- Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00523 · APJ Thu A Dang · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–2 as obvious over Wise and Shaffer, and claims 3–15 as obvious over Wise, Shaffer, and Burrows.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Lipoff, contends that a POSITA “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” wherein “[m]ore education could substitute for less experience, and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 40, 61–74). Patent Owner does not contest Petitioner’s proposal or offer an alternative. See generally PO Resp. 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’402 patent was filed before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. claimed invention because, based on the record, this proposal is consistent with the ’402 patent, the asserted prior art, and is supported by the testimony of Mr. Lipoff.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any claim construction. See Pet. 5; See generally PO Resp. We do not perceive a need to construe any claim terms of the ’402 patent to resolve the disputed issues before us. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). Here, Patent Owner does not provide sufficient evidentiary support that conveys an intended exclusion of user interaction during sequential access. Instead, both parties and both experts merely point out that the specification of the ’402 patent is silent with respect to user participation during sequential access. PO Resp. 73 (Patent Owner asserting that “the ’402 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶ 289 (Mr. Winters testifying that “there is no disclosure in the specification of the ’402 patent related to user interaction in the sequential search process”); Pet. Reply 5 (Petitioner asserting that Patent Owner is “[i]mporting a requirement that user interaction is precluded by the claims—a negative limitation, when the specification is wholly silent on it”); Ex. 2061, 107:15–22 (Mr. Lipoff agreeing that “there’s no specific mention of the user interacting” in the portion of the specification related to “the sequential search”). As the Federal Circuit explained in Novartis, silence is not sufficient support for a negative limitation. See Novartis, 38 F.4th at 1017. interaction from the plain and ordinary meaning of the sequential access limitation. Instead, we are persuaded by Petitioner’s reliance on Shaffer for disclosing the sequential access limitation as recited. See Ex. 1011, 6:3–29. In particular, Shaffer discloses determining whether a system is at the end of a list of sites to visit, and sequentially visiting the sites until the user is satisfied. Ex. 1011, 6:3–29. Furthermore, Wise’s system accesses web pages relating to a subject phrase to retrieve user-requested information. Ex. 1007, 6:31–49. We credit the supporting testimony of Mr. Lipoff, which is consistent with the teachings of Wise and Shaffer, in which he testified that a POSITA would have been motivated to modify Wise’s system that accesses websites to retrieve user-requested information based on Shaffer, resulting in a system that accesses websites sequentially/subsequently until information is found. See Ex. 1002 ¶ 200. We disagree with Patent Owner that the ’402 patent’s specification “teaches against the notion of user interaction in the claimed ‘sequentially accessing’ operation,” which “is time consuming and inefficient.” PO Resp. 73–75. A given course of action often has simultaneous advantages and disadvantages, which “does not necessarily obviate motivation to combine.” Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Here, Petitioner has articulated sufficient reason, supported by rational underpinning, to effect the combination of teachings it proposes. We credit Petitioner’s contention, which is supported by Mr. Lipoff’s testimony, that a POSITA would have been motivated “to apply Shaffer’s sequential search technique when retrieving information from websites in Wise’s ranked index” in order to “maximize the likelihood of finding the desired information and efficiently use computing resources by searching in slip op. at 24
Patent outcomesUS 8,185,402 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,185,402 - Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,418,250 - Vector Flow, Inc. v. Hid Global CorporationInstitution deniedPTAB · Jul 17, 2023 · IPR2023-00353 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of IPR challenging claims 11–15, exercising § 314(a) discretion based on the parallel litigation’s timing, investment, and issue overlap.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied
“Although we agree with Patent Owner that a stay appears unlikely even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Also, we do not understand the statements in CAO Lighting Patent Owner highlights as setting forth a general policy by the district judge. Rather, in that case, although the timing and issue overlap factors weighed against granting a stay, the court considered other factors as well. See CAO Lighting, 2022 WL 17752270 at *2. We accordingly treat this factor as neutral.” slip op. at 19
- Expert testimonyOther
“Importantly, Petitioner never advances any firm position on how the terms “unique” and “exclusively” should properly be understood in this context, limiting the basis on which we might fully evaluate Petitioner’s argument. Instead, Petitioner’s general position is that it “does not believe express claim construction is necessary at this time for this IPR.” Pet. 14. More specifically, Petitioner asserts that “it is possible” that the terms “may be interpreted to require that a defined user profile have access privileges and credentials that are unique and exclusive to the underlying user, e.g., which are not shared by any other user or user profile in the system.” Id. at 40 (emphases added). Petitioner’s expert, Dr. Madisetti, offers no clarification. See Ex. 1002 ¶ 103 (asserting that “it is possible that the words ‘unique’ and ‘exclusively’ could be interpreted” in the same way). Patent Owner disagrees with Petitioner’s speculation as to the “possible” interpretation of the terms. Prelim. Resp. 21–26. But we need not resolve that disagreement to conclude that Petitioner’s analysis fails to articulate a “compelling” meritorious challenge. A conclusion of unpatentability cannot “plainly” follow from an analysis that declines to offer nothing more than “possibilities” as to how the claims might be understood.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“6 Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering with at least two years’ experience in distributed or network-based computer systems, and would have had a working knowledge about various ways to receive data from network-connected devices (such as sensors) and then process and/or act upon that data as needed.” Pet. 11. Petitioner adds that “[a] person could also have qualified with more education and less technical experience, or vice versa.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Madisetti. Ex. 1003 ¶ 16. Patent Owner does not state whether it agrees or disagrees with Petitioner’s proposal. Nevertheless, we find Petitioner’s proposal consistent with the level of skill reflected by the prior art and accordingly apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 24
Discretionary denialPatents in suitUS 8,234,704 - PTAB · Jun 23, 2023 · IPR2023-00406 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review on the petition’s challenge and joined Micron as a petitioner in IPR2022-00996, with the grounds unchanged.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows “there is a reasonable likelihood that the” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00996 (“996 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 996 IPR, Papers 1, 10. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be joined as a petitioner in the 996 IPR. Petitioner represents that Samsung, the petitioner in the 996 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion. The statute governing inter partes review joinder states the following: JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314.” slip op. at 2
NonePatents in suitUS 11,016,918 - PTAB · Jun 23, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review on the petition’s challenges and granted Micron’s motion to join IPR2022-00999, with its grounds and schedule unchanged.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00999 (“999 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 999 IPR, Papers 1, 11. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be joined as a petitioner in the 999 IPR. Petitioner represents that Samsung, the petitioner in the 999 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion.” slip op. at 2
NonePatents in suitUS 11,232,054 - Crowdstrike, Inc. v. Open Text Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00124 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7–10, 12, and 15–18 on all asserted grounds; Morris-based grounds met the institution threshold, while Capalik-based grounds did not.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv at 9. The parties agree that, according to median time-to-trial statistics in the Western District of Texas, where the related litigation is pending, the expected trial date for the related litigation is mid-July 2024. Pet. 70; Prelim. Resp. 9. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 9 (District Court Order Granting Third Amended Scheduling Order); Prelim. Resp. 9–10. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about two months later than the deadline for the Board to issue a final written decision. See Pet. 71. This time difference is sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under § 325(d), we apply a two-part analysis, first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- BurdenInstitutedInstituted
“3. Summary In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Morris alone as well as over Petitioner’s proposed combination of Morris and van Oorschot. Claims 2–4, 9, 10, and 12 depend from claims 1 or 8. Having reviewed Petitioner’s arguments asserting that claims 2, 4, 9, 10, and 12 would have been obvious over Morris alone as well as Petitioner’s arguments asserting that claims 2– 4, 9, 10, and 12 would have been obvious over Morris in combination with van Oorschot, (see Pet. 25–30, 32–35), we also determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to these dependent claims.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On the record before us, at this stage of the proceeding, there does not appear to be any claim construction dispute. Accordingly, for purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,578,045 - Netflix, Inc v. Robocast, Inc.Institution deniedPTAB · Jun 9, 2023 · IPR2023-00182 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Netflix did not show a reasonable likelihood that claims 1–2, 7–9, 11–12, 15, and 26–28 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both parties support their proposals with testimony by their respective experts. See Ex. 1003 ¶ 41–44; Ex. 2017 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“previously construed certain terms for the ’451 patent claims, i.e., for an ancestor of the subject ’819 patent that shares a substantially common written description. Pet. 18–19; Prelim. Resp. 6–8 (citing Ex. 1014 (claim construction order in cases involving Microsoft and Apple)). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner states that it “does not necessarily agree that the prior district court constructions are correct, but the constructions are nonetheless satisfied by [the asserted] Grounds.” Prelim. Resp. 6–8; Pet. 18–19. Patent Owner also states that the Board panel in the 1125 IPR adopted the same constructions for “show structure of nodes,” “node,” and “interactively variable duration information,” which Patent Owner asserts also appear in relevant claims of the ’819 patent. Prelim. Resp. 8. Since both parties purport to apply these constructions, we do as well for purposes of this Decision. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). We have thus reviewed the court’s claimconstruction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1014, 16–17; Pet. 18; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 26, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1014, 2–13; Pet. 18; Prelim. Resp. 6–7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claims 1 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22–23; Pet. 19; Prelim. Resp. 7–8.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“With this understanding of Escobar, we agree with Patent Owner’s argument. That is, independent claim 1 defines a method in which presentation of the “advertisement content” occurs in connection with automatic presentation of other content, namely “content . . . presented . . . in accordance with said show structure.” Ex. 1001, 17:53–56, 17:65–67. Escobar’s two-level gateway structure is not consistent with this requirement, and neither Petitioner nor Dr. Houh provides sufficient explanation of how Escobar’s advertisement insertions are otherwise presented in connection with the automatic presentation of the objects/assets. Because Petitioner does not sufficiently show that this aspect of the claim is disclosed by, or would have been obvious over, Escobar, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Escobar alone or over Escobar in combination with Rege.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,606,819 - Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–9 and 15–17 were not shown unpatentable because the asserted combinations did not disclose the construed network-based portal residing on a server side of a network.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 11. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). slip op. at 14
- Expert testimonyPatent owner expert creditedDecided for patent owner
“The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 19:63, 20:4, 20:6, 20:11, 20:15–16, 20:21–22, 20:29–30, 20:42–43, 20:46–47; see PO Resp. 19 (Patent Owner contending that, because of the repeated recitation of “network-based portal” throughout the body of independent claim 1, the “preamble therefore breath[e]s life and meaning into claim 1”). Contending that a “network-based portal” is “a web page or interface that connects multiple users to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 36. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. Because the deficiency in Petitioner’s showing applies to the claims that depend from claim 1 because they inherit the “network-based portal” limitations, we also conclude that Petitioner does not show that any of claims 2–5, 15, or 17 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 7–9 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; nor that” slip op. at 38
Patent outcomesUS 10,708,727 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,708,727 - Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00202 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the asserted obviousness grounds did not show a network-based portal residing on the server side of a network.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1038 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 24. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 70–75. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 20:3, 20:11, 20:20, 20:23, 20:29, 20:31, 20:48, 20:54; see PO Resp. 19 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 1). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 11 and 19. See Pet. 55–57 (Petitioner’s analysis of claim 11 relying substantially on analysis of claim 1), 59–60 (Petitioner’s analysis of claim 19 relying substantially on analysis of claim 1). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 1– 20 is unpatentable under 35 U.S.C. § 103(a) over Diacakis.” slip op. at 36
Patent outcomesUS 10,142,810 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,142,810 - Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentablePTAB · May 19, 2023 · IPR2022-00295 · APJ Patrick M Boucher · IPR · Final written decision
Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the asserted combinations did not establish the claimed server-side network-based portal.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The issue before us is therefore well-defined, namely whether a “network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 23–25. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 28 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Under our adopted construction, Petitioner does not show that the combination of Tanigawa and Hullfish meets the claim requirements of a “network-based portal.” That is, Petitioner’s reliance on a client-resident interface to meet the claim’s recitation of a “network-based portal” is incompatible with our construction of that phrase. We accordingly conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 64 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 65–67 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64– 66 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, Loveland, and Takahashi.” slip op. at 36
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 60–85. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1039 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
Patent outcomesUS 10,492,038 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,492,038
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.