- PTAB · Aug 5, 2024 · IPR2024-00595 · APJ Brian P Murphy · IPR · Institution
Instituted IPR of claims 1–18 on all grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including obviousness over Pierre and Gershman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Advanced Bionics Part 2 We also consider whether Petitioner has demonstrated the Office erred “in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9; see also NPRM at 28700 (“material error may include misapprehending or overlooking clear, specific evidence in the prior record, including teachings of the relevant prior art that impact the patentability of the challenged claim”). We evaluate Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner has demonstrated material error. Id. at 10. Those factors are: (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (Director Review vacating Board decision denying institution, finding examiner misapprehended or overlooked prior Board determinations regarding same references in related IPR). In evaluating Becton, Dickinson factors (c) and (e), we determine Petitioner has shown the Examiner erred by overlooking Gershman’s teaching of a “moving plate” and digital image capture of an unrestrained chick as a disclosure of the “unrestrained chick” limitation. More particularly, the record evidence at this stage of the proceeding indicates the Examiner did not meaningfully consider Gershman’s disclosure: (i) of Figure 3, showing a chick on a “moving plate,” (ii) of Figures 5 and 6, digital images of a chick “reflexively” opening its wings without restraint for image capture, or (iii) that it would have been “obvious” to “adapt[]” and “add” the “moving plate” system to the “end” of industrial chick processing lines. Pet. 10, 22, 36–37 (compare Ex. 1002, 220–221, 226–228 with Ex. 1003, 1, 2, 5, 6, 10). Regarding Becton, Dickinson factor (f), the Petition presents additional evidence and facts, including material teachings of the new Pierre reference regarding the “unrestrained chick” limitation as detailed in Part 1 above, that warrant inter partes review.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’124 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’124 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“unrestrained chick” limitation in independent claims 1 and 6. Pet. 36–37, 39–40. Petitioner emphasizes Pierre’s teaching of placing a chick in a position where it is falling so that it will open its wings “naturally” for image capture by a digital camera. Id. at 36, 39 (citing Ex. 1004, 4). Petitioner argues it would have been obvious to use Gershman’s moving plate to cause a chick to fall and “reflexively” open it wings for image capture as in Pierre, “because both Pierre and Gershman are in the same field and directed to solving the same problem, namely, automating assessment of chicks by imaging their wings.” Id. at 37, 39–40. Patent Owner does not address the argument. See Prelim. Resp. 12–15. On the present record, we agree with Petitioner’s reliance on Pierre-Gershman and also refer to our analysis of Ground 1 and the teaching of Gershman’s “moving plate” as a disclosure of the “unrestrained chick” limitation. On the present record, Petitioner’s argument and evidence support the position that Pierre and Gershman are analogous art and the proposed combination of Pierre-Gershman teaches the “unrestrained chick” limitation. slip op. at 24
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,806,124 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 26, 2024 · IPR2024-00326 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution under § 314(a) based on Fintiv, finding that most factors favored denial and the obviousness challenges did not meet the compelling-merits standard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs slightly against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and as such, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(D) Patent Owner also argues that we should exercise our discretion to deny institution of inter partes review in this case under 35 U.S.C. § 325(d) because “Mahajan and Danciu constitute the same or substantially the same art that has already been considered by the Patent Office.” Prelim. Resp. 42. However, because we will not be instituting an inter partes review based on our discretion to deny the Petition under § 314(a), we need not determine whether it would be appropriate to discretionarily deny the Petition under § 325(d).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that Petitioner does not show that Mahajan discloses or renders obvious the converted commands limitations of the claims. Particularly, all of the claims require that a media receiver (or computing device) receives a set of commands that is recognizable by the first type of media application and is converted via an API adapter to be recognizable by the first type of media playing application. Petitioner’s reliance on Mahajan’s Figure 3 for disclosing this limitation is not persuasive. Pet. 12–13, 39–41; Ex. 1102 ¶¶ 178–179, 182. Mahajan’s Figure 3, with Patent Owner’s annotations added coloring for different platforms and different commands, is reproduced below. Prelim. Resp. 28. Mahajan’s Figure 3, reproduced above with Patent Owner’s added coloring, shows that user-commands 306A–I (red) for server 202’s media platform are genericized by server 202’s RTS media abstraction module 210 (orange) using RTS mapping table 302 and corresponding generic commands 308A–I, 310A–I (grey) are sent to client 204’s RTS media abstraction module 214 (blue), which then converts the generic commands into platform-specific media commands 312A–I (green) for the client 204’s media platform. Ex. 1114 ¶¶ 35–43. More particularly, Mahajan discloses that its “RTS abstraction module 210 can translate the intercepted platform specific media commands into generic or abstracted media commands.” Ex. 1114 ¶ 36 (emphasis added). Next, “[t]he generic media commands can be sent from the server [202]’s RTS media abstraction module 210 to the client [204]’s RTS media abstraction module 214.” Id. Then, “[t]he client [204]’s RTS media abstraction module 214 can translate the generic media commands . . . into media commands that are specific to the client [204]’s media platform 212.” Id. Mahajan also discloses that “server [202]’s RTS media abstraction module 210 can receive media commands that are specific to the server [210]’s media platform 208.” Id. ¶ 37 (emphasis added). Thus, only media commands 312A–I (green) are specific to client 204’s media platform 212, not commands 306A–I, nor commands 308A–I, nor commands 310A–I. See id. ¶¶ 39–41. It appears that Petitioner recognizes such by stating that “Mahajan’s server translates specific commands of a first type to genericized commands, the genericized commands are transmitted, and then Mahajan’s client translates those generic commands to specialized commands of a second type.” Pet. 12–13 (citing Ex.1114 ¶¶ 35–36, Figs. 1–2) (emphasis added); see also Prelim. Resp. 30 (citing Pet. 34–35, 59, arguing Petitioner concedes Mahajan’s RTS Media Abstraction module of the client converts the commands received by the client from the server). With these disclosures, we agree with Patent Owner that any conversion of generic commands into platform-specific media commands for Mahajan’s client 204’s media platform 212 (as colorized green in Figure 3 by Patent Owner) is performed on the client 204 side, not on the server 202 side and thus, “Mahajan does not disclose the claimed component receiving a set of converted commands—i.e., commands that have already been converted when they are received.” Prelim. Resp. 27–28. We further agree with Patent Owner’s assessment that “Mahajan teaches that the client receives the generic commands alleged to be in a universal format; it does not disclose commands that are receive[d] in a first format that corresponds to [or is recognizable by] the first type of media playing application, as the claims recite.” Id. at 28; see Pet. 29–31, 39, 41; Ex. 1114 ¶¶ 36, 63. Petitioner appears to agree by stating that in regard to Mahajan’s teachings, 1) commands for a type of media playing application on the server are received at Mahajan’s server, 2) the commands are translated into a universal command, 3) the universal command is transmitted to the client, 4) the client re-translates the universal command, and 5) the new specific command is executed. Pet. 31 (citing Ex. 1114 ¶¶ 35–36, Figs. 1, 2; Ex. 1102 ¶ 159); see also Prelim. Resp. 29 (citing Ex. 1114 ¶¶ 13–14, 63).” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,086,934 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 26, 2024 · IPR2024-00325 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution under Fintiv because factors 2, 3, 5, and 6 favored denial; factor 1 was neutral and factor 4 weighed slightly against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs slightly against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and as such, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that Petitioner does not show that Redford discloses or renders obvious the converted commands limitations of the claims. Particularly, all of the claims require that a media receiver (or computing device) receives a set of commands that is recognizable by the first type of media application and is converted (via an API adapter) to be recognizable by the first type of media playing application. To the extent that Petitioner relies on Redford’s Figure 11H for disclosing this limitation, such reliance is unavailing. Pet. 27, 40. Redford’s Figure 1H is reproduced below.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner does not explain how Redford’s Authority Server 282 of Figure 2B or Redford’s computer system 250 of Figure 3A converts the command so that the command is received by Redford’s set-top or internetenabled television 303 of Figure 3A, or how it would have been obvious to one of ordinary skill in the art to modify Redford’s system to have done so. In short, we have reviewed Petitioner’s contentions that Redford’s VideoPlay is a command that is converted at computer system 250 and that the VideoPlay command is sent to and received by television 303, but do not find such contentions supported by the cited disclosure of Redford. Pet. 28 (citing Ex. 1002 ¶ 159); id. at 40 (citing Ex. 1002 ¶ 186), id. at 51–52 (citing Ex. 1002 ¶¶ 227–228); Ex. 1005:40:56–41:2. Much of Petitioner’s contentions and Mr. Lett’s testimony rely on Redford’s disclosure of its settop API (Ex. 1005, 40:56–58), but neither Petitioner nor Mr. Lett provides sufficient evidence to show that Redford’s API converts the command at computer system 250 or at server authority 282 such that a converted command is received by television 303, as the claims require. Id. The addition of Bartfeld and/or Gonze does not remedy this deficiency. Petitioner relies on Bartfeld for teaching “creating an assigned unique identifier on a television for use by a telephone device of a user.” Pet. 16 (citing Ex. 1002 ¶ 139). Petitioner relies on Gonze for teaching that it was known that “display devices were enabled with the capability to receive information concerning any one of a plurality of media playing applications.” Id. at 30 (citing Ex. 1002 ¶ 166). Thus, Petitioner does not explain how Bartfeld or Gonze remedies the above-discussed deficiencies of Redford.” slip op. at 20
- Skill levelOther
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,086,934 - PTAB · Jul 24, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR of claims 1–20 on all three §103 challenges, finding compelling merits at least for claims 1, 12, and 17 and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” Guidance Memo 5. Board precedent provides that we should only consider the compelling merits standard if the first five Fintiv factors favor discretionary denial. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB February 27, 2023) (precedential). The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and we now assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met when “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”). In this case, we determine, for the reasons explained below in our analysis of Petitioner’s unpatentability challenges, that the Petition presents a compelling challenge at least for independent claims 1, 12, and 17.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction. In an inter partes review proceeding, we construe a claim of a patent “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Patent Owner responds that “Petitioner provides no justification for combining Danciu and Mahajan aside from a passing remark that both of them reference a mobile phone.” Prelim. Resp. 33–34. We disagree. Petitioner explains that it relies on Mahajan for “implementation details for transmission of commands for controlling a client.” Pet. 27. Petitioner further explains that an ordinarily skilled artisan would have considered applying Mahajan’s command conversion techniques in Danciu’s system because Danciu’s remote control and controlled device “would likely employ different applications.” Id. at 31. Petitioner’s proffered reasoning for combining Danciu and Mahajan is persuasive. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”); Ex. 1114 ¶¶ 22, 36 (Mahajan explaining that “includ[ing] a collaboration media abstraction layer . . . can facilitate media-related communications between the server . . . and client,” where “the client’s media platform . . . may not be the same as the server’s media platform, . . . and as such . . . may not understand the intercepted platform-specific media commands of the server”) (cited by Pet. 28). Moreover, that Danciu and Mahajan both describe “system[s] wherein a user can command media on a controlled device” and that applying Mahajan’s command conversion techniques was a known way to implement the transmission of such commands is sufficient reason for combining Danciu and Mahajan. See Pet. 27–30. Petitioner need only show that Mahajan’s command conversion techniques would have been a “suitable option” for implementation in Danciu’s system. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Patent Owner does not dispute that an ordinarily skilled artisan would have recognized that using Mahajan’s command conversion techniques would have supported the transmission of commands in systems like Danciu’s system. See generally Prelim. Resp.” slip op. at 32
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 24, 2024 · IPR2024-00323 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of review of claims 1–20, finding the Fintiv factors favored denial and the petition lacked compelling merits; it also denied based on multiple petitions.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and we now assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met when “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 13
- Parallel petitionsDenied
“and purporting to explain differences between the petitions. Paper 3. Petitioner ranks this Petition above the petition in IPR2024-00324. Id. at 1. As discussed above, we do not find that the instant Petition meets the compelling merits standard, but we find that the petition in IPR2024-00324 does meet this standard for at least one claim. Petitioner also argues that certain references are prior art under 35 U.S.C. § 102(e) that can be antedated by Patent Owner. Paper 3 at 1–2. Petitioner argues that Redford predates the ’751 patent’s earliest priority date by more than a year whereas one of the references in IPR2024-00324 only predates the ’751 by about six weeks. Id. at 2. As Patent Owner points out, however, Petitioner asserts a challenge in IPR2024-00324 that relies only on prior art under § 102(b), which cannot be predated. Paper 10 at 2. Thus, the petition in IPR2024-00324 also provides an advantage in the event of a priority dispute.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“In view of the foregoing, we determine that Petitioner’s obviousness challenges based on Redford do not meet the compelling merits standard. Petitioner does not rely on Bartfeld or Gonze to teach the “message” limitations. See Pet. 14–21 (relying on Bartfeld for limitations regarding a synchronization code); id. at 24–36 (relying on Gonze for limitations regarding selecting and controlling a first media player application). 7. Fintiv Determination On balance, the first five Fintiv factors favor discretionary denial, and the Petition does not meet the compelling merits standard of the Guidance Memo. Therefore, we determine that discretionary denial is appropriate in view of the related district court litigation.” slip op. at 22
- BurdenNot reached
“As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). On this record, we agree with Patent Owner.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751 - PTAB · Jul 18, 2024 · IPR2024-00322 · APJ Georgianna W Braden · IPR · Institution
The Board instituted inter partes review of claims 1–26 on all asserted grounds, finding compelling merits for claim 22 and declining discretionary denial under §§ 325(d) and 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” Guidance Memo 5. Board precedent provides that we should only consider the compelling merits standard if the first five Fintiv factors favor discretionary denial. CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB February 27, 2023) (precedential). The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. As set forth above, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1– 5 favors denial of institution, the Board shall then assess compelling merits.”). We note that the compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our a compelling challenge at least for independent claim 22. Thus, we decline to deny institution based on the Fintiv factors.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 21 (“[F]or the purpose of this Preliminary Response 9 Patent Owner has not introduced secondary considerations evidence. ordinary skill in the art.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“D. Claim Construction The parties do not propose express construction for any claim terms. Pet. 19; Prelim. Resp. 21. On this record, we determine that no terms need express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,356,251 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 17, 2024 · IPR2024-00321 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution of IPR on claims 1–26, finding the Fintiv factors favored denial and the petition did not meet the compelling merits standard; it also cited the parallel petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. As set forth above, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1– 5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.”” slip op. at 11
- Parallel petitionsInstitution denied discretionary otherDenied
“The record before us does not support the need for two petitions. In the related district court litigation noted above, Patent Owner has asserted only six claims of the ’251 patent (Paper 10 at 4), so this is not a situation in which “the patent owner has asserted a large number of claims in litigation.” See CTPG 59. Nor has Petitioner shown why this Petition would be preferable to a petition that has a challenge relying only on § 102(b) art, as in IPR2024-00322, should there arise a priority dispute. Thus, in addition to our reasons for denying based on Fintiv, we determine that discretionary denial is appropriate here given the institution of inter partes review in IPR2024-00322.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that there is some inconsistency in Petitioner’s contentions regarding the “programming code” recitations of claim 1. Petitioner’s contention for the storing limitation does not mention “VideoPlay” even though Petitioner identifies that as the converted command in the converting step. See Pet. 34–36. Rather, Petitioner’s contentions for the storing step focus on the URL. Petitioner does not explain how the URL is “programming code.” Petitioner relies on a portion of Figure 11H from Redford (see Pet. 34), but that figure shows in step 1153 that a server transmits a command to the content provider computer, not the television that Petitioner identifies as the “display device.” Ex. 1005, 11:36:45–50, Fig. 11H.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,356,251 - Alertus Technologies, LLC v. Desktop Alert, Inc.Institution deniedPTAB · Jun 28, 2024 · IPR2024-00363 · APJ Andrew L Nalven · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . 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 that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although claims 1 and 10 recite slightly different language, both clearly recite a “first triggering step” that precedes two subsequent polling steps. In the case of claim 1, the “first triggering step” precedes the “second step” and “fifth step.” See id. The explicit use of “second” and “fifth” supports limiting the steps to the recited order. See Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (“[A] claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” (cleaned up)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have (i) a bachelor’s degree or equivalent in electrical engineering, computer engineering, network engineering, computer science, and/or a related field and (ii) 1-3 years of experience relating to computer and networking systems and/or methods including systems and methods for messaging.” Pet. 4–5 (citing Ex. 1003 ¶¶ 25–26). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“with Patent Owner that Dillon discloses time-stamps as “alternatives.” Prelim. Resp. 21 (citing Ex. 1005, 4:36–41). Dillon explains that “[t]he time-stamp . . . may represent the status of the subscriber’s e-mail account in various ways . . . [m]ost commonly, it is an indication of an actual time.” Ex. 1005, 7:19–21. However, Dillon explicitly states that “[a]lternatively, a time-stamp may be a number, such as a version number . . . or it may be a binary indication of whether or not e-mail . . . has been received.” Id. at 7:23–28 (emphasis added). Petitioner has not identified any portion of Dillon that suggests using more than one type of time-stamp in the same process. See generally Pet. 30–36. Dillon’s lack of disclosure of using multiple time-stamps appears consistent with Dillon’s description of the time-stamp as providing “the status of the subscriber’s e-mail account.” Ex. 1005, 7:19–21. Each disclosed alternative — time, version number, or binary indication — provides status information for the same purpose, namely, to indicate “whether or not e-mail for the given e-mail alert service subscriber has been received by the e-mail server 12 at any given time.” Id. at 7:27–29, 9:7–17. Because each of Dillon’s alternatives for a time-stamp serves the same purpose, we are not persuaded that Petitioner has provided sufficient reasoning to demonstrate that a POSITA would have been motivated to modify Dillon to both add a new polling step requesting a first time-stamp as a Boolean time-stamp and then request a second time-stamp as a version number or time indication. Indeed, Petitioner’s asserted rationale to modify Dillon here is conclusory and fails to explain sufficiently how using a second time-stamp will achieve the asserted benefits of reducing messaging bandwidth or uniquely identifying a particular message. See Pet. 31. Because Dr. Mangione-Smith’s declaration testimony mirrors Petitioner’s argument, his supporting testimony is similarly insufficient. Compare Pet. 31, with Ex. 1003 ¶ 62. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,172,765 - Dropbox, Inc. v. Entangled Media, LLCInstitution deniedPTAB · Jun 6, 2024 · IPR2024-00285 · APJ Donald E Daybell · IPR · Institution
The Board denied institution because Dropbox did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Conclusion as to Claim 1 Based on the present record, Petitioner has not shown sufficiently that Havewala teaches at least the following limitations of claim 1: 1. “intercepting the request by a software client on the first device;” and 2. “determining by the software client if the file is physically located on the first device or if the file is a virtual file of a corresponding file physically stored on a second device by reviewing file metadata.” Petitioner does not identify any teachings from Adams that bear on these limitations. Therefore, Petitioner does not demonstrate a reasonable likelihood of success that it would prevail in showing that claim 1 is unpatentable.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“At this juncture, the parties only appear to dispute the educational background in the definition of the level of ordinary skill in the art. The only evidence in the present record regarding the educational background consists of Dr. McDaniel’s declarations in this case and in the underlying litigation. See Ex. 1003 ¶ 21; Ex. 2001, 14–15. We agree with Patent Owner that both of these declarations support that a person of ordinary skill in the art would have had either a bachelor’s or a master’s degree in computer science or electrical engineering or a related degree. Prelim. Resp. 2–3. Moreover, Petitioner does not explain why a master’s degree is necessary. Thus, we revise Petitioner’s proposed definition to conform to Dr. McDaniel’s testimony. We additionally remove the qualifier “at least” from Petitioner’s proposed definition, because this qualifier introduces ambiguity. Thus, for purposes of this Decision, we apply the following definition of the level of ordinary skill in the art: a POSITA would have been a person holding a bachelor’s degree or a master’s degree in computer science or electrical engineering or a related degree, with two years of training or experience with networking and file systems. This definition appears to be consistent with what is reflected by the content of the applied prior art references as well. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We note, however, that our analysis below would not change even if we adopted Petitioner’s definition as stated in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asserts that it “does not propose that any terms require construction.” Pet. 11. Similarly, Patent Owner asserts that it “does not propose that the Board expressly construe any claims.” Prelim. Resp. 4. For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 11
- BurdenNot shown unpatentable
“The instant limitation recites “intercepting the request,” which relies for its antecedent basis on the “accepting a request” limitation recited above. Therefore, this claim requires that the same “request” be both accepted and intercepted. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (noting that definite articles such as “the” and “said” create anaphoric phrases that refer to the initial antecedent phrase, and do not alter the meaning of the antecedent “in the slightest”). Petitioner, however, fails to identify any “request” that is both “accepted” and limitation, Petitioner relies on the “open” message sent to the file system as the recited “request” that is accepted. Id. at 20–22. For the “intercepting the request” limitation, however, Petitioner relies on an error message sent back from the file system to the application as the recited “request” that is intercepted. Id. at 33. Thus, Petitioner points to two different features of Havewala for teaching the same required “request” in claim 1. This is fatally inconsistent. Therefore, Petitioner fails to adequately demonstrate that Havewala teaches that the same “request” is first accepted and then intercepted, as required by the claim. Even were we to overlook the inconsistency in Petitioner’s analysis, Petitioner still fails to establish that Havewala teaches the claimed “request to operate on a file.” Petitioner relies for this limitation on an error message generated by the file system as the claimed “request.” Pet. 33. This error message, however, is not a “request to operate on a file,” as claimed. This error message is instead a response generated by the file system to a request from the application or operating system to open a file. Ex. 1005 ¶ 64. The response indicates that the request cannot be fulfilled because the target file has no data. Id. Havewala discusses its messaging paradigm with reference to Figure 6, which is excerpted below: steps performed in reconstituting a ghosted file from the sink. See Ex. 1005 ¶ 27. This excerpt depicts steps 601, 603, and 605. At step 601, the file system 16 receives an open command from an application 30. Id. ¶ 67. In this step, the “file system . . . notes that the ghosted file 14 does not contain the removed data 20.” Id. ¶ 68. Then, after the open command has already been received and processed by Havewala’s file system, the file system returns an error at step 603. Id. at Fig. 6. This “returned error” is what is intercepted by the ghosting filter 26, at step 605. Id. ¶ 68, Fig. 6. Figure 6 of Havewala and the associated text at paragraphs 67 and 68 demonstrate that the error message that is intercepted by Havewala’s ghosting filter is not a request; instead, it is a response to the “open” request. Petitioner’s argument that an error message is the claimed “request” is therefore unsupported by the evidence of record.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,484,260 - Dropbox, Inc. v. Entangled Media, LLCInstitution deniedPTAB · Jun 6, 2024 · IPR2024-00284 · APJ John A Hudalla · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, Petitioner has not shown that the combination of Aboulhosn and Phillips teaches “the virtual files [being] indistinguishable from the local files by the local file system,” as recited in claim 1. We additionally note that the same deficiencies discussed directly above infect Petitioner’s rationale for combining Phillips with Aboulhosn. Specifically, Petitioner contends that an ordinarily skilled artisan seeking “a smoother and more seamless user experience with Aboulhosn’s system” would have been motivated to incorporate “Phillips’s visual indistinguishability feature (i.e., displaying virtual files to the user in the same way as local files).” Pet. 54–55. Petitioner characterizes this alleged feature as “provid[ing] the perception that all the shared files are synced/stored locally.” Id. at 55. Yet Phillips’s virtual files are stored in a virtual drive that is segregated from local files. See Ex. 1006, 13:64–15:7, Fig. 4. As such, Phillips’s virtual files are visually distinguishable because they are located in that separate virtual drive, i.e., “the network connected storage device ‘F’” known as “Lets Work on ‘@v-drive.’” See id. Thus, we do not agree that Phillips’s presentation of virtual files in a separate virtual drive would have motivated an ordinarily skilled artisan to combine Phillips with Aboulhosn in the manner suggested by Petitioner. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Aboulhosn and Phillips.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner
“The ’338 patent Specification both disparages certain prior art file systems and indicates the criticality of certain transparency features. Specifically, the ’338 patent acknowledges prior art systems where “the data on separate devices is kept separated when synchronized-local data is stored in a set of locations within the operating system’s native file system” and where “remote data on other devices or other online services is kept in a new location such as a new directory/folder or secondary location (e.g., removable hard drive) mounted on the device.” Ex. 1001, 1:58–65. In contrast to this prior art, the ’338 patent states that it is “[c]ritical to the unique nature of this system” that its shared file system is “totally transparent, not requiring the user to interact with software, nor distinguish files in local vs. remote locations.” Id. at 5:24–26. Indeed, the ’338 patent describes the invention in direct contrast to the prior art insofar as “the local operating system’s file system [is] modified to include remote files in the same locations of the local device (such as the ‘My Documents’ folder) as opposed to a separate and segregated location for such remote data (such as a synchronization folder or an additional hard drive ‘mounted’ on the device).” Id. at 6:25–30 (emphasis added). Furthermore, remote or virtual files in the disclosed system are visually represented “as if the files were indeed local, allowing the user to operate on them as if they were local to the device,” thus making their appearance “indistinguishable” from that of local files. Id. at 6:30–36. We find that these disclosures, taken together, indicate a disavowal of claim scope as to file systems where remote or virtual files are kept in a separate location, such as in a separate folder, device, or drive. See SciMed, 242 F.3d at 1341–43. For similar reasons, we find that remote or virtual files that are kept in a separate folder, device, or drive are not “indistinguishable” from local files as that term is used in the claims of the ’338 patent.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“above infect Petitioner’s rationale for combining Phillips with Aboulhosn. Specifically, Petitioner contends that an ordinarily skilled artisan seeking “a smoother and more seamless user experience with Aboulhosn’s system” would have been motivated to incorporate “Phillips’s visual indistinguishability feature (i.e., displaying virtual files to the user in the same way as local files).” Pet. 54–55. Petitioner characterizes this alleged feature as “provid[ing] the perception that all the shared files are synced/stored locally.” Id. at 55. Yet Phillips’s virtual files are stored in a virtual drive that is segregated from local files. See Ex. 1006, 13:64–15:7, Fig. 4. As such, Phillips’s virtual files are visually distinguishable because they are located in that separate virtual drive, i.e., “the network connected storage device ‘F’” known as “Lets Work on ‘@v-drive.’” See id. Thus, we do not agree that Phillips’s presentation of virtual files in a separate virtual drive would have motivated an ordinarily skilled artisan to combine Phillips with Aboulhosn in the manner suggested by Petitioner. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Aboulhosn and Phillips.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“that Aboulhosn does not teach “the virtual files [being] indistinguishable from the local files by the local file system.” Pet. 44–45. To fill this gap, Petitioner relies on, inter alia, Phillips’s teachings of virtual files appearing to be the same as local files and appearing to be locally present. Id. at 45 (quoting Ex. 1006, 6:34–36, 14:62–66). Yet Phillips’s virtual storage device and its contents are segregated from local files in Phillips’s display window 1000. See Ex. 1006, 13:44–50, Fig. 4 (discussing and depicting “entry 1034 for the network connected storage device ‘F’” known as “Lets Work on ‘@v-drive’” and its corresponding files 1042 and folders 1044 displayed in sub-window 1040). Thus, virtual files in Phillips’s system are not stored in the same location as local files.6 Because Phillips’s virtual files are stored in a virtual storage device that is separated from Phillips’s local files, those virtual files are not “indistinguishable from the local files by the local file system,” as is recited in claim 1. Petitioner cites Phillips for teaching that “the virtual storage device and its contents . . . appear[], to the client node user . . . to be locally present” and “behave . . . as if locally present on the client nodes.” Pet. 45– 46 (quoting Ex. 1006, 9:36–39, 14:62–66). Based on this, Petitioner contends that an ordinarily skilled artisan “would have understood Phillips 6 We acknowledge that Petitioner relies on Aboulhosn, not Phillips, for teaching “virtual files stored in the same locations as local files of the local file system.” See Pet. 43–44. However, as we discuss below, the fact that Phillips’s system stores virtual and local files in different locations means that Phillips’s virtual files are not “indistinguishable” from the local files by the local file system. to teach that its virtual files appear indistinguishable from local files, including file extensions.” Id. at 46 (citing Ex. 1003 ¶ 151). Yet the patentees of the ’338 patent disavowed coverage for the term “indistinguishable” as applied to virtual files stored in a separate location, such as a separate folder, device, or drive. See supra § II.C. And that is exactly what Phillips teaches. See, e.g., Ex. 1006, 13:64–15:7, Fig. 4. We agree with Patent Owner (Prelim. Resp. 16–18) that Phillips’s virtual files are distinguishable from local files by the local file system because they are stored separately in the virtual F: drive/storage device. See Ex. 1006, 13:64– 15:7, Fig. 4. Further, we do not credit Dr. McDaniel’s testimony as establishing that virtual files in Phillips are “indistinguishable” (as that term is understood in the ’338 patent (see supra § II.C)) because he includes no reasoning showing why an ordinarily skilled artisan would have interpreted Phillips’s teachings as extending beyond files in a segregated virtual drive appearing to be locally present. See Ex. 1003 ¶¶ 149–151.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,296,338
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.