- PTAB · Sep 15, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented before and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) 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; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a). For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’654 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. § 325(d) Conclusion For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’654 Patent claims. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. 26 IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 26
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Chu ’886 was not included in any of the applications in the ’654 patent priority chain before the amendments in the ’138 application, the earliest possible priority date for any of the ’654 patent claims relying on this subject matter for written description support under § 112, ¶ 1, is the filing date of the ’108 application, i.e., November 10, 2011, “the earliest possible priority date for any of the ’654 Patent claims relying on this subject matter.” Pet. 15−17. However, the amendments to the ’138 application were proper because, as discussed above, when claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 25 material, Patent Owner submitted an amendment to explicitly set forth the material in the specification in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010). See Prelim. Resp. 28−33. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’654 patent priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’654 patent is November 10, 2011.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denial - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentablePTAB · Aug 17, 2021 · IPR2020-00512 · APJ John R Kenny · IPR · Final written decision
Claim 2 is unpatentable as obvious over Swift, Ricquier, and Suzuki; the Board did not reach the alternative ground involving Larson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party identifies any material differences between a skill level corresponding to approximately two years of professional experience in the field of imaging devices and approximately three years of professional experience in the field of visible optical imaging devices, or any difference in the field of imaging devices and the field of visible optical imaging devices. On this record, there is none. We determine that the level of ordinary skill in the art is at the level of one who would have had a Bachelor’s degree in Electrical Engineering, Physics, or a related field, and approximately two to three years of professional experience in the field of visible optical imaging devices.6 This definition is consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep the specified level of skill more definite.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We also are guided by the principle that we only construe claim terms if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party requests the construction of any claim term. Pet. 13; PO Resp. 12. Further, we do not find that any claim term requires express construction. III.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Dr. Neikirk’s testimony is rational, and we credit his testimony over the testimony of Patent Owner’s inventor, who provides no explanation as to why it was purportedly unexpected that, as compared to CCD devices, a CMOS imager with remotely located processing circuitry requires no RFI shielding. For the foregoing reasons, Patent Owner has not established that the alleged unexpected result would have been unexpected to an ordinarily skilled artisan. Further, even assuming the alleged unexpected result truly would have been unexpected to an ordinarily skilled artisan, Patent Owner has not shown sufficient nexus between the unexpected result and the claimed invention.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable
“Accordingly, there is no presumption of nexus, and Patent Owner has not separately proved the required nexus for the alleged licensing and commercial success. Thus, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 14
Patent outcomesUS 9,186,052 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,186,052 - Renesas Electronics Corporation v. Broadcom CorporationAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01040 · APJ Norman H Beamer · IPR · Final written decision
Claims 1 and 9–14 are unpatentable as obvious; the motion to amend is denied for substitute claim 15 and granted for substitute claims 16–19.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of claims 1 and 9–14. Paper 9 (“Institution Dec.”). In the Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would prevail as to the challenged claims, and we instituted trial on all challenged claims and all grounds in the Petition. Institution Dec. 35.” slip op. at 2
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner contends that “a person of ordinary skill in the art” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Accordingly, we construe “configurable” in this context to mean” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, based on our review of the record and the parties’ submissions, we determine that the record establishes that each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as claimed, and that Fandrianto ’459 would have taught the second limitation of claim 1. d) Claim 1 Summary In sum, based on our review of the record and the parties’ submissions, we determine that the record establishes that RISC microprocessor 220 disclosed in Fandrianto ’459 is a “processor,” as required by claim 1, and each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as required by that claim. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that claim 1 of the ’844 patent would have been obvious in light of Fandrianto ’459.” slip op. at 33
Patent outcomesUS 8,284,844 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,284,844 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing
Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,515,825 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01012 · APJ Patrick M Boucher · IPR · Rehearing
Granted Petitioner’s rehearing request and held claims 1–3, 5, 7–8, 11–13, 15, 17, and 18 unpatentable, including claims 4, 5, 12, and 13 over the Digital River Publications.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.”” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 4 is met by the Digital River Publications.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,043,228 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01011 · APJ Patrick M Boucher · IPR · Rehearing
Petitioner’s rehearing request was granted; claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 were held unpatentable over the listed grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- Expert testimonyPetitioner expert creditedOther
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’876 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,639,876 - ROKU, Inc. v. Universal Electronics, Inc.Institution deniedPTAB · Mar 16, 2020 · IPR2019-01608 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that claim 10 was unpatentable over any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION We have reviewed the Petition and Preliminary Response and have considered all of the evidence and arguments presented by Petitioner and Patent Owner. We find, on this record, Petitioner has not demonstrated a reasonable likelihood of showing claim 10 of the ’532 patent is unpatentable. V. ORDER Accordingly, it is hereby: ORDERED that the Petition is denied and no inter partes review is instituted.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“But Petitioner contends that the claimed automatic creation is consistent with the process that the ’532 Patent describes as “manually” creating a macro—the programming by a user of a sequence of actions to be assigned to a single button as shown in Figures 22a–22g and related disclosure. Pet. 8–9 (citing Ex. 1001, 24:7–47, Figs. 22a–22g; Ex. 1011 ¶ 47). Patent Owner argues that a proper understanding of the claim term should not encompass manually created macros, which in the ’532 Patent are distinct from “automatically or semi-automatically” created macros. See Prelim. Resp. 17–18 (citing Ex. 1001 23:67–24:10; Ex. 2001 ¶¶ 93–103). We agree with Patent Owner. The Specification describes “two types of macros”—one “system generated” (automatically or semi-automatically) and one “user generated” such as a macro created when “the user . . . enter[s] a sequence of keystrokes to be stored as a macro.” Ex. 1001, 23:66– 24:10, 24:25–29, 19:67–20:19. Petitioner does not show support for a construction that would encompass the manually-created macros that are specifically described as distinct from the “automatically or semi-automatically” created macros. For these reasons we decline to adopt either proposed construction. Instead we determine that a macro generated when a user “manually program[s] a sequence of actions to be assigned to a single button such that that sequence can be repeated by a press of the single button” (Ex. 1001, 24:7–10) is not encompassed by the claim limitation. Beyond this, we do not deem it necessary to adopt a specific construction to resolve the controversy. Vivid Techs, 200 F.3d at 803.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner reviews and advocates for adoption of the District Court’s determinations and reasoning. Prelim. Resp. 21–22. The District Court’s construction was based on its determination that, as this term relates to “the automatically created sequence of instructions” (emphasis added), the method step of limitation [10.3] must temporally follow the step of limitation [10.2], in which a program is used “to automatically create the sequence of instructions.” Ex. 1012, 46–47 (“Claim 10 . . . requires creating a sequence of instructions first and executing that automatically created sequence of instructions second.”). Thus, the District Court determined that “these claim limitations support that a user first interacts with an interface to create a sequence of instructions, and then separately executes those ‘automatically created’ instructions by pressing a particular button on the controlling device.” Id. at 47. Petitioner’s arguments address what the impact of adopting the proposed construction would be, but Petitioner does not propose an alternate construction. Pet. Reply passim. We agree with the District Court’s determination that the step of “causing the automatically created sequence of instructions to be executed …” ([10.3]) must occur after the creation in the “using a program to automatically create the sequence of instructions . . .” limitation ([10.2]), and the balance of the District Court’s reasoning. We construe “selection of a user input element” as “selection of a user input element separate from the one or more user interactions involved in creating the sequence of instructions.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“motivated to combine Humpleman and Walkenbach, but does not address Petitioner’s discussion of the motivation. Prelim. Resp. 41–42; see Pet. 29– 30. More persuasively, Patent Owner argues that “Humpleman describes the exact type of manual entry of steps by a user successfully distinguished from the prior art during prosecution.” Prelim. Resp. 42–43; see id. at 36. We agree. Humpleman teaches that the player piano macro “save[s] the particular steps taken by a user while interacting with the device’s HTML pages” and “[w]hen the player piano macro executes, it performs the particular sequence of instructions as if the user was accessing the respective home device HTML page(s) and executing the sequence of steps directly.” Ex. 1003, 30:26–33. We determine that a macro generated when a user “manually program[s] a sequence of actions to be assigned to a single button such that that sequence can be repeated by a press of the single button” is not encompassed by the proper construction of limitation [10.2]. See supra § III.C.a. Even if, as Petitioner argues, a combination of Humpleman and Walkenbach would teach or suggest that the particular steps taken by the user to be repeated later would be stored in the form of computer code, this distinction does not change the fact that Petitioner relies upon Humpleman’s teachings regarding a user manually programming a sequence of actions which is repeated when the macro is selected, which is excluded by our construction from teaching or suggesting limitation [10.2]. Therefore, Petitioner does not demonstrate a reasonable likelihood of showing claim 10 is unpatentable over the combination of Humpleman and Walkenbach.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,895,532 - Google LLC / ZTE (USA), Inc. et al. v. Cywee Group Ltd.All claims unpatentablePTAB · Feb 12, 2020 · IPR2018-01257 · APJ Patrick M Boucher · IPR · Final written decision
Claims 10 and 12 are unpatentable as obvious over Zhang and Bachmann and over Liberty and Bachmann; the motion to amend and both motions to terminate are denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“B. Analysis Under 35 U.S.C. § 315(b), we may not institute an inter partes review” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“B. Analysis Under 35 U.S.C. § 315(b), we may not institute an inter partes review” slip op. at 15
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Denied
“addition, Patent Owner filed a First Motion to Terminate this proceeding based on Petitioner’s alleged failure to identify all real parties in interest and/or privies. Paper 40 (“Mot. Term.”). Petitioner opposed Patent Owner’s Motion to Terminate (Paper 51, “Opp. Term.”), Patent Owner replied (Paper 65, “Reply Term.”), and Petitioner sur-replied (Paper 72, “Sur-reply Term.”).2 Subsequent to the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), we authorized Patent Owner’s request to file a Second Motion to Terminate to preserve Patent Owner’s positions related to the Constitutional concerns raised by that decision. Paper 823 (Second Mot. Term.). To this, Petitioner filed an opposition. Paper 86. An oral hearing was held with the parties, and a copy of the transcript was entered into the record. Paper 73 (“Tr.”).” slip op. at 3
- Skill levelOther
“B. Level of Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 42
Patent outcomesUS 8,552,978 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,552,978 - Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentablePTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand
Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.
RulingsRemand decision- RemandOther
“After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as including the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology,” and “educational level of active workers in the field”). “In a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached
“C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17
Patent outcomesUS 7,075,585 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,075,585 - Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing deniedPTAB · Apr 3, 2019 · IPR2018-00658 · APJ John P Pinkerton · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claim 1 because JVT-B045 did not teach or suggest the claimed periphery-based determining function.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place 1 In Ground 1, Petitioner asserts claim 1 is unpatentable under 35 U.S.C. § 103 over the combination of H.324, H.263, and JVT-B045. Pet. 47–66. where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,769,238
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.