- PTAB · Jul 15, 2024 · PGR2024-00011 · APJ Jean R Homere · PGR · Institution
The Board instituted PGR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that at least claim 1 is obvious over Chang, Chang II, and POSITA knowledge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2
- Other 314aDenied
“Petitioner hereby stipulates that, if the PTAB institutes this post-grant review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition. Pet. 106. Petitioner cites the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”)3 in support of its contentions. Pet. 106.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d), the Board uses the following two-part framework: (1) determining 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, determining 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). In applying the two-part framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we consider whether the petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“At the time of the invention, a POSITA would have had a bachelor’s degree in computer science, electrical engineering, or an equivalent, and two years of professional experience working with computer network protocols such as USB. Lack of work experience can be remedied by additional education, and vice versa. Id. (citations omitted). At this stage, we find Patent Owner’s proposed level of a POSITA to be consistent with the problems and solutions disclosed in the ’643 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We nonetheless invite the parties to further address this issue, if they deem it necessary and appropriate. The parties should also specifically explain how different definitions for one of ordinary skill in the art relate to specific arguments and issues of unpatentability or claim construction, to the extent that a dispute remains as to who constitutes a POSITA.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,681,643 - PTAB · Jun 14, 2024 · IPR2024-00461 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 on all petitioned grounds and granted Nokia’s motion to join IPR2023-00978 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Patent Owner argues that we should discretionarily deny the Petition because “[t]he Board and the Federal Circuit have already conducted inter partes review of Claims 28 and 29 of the ’931 Patent based on the Vornefeld reference and confirmed the patentability of the claims,” and, “while Nokia now cites additional prior art references, those new references add nothing of significance to Vornefeld and the other prior art references previously considered by the Board and the Federal Circuit.” Prelim. Resp. 45.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“could find that Nokia is or was an indemnitor to Sprint, Patent Owner is left with the allegation that Nokia and Sprint have a pertinent relationship with each other because current Petitioner Nokia was a supplier of prior petitioner Sprint at the time of the Sprint IPR and Sprint Litigation. See Prelim. Resp. 54–55. Patent Owner does not direct our attention to any evidence indicating the substance of that relationship. See id. Without more, we cannot discern whether there was a standard customer-manufacturer relationship or whether there was, as Patent Owner alleges, a “significant relationship.” Prelim. Resp. 55. We determine, on the record in this case, that the mere existence of a supplier-customer relationship does not tend to show that Nokia is a real party in interest or privy of Sprint as argued by Patent Owner. See, e.g., WesternGeco LLC, 889 F.3d at 1321 (“a contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not necessarily establish privity); Wi-Fi One, LLC, 887 F.3d at 1340–41 (affirming the Board’s determination that there was an inadequate showing of privity or of a real party in interest relationship even though the “evidence showed that Broadcom’s interests as to the issue of infringement were generally aligned with those of its customers”).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented 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.” 35 U.S.C. § 314(a) (2018). For the reasons that follow, we institute an inter partes review as to both of the challenged claims of the ’931 patent on all the grounds of unpatentability set forth in the Petition. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider: (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Trial Practice Guide9 at 76. Petitioner contends that “joinder with the Verizon IPR is appropriate because Nokia’s Petition includes identical arguments and the same grounds raised in the existing Verizon IPR proceeding (i.e., challenges the same claims of the same patent, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the Verizon Petition).” Mot. 5. According to Petitioner, “good cause exists for joining Nokia to the Verizon IPR proceeding so that the Board can efficiently ‘secure the just, speedy, and inexpensive resolution’ of Nokia’s and Verizon’s petitions in a single proceeding.” Id. (quoting 37 C.F.R. § 42.1(b)). Petitioner also represents that it will act as an “understudy,” and that it “agrees to adhere to all applicable deadlines set forth in the Verizon IPR Scheduling Order,” and contends that, accordingly, the trial schedule should not be adversely impacted by the joinder. Id. at 2, 6. Petitioner further asserts that, because no new issues are being introduced by the requested joinder, “Patent Owner will . . . not be required to provide any additional analysis or arguments beyond what it will already provide in” slip op. at 24
Discretionary denialPatents in suitUS 7,230,931 - PTAB · Jun 14, 2024 · IPR2024-00392 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 of the ’931 patent on all petition grounds and granted Ericsson’s motion to join IPR2023-00978 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“[The inquiry into whether a party is in privity with another] is grounded in due process concerns for both the petitioner . . . and the opposing party . . . . In other words, the inquiry has a dual-focus on preventing the petitioner from now lodging a successive attack for which it already had a first bite, thus, protecting the defending party from an unwarranted second attack, while also ensuring that the petitioner is not unfairly limited in its ability to lodge its challenges if it has not had a full and fair opportunity to do so already. Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018, 1028 (Fed. Cir. 2021) (citations omitted). Accordingly, “the reach of privity cannot extend beyond the limits of due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). “[A] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Id. (quoting Taylor, 553 U.S. at 894). “Because nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (citing, inter alia, Taylor, 553 U.S. at 892–93). The Supreme Court in Taylor identified considerations where nonparty preclusion would be justified, including:” slip op. at 12
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Section 315(b) provides: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). The referenced subsection (c) of section 315 is the provision under which Petitioner has filed its Motion for Joinder. Mot. 1. Patent Owner reiterates its argument that prior petitioner Sprint is Petitioner’s privy, and argues that, therefore, Petitioner is time-barred under § 315(b) because Sprint was served with a complaint more than a year prior to the filing of the Petition in the present case. See Prelim. Resp. 26–27. Patent Owner relies again, as the basis for the privity argument, on the determinations made in the Regents IPR and argues that “Ericsson must similarly be time-barred.” Id. We do not agree with Patent Owner. The statute provides that “[t]he time limitation set forth in [§ 315(b)] shall not apply to a request for joinder under [§ 315(c)].” 35 U.S.C. § 315(b). Because Petitioner’s Motion is a request for joinder under § 315(c), the statutory one-year time-bar does not apply.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Patent Owner argues that we should discretionarily deny the Petition because “[t]he Board and the Federal Circuit have already conducted inter partes review of Claims 28 and 29 of the ’931 Patent based on the Vornefeld reference and confirmed the patentability of the claims,” and, “while Ericsson now cites additional prior art references, those new references add nothing of significance to Vornefeld and the other prior art references previously considered by the Board and the Federal Circuit.” Prelim. Resp. 49. 12 Patent Owner, in the Introduction section of the Preliminary Response, argues that “strong grounds exist here for the Board to exercise its discretion to deny the petition under 35 U.S.C. § 325(d) and Fintiv.” Prelim. Resp. 2–3. Although the Preliminary Response contains sections arguing for discretionary denial under § 325(d) and General Plastic, it does not contain a section discussing Fintiv. See, e.g., id. at ii–iii (Table of Contents, heading G). We understand the Fintiv reference to be an inadvertent holdover from Patent Owner’s very similar preliminary response filed in the Verizon IPR. We, in the Verizon IPR, instituted an inter partes review of the ’931 patent on both challenged claims and all asserted grounds of unpatentability. IPR2023-00978, Paper 20 at 54–55. In the Verizon IPR, we addressed Patent Owner’s arguments that we should exercise discretion to deny institution under § 325(d), and we declined to deny institution on that basis. Id. at 22–27. Petitioner here represents that “[t]he instant Petition is substantially identical to the Verizon Petition; it involves the same claims of the same patent, the same grounds of unpatentability, and the same supporting evidence.” Mot. 1. Patent Owner’s § 325(d) arguments in the case currently before us appear to be substantively identical to those made in the preliminary response in the Verizon IPR, with the substitution of “Ericsson” for “Verizon.” Compare Prelim. Resp. 49–55 with IPR2023- 00978, Paper 15 at 46–53. For the same reasons set forth in our Institution Decision in the Verizon IPR, we decline to discretionarily deny institution under § 325(d) in the current case brought by Petitioner Ericsson. IPR2023- 00978, Paper 20 at 22–27.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“On the record before us, no real party in interest, privity, or otherwise legally significant relationship has been shown to exist between current Petitioner Ericsson and prior petitioner Sprint that might warrant denying a follow-on petition by a different petitioner. As such, General Plastic factor 1 weighs against denying institution. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 5– 6 (Vidal Apr. 19, 2024); see id. (“Under USPTO policy and precedent, General Plastic has not been extended to any cases in which the first and second petitioners do not have a significant relationship.”); see also Alcatel- Lucent USA Inc. v. Oyster Optics, LLC, IPR2017-02146, Paper 12 at 12 (PTAB Feb. 28, 2018) (non-precedential) (“Once resolution of factor 1 indicates that Petitioner had not previously filed a petition against the same patent, factors 2–5 bear little relevance unless there is evidence in the record of extenuating circumstances such as a showing that there was a previous petitioner who challenged the same patent and that the previous petitioner and the current petitioner planned the staggered petitions.”).” slip op. at 24
Discretionary denialPatents in suitUS 7,230,931 - Google LLC v. Wildseed Mobile, LLCSome claims unpatentablePTAB · Jun 3, 2024 · IPR2023-00247 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–14 and 16–22 are unpatentable as obvious over the asserted combinations; claim 15 was not shown unpatentable because the SMS theory did not establish rendering instructions.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 12. Prior to institution, Patent Owner agreed (Prelim. Resp. 9), and we applied, each term its ordinary and customary meaning in our Institution Decision. Dec. on Inst. 8 (“At this stage, no need exists to construe any claims expressly to resolve the parties’ disputes”). In its post-institution briefing, Patent Owner does not argue for construction of any particular claim term. Although Patent Owner argues that Rothschild does not teach “generate a hot link message,” we determine that the controversy is over the teachings of Rothschild and the assertions presented by Petitioner rather than the construction of that term. See, e.g., Pet. Reply 15 (“by inserting the advertisement into the email and formatting it for transmission, Rothschild’s email server generates the advertisement”); Tr. 8:5–11 (“the advertisement [is] inserted into the email, and then it is formatted into something that the user can interact with. In other words, it becomes a hot link at that point.”); PO Sur-reply 1 (“the Petition expressly relied on creating ads (allegedly ‘hot links’) during message formatting”), 3– 4 (stating that in the ’169 Patent, “[l]inks will be created” using “pre- cited sections, both parties acknowledge that “generat[ing]” a hot link requires pre-created content and some further action, differing only on whether Rothschild teaches any such further action. Consequently, we need not construe that phrase to resolve the parties’ disputes. 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1003 ¶¶ 18–20). Patent Owner applies Petitioner’s assessment of the level of ordinary skill for the purposes of this proceeding. PO Resp. 9. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is consistent with the ’169 patent and the asserted prior art.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
Patent outcomesUS 10,869,169 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,869,169 - Google LLC v. Wildseed Mobile, LLCAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00246 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–25 are unpatentable as obvious: claims 1, 5–6, 8–11, 15–16, 20–21, and 25 over Sasaki, Ellis, and Jacobi; claims 2–4, 12–14, 17–19, 22–23 over those references and Teicher; claims 7 and 24 over those …
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art on or before June 22, 2007 would have been knowledgeable and familiar with the field of portable devices and venue or event recommendations . . . . That person would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field . . . . Lack of work experience can be remedied by additional education, and vice versa.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the foregoing discussion, Patent Owner fails to provide a sufficient reason to discount the weight of Dr. Houh’s testimony. We credit Dr. Houh’s testimony to the extent that it “articulate[s] specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools, 829 F.3d at 1380.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 13. Patent Owner “agrees with Petitioner that the terms of the challenged claims should be given their plain and ordinary meaning,” and provides its characterization of that meaning for some terms. Resp. 7–10. Patent Owner asserts that the plain meaning of “plurality of media” is “more than one media.” Id. at 8. Patent Owner further asserts that the “inferring . . . preferences” in the claims does not encompass forming inferences based upon user-entered preferences. Id. at 8–10. However, as that the claimed limitations are taught even under Patent Owner’s characterization of the plain and ordinary meaning of the terms. See infra § II.E.4. For the foregoing reasons, no need exists to construe any claim terms expressly to resolve the parties’ disputes. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On the complete trial record, Patent Owner’s arguments do not show a teaching away from the claimed invention or a lack of motivation to combine the references’ teachings. Even if Ellis teaches away from home-bound television systems, neither the invention nor Sasaki relates to a home- to which the alleged drawbacks of stationary televisions do not apply. Moreover, Sasaki itself is directed to both music and video preferences. See, e.g., Ex. 1004 ¶ 74. To the extent the systems include differences in types of media content, both systems focus on recommending media based on user preferences. For example, as summarized above, Petitioner persuasively shows that Sasaki and Ellis address similar problems associated with providing recommendations to users of portable digital media for all types of events. See, e.g., Ex. 1004 ¶¶ 74, 114 (disclosing a recommendation system that collects information about different media content types, such as music, still pictures, video, and text to provide recommendations to guide purchases at facilities such as CD/DVD shops and bookstores, sightseeing areas, attraction places, art museums, museums, movie theaters, coffee shops, hotel lobbies, and other public facilities); Ex. 1005 ¶¶ 7, 15–17, 57, 162 (describing a system for controlling audio or other digital content data or software (including from radio stations or the Internet) and providing recommendations for music, shopping for music, concert venues, radio station events, etc.). Although Patent Owner argues that Ellies and Sasaki each have technological features that would not be feasible to combine because of cost and an increase in the number of parts such as “antennas and related components,” Petitioner assert that “the proposed combination relies on Ellis’s techniques for automatically determining the user’s preferences by monitoring the content consumed by the user—not how the content is delivered to the mobile device.” Pet. Reply 21. Petitioner argues, and we agree, that obviousness does not turn on whether the devices described by person having ordinary skill in the art would combine their teachings to render obvious the claimed invention. See Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Although Patent Owner points to an increase in cost and the number of parts as reasons not to combine the teachings of Sasaki and Ellis, the obviousness determination recognizes that “[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obvious motivation to combine;” rather, such facts should be weighed as a whole in such a determination. Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). As summarized above, Petitioner’s reasons for combining the references (e.g., providing automatic recommendations based on determined preferences and digital consumption in real time and addressing similar problems), and the multi-media focus of Sasaki provide persuasive reasons for a person of ordinary skill in the art to combine their teachings despite an increase in cost and the number of parts in a resulting process or system. Petitioner asserts that a person having ordinary skill in the art would have found it obvious to combine the teachings of Jacobi with those of Ellis and Sasaki because Jacobi teaches techniques for generating and displaying recommendations to a user that would be useful to those contemplating use of the recommendation system as proposed through the combined teachings of Sasaki and Ellis. Pet. 27 (citing Ex. 1003 ¶ 64). For example, Petitioner points to recommendation of local events and facilities on a display device in its proposed Sasaki-Ellis combination, and that Jacobi describes transmitting a recommendation message through a web page or email. Id. at 27–28 (citing Ex 1006 ¶ 74; 1003 ¶ 66). Petitioner asserts that a person generating details to expand the capabilities of the Sasaki-Ellis system, and thereby motivate their combination. Id. (citing Ex. 1003 ¶ 67). Petitioner further asserts that a person having ordinary skill in the art would have a reasonable expectation of success in their combination because Sasaki “already contemplates displaying text, images and icons to the user and that the user can access the server via the Internet,” and that Jacobi’s recommendation messages are generated via Web pages or email. Id. (citing Ex. 1004 ¶¶ 39, 128; Ex. 1006 ¶ 74; Ex. 1003 ¶ 68). Patent Owner does not specifically contest Petitioner’s assertions. We determine that Petitioner has provided a reasoned explanation, supported by the record evidence, sufficient to show that a person having ordinary skill in the art would have combined the teachings of Jacobi with those of Sasaki and Ellis.” slip op. at 24
Patent outcomesUS 9,141,960 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,141,960 - Google LLC v. Wildseed Mobile, LLCAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00244 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over the cited combinations of Sasaki, Ellis, and Jacobi.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“explains, “[m]onitoring the content that the user consumes and determining the user’s preferences automatically [as Ellis teaches] captures the user’s preferences in near real-time, rather than waiting for the user to manually supply her preferences (which she may never do).” Pet. 26 (emphasis added) (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). “A further benefit would be that, as the user’s preferences change over time, Ellis’s technique would update the recommendations to that user accordingly.” Id. (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). As indicated above, these reasons for combining the teachings are persuasive. Cited portions of Sasaki and Ellis provide a factual underpinning for this rationale and support Dr. Houh’s credible testimony. See Ex. 1003 ¶¶ 44–55 (providing detailed summaries of Sasaki and Ellis), 58–62 (providing reasons for combining Sasaki and Ellis) 74–95 (relying on the teachings of Sasaki and Ellis and describing the relevant result of the combination).” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“combining the references is persuasive as it is supported by factual underpinnings and the credible testimony of Dr. Houh. Accordingly, Petitioner’s showing for limitation 1.1.2 is persuasive.” slip op. at 44
- Expert testimonyPetitioner expert creditedDecided for petitioner
“explains, “[m]onitoring the content that the user consumes and determining the user’s preferences automatically [as Ellis teaches] captures the user’s preferences in near real-time, rather than waiting for the user to manually supply her preferences (which she may never do).” Pet. 26 (emphasis added) (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). “A further benefit would be that, as the user’s preferences change over time, Ellis’s technique would update the recommendations to that user accordingly.” Id. (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). As indicated above, these reasons for combining the teachings are persuasive. Cited portions of Sasaki and Ellis provide a factual underpinning for this rationale and support Dr. Houh’s credible testimony. See Ex. 1003 ¶¶ 44–55 (providing detailed summaries of Sasaki and Ellis), 58–62 (providing reasons for combining Sasaki and Ellis) 74–95 (relying on the teachings of Sasaki and Ellis and describing the relevant result of the combination).” slip op. at 35
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“content types . . . , wherein the plurality of media content types comprises textual media, image media, audio media, and video media.” (Emphasis added). Based on what a “plurality” means, i.e., “more than one,” claim 1 implicitly recites “infer one or more entertainment preferences . . . based . . . in part on . . . [more than one] media content types . . . , wherein the [more than one] media content types comprises textual media, image media, audio media, and video media” (emphasis added). Patent Owner’s construction effectively construes “plurality”/“more than one” such that “plurality” means “at least four.” Assuming arguendo the ’021 patent specification supports this implicit construction for purposes of this trial, because claim 1 recites “one or more . . . preferences” in the alternative, the scope of claim 1 includes an interpretation in which four preferences are based on the four media types recited in limitation 1.1.2. That is, limitation 1.1.2 under Patent Owner’s proposed construction encompasses the following: “infer [four] entertainment preferences . . . based . . . in part on . . . [four] media content types . . . , wherein the four media content types comprise[] textual media, image media, audio media, and video media.” Therefore, the plain language of claim 1 is broad enough under this “more . . . preferences” alternative such that each of the four preferences is based on one or more of the four media types, because claim 1 broadly requires that four preferences collectively (as a group) are based on at least the four media types recited.” slip op. at 12
Patent outcomesUS 10,251,021 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,251,021 - PTAB · May 20, 2024 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on the asserted obviousness grounds and declining discretionary denial under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Office conducted any analysis or evaluation of Wu. There is no mention of Wu by the Examiner and no articulated consideration of Wu by the Office. As noted above, Advanced Bionics provides that “[a]t bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics, Paper 6 at 9 (emphasis added). Here, despite Wu (or more precisely, the substantially identical Wu. Publ.) having been previously presented to the Office, we are not directed to, and we cannot find, any analysis or evaluation by the Office of Wu in the file history. See generally Ex. 1002.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petitioner”) filed a Petition for inter partes review of claims 1–20 of U.S. Patent No. 11,010,709 B2 (Ex. 1001, “the ’709 patent”). Paper 2 (“Pet.”) at 1. SES-Imagotag Inc. (“Patent Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 12, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 13, “Prelim. Sur-reply”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented 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.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. Patent Owner does not propose any claim constructions. See generally Prelim. Resp. At this stage, no need exists to expressly construe any claim terms to resolve the parties’ disputes. 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 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“planogram” (id. at 37). We determine that these contentions lack merit and Petitioner has sufficiently shown that Wu discloses these limitations.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,010,709 - PTAB · May 20, 2024 · IPR2024-00188 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR of claims 1–15 on both §103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition, the Preliminary Response, the Reply, and the Sur-reply “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 claims 1–15 of the ’669 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field.” Pet. 8–9 (citing Ex. 1003 ¶ 33). Petitioner further notes that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. at 9. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 18 n.5 (“For purposes of this [Preliminary Response] only, Patent Owner applies Petitioner’s articulation of the level of skill in the art.”). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art.5 It is supported by the testimony of Dr. Tentzeris and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the ‘communication stage’ recited in element [1.3] is simply a ‘communication module or unit’ that communicates data.” Reply 8 (citing Ex. 1001, 1:49–50, 2:19–20, 3:24–28, 3:63–65; Ex. 1003 ¶¶ 75–76). In response, Patent Owner argues that “Petitioner offers a brand-new claim construction for ‘communication stage,’” which “the Petition never offered,” and also that “Petitioner offers its new construction based exclusively on attorney argument without the benefit of evidence in support.” Sur-reply 6, 9. To the extent necessary to determine whether to institute trial, we address these arguments as part of our unpatentability analysis below. See infra § II.D.3. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“supposed well-recognized need in synchronizing video displays and that “[t]he only evidence Petitioner offers to explain why a POSITA would have modified Swafford with Masumoto relies on hindsight and two references besides Swafford and Masumoto—Yamada (Ex. 1010) and Kipp (Ex. 1006).” Prelim. Resp. 34–35. At least at this stage, as Petitioner’s contentions are supported by evidence including an expert declaration and Patent Owner’s contrary arguments are unsupported attorney argument, we give more weight to Petitioner’s contentions and find them sufficient to support the asserted combination of teachings. However, we do agree with Patent Owner that Petitioner’s contention that the cited combination of teachings is supported “because of the structural similarity between Swafford’s and Masumoto’s devices” (Pet. 54– 55) does not provide a motivation to combine. Prelim. Resp, 35–36. The only structural similarity relied on by Petitioner in support of this argument is that Swafford and Masumoto both disclose use of LCDs. See Pet. 54–55. Petitioner provides an inadequate explanation as to how or why the use of LCDs which are a common form of video displays would motivate the combination of the relied-upon teachings. But, this deficiency does not undermine the persuasiveness of Petitioner’s overall showing of motivation to combine. We determine that Petitioner shows sufficiently, for the purpose of institution, that a person of ordinary skill in the art would have been motivated to combine the relied-upon teachings of Swafford and Masumoto with a reasonable expectation of success.” slip op. at 41
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,405,669 - PTAB · May 20, 2024 · IPR2024-00189 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–9 on all asserted §103 grounds, finding a reasonable likelihood of success based on Fujiwara, Fujiwara and Arntzen, Bandy and Fowler, and Bandy, Fowler, and Arntzen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on all its challenges to patentability, namely: claims 1–9 as obvious over Fujiwara; claims 1–9 as obvious over the combined teachings of Fujiwara and Arntzen; claims 1– 5 and 8–9 as obvious over the combined teachings of Bandy and Fowler; and claims 1–5 and 8–9 as obvious over the combined teachings of Bandy, Fowler, and Arntzen. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’340 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree).” Pet. 9 (citing Ex. 1009, Tentzeris Decl. ¶ 34). Petitioner also states that “[a]lternatively, a POSITA would have had a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field” and that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of these requirements.” Id. (citing Ex. 1009, Tentzeris Decl. ¶ 34). Patent Owner does not comment of the level of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As the subject matter of the ’340 patent and the references appears to be consistent with the level of ordinary skill in the art described by Petitioner, we apply Petitioner’s description for purposes of the Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes that the terms of the ’340 patent claims should be given their plain and ordinary meaning as understood by a person of ordinary skill in the art. Pet. 3. Patent Owner contends that Fujiwara does not use the term “planogram” and that Petitioner has not demonstrated Fujiwara discloses the claimed planogram. Prelim. Resp. 19–22. The ’340 patent states “[a] planogram lists the locations of all the electronics labels [3] and of the items on sale in a sales area.” Ex. 1001, 6:35–37. Patent Owner also notes that Fowler states that “[a] planogram is a diagram of fixtures and products that illustrates how and where retail products should be displayed, usually on a store shelf, bin or counter in order to influence consumer selection.” Prelim. Resp. 30 (citing Ex. 1007 ¶ 221). In view of these descriptions of a planogram, we agree with the parties that no further construction of this term is required. slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,674,340 - Hanshow America Inc. / Hanshow Technology Co., Ltd v. Ses-Imagotag Inc.Institution deniedPTAB · May 20, 2024 · IPR2024-00190 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution of IPR challenging claims 1–9, exercising discretion because the second-ranked petition’s grounds were insufficiently shown to be materially different from those in the instituted first-ranked petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Having instituted trial in the -189 IPR and considered all the arguments and evidence of record presented in this proceeding, we exercise our discretion and decline to institute trial in the -190 IPR. VIII. ORDER For the reasons discussed above, it is ORDERED that the Petition is DENIED.” slip op. at 11
- Parallel petitionsDenied
“not present in a higher-ranked petition weighs against instituting on the lower-ranked petition, the mere existence of the potential dispute in the lower-ranked petition alone need not be determinative. We consider other circumstances of this case. Petitioner presents other challenges in the -190 IPR that address all the challenged claims, but do not rely on Ghosh (Grounds 1–3 challenge claims 1–9 based on combinations of Siotia, Sakata, Akao, and Chen; Grounds 4–6 challenge claims 1–3 and 5–9 (claim 4 is not challenged) based on various combinations of Ghosh, Sakata, Akao, and Chen). Thus, even if Patent Owner removed Ghosh as prior art, Petitioner’s other challenges to all the claims that are challenged on multiple grounds in the -189 IPR would remain, with Siotia replacing Ghosh in the -190 IPR. As discussed further below, Petitioner’s ranking does not explain sufficiently why the Siotia-based challenges remaining in the -190 IPR are not cumulative to the Fujiwara based challenges and the Bandy/Fowler based challenges articulated in the -189 IPR.” slip op. at 8
Discretionary denialPatents in suitUS 10,674,340
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.