- Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · Apr 4, 2024 · IPR2022-01592 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–3, 8–12, 14–18, and 20 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claim 11 obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for petitioner
“would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Ex. 1001, 7:4–7, 21:57–67, 24:13–16, 29:18–20. We do not dispute that, without the microphone or some similarly functioning component, the device could not detect the input. However, Petitioner’s interpretation would be equally applicable if the limitation were “detect an input” and fails to give meaning to the modifier “voice” in the phrase “detecting a voice input” as recited. The abstract of the ’311 Patent explains that the device “detects a voice input” and “determines a first score of a criterion associated with the voice input.” Ex. 1001, code (57). Determining a score for the detected voice input implies some level of identification of the input as a voice, and not mere perceiving or sensing by the microphone. And, the Specification states that “in accordance with some implementations, a voiceactivated device determines whether the surrounding noise is sufficiently interfering with detection of spoken hotwords for waking up the device . . . or other spoken voice inputs.” Id. at 5:65–6:5. Thus, the ’311 Patent discloses that the device distinguishes between background noise and the detection of specific voice inputs like hotwords. We conclude that the ordinary and common meaning of “detecting a voice input” in the context of the claims and Specification of the ’311 Patent requires the device to identify the input as voice.6 In sum, we conclude that the ordinary and common meaning of “detecting a voice input” requires a process for identifying that an audio input includes voice and does not exclude speech recognition.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”7 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 24
Patent outcomesUS 11,024,311 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,024,311 - Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · Mar 15, 2024 · IPR2022-01594 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–3, 5–8, 10–13, and 15 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claims 5, 10, and 15 obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“PO Resp. 12–15; PO Sur-reply 1–6. Petitioner also does not argue either lexicography or disavowal. Tr. 8:9–17. We do not find either (1) lexicography or (2) disavowal, because (1) there is no clearly set forth definition of “detecting a voice input’ in the ’128 patent or (2) evidence of a clear and unmistakable intent to disavow the ordinary and customary meaning of “detecting a voice input.” Accordingly, we apply the ordinary and customary meaning of “detecting the voice input” in light of the language of the claims, specification, and file history (the intrinsic evidence). Thorner, 669 F.3d at 1365. In the Response and Reply, the parties assert different views of the ordinary and customary meaning of “detecting the voice input” as recited in the independent claims of the ’128 patent.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a “POSITA [(person of ordinary skill in the art)] in the technology field of the ’128 Patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1002 ¶¶ 63– 65.). Patent Owner does not present a position on the level of ordinary skill in the art at the time of the invention. See generally PO Resp. Petitioner’s proposal is consistent with the technology described in the Specification of the ’128 patent and the cited prior art. We adopt Petitioner’s proposed level of skill in the art.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”12 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Id. at 63, 65–66. We find Petitioner’s articulated reasons for combining the relevant teachings of Rosenberger and Kim to be well-supported. The Response contains this single sentence criticizing Petitioner’s showing of motivation to combine: “[A]ll of the Petition’s motivations to combine are clearly rooted in hindsight because, in Rosenberger, only devices that recognize a particular command (i.e., the devices that a voice command is intended for in the disclosure of Kim) need to participate in the arbitration process.” PO Resp. 30 (citing Ex. 2012 ¶ 87). This argument is not developed or explained and it contradicts the disclosure of Rosenberger. In Rosenberger, all the devices that detect and recognize a voice input (the trigger phrase) participate in the coordination or arbitration process. See, e.g., Ex. 1003, 9:57–10:33. This argument lacks merit. We find that the combination of Rosenberger and Kim teaches all the limitation of claims 5, 10, and 15 of the ’128 patent and that a motivation to combine the relevant teachings of these references existed. We conclude that a clear preponderance of the evidence establishes that claims 5, 10, and 15 of the ’128 patent are unpatentable as obvious.” slip op. at 30
Patent outcomesUS 9,812,128 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,812,128 - Sonos, Inc. v. Google LLCInstitution deniedPTAB · Mar 8, 2024 · IPR2023-01284 · APJ Kevin F Turner · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), exercising discretion because the follow-on petition substantially overlapped with an earlier petition and the General Plastic factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We note, first, that the General Plastic factors enumerated above are separately listed, such that we do not agree that factor 1 must be contingently read in lockstep with the other factors; each factor should be considered separately and an overall, holistic view of the totality of the circumstances presented should be considered. As such, we do not agree that any apparent lack of “road-mapping” concerns obviates this factor. Second, we agree with Patent Owner that the degree of overlap is substantial, with 14 of the 15 challenged claims being considered again under different grounds. Additionally, although claim 19 is challenged for the first time in the instant Petition, its challenge also includes challenges to the remaining 14 claims. This is also a relevant difference between the instant Petition and the proceeding cited by Petitioner, namely Panduit Corp. In the latter proceeding, the additional, second petition sought review of three additional claims only, i.e., not those additional claims, as well as previously instituted claims, and several were not previously instituted because “one of the asserted references was not shown to have been a printed publication,” and the panel did not construe the additional claims in the original proceeding. Panduit Corp., Paper 8, 9–10. In contrast, the instant Petition is largely directed to the same claims of the same patent, such that we determine this factor weighs in favor of discretionary denial.” slip op. at 7
Discretionary denialPatents in suitUS 11,024,311 - Medivis, Inc. v. Novarad Corp.No claims unpatentablePTAB · Mar 6, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–6 and 11–20 were not shown unpatentable: Doo did not disclose the claimed volume, the Doo-Amira combination lacked a persuasive rationale, and the other references were not shown publicly accessible.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: a bachelor’s degree in computer science, electrical engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties propose constructions for the claim terms “three- dimensional (3D) data,” “inner layer(s) of the patient,” “confined within a virtual 3D shape,” and “being having.” Pet. 11–14; PO Resp. 11–18. We do not need to construe any of these claim terms in order to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, neither the Petition nor Dr. Kazanzides explains how Doo’s curved plane teaches the claimed “volume.” See Pet. 36–37; Ex. 1012 ¶¶ 74–75 (essentially repeating the Petition). The Petition merely asserts that Doo’s image in Figure 7 “is confined within the volume of the virtual 3D shape illustrated in Figure 9,” without explaining how the shape of Figure 9 has a “volume.” Pet. 37. The Reply does no better, asserting that “Doo’s shape 532 in Figure 9 and shape 432 in Figure 7 are virtual 3D shapes.” Reply 18. This statement is conclusory and does not explain how Doo’s “false 3D” shapes have volume. Petitioner further attempts to establish that Doo’s disclosure of Figure 9’s shape 532 as “mimic[ing] the surface curvature of the patient’s body” is evidence that Doo discloses a 3D shape. Id. (citing Ex. 1008 ¶ 76). This argument, however, is unpersuasive because it takes Doo’s statement out of context. Doo explains that Figure 9’s warped “two-dimensional image 532 . . . mimic[s] the surface curvature of the patient’s body,” not that it has volume. See Ex. 1008 ¶ 76 (emphasis added). In other words, even though Doo’s shape 532 of Figure 9, when projected on a patient’s body (as in Figure 7) may appear to a surgeon like a 9 Our Institution Decision did not rely on Petitioner’s theory based on Doo Figures 7–9. We discuss our Institution Decision’s reasoning below under Petitioner’s second theory based on Doo Figures 6 and 11. half-cylinder shape having a volume, Doo’s technique avoids rendering a 3D shape like a half-cylinder (hence calling these “false 3D shapes”) because it instead simulates the body’s curvature with a mere curved two-dimensional plane. Second, we find that Doo’s curved plane does not, in fact, have a volume.10 Instead, Doo’s curved plane is a 2D plane merely “wrapped around an axis.” See Ex. 1008 ¶¶ 75–76. As Patent Owner persuasively argued at the hearing, Doo’s curved plane is not “half of a cylinder. It’s just a wrapped piece of paper.” Tr. 33:14–15. Just as curving a piece of paper would not give the curved paper a half cylinder’s volume, neither does curving Doo’s flat 2D plane create a half cylinder with volume. Viewed another way, curving a 2D plane does not impart volume to the plane any more than curving a 1D line into a parabola would impart area to the 1D line.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The U.S. Supreme Court has emphasized that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner’s argument fails this standard. Petitioner asserts a generic rationale that one of ordinary skill in the art would have applied Amira to Doo “to take advantage of the visualization technology disclosed in Amira (or any similar visualization software).” Pet. 41. But Petitioner’s assertion contains no explanation why one of ordinary skill would have taken advantage of Amira’s technology in the context of Doo. Petitioner’s rationale is so vague and broad that it could be applied to combine any two references because it merely asserts that one reference would “take advantage of the . . . technology disclosed in” another. See, e.g., In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been . . . ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’”). This approach wholly misses KSR’s “articulated reasoning” standard. See KSR, 550 U.S. at 418. The Reply’s assertion that reducing a surgeon’s cognitive load in Doo “suggests an improvement on conventional medical imaging displays, such as disclosed in Amira,” fares no better. Reply 20. This assertion again fails to explain why one of ordinary skill in the art would have combined Amira with Doo. For instance, Petitioner provides no explanation as to how Amira’s display would further reduce cognitive load. See Reply 19–20 (only vaguely referring to Amira’s “[t]racking capabilities [that] allow for . . . interaction with the visualization” (Ex. 1005, 14, 26)). Not only that, but Doo itself presents a solution for the cognitive load problem. See Ex. 1008 ¶ 14 (“The present invention is particularly adapted to manage the multitude of medical images needed to be viewed by a surgeon during an operation so that a surgeon is not required to look away from the patient, so that the surgeon does not have to sustain heavy cognitive loading.”). Petitioner does not persuasively explain why one of ordinary skill in the art would turn to yet another reference (like Amira) for an additional solution, or even what that solution would be.” slip op. at 23
Patent outcomesUS 11,004,271 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,004,271 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that the Cook and Bennett combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 6 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7. We determine that no claim terms require express construction for purposes of this Decision. See 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 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,912,687 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 16 and 17 for all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry of equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,461,719 - Trend Micro, Inc. v. Open Text Inc.Institution deniedPTAB · Feb 14, 2024 · IPR2023-01391 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Piccard was disqualified under pre-AIA § 103(c)(1), leaving no reasonable likelihood that claims 1–15 were unpatentable over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’932 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2
NonePatents in suitUS 8,719,932 - Trend Micro, Inc. v. Open Text Inc.Institution deniedPTAB · Feb 14, 2024 · IPR2023-01390 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Piccard was disqualified under pre-AIA § 103(c)(1), leaving neither asserted obviousness ground likely to establish claims 1–14 as unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. Petitioner asserts that Piccard qualifies as prior art under pre-AIA § 102(e). Pet. 4 (“Piccard . . . is prior art under pre-AIA § 102(e) because it was filed on June 30, 2005, before the earliest possible priority date of the ’243 patent.”). Piccard cannot qualify as prior art under § 102(a) or § 102(b), as Piccard published January 4, 2007, which is after the ’243 patent’s April 20, 2006 filing date. Ex. 1007, code (43); Ex. 1001, code (22). Therefore, Piccard could qualify as prior art only under § 102(e) and may be subject to disqualification under § 103(c)(1). Cf. Unified Patents, Inc. v. Uniloc Luxembourg S.A., IPR2017-02148, Paper 9 at 19–20 (PTAB Apr. 17, 2018) (determining that a reference was not disqualified under § 103(c)(1) because it qualified as prior art under § 102(a) and therefore was not “prior art only under one or more of subsections (e), (f), and (g) of section 102”).” slip op. at 6
§ 102 anticipationPatents in suitUS 8,201,243 - Sonos, Inc v. Google LLCInstitution deniedPTAB · Feb 8, 2024 · IPR2023-01288 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Rosenberger anticipated any challenged claim or that Rosenberger and Jang rendered claims 2, 3, 9, 10, and 12 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art “would have had the equivalent of a fouryear degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2-4 years of experience in the field of speech processing, or an equivalent level of skill, knowledge, and experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–39). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“construction in a footnote addressing “perform[ing] speech recognition.” Prelim. Resp. 14 n.1 (“Patent Owner does not concede to the correctness of the ITC’s construction of ‘perform[ing] speech recognition,’ particularly its finding that ‘hotword[6] detection’ necessarily includes speech 5 In the Initial Determination of Violation of Section 337 and Recommended Determination on Remedy and Bond (Ex. 2001 (“Initial Determination”)), the plain and ordinary meaning of “perform speech recognition” was construed “to include[] hotword detection” (id. at 49). 6 According to the ’748 patent, a “hotword” is a predetermined audio command or audio trigger such as “Hello phone,” “Okay car,” “Hello device,” “Give me directions,” “what’s the time,” “make a call,” “go silent,” or “play.” Ex. 1001, 2:66–67, 4:12, 5:14–15, 5:40, 9:61–62, 10:6–7, 20:16– recognition.”). Although Patent Owner does not “concede to the correctness” of this construction in this proceeding, Patent Owner does not argue what, if anything, is wrong with this construction. Before the ITC, Patent Owner argued that the plain and ordinary meaning of “[perform/performing] speech recognition” was not broad enough to cover “hotword detection.” See Ex. 2001, 30. The ITC found Patent Owner’s position to be “untenable” because hotword detection “is a form of speech recognition in every ordinary sense.” Id. at 31. We agree with the ITC that the plain and ordinary meaning of performing speech recognition includes hotword detection. Moreover, the ’748 patent describes using speech recognition for hotword detection. Ex. 1001, 4:57–63 (“[A]udio input modules may be operable to utilize speech recognition techniques . . . to determine whether the obtained audio input includes a predetermined audio command.”). We apply the plain and ordinary meaning and consider the meaning of “perform/performing speech recognition” to include hotword detection. 17, 20:20–21, 24:29–30, 24:38–39, 24:40–41, 24:43–44, 24:51, 25:3–4. The ’748 patent further provides:” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“positions relating to this limitation. See Pet. 33–34 (Ex. 1003, 8:20–39); Prelim. Resp. 4–5 (citing Ex. 1003, 8:20–32). The cited passage in Rosenberger states: Upon receiving and recognizing a speech trigger phrase and determining that it is in a better position to handle subsequent user interaction than any other device that simultaneously recognized the same speech trigger phrase (see device coordination discussion below) . . . the device beeps, changes its status light 34 or plays a prerecorded or synthesized audio message (e.g. "How may I help you?") through speaker 19 and/ or 20 to prompt the user to say one of the speech commands from a known vocabulary or grammar stored in the speech pattern memory 14. Ex. 1003, 8:20–32 (emphasis added). This passage indicates speech recognition to recognize the trigger phrase (i.e., hotword detection) is performed by all the devices that receive the trigger phrase prior to any coordination determination. This passage supports Patent Owner’s argument and contradicts Petitioner’s contention that Rosenberger discloses this limitation. We agree with Patent Owner that the flaw in Petitioner’s reasoning is that the devices disclosed in Rosenberger upon receiving a spoken audio input do not make any determination as to whether speech recognition, particularly hotword detection, should be performed. All the devices perform speech recognition by performing hotword detection before the coordination determination is made. See Ex. 1003, 8:20–32.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,632,748 - Meta Platforms, Inc. v. Eight KHZ, LLCInstitutedPTAB · Jan 9, 2024 · IPR2023-01005 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 9–14 and 16–20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01005 challenging the patentability of claims 9–14 and 16–20 of the ’628 patent, then [Petitioner, Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13, 21 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. at 13. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We disagree based on the current record. Schröder “must be considered for everything that it teaches, not simply the . . . preferred embodiment” that involves only adjusting the HRTFs to maintain the sound’s direction when there are small, relatively frequent movements and performing cross-talk filtering in a particular way. In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”). Petitioner’s position is that (1) Billinghurst teaches spatializing sound for the avatar of a remote collaborator shown on the display, as well as changing the spatialized sound in response to the wearer’s head movements, but does not explicitly describe how it does so, and, therefore, (2) a person of ordinary skill in the art would have looked to a reference like Schröder for details. See Pet. 21–22, 24, 34–36, 45–48. Petitioner relies on Schröder solely for its teachings regarding HRTF processing, not, for example, its description of a particular Schröder processes voice using HRTFs and adjusts HRTFs in response to head movements to maintain direction some of the time (i.e., when there are small, relatively frequent movements); Schröder simply takes a different action in certain other circumstances (i.e., it resets the direction when there is a larger, relatively less frequent movement). See Ex. 1012, pg. 4, l. 12–pg. 6, l. 3; Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (“combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness”).” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’628 patent (June 2014), a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶¶ 32–34). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 5. Based on the record presented, including our review of the ’628 patent and the types of problems and solutions described in the ’628 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term experience.” slip op. at 14
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,674,628
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.