- PTAB · Jul 20, 2023 · IPR2023-00382 · APJ Karl D Easthom · IPR · Institution
The Board instituted inter partes review of claims 19–29 on all asserted § 103 grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent art at the time of the effective filing date of the claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in the art is a hypothetical person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art include the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. One or more factors may predominate. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Petitioner relies on the ordinary and customary meaning under Phillips. Pet. 7–8. At this stage, it is not necessary to construe explicitly any claim terms, because any explicit construction would not alter the outcome. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obviousness showing for purposes of institution. Accordingly, we determine that Petitioner shows a reasonable likelihood that it would prevail with respect to its contention that claim 19 would have been obvious over Knappe, Elliott, VPN Textbook, and Hendricks.” slip op. at 32
Claim constructioncites KSR · GrahamPatents in suitUS 9,843,612 - PTAB · Jul 20, 2023 · IPR2023-00380 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 10–18 based on the § 103(a) obviousness ground over Drell, Knappe, Elliott, Hendricks, and Doganata.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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 set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the ’612 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The subject matter of the ’612 patent generally relates to the technical field of audio/video conferencing systems. A Person of Ordinary Skill in the Art (“POSITA”) in March 2003 would have had a working knowledge of the conferencing art. Ex._1003 ¶ 27. A POSITA would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and three or more years of professional experience relating to conferencing systems in packet-based networks, or without said professional experience, further education relating to conferencing systems in packet-based networks. Id. ¶¶24–27.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner relies on the ordinary and customary meaning under Phillips. Pet. 7–8. At this stage, it is not necessary to construe explicitly any claim terms, because any explicit construction would not alter the outcome. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“on Elliott as supplementing Drell’s teachings “by showing that it was known, when using an ‘Internet Protocol-based (IP-based) network 18 for multi-media collaboration,’ to secure the communications using a ‘virtual private network (VPN) . . . which uses IP or IP-tunneling.’” Pet. 32 (quoting Ex. 1007, 4:11–32; citing Ex. 1007, 2:66–32 (“Multi-media collaboration” includes “voice, fax, data, video, etc.”)). Therefore, Petitioner contends, “[i]t would have been obvious . . . to utilize VPN tunneling in Drell’s system for communicating audio and video data over Drell’s Internet network 106 because it would secure communications in Drell’s system.” Id. at 32–33 (Ex. 1003 ¶¶ 158–172, 194–195). Finally, Petitioner relies on Hendricks as supplementing “Drell’s” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,843,612 - PTAB · Jul 20, 2023 · IPR2023-00377 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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 set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to all challenged claims of the ’332 patent on the grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“working knowledge of the available audio and video conferencing art. Ex_1003 ¶27. A POSITA would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and three or more years of professional experience relating to conferencing systems in packet-based networks, or without said professional experience, further education relating to conferencing systems in packet-based networks. Id. ¶¶24-28.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner relies on the ordinary and customary meaning under Phillips. Pet. 9–10. Based on the current record and without any opposition from Patent Owner, we discern no need for express construction of any term to resolve any controversy at this stage of the proceeding.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“3:41–49, Fig. 1; Ex. 1007, code (57), 5:35–39, 6:1–11, 8:16–39, Fig. 1). Further, Petitioner argues, the person of ordinary skill “would have been motivated to combine the teachings of Knappe and Elliott to produce . . . obvious, beneficial, and predictable results,” including “the sharing of collaboration data in a multiparty conference” and “the use of a VPN to protect communications between conference participants.” Id. at 21–25 (citing Ex. 1003 ¶¶ 136, 138–153). For example, Petitioner argues, “[e]xchanging collaboration data was standardized (e.g., under the T.120 standard) and VPN tunneling was conventional by the time of Knappe and Elliott and the earliest claimed priority of the ’332 patent,” and “implement[ing] Knappe’s transmission of various types of data as collaboration data” “would have been obvious . . . in view of Elliott’s teachings . . . because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Id. at 22 (citing Ex. 1003 ¶¶ 140–141). Still further, Petitioner contends, “[s]uch a combination would have simply involved combining prior art element according to known elements to yield predictable results, namely allowing participants in Knappe’s system to share various types of data during a conference for collaboration purposes.” Id. at 23 (citing Ex. 1003 ¶ 144). On the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner provides a rational underpinning to support combining the teachings of Knappe and Elliott and makes a sufficient showing with respect to this limitation.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,253,332 - PTAB · Jul 19, 2023 · IPR2023-00371 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–10 based on a reasonable likelihood that claims 1 and 3–7 are obvious over Knappe, Elliott, VPN Textbook, and de Moraes, and claims 2 and 8–10 over those references …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We analyze the asserted grounds of unpatentability in accordance with these principles to determine whether Petitioner has met its burden to establish a reasonable likelihood of success at trial.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter of the ’997 patent and the references, we apply Petitioner’s description of an ordinarily skilled artisan in this Decision.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As Knappe and Elliott both address multiparty conferencing and disclose similar systems, as discussed above, we find that, for purposes of this Decision, Petitioner has demonstrated an ordinarily skilled artisan would have had reason to combine the teachings of Knappe and Elliott. In particular, we find that a person of ordinary skill would have had reason to use Elliott’s VPN tunneling approaches to improve the performance of systems taught by Knappe.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. 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)). Neither party has proposed a special definition or explicit construction of any claim term. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,339,997 - PTAB · Jun 30, 2023 · IPR2023-00646 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–12 over all petition grounds and granted AT&T’s motion to join IPR2022-01212, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary 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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’338 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1003). Mot. 1, 4–5. Petitioner also represents that joinder will not impact the Ericsson IPR schedule. See, e.g., Mot. 6 (“[A]llowing [Petitioner] to assume an understudy role to Ericsson, will also have little, if any, impact on the Ericsson IPR because no new grounds will be added, the schedule will not be affected, no additional briefing or discovery will be required, and no additional burdens will be placed on Patent Owner.”).” slip op. at 10
NonePatents in suitUS 8,682,338 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00342 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that claims 1 and 10 would be obvious over Lebrun and Wang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, 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 re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Expert testimonyDecided for patent owner
“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Patent Owner is correct that Dr. Lieberman’s CV on its face does not include two years in a position titled as software developer, web-based developer, or the like. See generally Ex. 1004. Dr. Lieberman, however, has a degree in “Informatique” from the University of Paris VI (Sorbonne), as Patent Owner acknowledges (Prelim. Resp. 34), and this degree is in addition to Dr. Lieberman’s Bachelor of Science degree from the Massachusetts Institute of Technology (MIT). Ex. 1004, 12–13. This University of Paris VI (Sorbonne) degree is additional education beyond the required bachelor’s degree and could have substituted for some amount of professional experience, as we note in our determination of the level of ordinary skill for this institution decision in Section II.A. slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“creation message to the group-surfing server 140 to create a group-surfing session (Ex. 1005, 32:9–11), a second web client 110 can “add itself to the session” by sending “a session-join message 151 to the group surfing server 140” (id. at 33:2–3). The session creation message sent by second web client, which corresponds to the recited guest device, is sufficient to teach or suggest detecting an activation associated with the synchronized browsing session at this preliminary juncture. Lebrun differs from the detecting limitation in that it does not expressly describe that the session creation message is sent by activating a hyperlink. However, Wang’s description of a second client device joining a group session via the myURL address is sufficient at this preliminary stage to address the deficiency in Lebrun. On this preliminary record, Petitioner’s showing of a rationale to combine Lebrun and Wang is also sufficient for purposes of institution. Specifically, the proffered reasoning that utilizing Wang’s designated URL address to activate a session join invitation would enable Lebrun’s group-surfing server to coordinate and manage the group-surfing session and further Lebrun’s goal of providing improved group access to web sites (see Pet. 25), is sufficient at this early stage. Patent Owner does not address Petitioner’s showing as to this limitation. See generally Prelim. Resp.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,527,591 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Institution
Instituted IPR of claims 1–16 on all asserted grounds after finding a reasonable likelihood that Lebrun and Wang render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 34. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner arguments regarding the asserted grounds of unpatentability, however, raise particular claim scope contentions, particularly regarding “information related to the shared web browsing interaction” recited in each of the independent claims. We preliminarily address issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be too narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web- based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may more often find it easier to understand and soundly explain the teachings and suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 58
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Institution
Instituted review of claims 1–18 on all asserted grounds because the petition showed a reasonable likelihood that at least one challenged claim was obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be overly narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web-based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 32. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner particular claim scope contentions regarding “web browsing interaction data” recited in each of the independent claims. We preliminarily address those issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145 - Vivint, Inc. v. SB IP Holdings LLCInstitutedPTAB · Jun 15, 2023 · IPR2022-01449 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on all challenged claims and all petition grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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 set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the ’644 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) for the ’644 patent is generally one who has a Bachelor’s degree in computer science, electrical engineering, or a related field, with two years of experience in audio and/or video processing, networked communication systems, sensor systems, and/or remote monitoring systems. Pet. 5 (citing Ex. 1002 ¶¶ 21–24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’644 patent specification.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner relies on the plain and ordinary meaning under Phillips. See Pet. 6. At this stage, it is not necessary to explicitly construe any claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- BurdenInstituted
“As summarized above, the preliminary record supports Petitioner’s obviousness showing for purposes of institution. Accordingly, we determine that Petitioner shows a reasonable likelihood that it would prevail with respect to its contention that claim 1 would have been obvious over Jae, Menard, Monroe, and Vaios.” slip op. at 29
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,193,644 - Google LLC v. Wildseed Mobile, LLCInstitutedPTAB · Jun 6, 2023 · IPR2023-00248 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–14 based on the §103 combination of Frerichs, Kawasaki, and Kauffman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary for Claim 1 We determine that Petitioner has shown a reasonable likelihood of establishing the unpatentability of claim 1 as obvious in view of Frerichs, Kawasaki, and Kauffman. On that basis, we determine that the information presented in the Petition demonstrates a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable and that inter partes review should be instituted.12” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends, “a POSITA would have been motivated to combine the teachings of Frerichs and Kawasaki.” Pet. 37 (citing Ex. 1003 ¶¶ 69–79), see also id. at 27–30. Petitioner asserts that “it would have been obvious, beneficial, and predictable to apply to Kawasaki’s teachings of profiling users based on scanning their received content information into Frerichs’ selection of an advertisement for a user” and “the combination of Kawasaki’s teachings with Frerichs would improve the targeted advertising in Frerichs.” Id. at 27–28. Petitioner points to specific teachings in both Frerichs and Kawasaki that would have motivated a skilled artisan (“the references provide an express teaching, suggestion, or motivation to combine the teachings”) to combine their teachings. See Pet. 27–30. For example, Petitioner argues that “[t]his combination would, for example, achieve the benefits expressly stated by Kawasaki of ‘provid[ing] a higher User response rate’ for advertisements by improving ‘the match between User interests and Advertisers’ messages’” and “the combination would provide for the inclusion of ‘other information which can be used to provide a more desirable advertisement or information to the user’ in Frerichs’ user profile, as Frerichs states.” Id. at 27–28 (citing Ex.1004, 15:48–50; Ex.1005, 2:48–51, 2:58–59). Petitioner also provides a showing that “[a] POSITA would have had a reasonable expectation of success in combining the teachings of Frerichs and Kawasaki, and more specifically, in using Kawasaki’s techniques of scanning content received by a user to develop a user profile. Kawasaki contemplates applicability to a wide variety of client devices.” Id. at 29.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Prelim. Resp. 13–17. However, Patent Owner’s argument is based on an overly narrow interpretation of this limitation and the method of claim 1, especially as it relates to the claim term “a message.” Ex. 1001, 12:23 (emphasis added). Patent Owner contends that, because this limitation recites “a message,” it should be interpreted to require information taken from one, particular message. Prelim. Resp. 13–17. Specifically, Patent Owner argues that “Kawasaki discloses analyzing messages and other types of data in bulk and over a period of time to create aggregated results that indicate a ‘strong interest’ ‘over time’” and “Kawasaki does not focus on any particular message.” Id. at 15. But, it is “well-established precedent” that the use of “a” in a claim generally means “one or more.” See 01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012).10 Thus, Patent Owner misinterprets “a message” as recited in claim 10 The Federal Circuit in this case stated, “[a]s a general rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or more.’ The exceptions to this rule are extremely limited: a patentee must evince a clear intent to 1. Properly interpreted, this limitation recites using information from one or more messages. And, as discussed above, Petitioner argues and shows that Kawasaki teaches using information from one or more messages as recited in claim 1. See Pet. 39 (citing Ex. 1005, 5:61–65).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Factor 4: overlap between issues raised in the petition and in the parallel proceeding Petitioner stipulates that “it will not pursue in the parallel [California] litigation the grounds raised in the Petition.” Pet. Reply 3. Patent Owner argues that “[a]s in Sand Revolution, this factor at best ‘weighs marginally in favor of not exercising discretion to deny institution.’” PO Sur-reply 3 (quoting Sand Revolution, Paper 24 at 11–12). As indicated above, the Western District of Texas recently granted the parties’ transfer motion, there is no trial date set yet, and any trial for the California litigation likely will occur about a year after any final written decision is due here (i.e., June 2024). Therefore, under 35 U.S.C. § 315(e)(2), Petitioner likely will be estopped from raising an invalidity defense in the California litigation based on a “ground that the petitioner raised or reasonably could have raised” here, thereby precluding any overlapping and conflicting findings with respect to the instant proceeding. Under a holistic analysis, not only does Petitioner’s stipulation “mitigate[] to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions,” see Sand Revolution, Paper 24 at 12, Patent Owner does not show that duplicative efforts or conflicting District Court findings related to substantive invalidity issues are likely to occur due to the estoppel effects of 35 U.S.C. § 315(e)(2). Therefore, this factor weighs against exercising discretion to deny” slip op. at 35
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,376,414
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.