• Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Instituted
  PTAB · Nov 22, 2024 · IPR2024-00723 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1–12 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail.

  RulingsInstitution decision

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

    “review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’384 patent on all grounds of unpatentability presented.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Hunleth are natural extensions of Kim that provide additional details about user interface design and generation, and that it would have been obvious for one of ordinary skill in the art to use the teachings of the other references on Kim’s apparatus for details regarding the selection of a CP provider, with predictable results and a reasonable expectation of success. Id. at 19–21 (citing Ex. 1003 ¶¶ 112–119). Additionally, Petitioner argues that the combination uses metadata to provide a user interface appropriate to the type of content selected by a user that would have been made by one of skill in the art, and that the user would have had a reasonable expectation of success in this combination. Id. at 55 (citing Ex. 1003 ¶¶ 185–186, 197–200). At this time, Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth. Nor, at this time, does Patent Owner rebut Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. reasonable likelihood that it will prevail in showing one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, and Hunleth, and would have used the relevant teachings of these references to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 23

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “On the preliminary record, no claim construction of “digest view” has been requested, and to the extent Patent Owner indirectly presents a claim construction argument, we decline to read the exemplary description of a digest view in the ’384 patent specification into limitations 1.6 and 1.7. Rather, in our view, the plain language of claim 1 controls because it recites that a digest view “presents information about a set of the VOD content that are associated with a series,” as recited in limitation 1.6. Ex. 1001, 56:55– 57. We find that Petitioner has sufficiently shown on this record that each of the TechnoBuffalo 1:03 view, the TechnoBuffalo 1:09 view, and the MissingRemote 1:54 view teaches or suggests the presentation of series,” as recited. Patent Owner agrees that the TechnoBuffalo 1:03 view is a digest view. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the VOD content that are associated with a series,” as required by claim 1 for a digest view. Additionally, even if we were to adopt Patent Owner’s proposed strictures on “digest view,” the TechnoBuffalo 1:03 view constitutes a digest view under such a construction, as, for example, the “synopsis of entire season” on that view teaches the presentation of information about a set of the VOD content that are associated with the series. Ex. 1003 ¶ 164 (cited at Pet. 41); see Prelim. Resp. 15 (acknowledging that this view is a digest view). The Petition does not assert that the proposed combination would result in a system in which either the TechnoBuffalo 1:03 or the TechnoBuffalo 1:09 view would be displayed upon the selection of a series (as Patent Owner asserts, Prelim. Resp. 19), but rather that the TechnoBuffalo 1:03 view is taught as being presented in TechnoBuffalo as a result of a series selection and, that, “[a]lternatively,” one of ordinary skill would have made the design choice to display the TechnoBuffalo 1:09 view as a direct result of the selection of a series. Pet. 42–43; Ex. 1003 ¶ 167.” slip op. at 29

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). At present, Patent Owner does not dispute this definition. Prelim. Resp. 9–10. The definition proposed by the Petitioner appears to be consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition for the purpose of this Decision.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,578,384
• Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Institution denied
  PTAB · Nov 22, 2024 · IPR2024-00722 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because it could not determine with reasonable certainty the scope of “a different user interface device” to assess the asserted obviousness grounds.

  RulingsInstitution decision

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

    “an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “After considering the determinations in the District Court Order, we agree with the district court that we cannot ascertain with reasonable certainty the scope of the claim term “a different user interface device.” See Ex. 2001, 25 (the district court explaining that “‘user interface device’ in the claim and in view of the intrinsic evidence, as emphasized by counsel’s 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated . reasonable certainty those skilled in the art about the scope of the invention.”). As the district court found, the ’168 patent specification uses the term “user interface device” inconsistently, for example, describing “four different user interface devices” in a navigation bar including the “movies user interface device 2204” in Figure 22A. Id. at 23 (citing Ex. 1001, 45:19–20, 45:27–29). Additionally, the specification appears to describe user interface devices with reference to the rows in Figure 22B, and other parts of the specification also describe selectable interface elements as “user interface device[s].” Ex. 1001, 45:33–37 (cited at Ex. 2001, 23–24), 41:31– 45, 46:67–47:2, 47:18–21, 48:18–20. Still further, the specification appears to describe a menu as a type of user interface device. Id. at 49:3–5 (cited at Ex. 2001, 24), 51:17–19 (same). In addition to these citations from the District Court Order, we note that the term “user interface device” is used when describing a user selecting a specific year from a display of years provided on a user interface: “If user selection 1460 is selected by the user using a user interface device, a new user interface presentation is provided.” Id. at 40:39–46 (emphasis added). On the record before us, we agree with the district court that, based on the ambiguity in the specification, “it is indiscernible what subset of the user interface, if any, is the user interface device.” Ex. 2001, 24. Therefore, we conclude that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability.” slip op. at 13

  • BurdenNot reached

    “an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16

  Claim constructioncites KSR · Graham
  Patents in suitUS 9,232,168
• Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution denied
  PTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.

  RulingsInstitution decision

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

    “We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9

  • Expert testimonyPetitioner expert discountedOther

    “Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33

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

    “Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,997,660
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 22, 2024 · IPR2024-00145 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10

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

    “3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. 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 11

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We determine that Patent Owner has not shown that it is entitled to the presumption of nexus. That is, Patent Owner has not shown that product “is the invention disclosed and claimed.” Fox Factory, 944 F.3d at 1374 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Petitioner is correct that Patent Owner did not discuss in its Patent Owner Response whether the claims of the ’407 patent are coextensive with the DoDots patent. We examine Patent Owner’s contentions in its Sur-reply of coextensiveness, including Patent Owner’s contention that “[t]he ‘gist’ of the inventions centered around the NIM template” (PO Sur-reply 23), to determine if the DoDots product was coextensive or, even if not, if “the unclaimed features amount to nothing more than additional insignificant features,” in which case the presumption of nexus may still be appropriate. See Fox Factory, 944 F.3d at 1373 (“Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.”); Teva Pharms., 8 F.4th at 1361–63 (discussing the “spectrum” of coextensiveness, from one in which unclaimed features are insignificant, which might not disturb the presumption, to one in which a critical feature is unclaimed, which would not show coextensiveness). We determine that the record evidence shows that at least the feature of the “developer ecosystem” was significant and not coextensive with the claims. John Kembel’s testimony describes “a whole developer ecosystem” including a “dev Dot” that allows “web developers to become Dot developers.” Ex. 1031, 59:2–17. Patent Owner contends that NIMs and NIM templates, as claimed, are the only critical features of the DoDots products, but the testimony of John Kembel confirms the criticality of the developer ecosystem: “[Y]ou could collect Dots, you could share Dots, you could organize them into packs based on your different work products, but the gist and the magic of the invention really comes down to the concept of a Dot, the Dot definition, and the server infrastructure that enabled those to be defined, collected, developed, and distributed.” Id. at 19:16–22 (emphasis added); see Ex. 2021 ¶¶ 36–43; Ex. 2027, 6 (discussing the “DevDot”); Ex. 2029.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner

    “art had a recognized need for a solution to the problem, and that others had tried and failed to find a solution to that problem. Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017). We have reviewed the cited evidence presented by Patent Owner, and find that it does not evince strong evidence of a long-felt but unsolved need that Patent Owner contends was addressed by the DoDots products.” slip op. at 34

  Patent outcomesUS 8,510,407 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,510,407
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 22, 2024 · IPR2023-00701 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01279 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience. PO Resp. 9 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10

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

    “3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. 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 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “As noted above, our construction requires “a fully configurable frame, with one or more controls, through which content is presented to the user.” We decline to adopt the construction Patent Owner urges—that the content presented to the user must itself be fully configurable. See PO Resp. 38–39. Rather, our construction derives from language in the specification, which is immediately followed by language describing the advantage of a fully configurable frame: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:21–28; Ex. 1012, 9–10 (citing Ex. 1001, 5:21–24). Patent Owner itself quotes a portion of the specification that describes the “shortcomings” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and developers “have limited control over the user experience” (Ex. 1001, 2:3–29 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01279 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:24–28). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’407 patent specification’s disclosure that “[t]he developer has full control over all aspects of the appearance and functionality of NIM frame.” PO Resp. 38 (quoting Ex. 1001, 17:32–43). However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance and operation of the NIM frame, not the content. Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 106. We find persuasive, and credit, Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars, and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). This testimony is supported by the cited teachings and is consistent with our claim construction.” slip op. at 17

  Patent outcomesUS 8,510,407 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,510,407
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • 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 the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31

  Patent outcomesUS 10,129,825 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,129,825
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24

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

    “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. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17

  Patent outcomesUS 10,524,202 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 9, 2024 · IPR2024-00144 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1–4, 6–10, and 13–15 as obvious over Brown and Wecker, and claims 5, 11, 12, and 16–21 as obvious over Brown, Wecker, and Beer.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -00988 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010) states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 9 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “C. Claim Construction 1. “networked information monitor” The term “networked information monitor” (“NIM”) appears in each of independent claims 1 and 16. In the -00988 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the the -00988 IPR we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We determine that Petitioner has shown by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to make the proposed combination of Brown and Wecker with a reasonable expectation of success.3 Brown and Wecker each describe the access and display of web content outside of the then-traditional browser model, with each describing subscribing to web content in a way which periodically new content is retrieved and updated. Ex. 1005, 13:4–8; Ex. 1006, 4:3–6, 4:53– 62. While Wecker provides extensive description relative to a mobile device and Brown does not focus on a mobile device, Petitioner is correct in its contentions that Wecker describes the use of a desktop computer for viewing its mobile channels and that Brown specifically discusses that, while the 3 With respect to Patent Owner’s contention that the Reply introduced new arguments and evidence with respect to this combination (PO Sur-reply 4), we note that we make this determination relying only on the evidence and argument in the Petition. device it describes is “preferably a general purpose personal computer,” the device may also be a hand-held device. Ex. 1005, 4:32–49; Pet. 12, 13 (citing Ex. 1005, 4:44–49; Ex. 1006, 3:63–66, 4:3–6; Ex. 1003 ¶¶ 37, 39); see Ex. 1006, 4:8–13 (describing providing a desktop user with content while requiring small amounts of bandwidth). While Patent Owner’s arguments focus on its assertions regarding complexity and impossibility in the combination of Brown and Wecker, Petitioner’s argued combination involves the application of Wecker’s subscription to a mobile channel which provides for periodic retrieval of updated mobile channel data, specifically including new and updated script files, separate from data files, for use in implementing Brown’s desktop components. Pet. 11–15, 25–26 (citing Ex. 1006, 3:8–20, 3:63–66, 4:3–6). With reference to the combination of these elements, after review of the record we do not agree with Patent Owner’s arguments that one of ordinary skill in the art would not have had a reasonable expectation of success in implementing Wecker’s independent channels in Brown’s composite desktop, even given Brown’s use of a single file that includes the HTTP instructions for more than one desktop component. See PO Resp. 17–21. We determine that Petitioner adequately shows Brown’s capacity to deal with individual desktop components while using one file, because Brown’s desktop shell allows the addition of additional desktop components to the composite desktop. Pet. 11, 51 (citing Ex. 1005, 7:21–23; Ex. 1003 ¶ 35). We agree that the mobile channel script files in Wecker are similar in objective to the HTML instructions in Brown. After considering the entirety of the record, we credit Dr. Schmidt’s testimony that one of ordinary skill in the art would have found the use of script files as in Wecker in the structure of Brown could be accomplished with a reasonably high expectation of success. Ex. 1003 ¶¶ 37, 38. Additionally, against the backdrop of the level of skill in the art (as determined above, Section II.B, and as exemplified by the subject patent and the prior art asserted), the record supports the conclusion that the use of the cache and the mobile channel script files from Wecker in Brown could have been accomplished with a reasonable expectation of success. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). On this record, Patent Owner’s argument that detail about the changes necessary to accommodate Wecker’s mobile channel files in Brown’s composite desktop is inconsistent with the “well-established” proposition “that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).” slip op. at 17

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

    “Our construction requires “a fully configurable frame” and we decline to make the determination that Patent Owner urges, that the construction requires that the content presented to the user must be fully configurable. See PO 36–37. Rather, the construction derives from the specification, immediately followed by the language: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 4:59–63); Ex. 1012, 9–10 (citing Ex. 2054, 5:40–43). Patent Owner itself quotes a portion of the specification of the ’083 patent that describes the “limiting factors” (PO Resp. 6) of prior art browsers, namely “controls associated with a browser are not fully configurable” and prior art browsers “provide very limited control to a user or content provide[r] to alter the frame and controls provided by the browser window” (Ex. 2054, 2:47, 2:57–59 (quoted at PO Resp. 6–7)). The Federal Circuit also quoted the ’545 patent’s disclosure contrasting the “fully configurable” NIM with thencurrent web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the - 00988 IPR. Ex. 1014, 3 (quoting Ex. 1001, 4:56–59). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’545 patent specification’s disclosure that “frame shape and content may be wholly defined by the Dot developer.” PO Resp. 36–37, citing Ex. 2054 10:55–57. However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance of the frame. In particular, we find the word “frame” in the phrase “frame shape and content” modifies both “shape” and “content” so that the phrase refers to both the shape and the content of the frame, , rather than to frame shape and, separately, the content presented within the frame. See Ex. 2054, 10:46–55 (“The frame . . . defines that area . . . in which data may be rendered [and] may contain rendered Internet data . . . . The appearance of the frame (if any) together with data that is displayed therein is the visible instantiation of the [NIM]. Any Internet data or media data may be contained within the frame.”). Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶¶ 105–114. We instead credit Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). Additionally, we also do not find compelling Patent Owner’s argument that our construction of “a fully configurable frame with one or more controls . . .” requires “configurable control(s)” and that the controls identified in Brown are not sufficiently configurable to meet this requirement. PO Resp. 38. Rather, we understand portions of the ’083 specification cited by Patent Owner to describe, again with reference to then-current browsers, the problem of configurability relating to the appearance of the frame and the restrictions on the controls of the frame – that the vendor of the browser brands the browser in which content appears and regulates the controls associated with the frame. See, e.g., Ex. 2054, 2:45–49 (quoted at PO Resp. 6–7); Ex. 1001, 1:65–67 (“There is a growing desire for content providers to . . . fully brand and control the frame in which the content appears.”). For the same reason, we do not agree with Patent Owner that all data related to a control must be present in the NIM template, rather than elsewhere, for a frame to be fully configurable. See PO Resp. 39–40. Thus, we determine that the availability of different controls to the developer of a NIM (e.g., horizontal and vertical scroll bars if desired, as in Brown, Fig. 6A), teaches or suggests “one or more controls” as required by our claim interpretation of a NIM. For similar reasons, we credit Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable because they can be positioned at any location and have specified controls. Ex. 1003 ¶ 51, as it is consistent with the descriptions in the specification, as noted above. In contrast, also in light of the descriptions in the specification, we give less credit to Dr. Selker’s testimony that “fully configurable” requires that the content presented to the user must be modifiable, that the controls must be developed by the NIM developer and implemented in the NIM template, and that setting position, size, or scrolling could not be a frame control. Ex. 2010 ¶¶ 106, 107, 109–112. In light of these determinations, we find that Brown teaches that its desktop components are floating frames that can be positioned anywhere on the screen. Ex. 1005, 7:24–26, 12:61–64. These frames have frame controls. Id. at Fig. 3A (elements 306, 308). The frames display a piece of web-based content to a user. Id. at 7:22–23, Fig. 3A. Accordingly, we find that Brown’s desktop components teach or” slip op. at 23

  Patent outcomesUS 9,369,545 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,369,545
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 9, 2024 · IPR2023-00756 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–21 are unpatentable as obvious over Brown and Wecker, with Beer added for claims 5, 11, 12, and 16–21; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “of independent claims 1 and 16. In the -00988 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the the -00988 IPR we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We determine that Petitioner has shown by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to make the proposed combination of Brown and Wecker with a reasonable expectation of success.3 Brown and Wecker each describe the access and display of web content outside of the then-traditional browser model, with each describing subscribing to web content in a way which periodically new content is retrieved and updated. Ex. 1005, 13:4–8; Ex. 1006, 4:3–6, 4:53– 62. While Wecker provides extensive description relative to a mobile device and Brown does not focus on a mobile device, Petitioner is correct in its contentions that Wecker describes the use of a desktop computer for viewing its mobile channels and that Brown specifically discusses that, while the 3 With respect to Patent Owner’s contention that the Reply introduced new arguments and evidence with respect to this combination (PO Sur-reply 4), we note that we make this determination relying only on the evidence and argument in the Petition. device it describes is “preferably a general purpose personal computer,” the device may also be a hand-held device. Ex. 1005, 4:32–49; Pet. 12, 13 (citing Ex. 1005, 4:44–49; Ex. 1006, 3:63–66, 4:3–6; Ex. 1003 ¶¶ 37, 39); see Ex. 1006, 4:8–13 (describing providing a desktop user with content while requiring small amounts of bandwidth). While Patent Owner’s arguments focus on its assertions regarding complexity and impossibility in the combination of Brown and Wecker, Petitioner’s argued combination involves the application of Wecker’s subscription to a mobile channel which provides for periodic retrieval of updated mobile channel data, specifically including new and updated script files, separate from data files, for use in implementing Brown’s desktop components. Pet. 11–15, 25–26 (citing Ex. 1006, 3:8–20, 3:63–66, 4:3–6). With reference to the combination of these elements, after review of the record we do not agree with Patent Owner’s arguments that one of ordinary skill in the art would not have had a reasonable expectation of success in implementing Wecker’s independent channels in Brown’s composite desktop, even given Brown’s use of a single file that includes the HTTP instructions for more than one desktop component. See PO Resp. 17–21. We determine that Petitioner adequately shows Brown’s capacity to deal with individual desktop components while using one file, because Brown’s desktop shell allows the addition of additional desktop components to the composite desktop. Pet. 11, 51 (citing Ex. 1005, 7:21–23; Ex. 1003 ¶ 35). We agree that the mobile channel script files in Wecker are similar in objective to the HTML instructions in Brown. After considering the entirety of the record, we credit Dr. Schmidt’s testimony that one of ordinary skill in the art would have found the use of script files as in Wecker in the structure of Brown could be accomplished with a reasonably high expectation of success. Ex. 1003 ¶¶ 37, 38. Additionally, against the backdrop of the level of skill in the art (as determined above, Section II.B, and as exemplified by the subject patent and the prior art asserted), the record supports the conclusion that the use of the cache and the mobile channel script files from Wecker in Brown could have been accomplished with a reasonable expectation of success. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). On this record, Patent Owner’s argument that detail about the changes necessary to accommodate Wecker’s mobile channel files in Brown’s composite desktop is inconsistent with the “well-established” proposition “that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We determine that Patent Owner has not shown that it is entitled to the presumption of nexus. That is, Patent Owner has not shown that product “is the invention disclosed and claimed.” Fox Factory, 944 F.3d at 1373 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Petitioner is correct that Patent Owner did not discuss whether the claims of the ’545 patent are coextensive with the DoDots patent in its Patent Owner Response. We examine Patent Owner’s contentions in its Sur-reply of coextensiveness, including Patent Owner’s contention that “[t]he ‘gist’ of the inventions centered around the NIM template,” (PO Sur-reply 24–25) to determine if the DoDots product was coextensive or, even if not, if “the unclaimed features amount to nothing more than additional insignificant features,” in which case the presumption of nexus may still be appropriate. See Fox Factory, 944 F.3d at 1373 (“Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.”); Teva Pharms., 8 F.4th at 1362 (discussing the “spectrum” of coextensiveness, from one in which unclaimed features are insignificant, which might not disturb the presumption, to one in which a critical feature is unclaimed, which would not show coextensiveness). We determine that the record evidence shows that at least the feature of the “developer ecosystem” was significant and not coextensive with the claims. John Kembel’s testimony describes “a whole developer ecosystem” including a “dev Dot” that allows “web developers to become Dot developers.” Ex. 1031, 59:2–17. Patent Owner contends that NIMs and NIM templates, as claimed, are the only critical features of the DoDots products, but the testimony of John Kembel confirms the criticality of the developer ecosystem: “[Y]ou could collect Dots, you could share Dots, you could organize them into packs based on your different work products, but the gist and the magic of the invention really comes down to the concept of a Dot, the Dot definition, and the server infrastructure that enabled those to be defined, collected, developed, and distributed.” Ex. 1031, 19:16–22 (emphasis added); see Ex. 2021 ¶¶ 36–43; Ex. 2027, 6 (discussing the “DevDot”); Ex. 2029. Patent Owner acknowledges, in its description of DoDots technology, that “[t]he claimed inventions of the ’545 patent . . . disclosed an ecosystem for software developers to author and distribute . . . data structures which the inventors referred to as NIM templates,” and contends that this ecosystem “attracted hundreds of independent Dot developers.” PO Resp. 2–3, 6. But despite touting the importance of this development ecosystem, Patent Owner does not address how it is disclosed in the claims of the ’545 patent, and we do not discern that it is. We are instructed that, even if we do not determine that a presumption of nexus attaches, nexus may still be proven by a showing “that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, 944 F.3d at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)); Lectrosonics at 33. We turn to the provided evidence of secondary considerations with this in mind.” slip op. at 40

  Patent outcomesUS 9,369,545 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,369,545
• Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentable
  PTAB · Oct 9, 2024 · IPR2024-00143 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–16 are unpatentable: claims 1–5 and 9–13 as obvious over Brown, and claims 6–8 and 14–16 as obvious over Brown and Wecker.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A person of ordinary skill (“POSITA”) relating to the subject matter of the ’083 Patent would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least three years of corresponding industry work experience. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01278 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 8 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 9–10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 8) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9

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

    “3. “execute the template” and “client device” Patent Owner requests construction of the terms “execute the template” and “client device.” PO Resp. 9–10. We do not construe these claim terms because their construction is not necessary to resolve the controversy before us. 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 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “networked information monitor” Our determination is that Petitioner has shown by a preponderance of the evidence that Brown’s desktop component teaches or suggests a NIM in accordance with our claim construction of that term. Our construction requires “a fully configurable frame” and we decline to make the determination that Patent Owner urges, that the construction requires that the content presented to the user must be fully configurable. See PO 36–37. Rather, the construction derives from the specification, immediately followed by the language: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:44–48 (using the term “Application Media Package,” which is synonymous with NIM (PO Resp. 4–5)); Ex. 1012, 9–10 (citing Ex. 1001, 5:40–43). Patent Owner itself quotes a portion of the specification that describes the “limiting factors” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and prior art browsers “provide very limited control to a user or content provide[r] to alter the frame and controls provided by the browser window” (Ex. 1001, 2:47, 2:57–59 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01278 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:44–48). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’083 patent specification’s disclosure that “frame shape and content may be wholly defined by the Dot developer.” PO Resp. 36–37, citing Ex. 1001 10:55–57. However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance of the frame. In particular, we find the word “frame” in the phrase “frame shape and content” modifies both “shape” and “content,” so that the phrase refers to both the shape and the content of the frame, rather than to frame shape and, separately, the content presented within the frame. See Ex. 1001, 10:46–55 (“The frame . . . defines that area . . . in which data may be rendered [and] may contain rendered Internet data . . . . The appearance of the frame (if any) together with data that is displayed therein is the visible instantiation of the [NIM]. Any Internet data or media data may be contained within the frame.”). Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 109. slip op. at 15

  Patent outcomesUS 8,020,083 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,020,083

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.