- PTAB · Sep 19, 2022 · IPR2022-00534 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–12, and 18–28 on all asserted grounds, finding a reasonable likelihood of prevailing on the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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 determine that institution of inter partes review of claims 1, 2, 4–12, and 18–28 is warranted.” slip op. at 2
- BurdenDecided for petitioner
“We disagree with Patent Owner. Dowling discloses that modified fixture 2000 could be recessed, such that housing 2402 is concealed behind a ceiling. Ex. 1007 ¶ 9; see id. ¶¶ 11–12, 106–107, 114. On this record, we are sufficiently persuaded that when modified conventional lighting fixture 2000 of Dowling is recessed as taught by Dowling, a person of ordinary skill would have inverted the fixture as contended by Petitioner, such that fixture housing 2402 is concealed behind a ceiling. We are also persuaded that a person of ordinary skill would have recognized that LEDs 104 of the retrofit kit would be more effective when facing an area that the LEDs are intended to illuminate, such as the area under the ceiling as shown in inverted Figure 4. See Pet. 28–29; Ex. 1003 ¶ 175. On this record, the Petition and supporting evidence sufficiently shows that Dowling, in view of the knowledge of a person of ordinary skill, teaches “the light panel defining a raceway external to and above the light panel and below the previously-installed light fixture” which is “attached to the ceiling of a building” as recited in claim 1. Disputed limitation of claim 18” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner contends that, with respect to claims 1 and 18, limitations in the body of each claim find antecedent basis in the preambles. Prelim. Resp. 8. In particular, Patent Owner contends that “the previously-installed light fixture” and “the first tombstone and the second tombstone” recited in the body of claim 1 find antecedent basis in the preamble. Id. Patent Owner contends that “the ceiling light fixture,” “the second side,” “the first tombstone,” and “the second tombstone” recited in the body of claim 18 find antecedent basis in the preamble. Id. at 8–9. We do not need to construe the preambles at this stage to resolve any controversy. Even were we to consider the preambles as limiting, Petitioner has sufficiently shown that the prior art teaches the preambles, as discussed below in the context of our unpatentability analysis. Should the parties believe that construing the preambles is necessary to resolve a dispute, we invite the parties to present any arguments they wish to make regarding construction of the preambles in the appropriate trial paper (e.g., Patent Owner’s Response, Petitioner’s Reply).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Patent Owner that the scope of “disconnecting electrical connections” as claimed is limited to “sever.” Looking at the intrinsic evidence, claim 24 does not recite “permanently disconnecting.” Further, the specification does not define disconnecting electrical connections as limited to permanently disconnecting the connections. Although the specification gives an example of a de-energized ballast, the specification does not disclose that the electrical connections to the ballast must remain permanently disconnected. See Ex. 1001, 5:60–63. Further, the specification does not indicate that the claim is limited to this disclosed embodiment, and we decline to read this embodiment into the claim. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012) (“[I]t is improper to read limitations from a preferred embodiment described in the specification – even if it is the only embodiment – into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.”); Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.”’).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,837,628 - PTAB · May 23, 2022 · IPR2022-00308 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review of claims 1, 4–12, 22, 25–33, 39–43, 46–54, and 56–63 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel district court litigation the grounds advanced in the petition. Sand Revolution, IPR2019-01393, Paper 24 at 11–12, 12 n.5. A petitioner stipulating not to pursue “any ground raised or that could have been reasonably raised” weighs strongly in favor of not exercising discretionary denial. Sotera Wireless, Inc. v. Masimo (precedential as to § II.A) (“Sotera”)). Petitioner’s stipulation is not quite as broad as a Sotera-style stipulation, but it is more comprehensive than the stipulation in Sand Revolution. Specifically, whereas the petitioner in Sand Revolution agreed not to assert “the same grounds in the district court litigation” as asserted in the petition (Sand Revolution, IPR2019-01393, Paper 24 at 12), Petitioner here agrees that, if inter partes review is instituted, it will not assert in the district court litigation “any ground involving the prior art relied upon in the grounds of invalidity” in the Petition. Pet. 17. This stipulation mitigates to a large extent the concerns of inefficiency and the possibility of conflicting decisions with respect to the district court litigation. Thus, for all of the foregoing reasons, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s contentions with respect to all challenged claims in all grounds asserted and determine that the Petition provides the requisite showing, at this stage of the proceeding, that the subject matter of these claims would have been obvious over the asserted references. Other than the arguments addressed above, Patent Owner does not offer, at this stage, any arguments addressing Petitioner’s substantive showing. On this record, therefore, Petitioner demonstrates a reasonable likelihood of prevailing on its arguments that the challenged claims would have been obvious over the Grounds 1–6 combinations of prior art. III. CONCLUSION For the reasons set forth above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’489 patent, and we institute inter partes review on all challenged claims and on all grounds presented.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“9. Analysis As to Patent Owner’s first argument, the language of the claims requires a “flexible contact” that is “flexibly biased”; the language of the claims does not require a “flexible material,” as Patent Owner appears to argue. Patent Owner does not present argument or any case law that any element that may be present in the specification must be read into claims where it is not recited. Additionally, without a formal claim construction proposal other than a suggestion that we give every term its plain and ordinary meaning (Pet. 14; Prelim. Resp. 11), we do not give any express construction to the claim terms “flexible contact” or “flexibly biased.” To meet the “flexible contact” and “flexibly biased” limitations, Petitioner points to Vista’s contact terminals 300 and 301, which provide spring-loaded electrical contact with AC power blades. Pet. 22–23. Petitioner’s declarant Dr. Elenius supports Petitioner’s contentions that Vista discloses a “flexible contact” that is “flexibly biased.” Id. at 22–26 (citing Ex. 1004 ¶¶ 88–94). To the extent that Patent Owner argues that Vista’s contacts are not “flexible,” Patent Owner presents only attorney argument on this issue. Prelim. Resp. 15–16. Patent Owner and Petitioner are encouraged to develop the claim construction of “flexible contacts” or “flexibly biased” at trial, if needed.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have either (i) a Master of Science in Electrical Engineering, Mechanical Engineering or a related field, or (ii) a Bachelor of Science in Electrical Engineering, Mechanical Engineering or a related field as well as at least two years of experience in the design and/or packaging of power electronics. Additional education could compensate for less practical experience and vice versa. Pet. 14 (citing Ex. 1004 ¶¶ 36–38). only, Patent Owner does not dispute the Petition’s definition of level of ordinary skill.” Prelim. Resp. 11. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,978,489 - PTAB · Apr 4, 2022 · IPR2021-01434 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 10, 13, and 17 under both obviousness grounds, finding a reasonable likelihood of success over Bharat, Kamba, and Willis.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4 (citing Ex. 1002 ¶¶ 9–14). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill at this time. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’584 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner states that it “does not believe express claim construction is necessary at this time” (Pet. 7), and Patent Owner does not address any claim constructions in the Preliminary Response. We determine that no terms of the challenged claims require explicit construction at this stage. See, e.g., 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 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The underlying litigation was stayed based on the parties’ joint stipulation requesting the same. Ex. 1014. As a result, “all proceedings in [the underlying litigation] are stayed, and all deadlines and/or hearing dates pursuant to the Scheduling Order . . . , or arising under the Federal Rules of Civil Procedure or the Local Rules, are vacated” pending the outcome of this and other inter partes review proceedings. Id. at 2. According to Fintiv, “[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts” and “has strongly weighed against exercising the authority to deny institution.” Fintiv, Paper 11 at 6; see also Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15 at 9 (PTAB Oct. 21, 2020) (precedential) (holding that the granting of a stay pending inter partes review weighs strongly against exercising discretion to deny institution). Moreover, due to the stay, there is no longer any set trial date in the underlying litigation, which will remain at a relatively early stage. parallel proceeding; (5) whether the petitioner and the defendant in the parallel proceeding are the same party; and (6) other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv at 5– 6. Petitioner’s stipulation not to pursue invalidity of the challenged claims as to any instituted grounds also “mitigates to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sand Revolution II, LLC v. Continental Intermodal Group–Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020) (informative). Furthermore, the merits of Petitioner’s challenges appear particularly strong based on the present record. See infra § II.E. Consequently, after considering the factors set forth in Fintiv, we determine that the record does not support exercising our discretion to deny institution under § 314(a) in favor of the underlying litigation.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“In support of Bharat’s status as prior art, Petitioner includes testimony from Sylvia Hall-Ellis, Ph.D., a professor with experience in the field of library science. Ex. 1007 ¶¶ 6–8. She testifies that Bharat was “published in the journal Multimedia Systems [and] was publicly available on or shortly after October 21, 1998,” based on a record of the journal in an engineering library at the University of Wisconsin–Madison. Id. ¶¶ 39–46. The journal in which Bharat appears (Multimedia Systems) is dated September 1998, and it includes a 1998 copyright date. Ex. 1003, 1–2. Moreover, the copy of the journal referenced in Dr. Hall-Ellis’s declaration and asserted in this case includes a stamp from the University of Wisconsin that is dated October 21, 1998. Id. at 3. On this preliminary record, we consider these to be indicators of publication in 1998. We also credit Dr. Hall-Ellis’s testimony regarding public accessibility, which is consistent with other evidence of record. Thus, for purposes of this Decision, we determine that Bharat qualifies as prior art under 35 U.S.C. § 102(b) because Bharat’s publication date in 1998, is more than one year before the earliest possible effective filing date of the challenged claims, which is November 9, 2010. Ex. 1001, code (22); Ex. 1003, 1–3; Ex. 1007 ¶¶ 39–46.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,732,584 - PTAB · Mar 8, 2022 · IPR2021-01467 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–36, finding a reasonable likelihood that the challenged claims are unpatentable on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and at least two years of experience in systems for search, retrieval, and processing of information, such as web pages obtained over the Internet.” Pet. 4–5 (citing Ex. 1002 ¶¶ 18–23). Patent Owner does not dispute this assessment or offer its own assessment. See Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner as supported by the ’781 patent specification and prior art of record, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education and experience. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner argues that no express constructions are necessary. Pet. 9. Patent Owner does not address claim construction at this stage. See Prelim. Resp. On this record, we determine that no terms or phrases in the claims require express construction. See 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))).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner cites various alleged differences between Konig and Manber to argue that they are “are incompatible, teach away from one another, and/or render the system(s) inoperable for their intended purpose(s).” Prelim. Resp. 12–13 (citing Ex. 1003, Figs. 1, 18, 19; Ex. 1004, 15–17). On this record, we do not agree with Patent Owner’s arguments, which suggest that Petitioner is advocating some combination of two disparate systems. For example, Patent Owner argues that “Konig’s universe is the Internet” whereas Manber “works within that single website” and that “[t]he link structures between the Internet and Manber’s system are different.” Prelim. Resp. 12. But these arguments ignore the purpose for which Petitioner relies on Manber, namely to “disclose[] the known and unremarkable feature of limiting a web crawler to a maximum link distance when traversing web pages.” Pet. 11 (citing Ex. 1002 ¶¶ 144, 147). If anything, the fact that “Konig’s universe is the Internet” (Prelim. Resp. 12) underscores the need to set link distance limits on Konig’s crawler; otherwise, it might crawl the Internet indefinitely. Thus, on this record we are persuaded that restricting an information” slip op. at 13
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,606,781 - PTAB · Mar 8, 2022 · IPR2021-01472 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR of claims 9–16 on both § 103 grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“g) Preliminary determination for claim 9 For the reasons discussed above and based on Petitioner’s contentions and evidence, we determine, on this record, that Petitioner has shown a reasonable likelihood of prevailing in its argument that claim 9 is unpatentable as obvious over the combined teachings of Heidloff, Riggsby, RFC 5233, Low, and RFC 2369. 3. Claims 10–16 Petitioner also asserts that claims 10–16 are unpatentable as obvious over the combined teachings of Heidloff, Riggsby, RFC 5233, Low, and RFC 2369. Pet. 52–68. At this stage of the proceeding, Patent Owner does not separately address Petitioner’s contentions for these claims. We have reviewed Petitioner’s contentions, and we determine, on this record, that Petitioner has shown a reasonable likelihood of prevailing in its argument that claims 10–16 are unpatentable as obvious over the combined teachings of Heidloff, Riggsby, RFC 5233, Low, and RFC 2369.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer its own assessment. See Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner as supported by the ’190 patent specification and the prior art of record, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no express constructions are necessary. Pet. 9. Patent Owner does not address claim construction at this stage. See Prelim. Resp. On this record, we determine that no terms or phrases in the claims require express construction. See 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))).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“tag address” aspect of claim 9. Prelim. Resp. 9–13. We have reviewed Patent Owner’s arguments, but on this record we do not agree with them. For example, Patent Owner argues that Heidloff and RFC 5233 are not compatible and that, “by turning Heidloff’s keywords into email addresses with subaddresses, Heidloff loses its most critical feature: the ability to search for keywords and forward content based on keywords.” Prelim. Resp. 10–11 (citing Ex. 1003, 4:47–49, 5:1–3). Petitioner, however, is not proposing to eliminate Heidloff’s keyword teachings. Rather, Petitioner proposes that the user-entered keyword would simply be added as a subaddress to the email address that is associated with the keyword. See Pet. 24. Patent Owner also argues that Petitioner “does not explain how Heidloff is changed through its proposed combination with RFC 5233 so that [Petitioner]’s hypothetical email system could accept email addresses, deviate from the conventional processing of those email addresses, and then match keywords.” Prelim. Resp. 12. According to Patent Owner, the “proposed combination still requires the user to enter free text keywords, not email addresses or a ‘tag address comprising one or more content tags’ as required by the ʼ190 Patent claim.” Prelim. Resp. 12–13. But in Petitioner’s proposed combination, the keyword the user enters is incorporated as a subaddress into the message as taught by RFC 5233. See Pet. 24 (“Upon identifying a match between the sender-identified destination keyword and one of the registered keywords (Heidloff, 4:18-21), Heidloff’s email server would incorporate the matching keyword ‘Eclipse’ into the full address applied to the message to route it to its destination, resulting in the following augmented address: RCPTeamroom+Eclipse@us.ibm.com.” (emphasis omitted) (citing Ex. 1005, p.2; Ex. 1002 ¶¶ 110–111)). Thus, on this record, Petitioner’s contention that the proposed combination teaches “receiving an incoming message with . . . a tag address comprising one or more content tags,” as recited in claim 9, is persuasive. Patent Owner also disputes Petitioner’s reasoning to combine the references, arguing that Petitioner’s proposed combination “is inoperable” and that the asserted prior “art teaches away from combination with one another.” Prelim. Resp. 15–18. In particular, Patent Owner argues that “replac[ing] Heidloff’s ‘free text’ keywords with email addresses would destroy the functionality and purpose of Heidloff” and that Petitioner “has not explained why a [person of ordinary skill in the art], reading Heidloff, would be motivated to remove the entire keyword-based mechanism responsible for its function and replace it with the email addresses used in Riggsby, RFC 5233, and Low.” Prelim. Resp. 17–18. On this record, however, we do not see the incompatibilities that Patent Owner alleges. As discussed above, Heidloff looks for keywords and finds email addresses associated with those keywords. Ex. 1003, 5:1–14. Thus, Heidloff uses email addresses, contrary to Patent Owner’s assertion. See Prelim. Resp. 16 (“To start, Heidloff is a distribution system that uses keywords composed of ‘free text’—not email addresses—to determine how and to whom information should be disseminated.” (citing Ex. 1003, 4:45–53, 5:1–3)). On this record, Petitioner’s reasons to combine the references, summarized above, are persuasive. slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,137,190 - PTAB · Mar 4, 2022 · IPR2021-01483 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–18 and all petition grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Therefore, weighing the facts in this particular case, including the time invested by the parties and the district court in the parallel litigation, the extent to which the investment in the district court proceeding relates to issues of patent validity, and the timing of the filing of the Petition, we find that this factor weighs marginally against exercising discretion to deny institution.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Determination At this stage of the proceeding, for purposes of institution, Petitioner has provided sufficient explanations and supporting evidence concerning claims 1, 2, 8–11, 17, and 18. These explanations identify how each limitation of these claims is either described by, or taught or suggested by the applied combination of prior art. With respect to obviousness, Petitioner has further provided a rationale for each proposed combination, as well as facts supporting how each combination would be accomplished with a reasonable expectation of success. In view of the foregoing, we are persuaded on the current record that Petitioner is reasonably likely to prevail on its assertions that claims 1, 2, 8– 11, 17, and 18 would have been obvious over the applied combination of Chang and Geeks.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, Patent Owner has not provided an assessment of the level of ordinary skill in the art. See generally Prelim. Resp. We note, however, that the Chang reference is an undergraduate work project, and indicates that the 4 Patent Owner does not identify any secondary considerations to be considered. Accordingly, we do not consider this aspect of the obviousness analysis at this stage of the proceeding. level of ordinary skill set forth by Petitioner may be in excess of the minimum necessary. Ex. 1010, 1. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Madisetti Declaration and is consistent with the ’295 patent and the majority of the asserted prior art except that we exclude “or more” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the term “mathematically cast/casting a ray from the position of the subject toward a line segment of the plurality of line segments representing the containment perimeter” should be construed as “calculate a straight line that begins at the position of the subject and runs in the direction determined to be toward one of the line segments that make up the containment perimeter, wherein the line segments are not longitude or latitude lines.” Id. at 7–10. In its Preliminary Response, Patent Owner does not propose any explicit claim constructions, and does not comment on Petitioner’s constructions or alleged agreements on claim terms. See Prelim. Resp. We apply the same standard that is used to construe a patent claim in a civil action under 35 U.S.C. § 282(b), and construe each claim in accordance with the ordinary and customary meaning of such claim, as understood by one of ordinary skill in the art in the context of the patent, and the prosecution history pertaining to the patent, as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2021)). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of institution, we do not expressly construe any claim terms beyond the extent necessary in our discussion of the parties’ arguments below.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,848,295 - Facebook, Inc. v. Express Mobile, Inc.InstitutedPTAB · Jan 14, 2022 · IPR2021-01226 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR of claims 1–4 and 6 on both asserted § 103 grounds, finding a reasonable likelihood that Facebook would prevail on its obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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 explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ assessments are substantially similar. Both call for a technical degree and some practical experience, but both also acknowledge that more experience can offset less formal education. Petitioner’s proposed assessment, however, limits the technical degree to one of four disciplines. On this record, we are not persuaded that the educational requirements should be so restrictive, and we favor Patent Owner’s assessment as it acknowledges that a person of ordinary skill in the art may have a degree in a “similar discipline” to computer science, math, or engineering. In addition, Petitioner’s use of the language “at least” expands the ranges of education and experience indefinitely without an upper bound. Thus, for purposes of this Decision, we apply Patent Owner’s assessment. We also note we would reach the same preliminary determinations on Petitioner’s patentability challenges in §§ II.D–E below if we adopted Petitioner’s assessment.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no express constructions are necessary but provides various constructions or proposed constructions from district court litigations “in the interests of complete disclosure.” Pet. 15–18. Patent Owner does not provide a separate claim construction discussion in its Preliminary Response, but in one of its arguments, Patent Owner asserts that “the ’168 patent clearly describes styles as independent collections of attributes which are either preset or modifiable and are applied to objects as a set by the authoring tool.” Prelim. Resp. 9 (citing Ex. 1001, 31:57–32:18). Patent Owner does not elaborate on this argument nor explain how the cited passage from the ’168 patent supports such an interpretation. We address the parties’ contentions regarding “style” below in § II.D.2.b(1) and need not expressly construe this term or any others for purposes of this Decision. See 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))).” slip op. at 7
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“to the same technology.” Prelim. Resp. 9 (citing Ex. 2001 ¶48–49). We understand this argument to be directed to the analogousness of the references, and we note that this inquiry is directed to whether the prior art references are “analogous to the claimed invention,” not to each other. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A prior art reference qualifies as analogous art (1) if it is from the same field of endeavor as the claimed invention, regardless of the problem addressed, or (2) if the reference is not within the field of the inventor’s endeavor, it is nonetheless reasonably pertinent to the particular problem with which the inventor is involved. Id. Patent Owner argues that Reynolds concerns “Web robots,” not “web sites,” thereby suggesting that Reynolds is not in the ’168 patent’s field of endeavor. Prelim. Resp. 9–10 (citing Ex. 1003, 1:26–29). For the reasons explained above in § II.D.2.a, we are sufficiently persuaded, on this record, that Reynolds’s ibook is a website, and, therefore, we disagree with Patent Owner’s field of endeavor argument. On this record, we are sufficiently persuaded by Petitioner’s contention that “Reynolds, Lemay Web, and Lemay Java are analogous references in the same field as the ’168 patent.” See Pet. 38 (citing Ex. 1002 ¶ 92).” slip op. at 13
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,594,168 - Facebook, Inc. v. Express Mobile, Inc.InstitutedPTAB · Jan 14, 2022 · IPR2021-01224 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR of claim 1 on all asserted grounds, finding a reasonable likelihood that Facebook would prevail on both obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic addressed the situation where the same petitioner filed “follow-on petitions” against the same patents, after a first set of petitions was denied on the merits. General Plastic, Paper 19 at 2–3. The Petition here is not a “follow-on petition,” as that term is used in General Plastic; there was no prior petition challenging the ’397 patent filed by Petitioner, Facebook. The ’750 IPR petition was filed by BigCommerce, Inc. (“BigCommerce”), the ’700 IPR petition was filed by Google LLC (“Google”), and the ’615 Reexam request was filed by Unified Patents, LLC (“Unified”). Prelim. Resp. 28. We recognize, however, that General Plastic has not been limited to instances where multiple petitions are filed by the same petitioner. Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019- 00062, Paper 11 (PTAB Apr. 2, 2019) (precedential). Rather, “when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve, Paper 11 at 9. Patent Owner does not allege any specific relationship between Petitioner and either BigCommerce or Unified; rather, Patent Owner’s arguments focus on an alleged relationship between Petitioner and Google. See Prelim. Resp. 29–30; Sur-reply 2. On this record, we determine that the General Plastic factors do not favor denial based on either the ’750 IPR or the ’615 Reexam because there is no evidence of any relationship between Petitioner and either BigCommerce or Unified that would implicate General Plastic under Valve.” slip op. at 5
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ assessments are substantially similar. Both call for a technical degree and some practical experience, but both also acknowledge that more experience can offset less formal education. Petitioner’s proposed assessment, however, limits the technical degree to one of four disciplines. On this record, we are not persuaded that the educational requirements should be so restrictive, and we favor Patent Owner’s assessment as it acknowledges that a person of ordinary skill in the art may have a degree in a “similar discipline” to computer science, math, or engineering. In addition, Petitioner’s use of the language “at least” expands the ranges of education and experience indefinitely without an upper bound. Thus, for purposes of this Decision, we apply Patent Owner’s assessment. We also note we would reach the same preliminary determinations on Petitioner’s patentability challenges in §§ II.E–F below if we adopted Petitioner’s assessment.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having reviewed the parties’ arguments, we determine that we need not expressly construe this term or any others for purposes of this Decision. See 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))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, we disagree that Petitioner’s analysis is deficient and, instead, are persuaded by Petitioner’s argument that the proposed combination would “[f]acilitat[e] greater customization of the appearance of ibook web page content displayed by the browser,” which “would have enhanced the user experience for both the ibook contributor and viewer.” Pet. 44 (citing Ex. 1002 ¶ 84). For example, referring to Figure 8, which depicts selection menus (Ex. 1004, 4:44–45), Bernardo discloses that its “design center feature provides a screen from which the user is prompted to decide on the options for the design of the web page, for example, by selecting colors, background images, frame styles, and logos” and that, “[o]nce selections have been made, the user can preview the design and then make changes as desired.” Ex. 1004, 8:57–62, cited in Pet. 44. Bernardo discloses that this website development “module essentially provides simple-to-use graphic design tools allowing a site creator to have a preferred layout and design, without writing or editing HTML or other code.” Ex. 1004, 8:62–65. Thus, Bernardo itself supports Petitioner’s contention of an enhanced user experience using viewable menus. Furthermore, Bernardo’s web page design teachings are directly applicable to Reynolds’s ibooks, which are stored as web pages, as discussed above in § II.E.2.a(1). Therefore, we disagree with Patent Owner’s argument that Reynolds’s alleged focus on “creating digital books with text and images in a standard format specifically designed for modular reuse of content” undermines the proposed combination. See Prelim. Resp. 16–17. Rather, both Reynolds and Bernardo are directed to creating web pages. See Ex. 1003, 3:46–47 (“Contributed material is preferably stored in the form of ibook web pages . . . .”); Ex. 1004, 8:56–65 (discussing Figure 8’s screen for selecting design options for a web page).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,546,397 - PTAB · Jan 7, 2022 · IPR2021-01308 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–23 of the ’100 patent on all asserted grounds, finding a reasonable likelihood of success on the obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The district court has not yet ruled on Petitioner’s motion to stay, and we would be merely speculating, at this stage, what the court will do. Accordingly, this factor is neutral to the exercise of our discretion. See Sand Revolution II, LLC v. Cont’l Intermodal Grp. – Trucking LLC, IPR2019- 01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“In the absence of specific evidence, we will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy.”); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“We decline to infer,” slip op. at 6
- Parallel petitionsDecided for petitioner
“(IPR2021-01307) challenging different claims of the ’100 patent. Petitioner submitted a separate paper explaining why it filed two petitions. Paper 3; see also Trial Practice Guide 59–60 & n.3 (permitting a petitioner to file a separate paper explaining why additional petitions should be instituted). Petitioner explains that Patent Owner has asserted all 31 claims of the ’100 patent against Petitioner in district court litigation and that the claims are long, which required two petitions to provide “the necessary specificity as to how the prior art meets the recited limitations within the word limit applicable to IPR petitions.” Paper 3, 3 (citing Ex. 1021). Petitioner argues that “there is no overlap in challenged claims and only one ground per claim” and, therefore, that two petitions “do not constitute an abuse of process.” Paper 3, 3–4. Patent Owner did not respond to Petitioner’s explanation in the Preliminary Response or in a separate paper, as it was entitled to do. See Trial Practice Guide, 60–61 & n.5 (authorizing a patent owner to file “[a] separate paper . . . with the preliminary responses . . . limited to providing this explanation” of “no more than 5 pages where the same paper is filed with each preliminary response”). We find Petitioner’s explanation for filing two petitions challenging claims of the ’100 patent to be satisfactory, and, therefore, we decline to exercise our discretion to deny the Petition based on Petitioner’s filing two petitions challenging the ’100 patent.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record we do not agree with Patent Owner’s attempted distinction over Makoto. The claim merely requires that “the identifier corresponds to a network participant.” There is no requirement to personalize the device to the user, as asserted by Patent Owner. See Prelim. Resp. 12. We are sufficiently persuaded, on this record, that Makoto’s communication device ID corresponds to the user of the device, who is a network participant. For example, Makoto discloses that “user 3091 uses mobile communication device 3041, and user 3092 uses mobile communication device 3042,” and Figure 16 shows that these users are communicating via their mobile devices on communication network 302. Ex. 1005 ¶ 100, Fig. 16, cited in Pet. 9–10. This is consistent with the ’100 patent’s disclosure of “the cellular phone user” as a “communication net participant.” Ex. 1001, 7:12–16. Patent Owner also argues that Makoto does not disclose that communication device IDs are generated, as asserted by Petitioner. Prelim. Resp. 13. According to Patent Owner, Makoto’s device IDs “are mere serial numbers that are given to the device upon manufacture.” Prelim. Resp. 13. Patent Owner does cite anything in Makoto to support its assertion that the device IDs are simply serial numbers assigned at manufacture, but even assuming that is the case, Petitioner’s assertion is that the “associating” happens when Makoto’s mobile device generates requests containing, inter alia, the communication device ID. See Pet. 9 (citing Ex. 1005 ¶¶ 107, 114, 119). For example, Makoto discloses that “in the processing unit 314 of mobile communication device 3041, a group registration request containing the communication device ID of mobile communication device 3041 and the communication device IDs of a plurality of mobile communication devices belonging to a group is generated.” Ex. 1005 ¶ 107. On this record, we are sufficiently persuaded that the mobile device’s generation of requests containing the device ID performs the operation of “associating the mobile device with an identifier, wherein the identifier corresponds to a network participant,” at least for purposes of that request. 4. Preliminary Determination for Claim 1 For the reasons discussed above and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that Petitioner has shown a reasonable likelihood of prevailing in its argument that claim 1 is unpatentable as obvious over the combined teachings of Makoto, Konishi, Paul, and Hamynen.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, software engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems.” Pet. 5 (citing Ex. 1002 ¶¶ 18–20). Petitioner further argues that “[m]ore education can substitute for practical experience and vice versa.” Pet. 5. Patent Owner does not dispute this assessment or offer its own assessment. See Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education and experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 15
Claim constructionDiscretionary denialcites KSRPatents in suitUS 10,299,100 - PTAB · Jan 7, 2022 · IPR2021-01307 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR of claims 24–31 on all grounds, finding a reasonable likelihood that Uber would prevail on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“trials on the same day raises some questions as to the certainty of the March 7, 2022, trial date. That trial date, however, is far enough in advance of a final written decision in this case, if instituted, to make this factor weigh in favor of exercising discretion to deny.” slip op. at 7
- Parallel petitionsDecided for petitioner
“submitted a separate paper explaining why it filed two petitions. Paper 3; see also Trial Practice Guide 59–60 & n.3 (permitting a petitioner to file a separate paper explaining why additional petitions should be instituted). Petitioner explains that Patent Owner has asserted all 31 claims of the ’100 patent against Petitioner in district court litigation and that the claims are long, which required two petitions to provide “the necessary specificity as to how the prior art meets the recited limitations within the word limit applicable to IPR petitions.” Paper 3, 3 (citing Ex. 1021). Petitioner argues that “there is no overlap in challenged claims and only one ground per claim” and, therefore, that two petitions “do not constitute an abuse of process.” Paper 3, 3–4.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of education and experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no express constructions are necessary. Pet. 7. Patent Owner does not address claim construction at this stage. See Prelim. Resp. On this record, we determine that no terms or phrases in the claims require express construction. See 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))).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,299,100
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.