• ROKU, Inc. v. Universal Electronics, Inc.All claims unpatentable
  PTAB · Sep 22, 2022 · IPR2021-00758 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious over Chardon, HDMI 1.3a, and Mishra because the combined teachings meet each limitation and support a reason to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15–19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 13 (citing Ex. 2004 ¶¶ 24–29, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 13

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

    “The ultimate difficulty with Patent Owner’s theory is that it presumes relationships between various elements of the claim, but such relationships are not expressed by the language of the claim. This includes relationships between the “command communication,” the “functional operation of the media sink device,” and “activation of an input element of the controlling device.” See id. at 29:13–31:20, 33:10–35:2. Under such circumstances, we necessarily agree with Petitioner that “[t]he patentee chose to claim broadly and vaguely,” such that there is “no principled reason to exclude steps 500/502/504 from reading on the broadly-worded first wherein clause [that the media source device is programmed to provide the ‘message having data’ to the controlling device].” See Reply 13. For the reasons explained above, the prosecution history of the ’785 patent and its ancestors provides insufficient basis to discriminate between the parties’ positions. But both the plain and ordinary meaning of the claim language and the specification of the ’785 patent support Petitioner’s position, which we accordingly adopt. That is, we construe the “message having data” limitation as not requiring actual transmission of a “command communication” to indicate responsiveness to such a “command communication.”” slip op. at 26

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “1 Petitioner asks that we “discount Dr. Turnbull’s testimony with respect to HDCP [i.e., High-bandwidth Digital Content Protection]” because Dr. Turnbull “did not know what HDCP stands for” and incorrectly testified that “HDCP break” is a term of art in the HDCP standard. Reply 10–11 n.4. We decline to do so after reviewing Dr. Turnbull’s testimony, and instead accord his testimony due weight when evaluated in context.” slip op. at 8

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

    “contention that HDMI 1.3a is a printed publication under 35 U.S.C. § 102(b): (1) internet web pages referring to HDMI 1.3a, together with affidavits from the Internet Archive supporting a date of June 8, 2009, 5 When citing to HDMI 1.3a, we cite to the native pagination. Exs. 1042, 1045, 1048, 1049; (2) a declaration by Steve Venuti, former Vice President of Marketing HDMI Licensing, LLC, who attests to facts within his personal knowledge that support public availability of HDMI 1.3a at least as of November, 2006, Ex. 1043; (3) citations to HDMI 1.3a as prior art by the Office before October 28, 2011, Exs. 1037–1041; and (4) the date of November 10, 2006 on the face of HDMI 1.3a itself, Ex. 1010, 1. Patent Owner does not contest that HDMI 1.3a is prior art to the challenged claims. See PO Resp. 11–12. We have reviewed Petitioner’s evidence and find it sufficient to treat HDMI 1.3a as prior art.” slip op. at 29

  Patent outcomesUS 9,641,785 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,641,785
• Platform Science, Inc. v. Omnitracs, LLCAll claims unpatentable
  PTAB · Jun 2, 2022 · IPR2021-00187 · APJ Frederick C Laney · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Moses; the Board did not reach the alternative Levesque ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had at least a Bachelor of Science degree (or equivalent) in . . . electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the field of vehicle telematics systems.” Pet. 9–10 (citing Ex. 1003 ¶¶ 25–27). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. PO Resp. 8. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’335 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 8

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

    “construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. However, only terms that are in controversy need to be expressly construed and only to the extent necessary to resolve the controversy. 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)). Petitioner contends that the terms in the Challenged Claims are properly understood to have their ordinary and customary meaning. Pet. 2. Patent Owner does not dispute this contention. See generally PO Resp. Therefore, because no controversy regarding claim construction exits, it is not necessary for us to construe expressly any claim term.” slip op. at 13

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

    “attempts to map to the CVP System (see PO Resp. 56–59)—Petitioner has established that Moses discloses or suggests the subject matter of those claims. The proposed combinations are not based on hindsight reconstruction; rather, they are straightforward and logical. Moses indisputably discloses a response management system with automated rule-based alert notifications and response deployment capabilities. The only arguable differences Patent Owner alleges are whether Moses discloses storing information about something happening/occurrence versus more general information and whether Moses discloses providing responses that recommend a particular action be taken versus responses that are merely informational. We find Petitioner’s evidence from Moses to be particularly strong that a skilled artisan would have known to store information about occurrences and provide responses including recommended actions. Thus, for all the reasons discussed above (supra § III.B.1) and here, we give Petitioner’s evidence of obviousness substantial weight. Additionally, we disagree with most of Patent Owner’s arguments in response and we do not give Patent Owner’s evidence of objective indicia of nonobviousness substantial weight for the reasons discussed above (supra § III.C). But, even if we were to have found that Patent Owner established a nexus, given its tenuous connection to the only difference Patent Owner alleges to exist between the systems disclosed by the prior art and the claimed invention, we find that the evidentiary weight favoring obviousness significantly outweighs the most probative weight that could be given to the objective evidence presented. We also find that the balance weighs strongly in Petitioner’s favor regarding claims 2–7, 9–16, and 18–22 for the same reasons discussed above and additionally because Patent Owner has not established that the CVP System practices any of these claims or that there is a nexus between the objective indicia of nonobviousness and any of these claims. Accordingly, on balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1–22 of the ’335 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 52

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “As stated in Fox Factory, “presuming nexus is appropriate when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Fox Factory, 944 F.3d at 1373 (quotations omitted). Patent Owner does not assert that the CVP System is entitled to a presumption of nexus. See generally PO Resp. 55–61. Furthermore, Patent Owner does not provide any evidence or argument to even suggest that the CVP System and the claimed invention are coextensive. Id. Exhibit 2015 evidences that the CVP System includes a myriad of features that would allegedly provide important benefits to its customers. Therefore, Patent Owner is not entitled to a presumption of nexus because, even presuming the CVP System incorporates the patented invention, it cannot be disputed that the claimed invention is only one of many components included in the CVP System. See generally Ex. 2015. Of course, our nexus inquiry does not end there because Patent Owner is still afforded an opportunity to prove nexus by showing that the alleged commercial success achieved with the CVP System is in some way a direct result of the unique characteristics of the claimed invention. But on this front, Patent Owner again fails to provide any foundational basis to establish a link between the claimed invention and the evidence of commercial success. Instead, Patent Owner simply states, “[b]ecause the [CVP System] embodies all the limitations of the independent claims of the ’335 patent, sufficient nexus exists between [Patent Owner’s] commercial success and the claims.” PO Resp. 55. And after Petitioner pointed out that Patent Owner had failed to establish any specific link between the claimed invention and commercial success evidence (Pet. Reply 25–26), Patent Owner responded as follows: “It is not necessary, however, that the patented invention be solely responsible for the commercial success, in order for this factor to be given weight appropriate to the evidence, along with other pertinent factors.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991); see also Oren Techs., LLC v. Proppant Express Invs. LLC, No. 2019-1778, 2021 WL 3120819, at *7 (Fed. Cir. July 23, 2021). As [Patent Owner] explained, [Petitioner’s CVP System] is commercially successful at least in part due to the advertised remote vehicle monitoring functionality. See Exs. 2016-2023. This is more than adequate to establish commercial success. Oren Techs, 2021 WL 3120819, at *7. PO Sur-reply 25–26. Patent Owner has not persuasively shown by a preponderance of the” slip op. at 47

  Patent outcomesUS 9,147,335 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,147,335
• Interactive Communications International, Inc. v. Blackhawk Network, Inc.All claims unpatentable
  PTAB · Mar 15, 2022 · PGR2020-00084 · APJ Frederick C Laney · PGR · Final written decision

  Claims 1–19, 21–42, and 44–53 are unpatentable as obvious over Szrek; claims 20 and 43 are unpatentable as obvious over Szrek and Gilmore.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find Patent Owner’s contention persuasive. We agree that the description of a POSA in this case, which is most consistent with the scope and content of the ’894 patent and the prior art, properly includes a working knowledge of both POS activation systems and lottery systems. Therefore, the level of skill in the art for this case is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Although Patent Owner’s proposal most accurately reflects the background of the hypothetical person of ordinary skill in the art, the differences between the parties’ proposed formulations are not material to any issue in dispute and the parties do not contend otherwise. All of the findings and conclusions set forth below would have been the same had we instead adopted Petitioner’s proposed formulation.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “After considering the parties’ arguments and evidence, we determine that the plain meaning of “transaction processor”/“transaction processor system” applies, which is a processor [system] that processes transactions between two devices.8 We agree with Petitioner that adding “third party” to the plain meaning simply creates uncertainty. For example, it is unclear whether “third party” imports a limitation for the owner/manufacturer of the processor/system to be a different entity than the owner/manufacturer of the retailer and lottery administration devices (which is unrelated to the functionality or structure of the processor/system) or whether “third party” 8 Rather than “between two devices,” Patent Owner refers to “between a lottery administration system and retailer.” PO Resp. 20. Because other elements in the claims dictate the particular devices with which the transaction processor communicates, we determine that it would be improper to import that limitation into the meaning of “transaction processor”/“transaction processor system.” Nevertheless, even if those particular devices were imported, it would not change our obviousness analysis because no issue rests on whether the alleged transaction processor in the prior art is processing a transaction between a lottery administration system and retailer. imports a limitation for the processor/system to be a separate and distinct device from the retailer point of sale and lottery administration devices. Although Patent Owner’s counsel made clear that the latter interpretation was intended (Tr. 41:10–42:7, 43:2–43:15), we do not agree that the use of the words “third party” in Figures 7 and 8 of the ’894 patent limits the “transaction processor” and “transaction processor system” to being a separate and distinct device from the retailer and lottery administration devices. Identifying the transaction processor as a “Third Party Processor” in two illustrative figures depicting a process (Ex. 1001, Figs. 7, 8), without anything more in the written description to explain why a “third party processor” may be an important or significant aspect of the transaction processor or invention as a whole, does not justify limiting the plain meaning of a “transaction processor” to the “third party processor” shown. Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (explaining that an invention will only be limited to its preferred embodiment when “the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment”).” slip op. at 16

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

    “Therefore, we construe “transaction processor” and “transaction processor system” in accordance with their plain meaning, which is a processor [system] that processes transactions between two devices. Additionally, we decline to limit “transaction processor” and “transaction processor system” to “third party” processors or systems because the intrinsic record does not justify such a modification and it would create uncertainty. However, we do construe the “transaction processor”/“transaction processor system,” “retailer”/“retailer POS,” and “lottery administration system” as separate and distinct components.” slip op. at 22

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

    “processing unit, causes payment confirmation for the pre-printed lottery ticket to be provided to the lottery administration system. And Patent Owner disputes whether Petitioner has sufficiently shown Szrek discloses the transaction processor (store back office 240) provides payment confirmation to the lottery administration system (game provider 250). PO Resp. 13–14, 48–53; Sur-reply 19–20. We are persuaded by Petitioner, however, that Szrek’s description of the inter-operational characteristics of store back office 240, cash register/POS terminal 230, and game provider system 250 would have suggested to a skilled artisan at the time of the invention that store back office 240 would include an instruction to cause payment confirmation for the pre-printed lottery ticket to be provided to the game provider system 250. Ex. 1007, 4:28–29, 4:56–67, 5:17–20, 6:44–47; Ex. 1005 ¶¶ 62–64.” slip op. at 43

  Patent outcomesUS 10,769,894 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,769,894
• W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentable
  PTAB · Feb 16, 2022 · IPR2020-01471 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious under §103 based on the combinations listed in the decision.

  RulingsFinal written decision

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied

    “1 The Supplemental Response updated the following: (1) the exhibit list with a corrected description for Exhibit 2007, (2) the Conclusion (Part 8) of the Response to include a completed signature section, and (3) an updated Certificate of Compliance to confirm the word count of the Response. PO Supp. Resp. 2. 2 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01470. 3 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 37; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15.” slip op. at 2

  • Expert testimonyDecided for petitioner

    “by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63

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

    “by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “by new evidence other than deposition transcripts of the cross-examination of any reply witness.”); Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.58” slip op. at 127

  Patent outcomesUS 10,098,339 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,098,339
• W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentable
  PTAB · Feb 16, 2022 · IPR2020-01470 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–28 are unpatentable as obvious over the listed combinations of TB1, TB2, Jeong, and, where applicable, Vorhies, Silsby, and Kimura.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “1 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01471. 2 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 34; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15. Thus, we have noted Petitioner’s objections, but we dismiss them as moot because demonstrative exhibits are not evidence and we do not rely on them in rendering this Final Written Decision.” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “Challenged Claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the arguments and the supporting evidence, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims of the ’228 patent are unpatentable.” slip op. at 3

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

    “by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 28 (citing Ex. 1002 ¶ 110). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 110) as well as Jeong itself because Jeong effectively takes a trap and adds the same features and method (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 32 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 70

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.59” slip op. at 128

  Patent outcomesUS 9,814,228 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,814,228
• Netflix, Inc. / Hulu, LLC v. Divx, LLCAll claims unpatentable
  PTAB · Jan 26, 2022 · IPR2020-00614 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–6, 9, 10, and 13–19 are unpatentable as obvious over Ueno, Fetkovich, and Demos.

  RulingsFinal written decision

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

    “function” as recited in claim 1 to teach or suggest the “frame decryption function” recited in claim 14. See, e.g., Pet. 76. This reliance is due, in part, to the fact that the cited “references teach using symmetric algorithms,” which use the same key for encrypting and “decrypting the selected portions of encrypted frames in accordance with the frame decryption information.” Id. at 78 (citing Ex. 1004, 1:16–20; Ex. 1005, 6:52–56; Ex. 1006, 27:65– 28:1; Pet. §§ VI.A.1, VI.A.5 (claim 4); Ex. 1003 ¶ 257). Accordingly and as we determined in our Institution Decision, “the encryption parameters are the same for encryption and decryption” in Petitioner’s challenge. Inst. Dec. 8.” slip op. at 11

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “that Patent Owner “is not entitled to a presumption of nexus when the claimed features constitute a small part of the claimed product and are far from coextensive.” Id. Patent Owner asserts and Dr. Nielsen testifies that “DivX implemented its inventive partial encryption [method or approach] into DivX’s Digital Right Management Systems” and each cite to Exhibit 2020, a claim chart comparing challenged claims 1, 2, 4, 5, 10, 14, and 17–19 of the ’673 patent to features of DivX’s Decoder Software Development Kit (SDK). PO Resp. 11; Ex. 2008 ¶ 61. Patent Owner does not assert or explain that it is arguing secondary considerations of non-obviousness, does not attempt to establish a nexus between the claimed features and Patent Owner’s commercial product, and does not discuss or explain Exhibit 2020 in any level of detail. See generally PO Resp.; see also Pet. Reply 26 n.15 (citing Ex. 1029, 131:25–132:20) (Petitioner arguing that “Exhibit 2020 was not prepared by an expert witness or discussed in briefing”). For these reasons, we determine that a presumption of nexus is inappropriate here––Patent Owner does not provide an analysis demonstrating that its product(s) are coextensive (or nearly coextensive) with the challenged claim. See Lectrosonics, Paper 33 at 33. As such, we proceed to the second step of the analysis under Fox Factory.” slip op. at 52

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “Exhibits 2004, 2005, 2006, 2010, and 2020 for not being authenticated (Fed. R. Evid. 901(a)), containing inadmissible hearsay (Fed. R. Evid. 801(c), 802; 37 C.F.R. § 42.53), improper opinions (Fed. R. Evid. 701, 602), and lacking relevance (Fed. R. Evid. 402). Mot. Ex. 6–10. Petitioner’s Motion to Exclude is dismissed as moot with respect to Exhibit 2020 because our decision would not be affected by the admission or exclusion of that exhibit—we do not rely on it in reaching our conclusion as to the patentability of the challenged claims.” slip op. at 77

  Patent outcomesUS 7,295,673 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,295,673
• Intel Corporation v. Parkervision, Inc.All claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01265 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claim 3 is unpatentable under §103 over Tayloe and the TI Datasheet; the Board did not reach the Tayloe and Kawada ground.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

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

    “proposes that it be construed to mean “an element that stores a nonnegligible amount of energy from an input electromagnetic (EM) signal.” Pet. Reply 10. Petitioner contends that its proposed construction expressly tracks the definition provided in the ’551 patent for “storage element,” which the parties agree is synonymous with “storage module.” Id.; see id. at 10 n.2. In particular, Petitioner asserts that the ’551 patent states: “Storage modules . . . refer to systems that store non-negligible amounts of energy from an input EM signal.” Id. (quoting Ex. 2007, 66:65–67). Petitioner notes that the ’551 patent also states that “the ‘goal of the storage modules’ is ‘to store non-negligible amounts of energy transferred from the EM signal’” and that the patent “specifically distinguishes storage elements from holding elements on this basis.” Id. at 10–11 (quoting Ex. 2007, 66:59–67 (“Holding modules . . . identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of ‘holding’ a voltage value. Storage modules . . . on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal.”)). Thus, Petitioner contends “‘storage element’ should be construed accordingly.” Id. at 11 (citation omitted).” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Owner fails to “establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. In particular, neither Patent Owner nor Dr. Steer makes any attempt to establish nexus with the elements recited in claim 3 based on a presumption of co-extensiveness or otherwise. Each instance in which Dr. Steer mentions claim 3, he only ties the discussion to energy transfer systems or energy sampling in general, which is based on Patent Owner’s proposed claim construction that we do not adopt. See, e.g., Ex. 1022 ¶¶ 229 (“energy transfer (energy sampling) system – of claim 3”), 230 (“energy sampling as set forth in claim 3”), 233 (“[u]sing energy sampling . . . as set forth in claim 3”), 234 (“energy sampling as set forth in claim 3”), 235 (same), 236 (same), 237 (“using the energy transfer (energy sampling) system of claim 3”), 238 (same), 239 (“energy sampling system as set forth in claim 3”). Thus, we find that Patent Owner fails to establish that a presumption of nexus is warranted and similarly fails to establish nexus absent the presumption. Accordingly, for the reasons above, Patent Owner has not satisfied its burden to establish nexus. See WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999) (patent owner “bears the burden of showing that a nexus exists”).” slip op. at 64

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• Unified Patents, LLC v. Engle Grange, LLCAll claims unpatentable
  PTAB · Jan 19, 2022 · IPR2020-01334 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claim 1 is unpatentable over McCullough and DeBono under §103; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

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

    “proposed “a combined system that implements DeBono’s teaching into McCullough’s key fob system,” not that DeBono teaches a second authentication step using a key fob. Id. (citing PO Resp. 21–22; Pet. 41–46, 48–60). Petitioner explains that it “never proposed bodily incorporating DeBono’s biometric shifter into McCullough’s system, and accordingly, [Patent Owner’s] arguments as to DeBono alone miss the mark.” Id. at 14 (citing Pet. 41–46, 53). Petitioner reiterates that its “actual combination of McCullough and DeBono” “perform[s] McCullough’s already-disclosed key fob authentication in the same way a second time during gear shift, as taught by DeBono.” Id.” slip op. at 53

  • Obviousness (§103) › Objective indicia / secondary considerationsOther

    “4. Objective Considerations of Nonobviousness Neither party presents evidence of objective considerations of” slip op. at 67

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “that “[t]o the extent the preamble is limiting, McCullough in view of DeBono and Chung discloses [it], or at least renders [it] obvious.” Pet. 46. The preamble of claim 1 is written in Jepson form. “Jepson form allows a patentee to use the preamble to recite ‘elements or steps of the claimed invention which are conventional or known.’” Epcon Gas Sys. v. Bauer Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir. 2002) (quoting Kegel Co. v. AMF Bowling, Inc., 127 F.3d 1420, 1426 (Fed. Cir. 1997)); see 37 C.F.R. § 1.75(e) (describing the structure of a Jepson claim). Because a Jepson claim “evidences the intention to use the preamble to define, in part, the structural elements of [a] claimed invention,” the Federal Circuit has held that a “preamble is a limitation in a Jepson-type claim.” Epcon Gas, 279 F.3d at 1029 (quotation omitted). Accordingly, we determine that the preamble of claim 1 is limiting and address it herein.” slip op. at 34

  Patent outcomesUS 8,548,645 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,548,645
• Verizon Business Network Services, Inc. v. Huawei Technologies Co., Ltd.Some claims unpatentable
  PTAB · Jan 11, 2022 · IPR2020-01079 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, 5, 7, 9, 10, 12, and 14 are unpatentable over Becker and Kenoyer ’423; claim 6 was not shown unpatentable.

  RulingsFinal written decision

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

    “The principal difficulty with Patent Owner’s arguments is that they improperly conflate transferring desktop information with the claim’s 4 The ’288 patent instead uses the uncommon acronym “PAUNTSC,” presumably a result of incorrectly printing “L/” as “U.” recitation of “capturing” desktop information. Indeed, Dr. Bhattacharjee concedes that “the desktop information as described in the ’288 patent is transferred in digital form,” even as he maintains his opinion that desktop information is not limited to digital capture by the ’288 patent. Ex. 1020 ¶ 11. There is thus no dispute among the expert witnesses, nor the parties, that the ’288 patent describes the digital transfer of desktop information. As Dr. Bhattacharjee explains, this is a consequence of the fact that “the [’288] patent describes and claims transferring desktop information only after it is encoded.” Ex. 1020 ¶ 12. Because such encoding occurs only after the desktop information is captured, “the captured desktop information could either be digital or analog.” Id. The aspects of the intrinsic record that Patent Owner identifies as supporting its proposed construction are, in fact, consistent with this distinction between capture and transfer. For example, the “advantage of the invention” identified by Patent Owner is specifically described by the ’288 patent as raising clarity on the video communication terminal when “[d]esktop information of a PC is transferred directly in a digital coded bit stream mode without converting digital signal to analog signal.” See Ex. 1001, 2:35–39 (emphasis added). This is, moreover, consistent with the portion of the prosecution history Patent Owner identifies and which also makes clear that “the desktop information of a PC is transferred in a digital coded bit stream.” Ex. 1002, 159 (emphasis added). Petitioner’s expert, Dr. Bhattacharjee “agree[s] the desktop information as described in the ’288 patent is transferred in digital form,” even though it is not captured in digital form. Ex. 1020 ¶ 11. And although the ’288 patent’s remarks about the “second” prior-art” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “technical dictionary definitions. Id. When deciding to institute this proceeding based on the preliminary record, we declined to adopt Petitioner’s proposal, which was also not adopted by the district court in the related litigation. Dec. 12. The parties have not revisited this preliminary determination during the trial and we see no compelling reason to reach a different determination based on the full record. We according construe “bit stream” in accordance with its plain and ordinary meaning as a stream of bits.” slip op. at 17

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both proposals appear reasonable on the record before us. Although we invited the parties “to address whether material differences exist between their respective proposals and what impact, if any, the different proposed levels have on the obviousness analysis,” neither party has done so. See Dec. 11 n.3. We apply the proposal articulated by Patent Owner, but we would reach the same conclusions under either proposal.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “skill in the art] would be motivated to combine even when bandwidth is shared”: (1) “the shared nature of the bandwidth only highlights that reduced bandwidth usage for desktop information provides the capability of a higher quality signal for the live stream without any extra costs in components or processing”; (2) because Kenoyer ’423 “does not disclose using a dedicated or fixed amount of bandwidth . . . , any reduction in bandwidth would reduce overall usage”; and (3) “even in a dedicated environment, Kenoyer ’423’s reduced bandwidth needs for desktop information would reduce the amount of dedicated bandwidth that is required, potentially saving costs or power.” Reply 12 (citing Ex. 1020 ¶¶ 31–32). These reasons are directly responsive to arguments raised by Patent Owner in its Response and are therefore properly considered. See 37 C.F.R. § 42.23(b). We also find such reasons, which are supported by additional testimony by Dr. Bhattacharjee, adequately explain how Patent Owner’s distinction is accommodated within Petitioner’s expressed rationale of “minimizing bandwidth usage.” See Ex. 1020 ¶¶ 31–32. Second, Patent Owner contends that, if “Kenoyer ’423 were interpreted as teaching reducing bandwidth, it does so in a different manner than in Becker.” PO Resp. 37. Specifically, “Becker addresses bandwidth reduction by using signal compression techniques,” Patent Owner says, while “Kenoyer ’423 prevents the increase in bandwidth . . . by dynamically sharing bandwidth when both a live view of the presenter and the presenter’s computer screen are being shared.” Id. Dr. Bhattacharjee disputes this distinction by observing that Kenoyer ’423’s technique still “reduces the number of bits required to convey the same video information,” and is thereby broadly encompassed as a form of “signal compression.” Ex. 1020 ¶ 33. Dr. Rosing does not specifically disagree with Dr. Bhattacharjee’s characterization. See generally Ex. 2022 ¶ 99. Regardless, both Becker and Kenoyer ’423 support Petitioner’s rationale of “minimizing bandwidth usage.” Patent Owner inadequately explains how a distinction in the precise manner that might be accomplished by the two references diminishes the support provided by the rational underpinnings identified by Petitioner. See PO Resp. 37 (Patent Owner making the conclusory statement that “[a]s such, Petitioner fails to provide a valid motivation for combining Becker and Kenoyer ’423”).” slip op. at 26

  Patent outcomesUS 7,609,288 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,609,288
• Juniper Networks, Inc. v. Huawei Digital Technologies (Cheng Du) Co., Ltd.Some claims unpatentable
  PTAB · Jan 10, 2022 · IPR2020-01130 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 8 and 9 are unpatentable as obvious over Dubrovsky and Dubrovsky with Campbell, respectively; claims 1–7 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “request in Petitioner’s Moshchuk-Gribble combination is a URL for an HTML root page, neither the Content-Type field of the HTTP header nor the URL extension would indicate whether the requested Web page contained executable content. PO Resp. 10–16. Dr. Davis provides credible testimony that because, in Moshchuk, the file that is provided in response to the request is an HTML root page, the HTTP header for the file would have merely indicated that the returned file is an HTML file, which is not a file type associated with being an executable, and would not have indicated whether the file contains active or passive content. Ex. 2018 ¶¶ 94–100. Similarly, Dr. Davis provides credible testimony that “[a] POSITA would have known that the URL for an HTML file would have generally included an extension of .html or .htm” and that such extensions would not have been associated with executables. Id. at ¶ 106. Thus, Dr. Davis concludes “[t]he resulting Moshchuk-Gribble combination therefore would not have been able to determine if a requested Web page was an active page or a passive page based on the analysis of the URL.” Id. at ¶ 107.” slip op. at 36

  • Strike new argumentNew argument disregardedDecided for patent owner

    “The contentions from the Petition, taken together with Dr. Nielson’s initial testimony and the underlying disclosure from Gribble show that the Petition relies specifically on examining Gribble’s content-type HTTP header to determine whether the associated file is an executable. Thus, we agree with Patent Owner that Petitioner’s arguments in the Reply Brief relying on file headers generally, or those relying on other types of headers, such as the HEAD section or element, or other fields of the HTTP header, such as the Content-Script-Type field, are new arguments not presented in the Petition. Because these arguments were not raised in the Petition, it is impermissible to raise them in the Reply Brief. See Consolidated Trial Practice Guide3 at 73–75.” slip op. at 33

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

    “Based on the evidence of record and the parties’ arguments, we are persuaded by Petitioner that the Dubrovsky-Campbell combination teaches the limitations of claim 9. Initially, we note that we agree with Petitioner that one of ordinary skill would have been motivated to look to known ways of identifying file types, such as Campbell’s method of examining the file extension and the file header. We give credit to Dr. Nielson’s testimony in this regard that both Dubrovsky and Campbell recognize that executables were a frequent source of malware but that Dubrovsky does not provide specific details regarding how a file would be determined to be executable. Ex. 1005 ¶¶ 404–405. Because Campbell does provide these details, Dr. Nielson credibly testifies that a person of ordinary skill would have been motivated to combined Campbell’s techniques of identifying executables with Dubrovsky. Ex. 1005 ¶¶ 404–406. We agree with Petitioner that Campbell teaches that a file’s header can be used to determine that the file is an executable. Campbell teaches that spyware contains certain patterns that can be used to identify the nature of the file. Ex. 1013, 5:9–12. Campbell provides an example of a .CAB file that includes a header having a certain format. Id. at 5:12–13. Campbell explains that spyware scanners have access to spyware signature lists that can be compared with characteristics of spyware headers to identify spyware so that the spyware can be blocked. Id. at 13–24.” slip op. at 61

  Patent outcomesUS 10,027,693 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,027,693

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.