• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Mar 21, 2023 · IPR2022-01454 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9, 11–14, 16, 17, 19, or 20 obvious over the asserted prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “6. Conclusion Claims 1 and 11 In sum, after considering the arguments presented in the Petition and Patent Owner’s Preliminary Response, we determine that, for the reasons given, Petitioner has failed to demonstrate sufficiently that Mayadas and Katiyar teach or suggest independent claims 1 or 11. Therefore, Petitioner has not demonstrated a reasonable likelihood of prevailing on this challenge to claim1 or 11, or to their dependent claims 4–9, 13, 14, 16, 17, 19, and 20. 7. Dependent Claims 2 and 3 Petitioner’s challenge to these dependent claims relies on Mayadas in combination with Katiyar and Rosenberg. Pet. 61–63. These claims depend from claim 1, and therefore they incorporate disputed claim element 1.c discussed supra, in Section III.E.5. Petitioner’s analysis of these claims therefore relies on Mayadas for the terms disputed by Patent Owner. Rosenberg is cited for the limited teaching of “automatically placing a tag (cookie) without any expression of the visitor’s consent to divulge information.” Pet. 62. For the reasons given in Section III.E.5, therefore, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge to claims 2 and 3.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. DISCRETIONARY DENIAL Patent Owner contends that the Board should exercise its discretion to deny the Petition under 35 U.S.C. § 314(a). Pet. 21–35. Because we have determined that the Petition does not succeed on the merits, we do not need to address the issue of discretionary denial.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 8 (citing Menascé Decl. ¶¶ 30–34). Petitioner adds that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not provide a description of the person of ordinary skill. For this decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as consistent with the prior art before us in this proceeding. C. Claim Construction” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner states that “[f]or the purposes of this Petition, the challenged claims are interpreted according to their plain and ordinary meaning.” Pet. 9. Patent Owner contends that Petitioner has argued for construction of multiple terms of the ’586 patent in parallel district court litigation, and that Petitioner “does not explain how [Petitioner’s] theories in this IPR are consistent with its district court arguments for how these terms should be construed.” Prelim. Resp. 10. But Patent Owner asserts that “[t]his Preliminary Response does not depend on any express claim constructions, and institution should be denied regardless of claim construction issues.” However, “Patent Owner reserves its right to identify terms requiring construction in the event this IPR is instituted.” Id. We determine that no claim terms are in controversy. Therefore, no other claim term needs to be construed at this stage. See Vivid Techs., Inc., 200 F.3d at 803.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,244,586
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Mar 21, 2023 · IPR2022-01453 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show that Mayadas and Katiyar taught or suggested claim 24’s requirement that tags and records determine a visitor previously visited the first site.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “5. Conclusion In sum, after considering the arguments presented in the Petition and Patent Owner’s Preliminary Response, we determine that, for the reasons given, Petitioner has failed to demonstrate sufficiently that Mayadas and Katiyar teach or suggest independent claim 24. Therefore, Petitioner has not demonstrated a reasonable likelihood of prevailing on this challenge to claim 24 nor its dependent claims 29, 31–33, 40, 44.” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 7 (citing Menascé Decl. ¶¶ 30–34). Petitioner adds that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not provide a description of the person of ordinary skill. For this decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as consistent with the prior art before us in this proceeding. C. Claim Construction” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner states that “[f]or the purposes of this Petition, the challenged claims are interpreted according to their plain and ordinary meaning.” Pet. 8. Patent Owner contends that Petitioner has argued for construction of multiple terms of the ’639 patent in parallel district court litigation, and that Petitioner “does not explain how [Petitioner’s] theories in this IPR are consistent with its district court arguments for how these terms should be construed.” Prelim. Resp. 9. “However, at this stage and solely for the purposes of this Preliminary Response, Patent Owner does not contend any terms of the challenged claims require express construction.” Id. at 9. “Patent Owner reserves its right to identify terms requiring construction in the event this IPR is instituted.” Id. We determine that no claim terms are in controversy. Therefore, no other claim term needs to be construed at this stage. See Vivid Techs., Inc., 200 F.3d at 803. D. Description of the Prior Art References” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner’s explanation that in Mayadas, these user profiles can be created in two ways: (1) by visiting Mayadas’s system website (which Petitioner identifies as the “first website” in the claims) or (2) by visiting a different website operated by a data aggregator. Prelim. Resp. 12–13; see also Section III.D.1, supra. Patent Owner reasons that “because identical profile information can be generated by any number of data aggregator websites, the collected profile information disclosed by Mayadas cannot be used to distinguish between different sites the user may have visited to provide the profile information.” Id. at 14–15. We agree with this analysis and conclude that Mayadas’s profile information cannot be used to determine, “using the tags and electronic records” identified by Patent Owner, that a user visited the “first website,” i.e., Mayadas’s system website. As Patent Owner points out, the cookies mentioned in Mayadas are used to determine whether a user visiting a website is registered and has a profile. Ex. 1006 ¶ 35. As noted, a user profile can also result from visiting any number of aggregator sites. Thus, in contrast to the ’639 patent, the cookie does not signify that the user has visited the “first” website, only that the user is registered and a profile is available in the central repository. Prelim. Resp. 15–16. Thus, we agree with Patent Owner that Mayadas does not teach or suggest “computer-determining, using the tags and said electronic records, that such visitor computers have visited the first Internet site.” Id. at 12–17. Similarly, and for the same reasons we find the Mayadas does not teach or suggest delivering advertising “as a consequence” of that determination, as the claim requires. Id. at 17–19.” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,822,639
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Mar 2, 2023 · IPR2022-01480 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Roth and its combinations did not show a reasonable likelihood of establishing the challenged claims’ obviousness.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner’s argument that Petitioner has failed to demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement in claim 1. See supra Section III.C. We concluded from the language of the claims and the prosecution history that the “third-party server computer” cannot be part of the recited “system comprised of one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprised of one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprised of one or more computers.” See Pet. 19. As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 11. In Petitioner’s analysis of claim element 1(b), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the computer system,’ i.e., by the system which includes view server 320.” Pet. 34 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 12). Petitioner further argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 24. This argument also is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprised of one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 19. Those computers are also part of the web server system in Roth (id. at 18) identified as the “third-party server computer” (id. at 20), and therefore, the web server system cannot be separate from the “third-party computer system.”” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that construction of this term is necessary and we find that the claimed “third party server computer” in claims 1, 17, and 21 and their dependent claims must be different from the “system [comprised of]/[comprising] one or more computers” recited in the preambles of claims 1 and 21 and the “tangible computer-server device” recited in the preamble of claim 17.3 As Patent Owner points out, the language of the claims compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claims 1 and 21 recite that the “system” described in each claim’s preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Ex. 1001, 12:64– 3 We do not express an opinion as to whether the preambles are limiting. 13:1, 14:56–60. Claim 17 similarly recites that the “tangible computer-server device” described in the claim preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Id. at 14:17–21. If the third-party server computer were not separate from the “system [comprising of/comprising] one or more computers” or “tangible computer-server device,” the system or device would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. DISCRETIONARY DENIAL Patent Owner asserts that the Board should exercise its discretion to deny institution of inter partes review under 35 U.S.C. § 325(d). See Prelim. Resp. 13–26. Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,959,146
• Samsung Electronics Co., Ltd. / Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01260 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “D. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations).4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Secondary considerations may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, and praise. See id. at 17–18; Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). We analyze the asserted grounds with these principles in mind.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’582 patent would have had “at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field.” Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Petitioner asserts further that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not challenge this definition of the level of skill at this time. Prelim. Resp. 6. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner and Patent Owner agree that for purposes of this proceeding “no claim construction is necessary.” See Pet. 5 (citing Ex. 1002 ¶ 35); Prelim. Resp. 6. At this stage of this proceeding we determine that no claim terms require express construction in order to determine whether or not to institute inter partes review because doing so would have no effect on the analysis below. 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 not foundNot shown unpatentable

    “system with Merriman’s ‘automatic URL redirection’ teachings fails because it is unsupported by any articulated, nonconclusory reasoning or rational underpinning.” PO Resp. 11 (citing KSR, 550 U.S. at 418). We agree with Patent Owner that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. PO. Resp. 11. Specifically, we agree that there is no motivation to add Merriman’s URL redirection to Philyaw’s system. See PO Resp. 11. We further agree with Patent Owner that Petitioner “fails to provide any evidence that a POSITA would have believed Philyaw to lack any important detail (or contain any other deficiency) with respect to user exits of websites” that would prompt a person of ordinary skill in the art to look to other references such as Merriman. PO Resp. 12. Rather, as discussed in detail below, Philyaw specifically addresses what happens when a user exits a vendor website. Ex. 1005, 26:39–44.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,244,582
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Feb 2, 2023 · IPR2022-01262 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted Roth-based grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “As Patent Owner points out, the language of the claim compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claim 37 recites that the “system” described in the preamble is programmed to “automatically direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition for display of an advertisement.” Ex. 1001, 16:40–44. If the third-party server computer were not separate from the “system comprising one or more computers,” the system would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement. See supra, Section III.C. We concluded from the language of claim 37 and the prosecution history that the “third-party server computer” cannot be part of the “system comprising one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprising one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprising one or more computers.” Prelim. Resp. 10 (quoting Pet. 18). As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 10. In Petitioner’s analysis of claim element 37(c), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the system comprising one or more computers,’ i.e., by the system which includes view server 320.” Pet. 37 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 10). Petitioner argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 23–24. This argument is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprising one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 18. Those computers are also part of the web server system in Roth (id. at 17) identified as the “third-party server computer” (id. at 19), and therefore, the web server system cannot be separate from the “third-party computer system.” For the reasons given, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its challenge to claim 37 as obvious over Roth.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,671,139
• ROKU, Inc. v. Almondnet, Inc And Intent Iq, LLCInstitution denied
  PTAB · Feb 2, 2023 · IPR2022-01236 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–17 or 19–26 were unpatentable over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “method of targeting advertisements based on mutual information sharing between IP-addressed devices on a common network” (id. at 25, see id. at 26–27 (similar articulations of combination)). We are not persuaded the Petition sufficiently explains why one of ordinary skill in the art would look to Baum’s teaching. In particular, Petitioner has not explained sufficiently why Madhavan would require the teachings of Baum to operate in an environment using dynamically assigned IP addresses. As such, it is unclear that a person of ordinary skill in the art would apply Baum’s edge routers and techniques for determining that multiple dynamic-IP addressed devices are connected to a common LAN in order to achieve the claimed invention. “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether ‘they would have been motivated to do so.’” Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (quoting InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we are not persuaded the Petition sets forth sufficient articulated reasoning with rational underpinning why a person of ordinary skill in the art would have combined the teachings of Madhavan and Baum to achieve the claimed invention, including the electronic association based on connection to a common LAN limitation, unequivocally identified in the Petition as taught by the combination of Madhavan and Baum (see Pet. 37, 40–41). We also agree with Patent Owner’s argument that “a mere assertion that references are analogous art provides no reason for the specific modification proposed by the Petition.” Prelim. Resp. 28 (emphasis omitted); see Pet. 25–26 (asserting that Madhavan and Baum are analogous art to the ’398 Patent). establish a reasonable likelihood it would prevail in showing that the subject matter of independent claim 13 is unpatentable as obvious over Madhavan and Baum. Due to the dependency of claims 14–17, 20–23, and 26 ultimately from independent claim 13, (see Ex. 1001, 24:62–25:14, 25:26–39, 25:47–50), and for the same reasons as those addressing claim 13, Petitioner does not establish a reasonable likelihood it would prevail in showing that the subject matter of dependent claims 14–17, 20–23, and 26 are unpatentable over Madhavan and Baum.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “In particular, we are not persuaded that the alleged beneficial result of the combination presented in the Petition––e.g., “facilitat[ing] targeting of advertisements based on associations of device identifiers (e.g., IP addresses) in networking environments where device IP addresses are dynamically assigned and therefore subject to change” (Pet. 26, see id. at 25–27 (similar articulations of benefit)), provides sufficient articulated rationale to explain why a person of ordinary skill in the art would “apply Baum’s techniques for recognizing that particular device IP addresses connect to the Internet via a particular edge router and thereby determining method of targeting advertisements based on mutual information sharing between IP-addressed devices on a common network” (id. at 25, see id. at 26–27 (similar articulations of combination)). We are not persuaded the Petition sufficiently explains why one of ordinary skill in the art would look to Baum’s teaching. In particular, Petitioner has not explained sufficiently why Madhavan would require the teachings of Baum to operate in an environment using dynamically assigned IP addresses. As such, it is unclear that a person of ordinary skill in the art would apply Baum’s edge routers and techniques for determining that multiple dynamic-IP addressed devices are connected to a common LAN in order to achieve the claimed invention. “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether ‘they would have been motivated to do so.’” Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (quoting InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we are not persuaded the Petition sets forth sufficient articulated reasoning with rational underpinning why a person of ordinary skill in the art would have combined the teachings of Madhavan and Baum to achieve the claimed invention, including the electronic association based on connection to a common LAN limitation, unequivocally identified in the Petition as taught by the combination of Madhavan and Baum (see Pet. 37, 40–41). We also agree with Patent Owner’s argument that “a mere assertion that references are analogous art provides no reason for the specific modification proposed by the Petition.” Prelim. Resp. 28 (emphasis omitted); see Pet. 25–26 (asserting that Madhavan and Baum are analogous art to the ’398 Patent).” slip op. at 19

  • PTAB / AIA Trials › Discretionary denialNot reached

    “F. Discretion under 35 U.S.C. § 314 Patent Owner argues that the Board should exercise its discretion to deny institution of inter partes review under 35 U.S.C. § 314. See Prelim. Resp. 28–42. Because we deny institution on the merits of the proposed patentability challenges to claims 13–17 and 19–26, we need not address Patent Owner’s arguments urging discretionary denial of institution.” slip op. at 22

  • Skill levelSkill level petitioner adoptedOther

    “April 2007 would have a bachelor’s or equivalent degree in electrical and/or computer engineering or a related field and 2-3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements” and that “[a] person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard.” Pet. 8 (citing challenge Petitioner’s definition. See Prelim. Resp. 4–5. For the purpose of deciding whether to institute, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’398 Patent Specification and the asserted prior art.” slip op. at 6

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,677,398
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 1, 2023 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 10, 12, 13, and 15 were not shown unpatentable because Petitioner failed to prove a rational reason to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDenied

    “We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2007 ¶ 33. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 51 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2008, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 42

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, 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 level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’036 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 46–47).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “in the District Court Case entered a Markman order construing the Recognizes Limitation, among others. See Ex. 2006, 16–18, 21–22.4 Specifically, the court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). As explained in our Institution Decision (Dec. 17–19), we have reviewed the district court’s reasoning, as well as the ’036 patent and other evidence of record before us, and agree that for reasons given by the district court, the Recognizes Limitation should be given the same construction as determined by the district court. Neither 4 Unless otherwise specified, citations to exhibits use the page numbers assigned by the parties, not the original page numbers. party since has urged (or persuaded) us to revise this construction. Based on the complete record before us, we continue to construe the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” See Dec. 17–19; Ex. 2006, 21–22. Both parties adopt this construction for purposes of their post-institution arguments in this case. See PO Resp. 18–19 (“Patent Owner and its expert apply this claim construction in their analysis in the remainder of this IPR, but do not necessarily agree it is correct.”); see generally Pet. Reply (arguing “matching” as per this construction); Pet. (same).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “modifier. The definite article “the” can be used to modify something plural, e.g., “the digital representations.” Although in claim 1, “the” is used to modify a “digital representation,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional digital representations while one “digital representation” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one digital representation or “no more” than one digital representation, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’036 patent analyzes only a single digital representation, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’036 patent with regard to “a digital representation” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one digital representation. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a digital representation” as recited in claim 1 does not preclude involvement of an additional digital representation or digital representations in the analysis.” slip op. at 17

  Patent outcomesUS 8,478,036 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,036
• Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Jan 30, 2023 · IPR2022-01319 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution for all challenged claims under § 325(d), finding Beyda had been presented to the Office and Microsoft had not shown material Examiner error.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Here, Petitioner does not dispute Patent Owner’s evidence that Beyda was previously presented to the Office. Ex. 1004, 295. Thus, the first criterion of the Advanced Bionics framework (same art or arguments) is met. Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS),”). The second inquiry in the Advanced Bionics framework asks whether the Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8–9. As Patent Owner points out, “although the Petition admits that the Examiner considered Beyda during prosecution, it fails to make any allegation whatsoever that the Examiner erred (let alone erred in a material way) in his consideration of Beyda.” Prelim. Resp. 18. As to Narin, Patent Owner argues that Petitioner “does not offer any explanation” why that reference is not “substantially the same” as art considered by the Examiner, “let alone how or why the Examiner materially erred in considering that art to not be invalidating.” Id. We agree that Petitioner has failed to demonstrate that the Office erred in its evaluation of the cited art. See Advanced Bionics, Paper 6 at 8–9 (“If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.”). Here, the Beyda prior art that was before the Examiner during the examination is identical to the art cited here.3 There is no argument or evidence before us that Beyda was concealed from the Examiner. The Examiner ultimately made a determination that the claims were patentable. Ex. 1004, 49, 92. As cautioned by Advanced Bionics, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Advanced Bionics, Paper 6 at 9. Advanced Bionics goes on to explain the rationale for this rule: “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. Having considered the record presented by Patent Owner and the absence of any substantive showing from Petitioner, we are not persuaded of material Examiner error. Petitioner’s assertion that the prior art references in the Petition “were not substantively considered during the prosecution of the ’139 Patent, or in the prior CBM challenge,” without further explanation, is insufficient. In summary, applying the two-part framework of Advanced Bionics, we are persuaded to deny the Petition under 35 U.S.C § 325(d).” slip op. at 10

  Discretionary denial
  Patents in suitUS 8,671,139
• Forescout Technologies, Inc. v. Fortinet, Inc.Some claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01329 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 15, and 16 are unpatentable as obvious over Mahaffey; the other challenged claims were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal on the level of ordinary skill.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We find that the specification, therefore, supports Patent Owner’s argument that the term “web content filtering” differs from “web filtering”” slip op. at 10

  • BurdenDecided for patent owner

    “particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring IPR petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)) (emphasis added). This burden does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an IPR). By not providing a claim construction for a key term, “web content filtering,” Petitioner failed to live up to its obligation to provide an understandable explanation of the element-by-element specifics of the unpatentability challenges, including the particular portions of prior art supporting those challenges. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3)– (4); Harmonic Inc., 815 F.3d at 1363–64; Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intel. Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)); see also MModal LLC v. Nuance Communicatons, Inc., 846 Fed. Appx. 900, 906 (Fed. Cir. 2021) (non-precedential).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by these belated arguments, as they are based entirely on testimony by Dr. Cole as to what a person of ordinary skill “would understand” that is unsupported by any citations to Syvanne or other evidence of record. Such unsupported opinions are not entitled to any weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Consolidated Trial Practice Guide 35 (November 2019)8 (“The Board has broad discretion to assign weight to be accorded expert testimony. . . . However, the testimony must be based on sufficient facts and data.”); Fed. R. Evid. 702(b). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications. In other words, 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. substitute for disclosure in a prior art reference itself.” Consolidated Practice Guide at 36.” slip op. at 26

  Patent outcomesUS 9,894,034 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,894,034
• Nearmap US, Inc. v. Eagle View Technologies, Inc.Instituted
  PTAB · Jan 12, 2023 · IPR2022-01090 · APJ Garth D Baer · IPR · Institution

  The Board instituted inter partes review of claims 1–42 and 46–66 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that claims 1–42 and 46–66 would have been obvious over the asserted prior art. See id. at 33–96. Patent Owner raises several objections to Petitioner’s obviousness showing. We address those issues below.” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “§ 325(d) because one of the asserted references, Nishitani, “was substantively considered by the Examiner during Supplemental Examination of the ʼ436 Patent.” PO Prelim. Resp. 7–8. In evaluating arguments under § 325(d), we use a two-part framework: (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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). For the reasons given below, we are not persuaded to exercise our discretion to deny the Petition based on § 325(d).” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “The main concern motivating the General Plastic framework is “the potential for abuse of the review process by repeated attacks on patents” by a petitioner who files “[m]ultiple, staggered petitions challenging the same patent and same claims . . . . using our decisions as a roadmap, until a ground is found that results in the grant of review.” General Plastic, Paper 19 at 17. Here, the potential for abuse is minimal because this is the first time this petitioner has challenged the ’436 patent, and Patent Owner does not allege any connection or relationship between this Petitioner and the previous petitioners that might warrant exercising our discretion to deny institution. PO Prelim Resp. 14–15; Sur-reply 8–9; compare Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9–10 (Apr. 2, 2019) (precedential) (exercising discretion to deny institution based on a different petitioner’s earlier-filed petition where the different petitioners were co- defendants in a related district-court litigation, and where both petitioners were accused of infringing the challenged patent based on the same product incorporating technology licensed from petitioner Valve). In addition, it is reasonable that Petitioner filed its own Petition after the three previous petitions filed by unrelated parties given that “the present litigation dispute between Petitioner and Patent Owner did not begin until March 2021—well after the last of the three prior IPR petitions was filed.” Pet. Reply 10. Thus, this subsequent challenge against the ’436 patent appears to be a result of Patent Owner’s litigation activity, rather than Petitioner’s abuse of the review process. We find the circumstances in this case do not warrant denying the Petition under § 314(a).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther

    “required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not dispute Petitioner’s proposed construction in its Preliminary Response. Based on the present record, we agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 8,078,436

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.