- PTAB · Oct 28, 2022 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8–11, and 14 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with this assessment. We also note that Petitioner takes the position that “[t]he Challenged Claims are unpatentable under both proposed levels,” and Patent Owner takes the position that “the challenged claims are patentable under either proposed level of ordinary skill.” Pet. 8; Prelim. Resp. 7. For purposes of this Decision, we adopt Patent Owner’s proposed articulation of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion to institute an inter partes review were we to adopt Petitioner’s proposal.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“Ex. 1007, 4; Pet. 8–9; Prelim. Resp. 7 (Patent Owner agreeing that “[t]hose constructions are set out in the Petition”). Petitioner states that it “applied these agreed constructions” in the Petition, and Patent Owner also states that it “applies the agreed constructions” in its Preliminary Response. Pet. 8; Prelim. Resp. 7. We adopt these constructions as preliminary constructions for purposes of this Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“(Petitioner asserting that, in the related ITC Investigation, “Patent Owner attempted to narrowly construe three additional phrases . . . . The ALJ has not addressed these new constructions, but as discussed below, Patent Owner’s new constructions should be rejected.”). Patent Owner does not ask that we construe these phrases and, indeed, asserts that it is not necessary for us to do so to decide whether to institute the proceeding. Prelim. Resp. 8–9 (“the Board does not need to resolve that claim construction dispute in order to properly deny institution”); see also id. at 41 (“Petitioners’ arguments on this point all deal with an aspect of [Patent Owner’s] proposed claim construction in the ITC Investigation that is not at issue here”). At this time, we decline to address construction of these additional phrases. See 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))).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,378,875 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Patent Owner established priority to JP665, antedating the references asserted against sole challenged claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22
§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 7,769,238 - Snap Inc. v. You Map Inc.InstitutedPTAB · Sep 2, 2022 · IPR2022-00568 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 12 would be obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review “is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, the Petition meets this standard. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. In this Decision, we apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. If Patent Owner proposes a different level of ordinary skill in the” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this stage and on this record, we disagree with Patent Owner’s claim construction to the extent that it excludes the disclosed embodiment that uses areas of a map as screen attribute information: For example, the social mapping module 106 may receive a request from the client device 300. The request may include device. For example, the size of the display 305, the resolution of the display 305, areas of a map displayed on the display 305, etc. Ex. 1001, 15:13–15 (emphasis added). We emphasize “For example” here because it indicates that “areas of a map” are screen attribute information. Id. Area is listed together with the device’s size and resolution. Id. Thus, at this stage and on this record, we disagree with Patent Owner that “‘areas of a map displayed on the display’ is a function of the ‘screen attribute information about a display of the client device’ not the other way around.” Prelim. Resp. 30.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“These teachings lead us to favor Petitioner’s arguments over Patent Owner’s, at this stage, because the cited teachings show that Jackson proposes using a flexible approach, which may include multiple factors or criteria. See id. at 16:40–66. For example, Petitioner asserts that “Jackson explains that its ‘recommendation system 522’ can make its decision based on weighting the ‘global score’ or its signals, and that its ‘personal score 538’ can create weighted scores based on each.” Pet. 52 (citing Ex. 1006, 19:50–61, 22:63–23:3). As for the global score, Petitioner asserts that Jackson’s global score would be weighed based on secondary criteria, such as location, to arrive at a modified score: [I]t would have been obvious to: (1) generate “global scores” for “every post” based on non-user-specific “primary criteria” (Jackson, 9:19-25, 16:45-56), (2) weight those global scores using “secondary criteria” relating to the user and poster sharing a geographic location (Jackson, 16:65-17:7) to generate “modified scores” for the posts, and (3) rank the posts according to the modified scores in the same way Jackson teaches in connection with the social-network-distance secondary criteria (Jackson, 9:54-67).” slip op. at 28
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,616,727 - ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentablePTAB · Aug 11, 2022 · IPR2021-00455 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–9 were not shown unpatentable over Chardon and HDMI 1.3a because the combination does not disclose data that itself identifies a controllable function.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Patent Owner observes, the two proposals differ “in terms of the level of experience specifically with home theater systems.” Id. at 10. Because all of the challenged claims make specific reference to a “home theater device,” Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15– 19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 10–11 (citing Ex. 2003, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“phrase creates a degree of ambiguity, we are mindful that “the claims themselves provide substantial guidance as to the meaning of particular claim terms” and that “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. In this instance, the related phrasing that appears in the “automatically adding” and “causing” limitations of issued independent claim 1 is illuminating. Both of those limitations refer to “the controllable function of the controllable appliance that was identified by the data received from the controllable appliance.” Ex. 1001, 17:11–14, 17:21–24 (emphasis added). There is no question that the only antecedent for “the data” in these limitations is the “data that functions to identify a controllable function of the controllable appliance” recited in the “receiving” limitation. See id. at 17:8–9. And there is no apparent room in the language “that was identified by the data” for the introduction or consideration of such “other information” that Petitioner would like to use “in connection with” the recited “data” to identify the controllable function. See Reply 2.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner reasons that a person of ordinary skill in the art would have combined such teachings from HDMI 1.3a with Chardon’s system because HDMI 1.3a “is a technical guide for the interoperability of the HDMI standard and how HDMI enabled devices operate,” and that “Chardon relies on HDMI capabilities to facilitate communication and monitoring-device state changes in its system.” Pet. 30–31 (citing Ex. 1005, 4:18–21; Ex. 1010, 17; Ex. 1003 ¶¶ 130–131). According to Petitioner, “[a] person of ordinary skill in the art would have therefore turned to at least one of the versions of the HDMI Specification to fill in any details in Chardon with respect to how HDMI-capable devices, such as those of Chardon and the ’486 patent operate, and would have had a reasonable expectation of success in doing so.” Id. at 31. Petitioner supports this reasoning with testimony by Dr. Russ that it is a “well-known industry practice” to rely on HDMI 1.3a as “specification of an industry standard” when “designing and building devices that implement the HDMI standard, incorporating all of the capabilities it offers.” Ex. 1003 ¶ 133. Patent Owner disputes the sufficiency of Petitioner’s showing. In” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The difficulty with Petitioner’s and Dr. Russ’s position is that it is inconsistent with our adopted claim construction that the data itself identify a controllable function of the controllable appliance from which the data is received. See supra § II.C. As Patent Owner asserts, HDMI 1.3a “does not contemplate the exchange of any information that itself functions to identify a controllable function of a playback device.” PO Resp. 24 (emphasis added). All that the “Deck Status” message indicates in the example of Figure 17 is that the current status of the playback device is “Stop.” We also are not persuaded by Petitioner’s and Dr. Russ’s argument that HDMI 1.3a’s Tables 13 and 26 disclose that “Deck Info” information is returned with the “Deck Status” message, and that such “a deck status message includ[es] the features that the device can provide (e.g., play, pause, stop, etc.).” Pet. 41; Ex. 1003 ¶ 117. Reliance on such “Deck Info” information is problematic at least because it is “other information” that would be used in combination with the “Deck Status” to determine controllable functions of the controllable device, which is precluded by our adopted claim construction.” slip op. at 36
Patent outcomesUS 10,325,486 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,325,486 - Google LLC v. Parus Holdings, Inc.Institution deniedPTAB · Jul 18, 2022 · IPR2022-00355 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–16 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1 as obvious over Buchner or obvious over Buchner and Launey.” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). In its Preliminary Response, Patent Owner contends that we should exercise our discretion to deny the Petition because Petitioner’s invalidity grounds will be resolved in a district court case3 before our deadline for a final written decision. Prelim. Resp. 15–17 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). However, because we find that Petitioner is not likely to prevail on the merits, and deny on that basis, we do not need to address whether we should exercise our discretion to deny based on the district court case.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner. First, the ordinary meaning of “internet address” in the context of the claims is an address that conforms to IP. Claim 1, for example, recites “providing a computer operatively connected to the internet.” This is a reference to the Internet, the global network conforming to TCP/IP. Later references to “internet address” should be read in this context. See Phillips, 415 F.3d at 1314 (The Federal Circuit’s “cases provide numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term.”). The Specification confirms that the Internet is a specific network and not just any network: “[T]he present invention allows users to control and monitor other systems and devices that are connected [to] the Internet or any other network by using voice commands.” Ex. 1001, 1:25–28; see also id. at 1:32–43, 1:53–56 (“Furthermore, the use of laptop or desktop computers to access the Internet requires either a direct or a dial-up connection t[o] an Internet Service Provider (ISP).”). The Specification gives a specific example of a uniform resource locator (URL) as a device identifier. Id. at 17:52–54 (“Each record will contain at least a device identifier, which may be in the form of a URL.”). It also states that “data is transmitted using the uses “internet” to distinguish the Internet from other networks. It follows that an “internet address” is an address on the Internet (or at least conforming to IP), and not an address on any arbitrary network. As Phillips counsels, “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” 415 F.3d at 1313.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Petitioner has not introduced persuasive evidence that a TCP/IP based bus would have been an obvious replacement for Buchner’s IEEE 1394 bus. Petitioner makes this argument in conclusory fashion, and Mr. Lipoff largely repeats this argument in his testimony, without meaningful additional testimony and without identifying the basis for that testimony. Ex. 1002 ¶¶ 116–117. If Mr. Lipoff contends that the 1997 IEEE article shows that an IEEE 1394 bus can be swapped for a TCP/IP bus, he has not explained that adequately or shown where the article supports such an argument. Thus, Petitioner’s contention is largely conclusory attorney argument driven by hindsight. Petitioner has not shown a reasonable likelihood that it would prevail in showing that Buchner teaches “said instruction set comprising: at least one internet address, said at least” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,386,455 - Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · Jun 7, 2022 · IPR2022-00295 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 7–12, 22–24, and 33–67 on all petitioned grounds, finding a reasonable likelihood of success on the § 103(a) combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in light of the Texas case where Patent Owner has asserted the ’038 patent and other patents against Petitioner. See Prelim. Resp. 7–12; supra § II.B.” slip op. at 16
- Parallel petitionsDecided for petitioner
“Under the circumstances here, two petitions challenging claims in the ’038 patent will not place a substantial and unnecessary burden on the Board or Patent Owner. In IPR2022-00202, the Board will consider challenges to related U.S. Patent No. 10,142,810 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 9 (PTAB May 23, 2022) (granting institution of inter partes review); supra § II.B. In IPR2022-00291, the Board will similarly consider challenges to related U.S. Patent No. 10,708,727 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00291, Paper 10 (PTAB May 24, 2022) (granting institution of inter partes review); supra § II.B. Thus, in other proceedings the Board will consider and become familiar with Diacakis, Tanigawa, and Hullfish and the relevance of those references to claims in related patents.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts 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. Petitioner also asserts that “[a]dditional education might 5 The record does not include evidence concerning objective indicia of nonobviousness. compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 92–97. At this stage of the proceeding, Patent Owner does not address the educational level or work experience of a person of ordinary skill in the art. See, e.g., Prelim. Resp. 1–7, 12–16. Based on the current record and for purposes of institution, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’038 patent and the asserted prior art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,492,038 - Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · May 24, 2022 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–9 and 15–17 on all asserted § 103 grounds, finding a reasonable likelihood that Epic would prevail on at least one challenged claim.
RulingsInstitution decision- 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, and Patent Owner does not, at this time, propose any different articulation. See Ex. 1003 ¶¶ 92–97. 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 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Although “Petitioner does not believe that any terms need to be construed to assess the arguments presented” in its Petition, Patent Owner raises an issue with respect to the challenged claims’ recitation of a “network-based portal.” See Pet. 25; Prelim. Resp. 15–16. In particular, Patent Owner contends that “[t]he specification of the ’727 Patent uses the term ‘network-based portal’ consistently as being at the server-side of a network.” Prelim. Resp. 15. Patent Owner supports its contention by identifying examples where the specification of the ’727 patent describes a “portal” as separate from a “mobile phone” or from a person’s “wireless device.” Id. at 15–16 (citing Ex. 1001, 6:12–13, 6:32–33, 6:55–63, 16:1–3). But the specification also includes numerous examples where the portal functionality is implemented in a “mobile phone,” i.e., a client-side device. See Ex. 1001, 3:10–19, 9:3– 10:2, 10:17–13:27, 14:64–15:54, Figs. 7–11. For example, the specification explains that a “mobile communication device,” such as a “mobile telephone,” may perform steps depicted in Figures 7 through 11. See id. at 9:4–8, 10:17–28, 11:60–12:5, 13:1–9, 14:7–13, 14:66–67, 15:44–46; see also id. at 14:36–38 (identifying a “mobile telephone” as an example of a “mobile communication device), 17:53–55 (same). And Patent Owner categorizes a “mobile phone” as a client-side device. See Prelim. Resp. 16– 22. To adopt Patent Owner’s exclusion of client-side functionality from the scope of the recited “network-based portal” would thus exclude preferred embodiments. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Accordingly, for purposes of this Decision, we decline to adopt such an exclusion. The parties will have an opportunity to elaborate on their positions for proper construction of “network-based portal” during the trial. On the record before us, we do not find it necessary to construe any other term for purposes of this Decision. See 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))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Among such reasons, Petitioner identifies both references’ teachings regarding prioritization of communications from certain individuals, as well as the similarity of Diacakis’s “presence and availability” information with Loveland’s “current circumstance” information. Id. at 53–56 (citing Ex. 1007 ¶¶ 8, 24; Ex. 1008, 3:45–5:24, Figs. 1–2). Petitioner supports this identification with testimony by Dr. Almeroth, who also supports Petitioner’s contention that the combination would both yield predictable results and be reasonably expected to succeed. Ex. 1003 ¶¶ 152–161; Pet. 54–57. At this time, Patent Owner disputes neither Petitioner’s reasoning to effect the combination nor Petitioner’s specific analysis of the individual limitations of claims 7–9. On the current record, and mindful of the standard that applies during this preliminary phase of the proceeding, we find that Petitioner’s reasoning is sufficiently supported by rational underpinning.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“discretion under 35 U.S.C. § 314(a) to deny the Petition in light of the state of the related litigation. Prelim. Resp. 9–14 (citing, inter alia, NHK Spring Co., Ltd. v. Intri-plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). But on the same date Patent Owner filed its Preliminary Response, the district court granted Petitioner’s motion to dismiss for improper venue, thereby terminating the related litigation. See Ex. 3001, 9. We agree with Petitioner that “this dismissal moots Patent Owner’s arguments based on Fintiv” and that “[b]ecause there is no longer any parallel proceeding, there is no basis for a discretionary denial under § 314(a).”4 Reply 1. We accordingly decline to exercise our discretionary authority to deny the Petition.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,708,727 - PTAB · May 24, 2022 · IPR2022-00669 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–30 under all six §103 grounds and granted T-Mobile’s motion to join IPR2021-01552.
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 any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As elaborated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review as to the challenged claims and grounds raised in the Petition. We also grant the Joinder Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We are persuaded by Petitioner’s arguments. Because the Petition challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).” slip op. at 34
- 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.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - PTAB · Apr 19, 2022 · IPR2022-00010 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 14–19 on four § 103 grounds based on Suzui, Boniface, and Gilmore, with additional references for claims 16, 17, and 19.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“Even though it explains that parallel petitions challenging the same patent are generally disfavored, the consolidated Trial Practice Guide nevertheless recognizes that there may be “rare” circumstances in which more than one petition may be necessary, and that the panel has discretion to review whether fairness warrants allowing multiple petitions by a single petitioner. Consolidated Trial Practice Guide, 59. In particular, petitioners are required to file lengthy petitions that fully elaborate their arguments for canceling the challenged patent. 37 C.F.R. § 42.22(a)(2); see also id. § 42.21(a), (c); 35 U.S.C. § 312(a)(3) (“A petition … may be considered only if … the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). Thus, the Board recognizes that, with the strict limits set on the length of petitions (see 37 C.F.R. § 42.24(a)(1)), in some cases, it may be impossible to adequately present all legitimate grounds for cancelation in a single petition. Here, petitions in Group 2 challenge different claims from the petitions in Group 1, wherein the claims in Group 2 are directed to different subject matter from those in Group 1. Thus, we are not persuaded that Petitioner should be able to adequately present all legitimate grounds for cancelation of both sets of claims directed to different subject matter in a single petition. In this case, we are not persuaded that the petitions between the two groups are considered “parallel” petitions that would provide the Petitioner more than one bite at the apple. That is, we are not persuaded that the filing of the two separate groups of petitions directed to different subject matter involve an abusive attempt to get more than one bite at the apple.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. 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 grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner further contends that “routing wires in parallel (for instance in the same conduit) was a well-known wiring technique,” wherein Boniface teaches “routing the positive and negative conductors ‘in parallel with an array grounding conductor.’” Pet. 29 (citing Ex. 1402 ¶¶ 193–196). Petitioner provides an annotated Figure 1 of Boniface, shown below, to illustrate its contentions. Annotated Figure 1 of Boniface in the Petition, according to Petitioner, illustrates “a fault detection system comprising a photovoltaic solar array 101 (blue) connected to a power conditioning unit, e.g., inverter 115 (orange) via connective wiring.” Pet. 29 (citing Ex. 1424 ¶ 37; Ex. 1402 ¶ 194). Petitioner contends that Boniface discloses that “a photovoltaic source positive conductor (102/112/112’) and a negative conductor (103/113/113’) (green) are routed in parallel with an equipment ground conductor 104 connected to earth ground system 118.” Id. (citing Ex. 1424, ¶¶ 37–39, 48, Figs. 1, 2, 6, 8; Ex. 1402 ¶ 194). According to Petitioner, a POSITA would have been motivated to implement Suzui’s system, in view of Boniface’s teaching, “to route Suzui’s positive and negative conductors in parallel with Suzui’s frame grounding conductors . . . to prevent shock hazards and improve safety,” and additionally “because routing the wires in parallel (e.g., in the same conduit) would also be easier and more convenient.” Id. at 31 (citing Ex. 1424 ¶ 2; Ex. 1402 ¶ 195).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,937,822 - PTAB · Apr 19, 2022 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13 and 20, finding a reasonable likelihood of success on each asserted ground in the petition.
RulingsInstitution decision- Parallel petitionsOther
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we find that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1–3 and 8–10 as anticipated by Tracy; Claims 1–3 and 8–10 as obvious over Tracy; Claims 4 and 11 as obvious over Tracy and Fujimoto; Claims 6 and 20 as obvious over Tracy and De; Claim 7 as obvious over Tracy and Bond; XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’822 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). construed as means plus function terms: DC to AC converter, switch[ing] controller, AC ground leak detector, bi-directional DC-to-DC converter, common-mode filter. Pet. 17–21. Although Petitioner states these terms “could be construed as means-plus-function limitations,” Petitioner states that if the panel does not construe them as such, these terms should be construed according to their ordinary and customary meaning. Id. at 17. According to Petitioner, whether these limitations are construed as means plus function terms or according to their ordinary and customary meaning, the prior art discloses the limitations of the challenged claims. Petitioner does not explain why terms that have an ordinary and customary meaning should be construed as means-plus-function limitations in the context of the ’822 patent. Therefore, we apply the ordinary and customary meaning to each limitation. Vivid Techs., 200 F.3d at 803.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that at the time of the patent application, a person of ordinary skill “would have had a bachelor’s degree in electrical engineering or a similar discipline and three years of design experience with power electronics, including experience designing power converters.” Pet. 17 (citing Ex. 1002, Declaration of Dr. R. Joseph Baker (“Baker Decl.”)). Patent Owner does not discuss the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); of ordinary skill is consistent with the subject matter of the claims and references, we apply Petitioner’s proposed level of skill in this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,937,822
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.