• Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01184 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.

  RulingsInstitution decision

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

    “8. Conclusion Based on the record before us, we determine Petitioner’s proffered arguments, evidence, and supporting testimony fails to establish a reasonable likelihood that Petitioner would prevail in showing that claims 1–7, 9, 10, 12–14, 17, 18, 20–23, 27, 30, and 31 would have been obvious over Pilgrim, Gibbons, Lairson, and Yoda.” slip op. at 32

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “II. ANALYSIS A. Discretionary Denial – 35 U.S.C. § 314(a) Patent Owner argues that we should exercise discretion to deny institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution (Prelim. Resp. 49–54). Petitioner argues we should not discretionarily deny institution under Fintiv (Pet. 66–67). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “B. Discretionary Denial – 35 U.S.C. §325(d) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 325(d) because of the Petition’s “reliance upon the secondary references Gibbons, Lairson, and Yoda. Gibbons and Lairson were considered by the Examiner, and Yoda does not contain any meaningful additional disclosure or basis for unpatentability that was not considered by the Examiner” (Prelim. Resp. 21–22). Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged in those grounds would have been obvious as discussed below, we do not reach this issue.” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on the present record including the disclosure in the ʼ269 Patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements (see Pet. 6). More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ269 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,588,269
• Zhejiang Crystal-Optech Co. Ltd. v. Viavi Solutions Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01281 · APJ Sharon Fenick · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood that claims 1–3, 6–11, 13–17, and 19 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution. Prelim. Resp. 43–47. Petitioner argues we should not discretionarily deny institution under Fintiv. Pet. 58–59; Paper 9. 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Petitioner uses the pre-AIA statutory framework in its analysis. Pet. 1 n.1. Patent Owner does not comment on this. The ’794 patent claims priority to a provisional filed before March 16, 2013, the effective date of the applicable AIA amendments. Thus, we refer to the pre-AIA version of 35 U.S.C. § 103. Our decision would be the same were we to apply the AIA version of the statute. Because we determine Petitioner fails to establish a reasonable likelihood of prevailing in showing any of the claims challenged would have been obvious as discussed below, we do not reach this issue.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. See generally Prelim. Resp. Based on the present record including the disclosure in the ʼ526 patent, we apply a slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the qualification of “at least” and clarifies some statements. More specifically, we determine a POSITA would have had a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with 3 In the present record, neither party presents arguments or evidence relating to secondary considerations. five years of experience in optical element design and optical filters although additional education (e.g., a Master’s degree with exposure to optical element design and optical filters) may substitute for some industrial experience in optical element and optical filter design, and more industrial experience can substitute for a different educational background. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts the term “center wavelength” (recited in claims 8, 9, and 17) should be interpreted as “the average of the two half-power wavelengths (i.e., [full width half maximum]) in a passband.” Pet. 15 (citing Ex. 1001, 7:53–56, 9:1–4, FIGS. 7D, 8C, 9B; Ex. 1037, 5; Ex. 1039 ¶ 47). Petitioner asserts the term “passband” (recited in claim 14) should be interpreted as “a wavelength range within which a signal can pass through a filter and outside of which the signal is blocked,” as per Patent Owner’s construction Id. (citing Ex. 1037, 12–15). Patent Owner does not directly address Petitioner’s proposed interpretations or provide its own constructions for any claim term. See generally Prelim. Resp. Having considered the record, we conclude that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). E. Claims 1, 2, 3, 6, and 8 – Obviousness over Pilgrim, Yoda, and Thelen” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,131,794
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Feb 2, 2023 · IPR2022-01262 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted Roth-based grounds.

  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) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “As Patent Owner points out, the language of the claim compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claim 37 recites that the “system” described in the preamble is programmed to “automatically direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition for display of an advertisement.” Ex. 1001, 16:40–44. If the third-party server computer were not separate from the “system comprising one or more computers,” the system would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

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

    “demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement. See supra, Section III.C. We concluded from the language of claim 37 and the prosecution history that the “third-party server computer” cannot be part of the “system comprising one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprising one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprising one or more computers.” Prelim. Resp. 10 (quoting Pet. 18). As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 10. In Petitioner’s analysis of claim element 37(c), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the system comprising one or more computers,’ i.e., by the system which includes view server 320.” Pet. 37 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 10). Petitioner argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 23–24. This argument is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprising one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 18. Those computers are also part of the web server system in Roth (id. at 17) identified as the “third-party server computer” (id. at 19), and therefore, the web server system cannot be separate from the “third-party computer system.” For the reasons given, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its challenge to claim 37 as obvious over Roth.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,671,139
• ROKU, Inc. v. Almondnet, Inc And Intent Iq, LLCInstitution denied
  PTAB · Feb 2, 2023 · IPR2022-01236 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–17 or 19–26 were unpatentable over the asserted combinations.

  RulingsInstitution decision

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

    “method of targeting advertisements based on mutual information sharing between IP-addressed devices on a common network” (id. at 25, see id. at 26–27 (similar articulations of combination)). We are not persuaded the Petition sufficiently explains why one of ordinary skill in the art would look to Baum’s teaching. In particular, Petitioner has not explained sufficiently why Madhavan would require the teachings of Baum to operate in an environment using dynamically assigned IP addresses. As such, it is unclear that a person of ordinary skill in the art would apply Baum’s edge routers and techniques for determining that multiple dynamic-IP addressed devices are connected to a common LAN in order to achieve the claimed invention. “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether ‘they would have been motivated to do so.’” Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (quoting InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we are not persuaded the Petition sets forth sufficient articulated reasoning with rational underpinning why a person of ordinary skill in the art would have combined the teachings of Madhavan and Baum to achieve the claimed invention, including the electronic association based on connection to a common LAN limitation, unequivocally identified in the Petition as taught by the combination of Madhavan and Baum (see Pet. 37, 40–41). We also agree with Patent Owner’s argument that “a mere assertion that references are analogous art provides no reason for the specific modification proposed by the Petition.” Prelim. Resp. 28 (emphasis omitted); see Pet. 25–26 (asserting that Madhavan and Baum are analogous art to the ’398 Patent). establish a reasonable likelihood it would prevail in showing that the subject matter of independent claim 13 is unpatentable as obvious over Madhavan and Baum. Due to the dependency of claims 14–17, 20–23, and 26 ultimately from independent claim 13, (see Ex. 1001, 24:62–25:14, 25:26–39, 25:47–50), and for the same reasons as those addressing claim 13, Petitioner does not establish a reasonable likelihood it would prevail in showing that the subject matter of dependent claims 14–17, 20–23, and 26 are unpatentable over Madhavan and Baum.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “In particular, we are not persuaded that the alleged beneficial result of the combination presented in the Petition––e.g., “facilitat[ing] targeting of advertisements based on associations of device identifiers (e.g., IP addresses) in networking environments where device IP addresses are dynamically assigned and therefore subject to change” (Pet. 26, see id. at 25–27 (similar articulations of benefit)), provides sufficient articulated rationale to explain why a person of ordinary skill in the art would “apply Baum’s techniques for recognizing that particular device IP addresses connect to the Internet via a particular edge router and thereby determining method of targeting advertisements based on mutual information sharing between IP-addressed devices on a common network” (id. at 25, see id. at 26–27 (similar articulations of combination)). We are not persuaded the Petition sufficiently explains why one of ordinary skill in the art would look to Baum’s teaching. In particular, Petitioner has not explained sufficiently why Madhavan would require the teachings of Baum to operate in an environment using dynamically assigned IP addresses. As such, it is unclear that a person of ordinary skill in the art would apply Baum’s edge routers and techniques for determining that multiple dynamic-IP addressed devices are connected to a common LAN in order to achieve the claimed invention. “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether ‘they would have been motivated to do so.’” Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (quoting InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we are not persuaded the Petition sets forth sufficient articulated reasoning with rational underpinning why a person of ordinary skill in the art would have combined the teachings of Madhavan and Baum to achieve the claimed invention, including the electronic association based on connection to a common LAN limitation, unequivocally identified in the Petition as taught by the combination of Madhavan and Baum (see Pet. 37, 40–41). We also agree with Patent Owner’s argument that “a mere assertion that references are analogous art provides no reason for the specific modification proposed by the Petition.” Prelim. Resp. 28 (emphasis omitted); see Pet. 25–26 (asserting that Madhavan and Baum are analogous art to the ’398 Patent).” slip op. at 19

  • PTAB / AIA Trials › Discretionary denialNot reached

    “F. Discretion under 35 U.S.C. § 314 Patent Owner argues that the Board should exercise its discretion to deny institution of inter partes review under 35 U.S.C. § 314. See Prelim. Resp. 28–42. Because we deny institution on the merits of the proposed patentability challenges to claims 13–17 and 19–26, we need not address Patent Owner’s arguments urging discretionary denial of institution.” slip op. at 22

  • Skill levelSkill level petitioner adoptedOther

    “April 2007 would have a bachelor’s or equivalent degree in electrical and/or computer engineering or a related field and 2-3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements” and that “[a] person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard.” Pet. 8 (citing challenge Petitioner’s definition. See Prelim. Resp. 4–5. For the purpose of deciding whether to institute, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’398 Patent Specification and the asserted prior art.” slip op. at 6

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,677,398
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 1, 2023 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 10, 12, 13, and 15 were not shown unpatentable because Petitioner failed to prove a rational reason to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDenied

    “We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2007 ¶ 33. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 51 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2008, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 42

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’036 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 46–47).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “in the District Court Case entered a Markman order construing the Recognizes Limitation, among others. See Ex. 2006, 16–18, 21–22.4 Specifically, the court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). As explained in our Institution Decision (Dec. 17–19), we have reviewed the district court’s reasoning, as well as the ’036 patent and other evidence of record before us, and agree that for reasons given by the district court, the Recognizes Limitation should be given the same construction as determined by the district court. Neither 4 Unless otherwise specified, citations to exhibits use the page numbers assigned by the parties, not the original page numbers. party since has urged (or persuaded) us to revise this construction. Based on the complete record before us, we continue to construe the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” See Dec. 17–19; Ex. 2006, 21–22. Both parties adopt this construction for purposes of their post-institution arguments in this case. See PO Resp. 18–19 (“Patent Owner and its expert apply this claim construction in their analysis in the remainder of this IPR, but do not necessarily agree it is correct.”); see generally Pet. Reply (arguing “matching” as per this construction); Pet. (same).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “modifier. The definite article “the” can be used to modify something plural, e.g., “the digital representations.” Although in claim 1, “the” is used to modify a “digital representation,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional digital representations while one “digital representation” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one digital representation or “no more” than one digital representation, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’036 patent analyzes only a single digital representation, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’036 patent with regard to “a digital representation” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one digital representation. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a digital representation” as recited in claim 1 does not preclude involvement of an additional digital representation or digital representations in the analysis.” slip op. at 17

  Patent outcomesUS 8,478,036 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,036
• Configit A/S v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6

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

    “With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13

  Patent outcomesUS 6,836,766 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,766
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution denied
  PTAB · Dec 12, 2022 · IPR2022-01109 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied joinder and denied institution on all challenged claims and grounds because the petition was time-barred under § 315(b).

  RulingsInstitution decision

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

    “Practice Guide instructs us that a party seeking to maintain multiple challenges to the same patent claims carries a heavy burden of establishing that multiple petitions are necessary. Petitioner contends that Patent Owner has not carried that burden. Joinder Opp. 1. We agree. Petitioner has not explained why the 1492 IPR is an insufficient challenge. It is true that the 135 IPR involves Plamondon, another reference. But Petitioner has not explained how Plamondon differs from Crowds, Border, or MorphMix, or why granting joinder with the 135 IPR would be in the interest of justice, given Petitioner’s involvement managing the1492 IPR challenging substantially the same claims. In the words of our Trial Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” TPG 60. We see no evidence in the record suggesting that The Data Company is unqualified to manage the 135 IPR, or that Petitioner would add anything significant to that proceeding in its understudy role.” slip op. at 12

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “III. DENIAL OF INTER PARTES REVIEW It is undisputed that Petitioner was served with a complaint alleging infringement of the ’319 patent more than one year prior to filing the Petition in this proceeding. See Joinder Mot. 2; Joinder Opp. 1. Accordingly, in view of the denial of the requested relief of joinder with the 135 IPR, institution of inter partes review as requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). IV. CONCLUSION For the foregoing reasons, we deny Petitioner’s Motion for Joinder. Because Petitioner is barred under 35 U.S.C. § 315(b) from seeking inter partes review of the ’319 patent, we deny the Petition and do not institute review as to any of the challenged claims.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Not reached

    “For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3

  Discretionary denial
  Patents in suitUS 10,257,319
• Darfon Electronics Corp. v. Michael ShipmanInstitution denied
  PTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.

  RulingsInstitution decision

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

    “In evaluating arguments under § 325(d), we use [a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner slip op. at 10

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

    “(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that 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)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2

  Discretionary denial
  Patents in suitUS 10,942,581
• Metacluster LT, Uab v. Bright Data Ltd.Instituted
  PTAB · Oct 7, 2022 · IPR2022-00687 · APJ Kristen L Droesch · IPR · Institution

  Instituted inter partes review of claims 1–14, 16, 17, 20–24, and 26–32 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner asserts that a person of ordinary skill in the art would be an individual who, as of October 8, 2009, the filing date of the provisional application to which the ‘622 Patent claims priority, had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications. Prelim. Resp. 19–20 (citing Ex. 2011 ¶ 18). According to Patent Owner, “Petitioner’s proposed qualifications of a [person of ordinary skill in the art] (Petition at 12) are not materially different at least in terms of affecting an institution decision in this IPR.” Prelim. Resp. 20. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’622 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “claim construction standard as that applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. Petitioner offers a discussion of claim constructions for the following terms and phrases: “client device,” “first server,” “selecting, in response to the receiving of the [first/second] URL,” the first server “sending . . . to the [first/second] web server using the selected IP address,” and “using the selected IP address as a source address.” See Pet. 18–21 (citing Ex. 1001, 16:21–22, claims 3–4; Ex. 1002 ¶¶ 54–55; Ex. 1005, 8; Ex. 1010, 3–4, 10–12; Ex. 1011, 5, 11–15; Ex. 1012, 2; Ex. 1013, 2–5, 7–12; Ex. 1014, 6). Patent Owner disagrees with Petitioner’s contentions regarding the claim constructions for “client device,” “first server,” and “source address.” See PO Resp. 20–21 (citing Ex. 1002 ¶ 3; Ex. 2011 ¶¶ 35–74; Pet. 20, 33, 48, 64, 76). As demonstrated in the analysis below, at this stage of the proceeding, we need not construe these claim terms and phrases. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “For the purpose of institution and based on Petitioner’s citations to Kocherlakota, RFC 1122, and Dr. Olivier’s testimony (Ex. 1002), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to RFC 1122 when maintaining the TCP sessions [] disclosed by Kocherlakota.” Pet. 52 (citing Ex. 1002 ¶ 151); see KSR, 550 U.S. at 418. According to Petitioner, a person of ordinary skill in the art “would have recognized the benefits of Kocherlakota’ proxy servers exchanging TCP keep-alives with each other.” Id. (citing Ex. 1002 ¶¶ 151–152). Petitioner asserts that TCP keep-alives help detect when a client crashes or aborts a connection during a network failure and prevents server applications from indefinite hanging and unnecessary resource consumption. See id. at 52–53 (quoting Ex. 1006, 102; citing Ex. 1002 ¶ 152). Petitioner asserts that, in Kocherlakota’s system, following the establishment of sessions between proxy 17 and the client computer 11, proxy 19 and/or proxy 21, one of client computer 11, proxy 19, or proxy 21 could crash. See id. at 53 (citing Ex. 1002 ¶ 152; Pet. 22–28, 52). According to Petitioner, “without TCP keep-alives, client computer 11, proxy 19, or proxy 21 would unnecessarily expend resources keeping the TCP connection open.” Id. (citing Ex. 1002 ¶ 152). Petitioner further contends that a person or ordinary skill in the art would have known that TCP keep-alives could also prevent periods of inactivity between client devices from causing the TCP connection between them to terminate. See id. (citing Ex. 1002 ¶ 152). Petitioner acknowledges that RFC 1122 identifies potential disadvantages of TCP keep-alives, but Petitioner asserts that a person or ordinary skill in the art “would have recognized these disadvantages are outweighed” by the aforementioned benefits. Id. (citing Ex. 1002 ¶ 153; Winner Int’l Royalty Co. v. Wang, 202 F.3d 1340, 1349 & 1349 n.8 (Fed. Cir. 2000)).” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,190,622
• Ringcentral, Inc. v. Estech Systems IP, LLCAll claims unpatentable
  PTAB · Oct 4, 2022 · IPR2021-00573 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 6–15, and 17–31 are unpatentable as obvious over Itoh alone, Itoh with Turnbull, Itoh with Ladd, or Itoh with Turnbull and Ladd.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “6 Turnbull et al., US 5,590,189, issued Dec. 31, 1996 (Ex. 1005). 7 Ladd et al., US 5,117,451, issued May 26, 1992 (Ex. 1006). 8 Citing the testimony of Dr. Houh, Petitioner proposes that a person of ordinary skill in the art with respect to the technology described in the ’349 patent in the 1997 timeframe “would have a working understanding of telephone devices, switched telephone networks, PBX telephone systems, and voicemail systems” and “would have had at least a four-year degree in electrical engineering, telecommunication engineering, or a related field and two years of relevant experience in developing or implementing switched telephone systems and/or PBX systems.” Pet. 14 (citing Ex. 1003 ¶¶ 16–” slip op. at 6

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

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

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “As stated above, we construe claim terms only to the extent necessary to resolve the issues in dispute (see supra § III.B.1 (citing Nidec Motor, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803)), and we agree with Petitioner that these additional terms do not require construction to resolve the issues before us.” slip op. at 10

  Patent outcomesUS 6,067,349 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,067,349

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.