• Apple Inc. v. Qualcomm Inc.Rehearing denied
  PTAB · May 23, 2019 · IPR2018-01270 · APJ Aaron W Moore · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving institution denied because Apple did not show Samsung disclosed the claimed notification and power-button silencing during an incoming call.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify the matters misapprehended or overlooked, and where each matter was addressed in a motion, opposition, or reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (2) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “1006, 32)). We found the cited portions of Samsung to describe (1) that if there was no call already in progress, the user could silence an incoming call with the power button, but neither the in-use information nor call waiting would cause the claimed notification, and (2) that if a call was already in progress, call waiting would display a notification for a new call, but there was nothing to indicate that the user could silence a ‘ring,’ or even the call waiting alert, using the power button. See Decision 16. In other words, the “in-use” notification was insufficient because it was not shown to be displayed while a call was incoming, and the “call waiting” notification was insufficient because it was not shown to be employed at a time a user could use the power button to silence a “ring.”” slip op. at 4

  • Strike new argumentNew argument disregardedDenied

    “New Evidence Petitioner asserts that the “new arguments provided in [the] Request [are] appropriate” because “Petitioners are permitted in a request for rehearing to address inaccurate characterizations that they may not be able” slip op. at 7

  • BurdenDecided for patent owner

    “distinction,” and the reference need not describe a “separate during incoming calls state.” Instead, the problem is that Samsung’s in-use display is described as showing information that one of skill in the art would expect to be shown after a call has been answered (i.e., the timer), and Petitioner failed to establish that the information would have been displayed before a call was answered. In this proceeding, “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). With no showing that the in-use information would be displayed before the call was answered, Petitioner did not carry its burden.” slip op. at 4

  None
  Patents in suitUS 9,203,940
• Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.No claims unpatentable
  PTAB · May 13, 2019 · IPR2017-02183 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 7 and 8 were not shown unpatentable under any of the three § 103 grounds because the cited combinations did not teach transmitting on a non-assigned timeslot.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner

    “and the specification to determine whether they expressly or implicitly require a specific order. See Altiris, 318 F.3d at 1369–70. Here, we agree with Patent Owner that the language shows that the results of a step are used in the next step; that is, “step 7[b] ‘preparing to transmit a particular payload type in a timeslot’ [comes before] step 7[c] ‘determining whether the timeslot is a current desired timeslot for the TDMA system,’ because the transmitting device looks at the ‘the timeslot’ identified in the ‘preparing’ step to ‘determin[e]’ whether that timeslot is ‘a current desired timeslot.’” PO Sur-Reply 3–4 (quoting Ex. 1001, cl. 7).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the ordered steps 7[c] to 7[e] require transmitting on an alternate timeslot, that is, a timeslot that is not an assigned timeslot. PO Resp. 7–9. The plain language of claim 7 states that the preparing step of limitation 7[b] is for “a timeslot,” indicating that it is broader than the assigned timeslot of the TDMA system. In limitation 7[c], the claim expressly requires a determination of whether the timeslot in the preparing step is the “current desired timeslot” (assigned timeslot) and selecting (limitation 7[d]) the appropriate synch pattern. The “selecting” step of claim 7[d] requires: “if the timeslot is the current desired timeslot, select[] a synchronization pattern selected from the first set of synchronization patterns . . . otherwise select[] a synchronization pattern selected from the second set of synchronization patterns . . . .” The synchronization pattern that is selected in limitation 7[d] is then used during transmission in limitation 7[e]. Thus, although the claims and specification do not explicitly refer to an alternate timeslot, the claim requires transmitting on the timeslot that is not the current desired timeslot (assigned timeslot). See PO Resp. 19–20; Ex. 2008 ¶ 89.” slip op. at 23

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

    “arguments are directed to products produced by Petitioner, rather than by Patent Owner, products that were found in an Initial Determination (“ID”) of the International Trade Commission (“ITC”) to infringe challenged claims 7 and 8 of the ’991 patent. Ex. 2009, 192–202. In addition, the Administrative Law Judge in that ID found that Petitioner intentionally copied Patent Owner’s patented technology. Id. at 226–228. That finding was based, in part, upon an adverse inference drawn from the repeated invocation of the Fifth Amendment when former employees of Patent Owner were questioned about allegations that they downloaded confidential documents of Patent Owner shortly before becoming employed by Petitioner. Id. at 241–242 (citing LiButti v. United States, 107 F.3d 110, 123–24 (2d Cir. 1997)). In addition to Patent Owner’s detailed discussion of how Petitioner’s products embody all limitations of the challenged claims, these specific administrative findings support Patent Owner’s position that there is sufficient nexus between its evidence and the challenged claims. PO Resp. 57–62; Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).” slip op. at 27

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by this argument. Petitioner’s arguments go to the weight that should accorded to the ID, not to its admissibility. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As Patent Owner responds, the ITC “determined not to review the portions of the ID’s findings regarding the ’991 patent.” Paper 43, 4. And we agree with Patent Owner that Petitioner’s argument that the Final Determination is subject to approval by the President lacks merit because the President did not act on the Final Determination within the period specified by 19 U.S.C. § 1337(j)(2). Id. at 4–5. The ID recounts evidence that has been considered and evaluated by an objective and disinterested judge, and articulates findings that are relevant to whether there is a sufficient nexus between the challenged claims and Patent Owner’s evidence regarding Petitioner’s products. The ID is also relevant to the issue of copying by Petitioner. Although Petitioner asserts that the ID is prejudicial or confusing, it provides insufficient argument to support those assertions. With respect to Exhibits 2010, 2012–2019, and 2021, Petitioner contends that these exhibits are Hytera advertising and marketing documents, which do not supply sales numbers or third-party praise to prove commercial success. Paper 40, 3–4. Again, this argument relates to the weight to be accorded to that evidence, not to its admissibility. As we note above, we agree with Petitioner that these factors impact the appropriate weight to be accorded to the evidence, and we have accounted for that impact. Finally, we deny Petitioner’s request that Exhibit 2020 should be excluded under Fed. R. Evid. 401 and 402 because Patent Owner’s demonstrative slides in Exhibit 2020 rely on Exhibits 2010, 2012–2019, and 2021. As the Board reminded the parties in its Order granting oral argument, “[d]emonstrative exhibits are not evidence.” Paper 44, 3. Exhibit 2020 is merely a demonstrative and is not evidence.” slip op. at 32

  Patent outcomesUS 8,279,991 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,279,991
• Google LLC v. Alex Is The Best, LLCRehearing denied
  PTAB · Mar 18, 2019 · IPR2017-02058 · APJ Minn Chung · IPR · Rehearing

  The Board denied Google’s rehearing request and left in place the denial of institution for claims 1–3, 10–14, and 21 because the Petition did not sufficiently show the cited references taught the claimed limitations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “At best, Petitioner’s arguments in its Request for Rehearing attempt to remedy the deficiencies in the Petition our Decision identified, by supplementing the arguments in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. As explained in the Decision (Dec. 19–20), it was Petitioner’s 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) (emphases added) (citing 35 U.S.C. § 312(a)(3)); see Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” (emphases added)). The record shows that, rather than overlooking any teachings of Inoue or any “background” discussion by Dr. Madisetti, the Decision simply considered the arguments and explanations of the evidence Petitioner presented in the four corners of the Petition, and properly determined that the Petition did not meet this burden required on Petitioner. Dec. 19–20.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3

  § 103 obviousness
  Patents in suitUS 8,581,991
• Apple Inc. v. Qualcomm IncorporatedRehearing denied
  PTAB · Mar 14, 2019 · IPR2018-01280 · APJ Scott B Howard · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving in place the denial of institution because it had not overlooked or misapprehended material facts about Brown or the prosecution history.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors, we explicitly found that although the Examiner originally rejected the claims based on Brown, “[f]ollowing an amendment to the claims adding the prompting step along with arguments by the applicant explaining why Brown did not teach that new limitation, the Examiner shifted to new references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142– 149, 156–168, 178–181). In other words, twice we explicitly acknowledged what Petitioner now argues we overlooked.” slip op. at 5

  • Strike new argumentNew argument disregardedOther

    “For the reasons explained above, we are not persuaded that we misapprehended or overlooked any material facts. Moreover, Petitioner never explicitly nor implicitly addressed the Becton factors in the Petition, and new arguments are not permitted in a request for rehearing absent exceptional circumstances, of which none have been identified here.” slip op. at 8

  Discretionary denial
  Patents in suitUS 7,844,037
• Facebook, Inc. / Whatsapp, Inc. et al. v. Uniloc 2017 LLCRehearing denied
  PTAB · Jan 17, 2019 · IPR2017-01428 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact the determination that claims 9–12, 14–17, 25, and 26 are unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 3

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

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 3

  Claim construction
  Patents in suitUS 8,995,433
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCRehearing denied
  PTAB · Jan 17, 2019 · IPR2017-01427 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied rehearing, rejecting Patent Owner’s argument that LG Electronics was estopped from maintaining the proceeding because its joinder made it Facebook and WhatsApp’s privy.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Finally, we are not persuaded that in our Final Written Decision we overlooked or misapprehended the role of LG Electronics in this proceeding as an alleged “privy,” as this issue is presented for the first time on rehearing. III. ORDER Patent Owner’s Request for Rehearing is denied.” slip op. at 6

  • PTAB / AIA Trials › §315(e) estoppelDecided for patent owner

    “When deciding “privity,” for estoppel purposes, however, it makes sense to focus on the relationship between the named Petitioner and the alleged privy in the prior inter partes review, i.e., the -225 case. See WesternGeco LLC v. Ion Geophysical Corp., 889 F.3d 1308, 1317–22 (Fed. Cir. May 7, 2018) (discussing that a privity inquiry must be grounded in due process and that, in the context of § 315(b), the inquiry focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit and noting that “privity analysis seeks to determine whether the relationship between the purported privy and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels”); see also Shamrock Techs. Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 793 (“What constitutes ‘privity’ varies, depending on the purpose for which privity is asserted.”). LG Electronics was not a party to the -225 case, and there is neither fact nor allegation in the record of actions 5 by LG Electronics in connection with any prior inter partes review that warrants a privity inquiry, at this stage in the proceeding.” slip op. at 5

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “sense to focus on the relationship between the named Petitioner and the alleged privy in the prior inter partes review, i.e., the -225 case. See WesternGeco LLC v. Ion Geophysical Corp., 889 F.3d 1308, 1317–22 (Fed. Cir. May 7, 2018) (discussing that a privity inquiry must be grounded in due process and that, in the context of § 315(b), the inquiry focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit and noting that “privity analysis seeks to determine whether the relationship between the purported privy and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels”); see also Shamrock Techs. Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 793 (“What constitutes ‘privity’ varies, depending on the purpose for which privity is asserted.”). LG Electronics was not a party to the -225 case, and there is neither fact nor allegation in the record of actions 5 by LG Electronics in connection with any prior inter partes review that warrants a privity inquiry, at this stage in the proceeding.” slip op. at 5

  None
  Patents in suitUS 8,995,433
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 16, 2019 · IPR2017-01667 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 3, 6–8, 10–35, 38, and 39 are unpatentable; claims 4 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeOther

    “Response in each case. IPR2017-01667, Paper 17 (“1667 PO Resp.”); IPR2017-01668, Paper 16 (“1668 PO Resp.”). Petitioner4 then filed Replies. IPR2017-01667, Paper 24 (“1667 Reply”); IPR2017-01668, Paper 22 (“1668 Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in each case (“Mot. Excl.”), and Petitioner filed an Opposition as Paper 24 in each case (“Opp’n”). We held a consolidated oral argument in both proceedings, as well as in related proceeding IPR2017-01428, on August 30, 2018. A transcript of the oral hearing (“Tr.”) has been entered into the record of IPR2017-01667 as Paper 31 and into the record of IPR2017-01668 as Paper 29.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “01668, Paper 6 (“1668 Prelim. Resp.”). We instituted inter partes review pursuant to 35 U.S.C. § 314 as to all challenged claims. IPR2017-01667, Paper 8 (“1667 Dec. on Inst.”); IPR2017-01668, Paper 8 (“1668 Dec. on Inst.”). During the pendency of the proceedings, Huawei Device Co., Ltd. and LG Electronics, Inc. filed a petition and motion for joinder requesting to join IPR2017-01667, which we granted. IPR2017-01667, Paper 12. Similarly, Apple Inc. filed petitions and motions for joinder requesting to join IPR2017-01667 and IPR2017-01668, which we also granted. IPR2017- 01667, Paper 29; IPR2017-01668, Paper 27.” slip op. at 3

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

    “1. Instant Voice Message Independent challenged claims 3, 27, and 38 recite the term “instant voice message.” In particular, claim 3 recites a messaging system that “receives an instant voice message” from one of a plurality of instant voice the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). message client systems, “wherein the instant voice message includes an object field including a digitized audio file.” Claims 27 and 38 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claim 27 further requires an “instant voice messaging application” that “includes a document handler system for attaching one or more files to the instant voice message.” Certain of the challenged dependent claims recite additional limitations concerning, for example, additional fields included in the instant voice message (claims 4–8), storage, deletion, or retrieval of instant voice messages (claims 10, 14, 17, 28, 31), the generation of the instant voice messages (claims 13, 18, 32), encryption/decryption of instant voice messages (claims 19, 33), compression/decompression of instant voice messages (claims 20, 34), effects indicating receipt of instant voice messages (claims 23, 35), and display of instant voice messages (claim 30). Our Institution Decision in IPR2017-01667 noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1667 Dec. on Inst. 18, 22–23. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. at 19, 23. The parties were invited to brief the claim construction during trial. Id. at 19–20, 23. In its Response in IPR2017-01667, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1667 PO Resp. 11–13, 15. In particular, Patent Owner relied on the specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message”” slip op. at 12

  Patent outcomesUS 8,724,622 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 8,724,622
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Jan 10, 2019 · IPR2017-02088 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–12, 14–17, 25, and 26 are unpatentable, principally as obvious over combinations involving Zydney and other prior art.

  Nonecites KSR
  Patents in suitUS 8,995,433
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Jan 10, 2019 · IPR2017-02087 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–12, 14–17, 25, and 26 are unpatentable over the asserted prior-art grounds, including combinations involving Zydney, Appelman, Clark, Greenlaw, and Newton.

  RulingsFinal written decision

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

    “1. Instant Voice Message All the independent challenged claims recite the term “instant voice message.” In particular, claims 1 and 6 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claims 1 and 6 further require storing the “instant voice message” and, depending on the claim, performing certain actions, such as retrieving, deleting, compressing, and decompressing the “instant voice message.” Claim 9 also recites generating and transmitting the “instant voice message,” but adds that “the instant voice message application attaches one or more files to the instant voice message.” The Decision on Institution in the 1428 case noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1428 Dec. on Inst. 11. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. The parties were invited to brief the claim construction during trial. Id. at 1112. Because the arguments were particularly directed to whether the prior art attaches a file to the “instant voice message,” a requirement of claim 9, the parties presented their claim construction arguments in the trial briefs in the IPR2017-01428 case. For completeness, we summarize below the arguments presented in the Patent Owner Response and Petitioner’s Reply filed in the 1428 case. In its Response, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1428 PO Resp. 67. In particular, Patent Owner relied on the Specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message” to audio file 210. Id. at 7 (citing various portions of the Specification that state “the digitized audio file 210 (i.e., instant voice message)”). Petitioner, on the other hand, argued in Reply that the “instant voice message” is not synonymous with an audio file recording voice data because a related patent (having the same Specification as the ’433 patent) has a claim that recites “recording the instant voice message in an audio file.” 1428 Reply 3 (citing U.S. Patent No. 8,199,747, claim 1). According to Petitioner, if an “instant voice message” is an “audio file” then the language of that claim requiring the recording of the instant voice message in an audio file would be superfluous. Id. More importantly, Petitioner also argued that the “audio file” is one of two disclosed embodiments of the “instant voice message.” Id. at 45. Specifically, the ’433 patent describes that instead of taking the form of an audio file, the instant voice message is generated in real time by buffering successive portions of the instant voice message. Ex. 1001, 11:3560. If we were to adopt Patent Owner’s proposed construction of an audio file, according to Petitioner, we would exclude a preferred embodiment where the instant voice message is described as buffered successive portions. 1428 Reply 5 (citing Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014)). After persuasively arguing against Patent Owner’s proposed construction, Petitioner proposed no alternative construction, arguing instead that “instant” slip op. at 12

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

    “because they imply that Zydney precludes permanent storage of the sent and received voice containers. The fact that Zydney uses temporary storage does not preclude the use of permanent storage. And Patent Owner does not argue any teaching in Zydney that would be contrary to the applicability of organized permanent storage in Zydney’s system, in addition to the use of temporary storage. Accordingly, we are not persuaded by Patent Owner’s arguments that a person of ordinary skill in the art would not combine the teachings of Zydney and Clark as asserted by Petitioner.” slip op. at 57

  • BurdenUnpatentable

    “review claims 112, 1417, 25, and 26 of U.S. Patent No. 8,995,433 B2 (“the ’433 patent”), owned by Uniloc 2017 LLC. We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioners have shown by a preponderance of the evidence that claims 112, 1417, 25, and 26 of the ’433 patent are unpatentable.” slip op. at 2

  Patent outcomesUS 8,995,433 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,995,433
• Google LLC v. Uniloc Luxembourg, S.A.Rehearing denied
  PTAB · Dec 13, 2018 · IPR2017-02202 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because Richardson and Demeyer did not teach determining the claimed account information or software features through physical device recognition.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “machine parameters include . . . information relating to the device’s software configuration” and that a person of ordinary skill in the art would have recognized that “data relating to the client device’s software configuration can contain information regarding features of software that the user of the client device is entitled to use” (Pet. 19 (emphasis added) (citing Ex. 1103 ¶ 52; Ex. 1104 ¶ 22)), we find no support in the cited evidence that Richardson teaches or suggests that any “information regarding features of software that the user of the client device is entitled to use” could be determined by performing physical device recognition. Indeed, as we explained in our earlier Decision, we discern no information regarding “features of software that [a] user is entitled to use” in any of Richardson’s machine parameters cited by Petitioner as examples of “information relating to the device’s software configuration,” namely, “the platform on which a web browser or another application runs,” “unique parameters associated with the firmware in use,” and “software or operating system serial number.” Dec. 17; cf. Pet. 19. Despite Petitioner’s citation to the testimony of its declarant, Mr. James Geier, in support of its argument, the cited testimony in disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 9

  None
  Patents in suitUS 8,239,852

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.