• Resi Media LLC v. Boxcast Inc.All claims unpatentable
  PTAB · Apr 12, 2023 · IPR2022-00067 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–36 are unpatentable under § 103; the Board relied on Morford and Maes, with Lu, McGrew, or Barreto for dependent-claim grounds, and did not reach Allen-based grounds.

  RulingsFinal written decision

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

    “With respect to the claimed ABD, we determine that even under Patent Owner’s construction requiring a “processor optimized for audio and video compression,” Petitioner has shown that the independent claims would have been obvious over Morford and Maes.10 Therefore, we need not construe the term to resolve the obviousness contentions at issue.” slip op. at 9

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

    “circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–20) or system (for system claims 21–36). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1003, 38:34–36, 38:42–54. However, claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 38:31–33. Clearly, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. But the claim limits these two actions to the individual steps in which they appear. Only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six stated autonomous ABD actions are required to be performed “without modification or circumvention of the router.”” slip op. at 12

  • Skill levelSkill level board ownOther

    “For purposes of this Decision, we do not determine that the differences between the proffered levels of ordinary skill in the art would be dispositive. We adopt our determination in the Institution Decision, in which we adopt the parties’ asserted level having between two to four years of experience. Inst. Dec. 20.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “b) Analysis Having reviewed the entirety of the record and analyzed the evidence, we determine, with respect to the limitations not specifically contested by Patent Owner, that Petitioner’s assertions are supported by the record, in the manner discussed above. Regarding those limitations contested by Patent Owner, we address and analyze those limitations below. As discussed below, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 is unpatentable under § 103 as obvious over the combination of Morford and Maes.” slip op. at 27

  Patent outcomesUS 10,154,317 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,154,317
• Resi Media LLC v. Boxcast Inc.All claims unpatentable
  PTAB · Apr 12, 2023 · IPR2022-00066 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–30 are unpatentable under § 103; the Board relied on Allen and Maes for claims 1–17, 21–24, 26, and 30, and did not reach remaining grounds.

  RulingsFinal written decision

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

    “without modification or circumvention of the router” as follows. We begin with the language of the claims and the originally-filed disclosure. With respect to the originally-filed disclosure of the ’574 patent, no explicit discussion is presented to define or explain the terms “modification” or “circumvention.” With respect to the claims as a whole, the “without modification to or circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–11, 22–30) or system (for system claims 12–21). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1001, 26:32–60. Claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 26:35–37. However, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. So, the claim limits these two actions to the individual steps in which they appear. Therefore, only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six autonomous ABD actions recited in the claim are required to be performed “without modification or circumvention of the router.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed

    “3. Additional Claim Terms Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). With respect to the terms “scheduling logic,” “streaming information,” “contemporaneously with the live event,” “transmitted [received] out of band,” and “dynamically scaling the server based on demand,” these terms are not in controversy. Thus, we need not construe those terms.” slip op. at 16

  • Skill levelSkill level board ownOther

    “Patent Owner does not specifically assert a level of skill in the art. Patent Owner’s declarant, Dr. Akl, does testify that a person of ordinary skill in the art of the ’574 patent: would have . . . a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience in the design or development of telecommunication and networked systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 2017 ¶ 35. Under either level of skill, a person having a bachelor’s degree in computer engineering or a related field, and a couple years’ experience in networked systems or the equivalent would qualify as a person having ordinary skill in the art. The primary difference between Petitioner’s assessment and Dr. Akl’s is whether “2–3 years” or “four years” of experience is appropriate, neither explains why their assessment is appropriate. See Ex. 1007 ¶ 30; Ex. 2001 ¶¶ 20, 21 (addressing without argument or comment the assessment of Petitioner’s declarant); Ex. 2017 ¶ 35. For our analysis, we do not determine this difference to be dispositive; rather, we determine that the appropriate level is between two and four years of experience.” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “that Allen lacks an ABD behind a router. Rather, we credit the testimony of Dr. Easttom that a “network has to have a router,” and “a router must be present in Allen” given Allen’s use of WANs with the Internet being one example of a WAN. Ex. 1007 ¶¶ 226, 228; Ex. 2001 ¶ 85; see Ex. 2005, 125:19–126:25. Dr. Akl also characterizes WANs at the critical time as having a “single, unique, public outfacing address,” referred to as its “WAN IP,” and that the term “WAN IP was used in the reference materials for (“share one Wide Area Network (WAN) IP address for multiple computers on your Local Area Network”)). Dr. Akl further describes client devices in a Local Area Network as connecting to other devices on the Internet through a router. Id. ¶ 43. Second, we find that Allen discloses an ABD, even under Patent Owner’s construction, because Allen’s MCD (1) is a “dedicated (i.e., specific-purpose) device” and not merely a general-purpose computer, and (2) is “configured to capture, process, store and/or send real-time media signals (e.g., audio signal, video signal . . . )” and broadcast the audio/video content over a network. See Ex. 1008 ¶¶ 1015, 1021, 1076–1077, Figs. 6, 8; Ex. 1056 ¶¶ 46–47. Additionally, we credit the testimony of Dr. Akl, who testified that “if [a computer] is able to carry out the functionality, then it’s not a general-purpose computer.” Ex. 1064, 55:23–25.” slip op. at 31

  Patent outcomesUS 9,686,574 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,686,574
• Google LLC v. Sonos, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01563 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1, 2, 6–14, 18–25, and 27–29 are unpatentable as obvious over Al-Shaykh and Qureshey, with Phillips and/or Ramsay as specified.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We only construe terms to the extent necessary to resolve the dispute between the parties. 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 8

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

    “Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We only construe terms to the extent necessary to resolve the dispute between the parties. 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 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “engineering, electrical engineering, or audio engineering (or an equivalent degree), and three years of experience designing or implementing networked wireless systems related to streaming media over the Internet. Bims [Decl.], ¶¶20–23. With more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education. Id. Pet. 11. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. In the Institution Decision, we adopted Petitioner’s proposed level of skill in the art. Dec. on Inst. 17–18. In the Response, Patent Owner agrees with our preliminary determination to adopt Petitioner’s proposed level of ordinary skill in the art “[f]or purposes of this IPR.” PO Resp. 18. We, therefore, apply Petitioner’s proposed level of ordinary skill in the art in our obviousness analysis below.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “rendering device. Id., [0100]. Al-Shaykh explicitly notes that disabling causes “the target rendering device [to] stop rendering the media content 15.” Id. Thus, it is my opinion that a POSA would understand that enabling the transfer of media content to the rendering device would cause the mobile to stop playback. 106. Additionally, it is my opinion that Al-Shaykh discloses the functionality required to stop playback at the mobile device when playback is transferred to the particular rendering device. Specifically, a POSA would recognize that Al-Shaykh discloses transferring playback from an initial rendering device to a new rendering device. Id., [0156-57], [0166-67], [0173-74]. When transfer occurs, “rendering of the music content on the initial target rendering device may be stopped, and … the rendering of music content on the new target rendering device may begin.” Similarly, when rendering from the mobile device is transferred to the target rendering device, the rendering at the mobile device is stopped. Id., [0174], [0157] (the user may transfer playback back from the rendering device to the mobile device by invoking the media transfer control 51 or control/indication element 71 a second time). Thus, a POSA, in my opinion, would find Al-Shaykh renders obvious that a mobile device stops playback when playback is transferred to the particular rendering device. Ex. 1003 ¶¶ 104–106 (alterations in original). We credit the testimony of Dr. Bims on this particular issue and find it is well-supported by Al-Shaykh. We disagree with Patent Owner’s arguments relating to this limitation and Al-Shaykh and, instead, we find that Al-Shaykh teaches this limitation.” slip op. at 49

  Patent outcomesUS 9,967,615 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,967,615
• ADT, LLC v. Vivint, Inc.All claims unpatentable
  PTAB · Mar 28, 2023 · IPR2022-00071 · APJ Jameson Lee · IPR · Final written decision

  Claims 1, 2, 4, 8–10, and 12 are unpatentable as anticipated by Monroe and obvious over Monroe, Monroe and Fadell, Jin, or Jin and Monroe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “including a “bachelor’s degree in electrical engineering,” that is not a literal test. We know of no precedent from the U.S. Court of Appeals for the Federal Circuit, and Patent Owner has cited none, that requires the stated level of education for the level of ordinary skill in the art to be met literally without considering any equivalence. The inclusion of a statement of formal technical education in the articulated statement facilitates understanding for comparison purposes because, typically, (1) an expert would have a formal technical education, and (2) a formal degree is associated with an ascertainable or known curriculum. Accordingly, Petitioner may show that Mr. Parker possesses at least the level of skill corresponding to that of one who has a bachelor degree in electrical engineering.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “4. “predefined area” The term “a predefined area” is recited in each of independent claims” slip op. at 20

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

    “g) Conclusion Petitioner has proven by a preponderance of the evidence that claim 1” slip op. at 44

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

    “2. Obviousness over Monroe Alone Petitioner’s arguments for obviousness over Monroe alone for claims 1, 2, 4, 8–10, and 12 are the same as its assertion that Monroe anticipates these same claims. Petitioner states: “As discussed above in [the ground based on anticipation by Monroe], Monroe discloses all the limitations of claims 1, 2, 4, 8, 9, 10, and 12. Thus, the claims can be cancelled on singlereference obviousness grounds as well as anticipation grounds.” Pet. 26. Petitioner cites Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019), for the position that a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim obvious under 35 U.S.C. § 103. Id. Patent Owner presents no arguments to the contrary. We agree that an anticipatory reference can be deemed, pro forma, to render the anticipated claims obvious. All the limitations are disclosed by the single reference and no modification is necessary. Accordingly, for the same reasons discussed above, Petitioner has proven by a preponderance of the evidence that claims 1, 2, 4, 8–10, and 12 would have been obvious over Monroe alone.” slip op. at 52

  Patent outcomesUS 10,325,159 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,325,159
• Google LLC v. Sonos, Inc.All claims unpatentable
  PTAB · Feb 15, 2023 · IPR2021-00475 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–3, 5, 6, 10, 15, 18, and 19 are unpatentable based on anticipation by Maher and obviousness over Maher, Maher and Hooley, Zurek and Levy, or Zurek, Levy, and Hooley.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is consistent with the technology described in the Specification of the ’460 patent and the cited prior art. For purposes of this proceeding, we adopt Petitioner’s undisputed proposed level of ordinary skill in the art and apply it in our anticipation/obviousness analysis below.10” slip op. at 10

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

    “equalization setting” recited in claims 1 and 15 should be construed as “an equalization setting for audio playback.” Prelim. Resp. 15–18. We did not adopt Patent Owner’s proposed construction in our Institution Decision and accorded “an equalization setting” its ordinary and customary meaning, without express construction. Dec. on Inst. 10. As noted above, Patent Owner does not reassert its argument regarding claim construction in its Response. See generally PO Resp. For the reasons stated in the Institution Decision, we do not agree with Patent Owner’s proposed construction of “an equalization setting.” See Dec. on Inst. 9–11. And, by failing to renew its claim construction argument in the Response, Patent Owner has waived this argument.11 See Paper 19, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). Based on the fully developed trial record, we determine that claim construction is not disputed and that no claim construction is necessary to make this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

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

    “Based on our consideration of the contentions of the parties and our weighing of the related evidence, we determine that a preponderance of the evidence supports a conclusion that Maher discloses in Figure 4 and the related description an embodiment that can be used to practice the methods of Figures 1–3. We disagree with Patent Owner’s arguments that Maher does not describe a method where a device determines equalization settings for an integrated speaker and Patent Owner’s attempt to distinguish claim 1 from Maher and the Maher/Hooley combination on this basis.” slip op. at 29

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

    “Based on our consideration of the contentions of the parties and our weighing of the related evidence, we determine that a preponderance of the evidence supports a conclusion that the combination of Zurek and Levy teaches all the limitations of claim 1 and that a skilled artisan would have been motivated to combine the relevant teachings of Zurek and Levy as recited in claim 1. We disagree with Patent Owner’s argument that combining the teachings of Zurek and Levy as proposed in the Petition would render Zurek inoperable for its intended purpose. More specifically, we do not share Patent Owner’s view that adding Levy’s output processing to Zurek’s system would result in rendering Levy’s input processing inoperable for its intended purpose because we agree with Petitioner that (1) Zurek is not limited to processing voice inputs, and (2) input and output equalization are not mutually exclusive, but rather the underlying acoustic processing is the same.” slip op. at 41

  Patent outcomesUS 9,219,460 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,219,460
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentable
  PTAB · Feb 15, 2023 · IPR2021-01293 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 and 7 are unpatentable under § 103: claims 1 and 2 over Patrick, claim 2 over Patrick and Barrett, claims 3–5 over Patrick and Gringeri, and claim 7 over Patrick and Mahdavi.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the field of art (“POSITA”) of the ’098 patent would have been a person with a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field with at least two years of experience in video transmission systems, or a person with a master’s degree in computer science, computer engineering, electrical engineering, or a similar field with a specialization in video transmission systems. Pet. 18 (citing Ex. 1003 ¶¶ 55–56). Petitioner further contends that “[a] person with less education but more relevant practical experience may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 55–56). Petitioner further asserts that a person of ordinary skill in the art in 2004 would have known and had the skills necessary to: (1) “Design or implement video transmission systems and applications in compliance with standards such as TCP/IP, UDP, RTP, ATM, DVB, and ATSC;” (2) “Understand video coding and processing in compliance with standards such as MPEG-1, MPEG-2, MPEG-4, and H.26x;” (3) “Implement known techniques for determining available bandwidths between transmitting and receiving systems of media content; and” (4) “Understand common techniques for organizing and” slip op. at 8

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

    “construction standard as 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) (2021); 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 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Petitioner proposes claim constructions for “transmission rate” and “steady-state transmission rate.” See Pet. 19–21. Patent Owner does not agree with Petitioner’s proposed claim constructions. See PO Resp. 16 (citing Ex. 2014 ¶ 20). Patent Owner, however, does not offer alternative proposed claim constructions, but instead asserts these terms should be construed in accordance with their plain and ordinary meanings. See id. As demonstrated in the analysis below, we need not expressly construe “transmission rate” and “steady-state transmission rate.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

  • Strike new argumentNew argument consideredDecided for petitioner

    “As an initial matter, we do not agree with Patent Owner’s contention that the following Reply argument constitutes an impermissible new argument: “[s]ince [Patent Owner] is unable to dispute paragraph 38 teaches limitations [1b] and [1d] . . . .” Pet. Reply 9; see PO Sur-reply 12–13. Contrary to Patent Owner’s suggestion, we do not understand Petitioner to argue for the first time on Reply that Patrick’s paragraph 38 by itself teaches limitations [1b] and [1d]. Rather, we understand the Reply argument to address the dispute raised by Patent Owner regarding the disclosure of Patrick’s paragraph 38 as applied to limitations [1b] and [1d] in the Petition. See Pet. Reply 9; PO Resp. 38–40, 38 n.7, 52–53 (citing Ex. 2014 ¶¶ 50–51, 63–64, 70); Pet. 30–31, 37. Likewise, we do not agree that the portion of the Reply addressing the second sentence of Patrick’s paragraph 38 is a new argument that attempts to buttress the lack of discussion of paragraph 38 in the Petition. See PO Sur-reply 16; Pet. Reply 11. Instead, we find that these Reply arguments constitute a permissible response to Patent Owner’s arguments addressing how a person of ordinary skill in the art would understand the disclosure of Patrick’s paragraph 38. See PO Resp. 38 n.7 (citing Ex. 2014 ¶ 50), 52–53 (citing Ex. 2014 ¶¶ 63–64, 70; PO Resp. 38 n.7); see also 37 C.F.R. § 42.23(b); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)8 73–74.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “paragraph 38 uses terms consistent with the terms used in the first sentence of paragraph 38 and terms used in paragraphs 31 and 36 to address act 206 of Figure 3. See id. ¶¶ 31, 36, 38. Moreover, the first sentence of paragraph 38 is consistent with Patrick’s paragraph 37 disclosure that network congestion or other restrictions between the server and client (i.e., a reduction of bandwidth between the server and client) may limit the rate of accelerated streaming. See Ex. 1004 ¶ 37 (quoted in Pet. 30–31). We give weight to Dr. Brody’s testimony that a person of ordinary skill in the art “reading Patrick’s disclosure would have understood that [Patrick’s] later disclosure [in paragraphs 33 through 39] provides additional details and teachings relevant to the invention as a whole,” (Pet. Reply 7 (citing Ex. 1033 ¶ 8)) because it is supported by the aforementioned interrelated teachings of at least Patrick’s paragraphs 31 and 36 through 38. We give minimal weight to Dr. Hayes’s cited supporting testimony regarding the “structure” of Patrick because it is not supported by a sufficient factual basis, and like Patent Owner’s arguments, is inconsistent with Patrick’s disclosure. Accordingly, contrary to Patent Owner’s arguments, we find: (1) Patrick’s paragraph 38 provides additional detail regarding the disclosures of paragraphs 31 through 36 with respect to act 206 of Figure 3; (2) the disclosures of paragraphs 37 through 39 are not limited to describing the period of accelerated streaming of act 208 of Figure 3; and (3) the corresponding disclosure related to act 206 of Figure 3 is not limited to the description of Patrick’s paragraphs 31 through 36.” slip op. at 30

  Patent outcomesUS 9,402,098 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,402,098
• ADT LLC / Alarm.Com, Inc. v. Vivint, Inc.All claims unpatentable
  PTAB · Feb 10, 2023 · IPR2022-00714 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–3 and 6–11 as obvious over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.

  RulingsFinal written decision

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

    “meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons discussed below, we find the plain and ordinary meaning of “determining a current location of the user” to include determining a physical location of a computing device associated with the user.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “b) Our Analysis For the reasons below, we construe “aggregate presence service” to mean “a service that receives, stores, and provides presence-related information,” and we disagree with Patent Owner that such a service needs to include geographic location information obtained from a location service. The parties agree that that “presence-related information” already includes location information. Patent Owner’s proposal would have us read the requirement of using a location service into the claims, which, as discussed above, we decline to do on the record before us. As with “determining a current location,” discussed in Section III.C.1 above, we see no lexicographic definition or clear intent in the specification defining “aggregate presence service” in the manner that Patent Owner argues. To be sure, the ’739 patent specification does define other terms. See, e.g., Ex. 1001, 4:42–44 (“The term computer readable media as used herein refers to both storage media and communication media.”). But the specification does not define “aggregate presence service” in any way, much less using such express language. The portions of the specification that Patent Owner points us to (PO Resp. 20–22) as defining the claim term fall well short of what is required under Federal Circuit precedent to show a lexicographic definition. In relevant part, all the specification says is that a “doorbell presence application” may provide an “[a]ggregate presence service” with information regarding a user’s location, and that “aggregate presence service 534 updates a presentity store 528 and enables watcher client application 504 to provide the notification to the user.” See Ex. 1001, 7:20–26, Fig. 5; see also id. at 7:40–61, 9:42–61, Figs. 6, 9. There is no disclosure in the specification distinguishing the term “aggregate presence service” from the term “presence service” in a specific way, let alone any other disclosure requiring the use of a location service in the manner that Patent Owner argues. The record therefore does not support Patent Owner’s position.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We determine, on the complete record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding unpatentability of the challenged claims.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

  Patent outcomesUS 7,956,739 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,956,739
• ADT LLC / Alarm.Com, Inc. v. Vivint, Inc.All claims unpatentable
  PTAB · Feb 10, 2023 · IPR2021-01374 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–3 and 6–11 as obvious over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We determine, on the complete record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding unpatentability of the challenged claims.” slip op. at 10

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

    “location service,” and that mandates a narrow construction of the claim term to exclusion of all other methods of determining a location. PO Resp. 11; PO Sur-reply 6. The specification, however, makes it abundantly clear that the use of a “location service” is “optional.” See, e.g., Ex. 1001, 5:30–36, 5:45, 7:20–24; see also Ex. 2001 ¶ 83 (Dr. Shoemake agreeing that the “[u]se of the ‘location service’ is ‘optional’”). For example, Figure 2 of the ’739 patent, a portion of which is reproduced below, depicts the location service 236 using a dashed line, thus indicating that it is an optional component of the doorbell presence service architecture. Ex. 1001, Fig. 2. Referring to the location service 236, the specification states: Doorbell application 232 is configured to receive notification from doorbell 202, communicate with presence server 234 and optional location service 236 to determine a location and reach the user through computing device 204, and perform tasks for execution of action(s) selected by the user. Ex. 1001, 5:33–38 (emphasis added). The specification further states that “[subscriber location function] 342 may be an interface function for the optional location service 236 of architecture 200.” Id. at 6:39–40 (emphasis added). The specification therefore leaves little doubt as to the optional nature of the location service. And Patent Owner asks that we import this limitation, which the specification clearly designates as optional, into the claims. We decline to do so. See MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp., 847 F.3d 1363, 1369 (Fed. Cir. 2017) (affirming the Board’s decision not limited to limit the claims to a feature that the specification made clear was optional); H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1334 (Fed. Cir. 2014) (“The optional nature of such services negates any argument that such a limitation in the claim is implied as necessary to the invention.”); Phillips, 415 F.3d at 1323 (warning against “importing limitations from the specification into the claims”). slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “b) Our Analysis For the reasons below, we construe “aggregate presence service” to mean “a service that receives, stores, and provides presence-related information,” and we disagree with Patent Owner that such a service needs to include geographic location information obtained from a location service. The parties agree that that “presence-related information” already includes location information. Patent Owner’s proposal would have us read the requirement of using a location service into the claims, which, as discussed above, we decline to do on the record before us. As with “determining a current location,” discussed in Section III.C.1 above, we see no lexicographic definition or clear intent in the specification defining “aggregate presence service” in the manner that Patent Owner argues. To be sure, the ’739 patent specification does define other terms. See, e.g., Ex. 1001, 4:42–44 (“The term computer readable media as used herein refers to both storage media and communication media.”). But the specification does not define “aggregate presence service” in any way, much less using such express language. The portions of the specification that Patent Owner points us to (PO Resp. 20–22) as defining the claim term fall well short of what is required under Federal Circuit precedent to show a lexicographic definition. In relevant part, all the specification says is that a “doorbell presence application” may provide an “[a]ggregate presence service” with information regarding a user’s location, and that “aggregate presence service 534 updates a presentity store 528 and enables watcher client application 504 to provide the notification to the user.” See Ex. 1001, 7:20–26, Fig. 5; see also id. at 7:40–61, 9:42–61, Figs. 6, 9. There is no disclosure in the specification distinguishing the term “aggregate presence service” from the term “presence service” in a specific way, let alone any other disclosure requiring the use of a location service in the manner that Patent Owner argues. The record therefore does not support Patent Owner’s position.” slip op. at 25

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

    “(3) Our Analysis On the complete record, Petitioner has shown by a preponderance of the evidence that an ordinarily skilled artisan would have had sufficient reasons to combine the teachings of Oh with those of Forbes and TS23.141, in the manner proposed by Petitioner, with a reasonable expectation of success. See Pet. 40–43; Pet. Reply 22–23, 26; Ex. 1017 ¶¶ 217–224; Ex. 1032 ¶¶ 69–76. Petitioner explains that implementing the teachings of Forbes and TS23.141 in Oh’s system would have resulted in the benefits of using the IMS infrastructure as well as utilizing a “presence server” to manage presence information from monitoring systems installed in any number of properties. Pet. 41–42. Mr. Rysavy testifies: Communication of presence information and voice and other data via the IMS infrastructure, as disclosed in Forbes and TS23.141, would have provided the expected benefit of providing “access independent, IP-based multi-media services,” which allowed the system to communicate with any number of IP-based terminal devices and applications, including push-to-talk cellular, VoIP, video streaming, email and instant messaging. Ex. 1017 ¶ 221. He further testifies that a person of ordinary skill in the art would have recognized that IMS’s “access independent” infrastructure would have facilitated the interconnection of devices such as PDAs, web-pads, and PCs disclosed in Oh. Id. He also testifies that an ordinarily skilled artisan would have recognized that Oh’s system could benefit from the “presence server” disclosed in Forbes and TS23.141 to manage presence information from multiple monitored properties. Id. ¶ 222; see also Ex. 1032 ¶¶ 71–72 (explaining how the proposed combination would work). Mr. Rysavy’s testimony persuasively demonstrates that an ordinarily skilled artisan would have been motivated to apply the teachings of Forbes and TS23.141 to Oh’s system.” slip op. at 60

  Patent outcomesUS 7,956,739 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,956,739
• Netflix, Inc. v. Ca, Inc.All claims unpatentable
  PTAB · Feb 8, 2023 · IPR2021-01319 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1, 3–9, and 11–17 are unpatentable: claims 1, 3–9, and 11–16 as obvious over Medin and Seltzer; claim 17 as obvious over Medin and Markatos.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner states that a POSITA would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 21 (citing Ex. 2018 ¶ 20). Patent Owner notes that Petitioner presents a “similar” description of a POSITA, but Patent Owner states that it “does not necessarily agree with all of the ‘knowledge’ required by Petitioner’s definition.” PO Resp. 21. Patent Owner states, though, that “any differences in the parties’ view of a POSITA are not material” to Patent Owner’s arguments. PO Resp. 21. Based on the complete record, we determine an appropriate definition of the level of ordinary skill is a person with a bachelor’s degree in electrical engineering, computer science, or a similar discipline with two years of experience with computer networks and data storage, which is consistent with the parties’ contentions.” slip op. at 6

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

    “1. “receiving a set of network objects in response to a first request to a server from a client” Petitioner contends the claim language “receiving a set of network objects in response to a first request to a server from a client” would have been understood by a person of ordinary skill to be a step that must be performed at the cache engine. Pet. 25. Further, Petitioner states that the limitation should be construed to mean “receiving a set of network objects at the cache engine in response to a first request to a server from a client.” Pet. 25–26. According to Petitioner, claims 20, 28, 39, and 47 require a cache engine that performs an equivalent receiving step, and Petitioner additionally cites certain dependent claims and portions of the Specification as support for its argument. Pet. 26–27 (citing Ex. 1001, 1:26–35, 3:42–51, 5:61–67, claims 2–6, 10–14). Patent Owner disagrees with Petitioner’s proposed construction and contends this limitation does not require any construction. PO Resp. 21 (citing Ex. 2018 ¶ 21). Patent Owner also states that the construction of this limitation is immaterial to the patentability of the challenged claims. PO Resp. 21. We determine it is unnecessary to expressly interpret this limitation to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Those positions, though, are inconsistent with the plain language of the claim. The claimed “cache memory” cannot refer only to a cache with volatile memory because the claim states that the “cache memory includ[es] mass storage.” Further, Patent Owner seeks to rewrite this claim term, with Patent Owner arguing “the plain and ordinary meaning of this limitation requires the cache to have both (1) memory and (2) mass storage.” Sur- Reply 3 (emphasis added). Independent claims 1, 9, and 17 do not recite a “cache” or a “memory” separate from “a cache memory in a cache engine, . . . said cache memory including mass storage.” Ex. 1001, 17:8–11, 17:41– 44, 18:13–16. Moreover, the Specification’s use of the qualifier “such as” in “memory (such as RAM)” (Ex. 1001, code (57), 2:9) evidences that RAM is merely a non-limiting example of memory; nothing in the Specification limits “memory”—much less “cache memory”—to RAM or volatile memory. Finally, although not directly applicable to our understanding of “cache memory,” the file history refers to “memory” broadly. In the file history, the applicant stated “the term ‘memory’ in the claims is meant to broadly encompass both fixed memories such as DRAMs, SRAMs, hard disks, caches, etc., as well as removable memories such as floppy disks, CD- ROMs, data tapes, etc.” Ex. 1002, 482. Contrary to Patent Owner’s arguments, that statement from the prosecution history evidences that the applicant understood “memory” to be a broad term and that the applicant could have limited its claims to particular types of memory, but chose not to. In total, the evidence of record, including Patent Owner’s arguments premised on intrinsic evidence, extrinsic evidence, and witness testimony,5 does not support Patent Owner’s arguments that “a cache memory in a cache engine, . . . said cache memory including mass storage” requires volatile memory. In our analysis below, we apply the plain language of the claims, noting that we understand the plain language to require mass storage but to permissively allow other types of memory, including volatile memory such as RAM.” slip op. at 9

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

    “After fully considering the cited supporting evidence and according it appropriate weight, we are persuaded that a person of ordinary skill would have been motivated to combine the teachings of Medin and Seltzer “so as to substantially minimizes a time required for retrieving said network objects from said mass storage.” In particular, as Petitioner argues, Medin and Seltzer “share the goal of improving the speed and efficiency” of systems for storing information. Pet. 27–28 (citing Ex. 1004, 1:8–13, 2:9–15, 2:18–25, code (57); Ex. 1005, 307; Ex. 1003 ¶ 114). Contrary to Patent Owner’s arguments that the references’ goals are too generic and applicable to any references (PO Resp. 44–45; Sur-Reply 22), the references’ teachings are specifically complimentary: Medin teaches storing copies of frequently accessed multimedia content on UNIX-based computers to cache information and read and write it to mass storage (Ex. 1003, 5:60–64, 6:1–4, 6:36–56, 7:46–51, 7:61–8:2, 8:63–9:32), and Seltzer teaches techniques to improve read and write operations on UNIX-based computers (Ex. 1005, 307). The fact that Markatos advocates a different solution that purportedly outperforms “traditional” file system caching does not undermine Petitioner’s proposed combination for a number of reasons. Petitioner’s proposed combination includes Medin’s teachings of a file system to cache network objects and Seltzer’s teachings of ways of improving the read and write operations of a file system. Even if Markatos’s system purportedly outperforms other systems, that does not change the fact that Seltzer suggests techniques to improve Medin’s teachings that a POSITA would have had reason to implement to substantially minimize the time for retrieving network objects from mass storage with a reasonable expectation of success. In other words, we disagree with Patent Owner’s implication that Markatos’s disclosure of a purported improvement to traditional file system caching would lead a POSITA to dismiss Seltzer’s teachings of optimization techniques applicable to file system caching.” slip op. at 19

  Patent outcomesUS 7,103,794 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,103,794
• PNC Bank N.A. v. United Services Automobile AssociationAll claims unpatentable
  PTAB · Jan 20, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious under the listed combinations of Garcia, Randle, Slater, and additional references.

  RulingsFinal written decision

  • Skill levelOther

    “B. The Level of Ordinary Skill in the Art” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “Computing Device” and “Accepting . . .” Limitations The term “computing device” appears only in the preamble of the” slip op. at 14

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

    “the user,” which includes the check image as well as recognition data entered by the user (e.g., check amount). Ex. 1103, 10:10–18, 11:7–15; see also id. at 5:14–20, 12:9–11 (cited in Inst. Dec. 42 n.17). Randle similarly indicates that its engine includes OCR software, and specifically, Randle states that its QA considers a “human input amount” and an “OCR amount.” Ex. 1104 ¶¶ 19, 21, 42, 74, Fig. 9B (items 117, 121). Although Randle does not explain how the QA uses these two pieces of data, Slater expressly teaches that these amounts should be compared to identify transactions that require manual review by a customer service operator. Ex. 1105 ¶¶ 22–23, 28. Based on these disclosures, Petitioner’s declarant, Dr. Noble, opines that a person of ordinary skill in the art would have been motivated to (and able to) include Slater’s comparison in the Garcia-Randle system with a reasonable expectation of success. See Ex. 1102 ¶¶ 69–75, 111. In support, Dr. Noble explains that this comparison would improve reliability because “[a]ny discrepancy would mean there was error either in the user input or the image from which the check amount is read,” and he notes that “there would be no reason to capture both OCR and customer-entered versions unless there was a possibility of such discrepancy.” Id. ¶ 72. We credit Dr. Noble’s testimony on these points because it is supported by the cited references. Accordingly, we find that a person of ordinary skill in the art would have been motivated to include Slater’s comparison in the Garcia- Randle system, and that the resulting combination teaches elements 1[h] and 1[i]. As for elements 1[j] and 1[k], Petitioner again points to Garcia’s statement that the financial institution’s computer equipment includes an OCR system for recognizing, verifying, and processing the check image. Pet. 50–51. According to Petitioner, Randle teaches that the payee bank collects the MICR data and, from it, determines a routing number identifying the payor bank. Id. at 51 (citing Ex. 1104 ¶¶ 18–19), 54 (citing Ex. 1104 ¶¶ 18–19, 76, Fig. 11A (item 150); Ex. 1102 ¶ 120). According to Petitioner, a person of ordinary skill in the art would have understood that Randle reads the MICR data “optically” from the check image because “that was a standard method of collecting MICR data from a check image” and because Randle expressly teaches performing an OCR on the check number. Id. at 51 (citing Ex. 1102 ¶ 114; Ex. 1104 ¶ 74). In the alternative, Petitioner contends that an ordinarily skilled artisan would have been motivated to optically read the MICR data because, in the proposed combination, the payee bank only receives an image of the check. Id. at 52–54 (citing Ex. 1102 ¶ 115–118); see also id. at 61–62 (addressing contention that payee bank also includes this component). We find that the Garcia-Randle combination teaches elements 1[j] and 1[k]. As noted above, Garcia teaches using OCR to recognize, verify, and process the check image. E.g., Ex. 1103, 11:7–15. Randle discloses reading the MICR line depicted in the check’s image. Ex. 1104 ¶ 19 (“The deposit bank 4 captures the check and related information by a scan 5 to create an image of the front and back of the check and collects information such as . . . the MICR data.”). We are persuaded that an ordinarily skilled artisan would have been motivated to combine Garcia and Randle so that the MICR line is optically read with an OCR performed by the bank’s computer equipment. In particular, we agree with Petitioner that, in the proposed Garcia-Randle combination, the bank receives an image of a check rather than the physical check itself (see Pet. 52), and Garcia suggests that an OCR system at the bank is used for recognizing and verifying the check’s information. See, e.g., Ex. 1103, 7:18–8:14, 11:7–13. In addition, we credit Dr. Noble’s testimony that optically reading the MICR line “was a well-known and typical way of collecting MICR data from an image of a check,” and we credit his testimony that an ordinarily skilled artisan would have had a reasonable expectation of success in combining Garcia and Randle in this way.41 Ex. 1102 ¶¶ 114–117. Further, we find that a person of ordinary skill in the art would have understood Randle to teach determining a routing number from the MICR line. E.g., Ex. 1104 ¶¶ 18–19, 36, 76; Ex. 1102 ¶ 120. As to element 1[l], Petitioner contends that Randle’s check” slip op. at 62

  • ExcludeMotion to exclude, grantedOther

    “Accordingly, we dismiss Petitioner’s Motion to Exclude (Paper 58) as” slip op. at 80

  Patent outcomesUS 10,621,559 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,621,559

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.