. Accordingly, for purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,578,045 - Netflix, Inc v. Robocast, Inc.Institution deniedPTAB · Jun 9, 2023 · IPR2023-00182 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Netflix did not show a reasonable likelihood that claims 1–2, 7–9, 11–12, 15, and 26–28 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both parties support their proposals with testimony by their respective experts. See Ex. 1003 ¶ 41–44; Ex. 2017 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“previously construed certain terms for the ’451 patent claims, i.e., for an ancestor of the subject ’819 patent that shares a substantially common written description. Pet. 18–19; Prelim. Resp. 6–8 (citing Ex. 1014 (claim construction order in cases involving Microsoft and Apple)). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner states that it “does not necessarily agree that the prior district court constructions are correct, but the constructions are nonetheless satisfied by [the asserted] Grounds.” Prelim. Resp. 6–8; Pet. 18–19. Patent Owner also states that the Board panel in the 1125 IPR adopted the same constructions for “show structure of nodes,” “node,” and “interactively variable duration information,” which Patent Owner asserts also appear in relevant claims of the ’819 patent. Prelim. Resp. 8. Since both parties purport to apply these constructions, we do as well for purposes of this Decision. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). We have thus reviewed the court’s claimconstruction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1014, 16–17; Pet. 18; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 26, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1014, 2–13; Pet. 18; Prelim. Resp. 6–7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claims 1 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22–23; Pet. 19; Prelim. Resp. 7–8.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“With this understanding of Escobar, we agree with Patent Owner’s argument. That is, independent claim 1 defines a method in which presentation of the “advertisement content” occurs in connection with automatic presentation of other content, namely “content . . . presented . . . in accordance with said show structure.” Ex. 1001, 17:53–56, 17:65–67. Escobar’s two-level gateway structure is not consistent with this requirement, and neither Petitioner nor Dr. Houh provides sufficient explanation of how Escobar’s advertisement insertions are otherwise presented in connection with the automatic presentation of the objects/assets. Because Petitioner does not sufficiently show that this aspect of the claim is disclosed by, or would have been obvious over, Escobar, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Escobar alone or over Escobar in combination with Rege.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,606,819 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand
Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28
- ExcludeMotion to exclude, deniedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29
Patent outcomesUS 7,069,560 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.
RulingsRemand decision- RemandDecided for petitioner
“Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30
Patent outcomesUS 6,851,115 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–9 and 15–17 were not shown unpatentable because the asserted combinations did not disclose the construed network-based portal residing on a server side of a network.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 11. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). slip op. at 14
- Expert testimonyPatent owner expert creditedDecided for patent owner
“The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 19:63, 20:4, 20:6, 20:11, 20:15–16, 20:21–22, 20:29–30, 20:42–43, 20:46–47; see PO Resp. 19 (Patent Owner contending that, because of the repeated recitation of “network-based portal” throughout the body of independent claim 1, the “preamble therefore breath[e]s life and meaning into claim 1”). Contending that a “network-based portal” is “a web page or interface that connects multiple users to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 36. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. Because the deficiency in Petitioner’s showing applies to the claims that depend from claim 1 because they inherit the “network-based portal” limitations, we also conclude that Petitioner does not show that any of claims 2–5, 15, or 17 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 7–9 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; nor that” slip op. at 38
Patent outcomesUS 10,708,727 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,708,727 - Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00202 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the asserted obviousness grounds did not show a network-based portal residing on the server side of a network.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1038 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 24. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 70–75. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 20:3, 20:11, 20:20, 20:23, 20:29, 20:31, 20:48, 20:54; see PO Resp. 19 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 1). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 11 and 19. See Pet. 55–57 (Petitioner’s analysis of claim 11 relying substantially on analysis of claim 1), 59–60 (Petitioner’s analysis of claim 19 relying substantially on analysis of claim 1). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 1– 20 is unpatentable under 35 U.S.C. § 103(a) over Diacakis.” slip op. at 36
Patent outcomesUS 10,142,810 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,142,810 - Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00295 · APJ Patrick M Boucher · IPR · Final written decision
Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the asserted combinations did not establish the claimed server-side network-based portal.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The issue before us is therefore well-defined, namely whether a “network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 23–25. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 28 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Under our adopted construction, Petitioner does not show that the combination of Tanigawa and Hullfish meets the claim requirements of a “network-based portal.” That is, Petitioner’s reliance on a client-resident interface to meet the claim’s recitation of a “network-based portal” is incompatible with our construction of that phrase. We accordingly conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 64 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 65–67 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64– 66 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, Loveland, and Takahashi.” slip op. at 36
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 60–85. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1039 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
Patent outcomesUS 10,492,038 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,038 - Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00294 · APJ Patrick M Boucher · IPR · Final written decision
Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the petitioner did not establish that Diacakis disclosed the construed server-side network-based portal.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“entitled to no weight because it “repeats the [Patent Owner Response] nearly verbatim,” “appears to contain opinions he did not develop,” and “is contradicted by Dr. Rouskas’s own deposition testimony.” Reply 3–4. Although Petitioner makes multiple allegations of deficiencies in Dr. Rouskas’s direct testimony, none of these allegations is sufficiently developed with specific examples. First, we disagree that mere verbatim duplication between an expert declaration and an attorney brief defines “a classic example of a cursory expert declaration the Board disregards.” See id. at 3. The Board’s concern is rather whether expert testimony “cite[s] to any additional supporting evidence or provide[s] any technical reasoning to support [its] statement[s].” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also id. at 16 (“Dr. Jones offers only a verbatim restatement of the assertion being supported, without any supporting evidence or technical reasoning” (emphasis added)). As Patent Owner asserts, “Petitioner fail[s] to provide a single example of how Dr. Rouskas’s testimony is ‘cursory or unsupported.’” Sur-reply 1.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“5. Summary As we note above, we find certain of Patent Owner’s arguments adequately rebutted by Petitioner, such that we do not consider them in our assessment. Nevertheless, Patent Owner retains compelling arguments for its proposed construction, supported by expert testimonial evidence, including dictionary definitions and the ’038 patent specification’s reference to a “portal or a gateway.” We find such references more compellingly refer to “portal” and “gateway” as synonyms rather than alternatives. In addition, Patent Owner provides convincing evidence and argument that rebuts the concern raised by the Board at institution whether Patent Owner’s proposed construction would exclude preferred embodiments. Petitioner, who bears the overall burden, addresses that concern only with attorney argument, which we accord less weight. In light of these considerations, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 21 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34–35. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 55–56 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 57–58 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64–66 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Diacakis, Loveland, and Takahashi.” slip op. at 34
Patent outcomesUS 10,492,038 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,038 - T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2022-00669 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–30 are unpatentable under § 103(a) over the six asserted combinations of Bruce and Hancock with Meadows, Knockeart, and/or Moles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“not a communications device is a mobile wireless communications device, the reference states that the system can be used with a “landline or a mobile cellular telephone subscriber.” Ex. 1006, 3:49; see also Ex. 1006, 5:58–60 (“[t]elephone calls are primarily originated from either traditional fixed location landline telephones or mobile wireless telephones”); Ex. 1006, 5:66–6:3 (“[t]o identify the geographical location of the caller . . . several 6 Patent Owner argues that Hancock does not teach this claim requirement, and we have previously found that Hancock does not so teach. PO Resp. 15 (citing Van Essen Decl. ¶ 56); Google LLC v. Traxcell Techs., LLC, IPR2021-01004, Paper 7 at 18 (PTAB Dec. 7, 2021). techniques can be used depending on the particular telephone (i.e., landline or mobile telephone) originating the call”). The same system is used in Bruce for both fixed and mobile devices, and the same telephone number (411) is used whether fixed or mobile. Reply 7 (citing Ex. 1006, Fig. 1, 3:63–66, 5:56–58, 5:63–67; Braasch Decl. ¶ 60). We are persuaded by Petitioner’s reliance on a patent to Karp, et al. as background art, to confirm that it was well known that the phone number of a caller is used to identify whether or not a call is on a mobile phone, and that the use of Automatic Number Identification (ANI) is not limited to fixed landlines. Pet. 24 (citing Ex. 1009, Fig. 11B, 12:20–22; Braasch Decl. ¶ 70); Reply 8–9 (citing Ex. 1009, 1:39–44, 12:24–27).7 The record further includes support for Petitioner’s contention in the form of declarant testimony that explains, “[a] POSITA would have recognized that to select an appropriate location system 17 for a communication received over a landline or wireless network, the switch 16 or the location system 17 would first identify whether a request was made from a landline or a wireless device.” Braasch Decl. ¶ 70 (cited in the Petition at page 24); see also id. ¶ 71 (explaining that the determination would be made even if the incoming call uses a landline or a modem). We are persuaded by this evidence and credit the Braasch testimony in this regard.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of Bruce and Hancock, and the preponderance of the evidence establishes that a person of ordinary skill would have been motivated to make that combination.” slip op. at 15
Patent outcomesUS 9,918,196 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196
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.