- 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution deniedPTAB · Aug 19, 2024 · IPR2024-00548 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show that the cited art taught multiple successful bite registrations, as required by challenged claims 1–21.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the Federal Circuit has noted, it is not within our statutory authority to determine questions of indefiniteness of issued claims within a inter partes review proceeding. Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1350 (Fed. Cir. 2020). As such, we make no findings as to any alleged indefiniteness. The Federal Circuit, however, also has stated that “[t]he indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.” Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (emphasis added). Here, we are presented with a circumstance in which our determinations in this proceeding are not precluded by the allegations of indefiniteness. Thus, we will not deny the Petition based on Petitioner’s failure to identity corresponding structure for the purported means-plus-function terms of claim 13. Further, based on the record before us, we see no need for express construction of any term at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“D. Asserted Obviousness Each of the independent claims, 1, 13, 18, 20, and 21, recite, in relevant part, obtaining at least two successful bite registrations corresponding to different displayed bite surfaces. Ex. 1001, 9:50–52 (claim 1), 11:13–15 (claim 13), 12:5–6 (claim 18), 12:31–32 (claim 20), 12:53–55 (claim 21). Patent Owner argues, and we agree, that “[b]y its plain language, this limitation requires obtaining multiple successful bite registrations.” Prelim. Resp. 20. In each of the asserted grounds, Petitioner relies on Sommer alone or with Malfliet to teach this limitation in each of the independent claims. Pet. 19–20 (claim 1), 55 (claim 13), 58 (claim 18), 63 (claim 20), 37 (claim 21). We are not persuaded that Petitioner has shown sufficiently that the art teaches this limitation.” slip op. at 13
- Skill levelOther
“Petitioner asserts that a person of ordinary skill in the art would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. Pet. 9 (citing Ex. 1009 ¶¶ 32–33). Patent Owner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning, including 3D imaging systems and 3D modeling techniques.” Prelim. Resp. 5. Patent Owner adds that “[a]dditional education reduces the threshold for years of experience in the field, and vice versa.” Id. For purposes of this Decision, the level of ordinary skill in the art is not dispositive and our determination would be the same under either party’s proposal. See Prelim. Resp. 5 (“Patent Owner’s arguments herein apply regardless of which definition of a POSITA is adopted.”). Nonetheless, we note that Petitioner’s proposal is reasonable and consistent with the prior art, and is further supported by Dr. Saber’s testimony. Ex. 1003 ¶ 33; 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 7
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,076,391 - Google LLC v. Parus Holdings, Inc.No claims unpatentablePTAB · Aug 1, 2024 · IPR2022-00279 · APJ David C Mckone · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable over either Kovatch and Burrows or Wise and Burrows because the combinations did not teach the claimed polling and rank-decrease limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “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,” and that “[m]ore education could substitute for less experience, and vice versa.” 5 The complete record does not include allegations or evidence of objective indicia of nonobviousness. same proposal. PO Resp. 1. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“From this description in Burrows, it is clear that index 70 has no sense of ranking, and that Burrows’ system overall has no sense of ranking prior to a query; thus, adding or deleting a webpage from the index does not change a ranking that does not yet exist. It is also clear that, if a page is flagged as deleted, it will be ignored by the query module when the query module queries the index and ranks the identified qualified pages. Id. at 15:12–16, 15:21–22. The webpage’s rank is not decreased, as the webpage is never ranked in the first place. As Mr. Occhiogrosso testifies: web page. A “polled web site” page cannot be ranked in the Burrows system because the Burrows ranking is performed only after a user query is performed. Only at that time can the Burrows system provide a ranked list (of qualified webpages) for presentation to the user. As Burrows discloses, the Automated Web Browser is robotic in nature and not associated with the queries of users. Ex. 2009 ¶ 181. Mr. Occhiogrosso’s testimony on this point is consistent with Burrows’ description, credible, and entitled to substantial weight. We have considered Mr. Lipoff’s testimony that a skilled artisan “would have understood that combining Burrows’s polling mechanism receiving no response into Kovatch would decrease the entries’ ranking or placement in Kovatch’s destination tree in order to further limit the pages that may not be of interest to the user.” Ex. 1002 ¶ 172 (citing Ex. 1006, 1:38–46). That testimony, however, is conclusory and lacks persuasive reasoning. Moreover, the passage in Burrows to which it cites (Ex. 1006, 1:38–46) does not teach or suggest decreasing the ranking of webpages. Thus, Mr. Lipoff’s testimony on this point lacks credibility and is entitled to little weight. Upon consideration of the complete record, we are not persuaded that Kovatch and Burrows teach claim limitations 1H and 2H.” slip op. at 22
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Reply, Petitioner argues that “the type of database record that Burrows polls and ranks makes no difference for this teaching; processing costs and cycles, equating to processing time, are a potential issue any time computer processing occurs.” Reply 20 (citing Ex. 1061 ¶ 24). Mr. Lipoff repeats this statement in his testimony without identifying the basis for it, rendering that testimony of little value. Ex. 1061 ¶ 24. In any case, it appears that Petitioner and Mr. Lippoff are arguing that a general notion of processing cost any time computer processing occurs would lead a skilled artisan to decrease a webpage’s rank based on response time. This is a new argument, not presented in the Petition, and is therefore forfeited and will not be considered. In any case, Petitioner has not supported this new argument with persuasive evidence.” slip op. at 31
- BurdenFwd all claims patentableNot shown unpatentable
“In sum, for several reasons, Petitioner has not shown that Kovatch and Burrows teach claim limitations 1H–1J and 2H–2J and, therefore, Petitioner has not shown that Kovatch and Burrows teach each limitation of claims 1 and 2. 4. Conclusion of Nonobviousness As explained above, Petitioner has failed to show that the combination of Kovatch and Burrows teaches each limitation of claims 1 and 2. Upon consideration of all the evidence, we conclude that Petitioner has not proved by a preponderance of the evidence that claims 1 and 2 would have been obvious over Kovatch and Burrows.” slip op. at 32
Patent outcomesUS 6,721,705 not shown unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,721,705 - PTAB · Jul 24, 2024 · IPR2024-00701 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Samsung’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In its Motion for Joinder, Samsung contends that joinder is appropriate because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 1–2; see also Ex. 1020 (comparing Petition and Meta IPR Petition). Stated differently, Samsung asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Samsung further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 4–9. Samsung also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. Given that Patent Owner did not file an opposition to Samsung’s Motion for Joinder, and Samsung agrees to consolidate all filings and discovery with Meta (Joinder Mot. 4–9), Samsung has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Samsung’s Motion for Joinder and, as a result, join Samsung as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - PTAB · Jul 24, 2024 · IPR2024-00666 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Roku’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We incorporate our previous analysis in our Decision on Institution in IPR2023-01281 regarding the asserted grounds of unpatentability, and conclude that Roku has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’878 patent challenged in the Petition for the same reasons. See Meta IPR Dec. on Inst. 23–24. Accordingly, we determine that Roku has met its burden of showing that joinder is appropriate, and that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 4–6. Stated differently, Roku asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Roku further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 7–9. Roku also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. at 9–10. Given that Patent Owner did not file an opposition to Roku’s Motion for Joinder, and Roku agrees to consolidate all filings and discovery with Meta (Joinder Mot. 7–9), Roku has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Roku’s Motion for Joinder and, as a result, join Roku as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - Bright Data Ltd. v. Oxylabs, UabNo claims unpatentablePTAB · Jul 15, 2024 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Scoda did not disclose the claimed interception limitation and Hallak did not disclose execution of the removed script after removal.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find that the parties’ agreed upon construction is supported by the record before us and apply it in our patentability analysis below, requiring the embedded script to be removed before that script is executed. We determine that no other claim terms require express construction.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“during trial, we determine that Petitioner has not shown by a preponderance of the evidence that Scoda discloses intercepting a web page sent from a We agree with Patent Owner that portions of Scoda cited in the Petition do not disclose a web page, let alone one sent from a server and addressed to a client browser. See PO Resp. 17; Tr. 73:10–23. Scoda discloses that “[t]he core module 21 is executed by the web content proxy server 12 to determine where to provide the response with the executed JavaScript functionality in the exemplary environment 10, such as to a web browser on one of the client devices 14(1)–14(n).” Ex. 1016 ¶ 55. But this functionality does not refer to a web page from a server. Instead, this discussion is about a HTTP request that comes from a client device and may include one or more hidden JavaScript identifiers. See id. ¶¶ 50–55. The discussion about providing a response to a web browser on a client device refers to a response to the client device’s HTTP request, in the form of an error message, that is sent from the proxy server to client device. Id. ¶ 58. As Patent Owner points out, this is one of the two scenarios presented in Scoda, the other one being that HTTP request is sent to the server. Id.; PO Resp. 36; see also Ex. 2009 ¶ 70. We agree with Patent Owner and Dr. Almeroth that these communications between the client and proxy server or the proxy server and the content server do not disclose the “intercepting” limitation.” slip op. at 19
- Strike new argumentNew argument disregardedDenied
“deficient, Petitioner attempts to change the focus of its argument. Pet. Reply 2–3. Petitioner instead relies on Figure 8 and related discussion as “Scoda’s disclosure of proxy server 12 processing a web page that was sent from a web server.” Id. Scoda, and Petitioner’s argument based on this disclosure is, therefore, an untimely new argument presented in the Reply. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 20
Patent outcomesUS 9,516,091 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 9,516,091 - Bright Data Ltd. v. Oxylabs, UabNo claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–5 were not proven unpatentable: Athas does not show the same packets are received, modified, and forwarded; neither obviousness combination teaches execution in response to the client’s execution of the second script.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). For our Institution Decision, we adopted Petitioner’s formulation. Institution Dec. 11. Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’s explanation,” he bases his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Final Written Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner 6 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. and used previously in our Institution Decision. We find that this formulation is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“as “the number of packets” intercepted in limitation 1a (see PO Resp. 6–7). Petitioner responds that resolving this argument is not necessary. Pet. Reply 1. We find that whether claim 1 requires the packets intercepted by the network appliance in limitation 1a to be the same packets involved in limitations 1b–1d, Petitioner has not persuasively shown that any same number of packets in Athas that are received at proxy platform 101 are then modified and forwarded as required by limitations 1b–1d, for the reasons discussed below. We agree with Patent Owner that the number of packets in limitations 1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23
- BurdenNot shown unpatentable
“1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23
Patent outcomesUS 8,924,457 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,924,457 - Bright Data Ltd. v. Oxylabs, UabNo claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00185 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–19 were not proven unpatentable; the Board found the asserted WebShield and Hallak grounds failed on script-removal and execution sequencing, and the Kothari combination lacked motivation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Post-institution, Patent Owner proposes two claim constructions. PO Resp. 7–8. Patent Owner proposes that we construe the term “embedded script,” as defined in the ’498 patent, as “a script that is included or incorporated by reference into a markup language description of a web page and executable by a browser rendering that web page.” Id. at 8 (citing Ex. 1001, 3:23–26). According to Patent Owner, a “script” is “a sequence of machine-readable instructions.” Id. (citing Ex. 1001, 3:21–23). Patent Owner proposes that we construe “executing . . . the removed embedded script” as requiring the removal of the script embedded in the web page to take place before the script is executed. Id. This limitation is recited in claim 1 and in each of the other independent claims. Ex. 1001, 11:43–46 (claim 1), 12:17–20 (claim 10); 12:58–63 (claim 19). Petitioner responds that “[t]hese claim terms have already been construed by the district court and those constructions are not disputed in this proceeding.” Pet. Reply 2. We find that these undisputed constructions are supported by the record before us. We, therefore, adopt them for this Decision. We do not find it necessary to expressly construe any other terms for this Decision.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’ explanation,” he bases 7 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’498 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree that Petitioner’s citations to WebShield do not disclose the sequence of operations called for by the claims. WebShield expressly states that “the HTML page, embedded JavaScript files and embedded CSS files will be parsed and executed to create the DOM data structures of the webpage.” Ex. 1008, 5 (emphasis added). As Dr. Almeroth explains, “WebShield does not remove an embedded script and then subsequently execute the removed embedded script. . . . WebShield . . . executes the embedded JavaScript without first removing that JavaScript from the web page, and only subsequently generates ‘the new HTML page [that WebShield] transfers to the client browser T(R).’” Almeroth Decl. ¶ 78 (quoting Ex. 1008, 6) (final alteration in original). We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21
Patent outcomesUS 9,503,498 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 9,503,498 - Roofr Inc. v. Pictometry International Corp.All claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00436 · APJ Garth D Baer · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Pershing-789 and Bailey, with Abhyanker added for claims 6, 7, and 14–18; the alternative Kennedy grounds were not reached.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contends one skilled in the art “would have had a Bachelor’s degree in an academic area emphasizing construction, architecture, and/or engineering, or similar discipline, and at least two years of experience with roofing measurement and estimation, aerial imagery use in roofing estimation, and roofing measurement software.” PO Resp. 4. Patent Owner’s definition is substantively similar to Petitioner’s. See Pet. 2 (“a person of ordinary skill in the art at the time of the alleged invention would have bachelor’s degree in architecture or an equivalent with at least five years of experience performing roof estimation”). We agree with and adopt Patent Owner’s definition with the added provision that, as we noted in our Institution Decision, “experience may compensate for formal education, and vice versa.” Paper 14, 7.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Cummings, qualifies as a skilled artisan. See PO Resp. 39–47. Instead, Patent Owner contends we “should give significantly more weight” to its expert’s testimony than to Petitioner’s because its expert “has much more relevant experience” and Mr. Cunningham’s opinions “are conclusory and merely repeat verbatim the arguments presented in the Petition.” PO Resp. 39. We disagree. We do not find that Patent Owner’s expert’s opinions are entitled to significantly more weight than Petitioner’s simply based on the experts’ relative experience. Instead, in our analysis below, where necessary, we have evaluated both experts’ opinions and we base our conclusions on the opinions’ persuasiveness. In addition, we do not find it problematic that the Petition repeats certain portions of Petitioner’s expert’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 43–47.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Neither party proposes an express construction for any claim terms. Pet. 2; see generally PO. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In light of Petitioner’s analysis as outlined above, we agree with Petitioner that together, Pershing-789 and Bailey teach “determin[ing] a footprint and predominant pitch of the roof by analyzing one or more image showing the roof; [and] determin[ing] an estimated roofing area of the roof based on the predominant pitch and the footprint of the roof,” as claimed. Further, given Petitioner’s rationale as outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that it would have been obvious to combine Bailey’s predominantslope teaching with Pershing-789’s area calculation. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 419 (2007).” slip op. at 10
Patent outcomesUS 9,183,538 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,183,538 - Roofr Inc. v. Pictometry International Corp.All claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00435 · APJ Garth D Baer · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–8, 10–13, and 15–17 as obvious over Pershing-789 and Abhyanker; claims 9 and 14 over the Pictometry combination; and claims 1–17 over Kennedy, Abhyanker, and Bailey.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedPetitioner expert creditedDecided for petitioner
“We agree with Petitioner that Mr. Cummings qualifies as a skilled artisan. Pet. Reply 2–7. As Petitioner notes, the ’800 patent’s computer-related features are fairly basic—i.e., “standard computer input devices, applications, and graphical user interface elements” that “would be familiar to and understood by one” with experience like Mr. Cummings’s. Pet. Reply 5–6 (citing Ex. 1001). As we explained in our Institution Decision, “[a]lthough Mr. Cummings may lack formal computer-related education, he ‘ha[s] extensive experience using software related to construction’ including ‘decades working with software related to construction modeling and estimation.’” Paper 16, 8 (quoting Ex. 1003 ¶ 6). Mr. Cummings also “ha[s] experience collaborating with software developers to create new software in my field.” Id. In light of the ’800 patent’s basic computing features, Mr. Cummings’s experience is sufficient. In addition, we do not find it problematic that the Petition repeats certain portions of Mr. Cummings’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 37–39.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We agree with Petitioner that Mr. Cummings qualifies as a skilled artisan. Pet. Reply 2–7. As Petitioner notes, the ’800 patent’s computer-related features are fairly basic—i.e., “standard computer input devices, applications, and graphical user interface elements” that “would be familiar to and understood by one” with experience like Mr. Cummings’s. Pet. Reply 5–6 (citing Ex. 1001). As we explained in our Institution Decision, “[a]lthough Mr. Cummings may lack formal computer-related education, he ‘ha[s] extensive experience using software related to construction’ including ‘decades working with software related to construction modeling and estimation.’” Paper 16, 8 (quoting Ex. 1003 ¶ 6). Mr. Cummings also “ha[s] experience collaborating with software developers to create new software in my field.” Id. In light of the ’800 patent’s basic computing features, Mr. Cummings’s experience is sufficient. In addition, we do not find it problematic that the Petition repeats certain portions of Mr. Cummings’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 37–39.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 2; see generally PO. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed
“Moreover, Petitioner’s proposed combination is sufficient for obviousness even if we accept Patent Owner’s proposed temporal requirement. Specifically, Petitioner’s rationale for adding Abhyanker’s user inputs (i.e., “allowing a user to designate a geographic position of a roof and to subsequently confirm that the roof location is correct would promote the accuracy of the system,” Pet. 24, 67 (emphasis added, Petitioner’s emphasis omitted)), explains why one skilled in the art would have provided Abhyanker’s lock pushpin option after placing a marker. See also Ex. 1003 ¶¶ 43, 127. Patent Owner’s argument, in contrast, assumes a skilled artisan could do no more than bodily incorporate Abhyanker’s placement and lock features without any thought as to sequence. That, however, is not the test for obviousness. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (noting that “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). For these reasons, and in light of the Petition’s analysis, see Pet. 24– 25, 33–35, 67, 74, we agree with Petitioner that its proposed combination teaches “responsive to receiving the designation of the building roof structure location, providing a second computer input capable of signaling user-acceptance of the building roof structure location within the first image, wherein user-acceptance is one or more affirmative steps undertaken by the user to confirm the designation of the building roof structure location,” as claimed.6” slip op. at 11
Patent outcomesUS 10,648,800 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,648,800 - Siemens Mobility, Inc. / Ground Transportation Systems USA Inc. et al. v. Metrom Rail, LLCAll claims unpatentablePTAB · Jun 18, 2024 · IPR2023-00470 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–28 are unpatentable because Petitioner proved the challenged claims obvious over the asserted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“PO Resp. 4 (citing Ex. 2012 ¶ 37) (emphases added). Patent Owner argues that Petitioner’s approach expansively includes anyone working on collision avoidance and does not acknowledge that the railroad industry specifically is resistant to change and innovation. Id. (citing Ex. 2012 ¶ 40). Accordingly, Patent Owner, contends that a person of ordinary skill in the art also would be characterized as “reluctant to innovate, a characteristic of this industry.” Id. at 4–5.” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“Id. (citing Ex. 2016, 1–6; Ex. 2019, 1–4; Ex. 1054, 125:20–141:7). Petitioner argues that “Dr. Cooklev’s analysis is legally insufficient because he assumed that any product that met a claim was in fact coextensive with it, regardless of whether it had additional features,” and “boiled coextensiveness down to infringement.” Id. at 10 (citing Ex. 1051, 117:5–10). Petitioner contends that Patent Owner’s only evidence that unclaimed features are irrelevant to AURA’s success is Dr. Cooklev’s conclusion, which is factually insufficient as it is based entirely on conversations with Messrs. Gunther and Marchi, without independent analysis. Id. (citing Ex. 2011 ¶ 41).” slip op. at 26
- ExcludeMotion to exclude, deniedDenied
“not admissibility, and the challenged paragraphs should not be excluded. Paper 57, 1. Patent Owner argues that Mr. Conti was qualified as a percipient industry participant to comment on long felt need and provides ample support for his opinions. Id. at 2 (citing Ex. 1053, 14:20–15:8, 24:18–26:22, 52:19–53:10, 54:6–56:16, 80:1–6, 81:7–21, 154:7–155:9, 155:14–156:21, 157:11–159:6, 159:20–161:3, 161:24–162:14). Patent Owner also argues that Mr. Conti’s testimony on skepticism in the prior art as well the ultimate conclusion of obviousness should not be excluded because there is sufficient factual support for those opinions. Id. at 2–3 (citing Ex. 1053, 154:7–155:9, 155:14–156:21, 157:11–159:6, 159:20–161:3, 161:24–162:14, 166:21–168:18). Patent Owner argues that Mr. Conti’s opinions in paragraphs 69–7224 are admissible because Mr. Conti, as an expert in railroad safety and familiar with the design constraints in this area and at the time of the invention, conducted an investigation, which coupled with his experience, resulted in his conclusion that the proposed combination goes against the conventional thinking of a person of ordinary skill in the art. Paper 57, 3–4 (citing Ex. 2012 ¶ 75).” slip op. at 79
- Strike new argumentNew argument consideredDenied
“Accordingly, Patent Owner’s Motion to Strike Exhibit 1060 and portions of Petitioner’s Reply is denied.” slip op. at 77
Patent outcomesUS 8,812,227 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,812,227
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.