- PTAB · Jul 9, 2024 · IPR2024-00117 · APJ Elizabeth M Roesel · IPR · Institution
Instituted IPR on claims 1–13 on all petitioned grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including anticipation of claim 1 by Nguyen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’836 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“A reference qualifies as a printed publication only if it was publicly accessible before the effective filing date of the challenged patent. 35 U.S.C. § 102(a)(1); M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., 985 F.3d 1376, 1379 (Fed. Cir. 2021). Public accessibility “has been called the touch-stone” in determining whether a reference qualifies as a printed publication. M & K Holdings, 985 F.3d at 1379 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quotes and citations omitted).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“2. Independent Claim 1 a. Preamble Petitioner contends that Nguyen discloses the claim 1 preamble, which recites “an adapter for mating with optical fiber connectors.” Ex. 1001, 18:12. Pet. 32–33 (citing Ex. 1005 ¶¶ 26–30, Figs. 1, 2). We find that Petitioner’s contention for the claim 1 preamble is adequate for purposes of institution.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Reasons to Combine Petitioner contends that it would have been obvious to modify Nguyen’s adapter in two ways. Pet. 54. First, Petitioner asserts it would have been obvious to include “optical-fiber connectors that employ handles configured to remotely release connectors from the adapter” by replacing Nguyen’s connectors with Lee’s connectors. Pet. 54–56 (citing Ex. 1003 ¶¶ 289–295). Second, Petitioner asserts it would have been obvious to include “a transverse wall that includes slots halfway between two ends of the adapter and sleeve holders that employ sockets to mate with cylindrically-shaped ferrules” by replacing Nguyen’s wall with Lee’s sleeve holders. Pet. 54, 56 (citing Ex. 1003 ¶¶ 296–302). Petitioner provides several reasons for the first modification, including a desire for convenience, tightly packed fiber optic ferrules, ease of maintenance, and scalability. Pet. 54 (citing Ex. 1003 ¶¶ 289–290). According to Petitioner, these goals would be served because “Lee’s handle allows a user to disengage the latch arm further from the adapter” whereas “[t]he latch arms of Nguyen require a user to be closer to the adapter.” Id. (citing Ex. 1003 ¶ 289). Petitioner also provides reasons for the second modification, asserting that “Lee’s sleeve holders are easy to maintain because they are removable, able to snap into place, and coordinate with dust caps to maintain cleanliness, as opposed to Nguyen’s immobile wall.” Pet. 56 (citing Ex. 1003 ¶ 297). According to Petitioner, “a POSITA would have been motivated to modify Nguyen’s adapter to incorporate Lee’s sleeve holders and slots to provide a system that is easier to maintain.” Id. (citing Ex. 1003 ¶¶ 298–299). We find that Petitioner’s asserted rationale for modifying Nguyen in view of Lee is adequate for purposes of institution.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,333,836 - PTAB · Jun 11, 2024 · IPR2024-00251 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that claims 1–3 and 5–9 are obvious over Neibauer and Cheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based upon the present record, we determine that Petitioner has made a sufficient showing that one of ordinary skill in the art would have had a reason to combine the asserted art in the manner described by Petitioner. We, therefore, find that Petitioner has shown sufficiently for purposes of institution that a person of ordinary skill in the art at the time of the claimed invention would have had reason to combine the teachings Neibauer and Cheng in the manner described in the Petition, and would have had a reasonable expectation of success in so doing.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cheng is sparse. Neibauer and Cheng were among dozens of other references identified on information disclosure sheets submitted during prosecution, and there is no clear evidence of record that Neibauer and Cheng were ever discussed substantively. See generally Ex. 1022. Petitioner argues that “the Examiner erred by overlooking [Neibauer and Cheng] and the compelling grounds of unpatentability they provided.” Prelim. Reply 1. “Neibauer and Cheng were stronger prior art because they disclosed the limitations the Examiner thought were missing from Chow, including the “uploading,” “reformatting,” and “automatically generating” limitations that he highlighted in the Notice of Allowance.” Id. In light of this sparse record, Petitioner’s showing on the merits with respect to Neibauer and Cheng is sufficient to demonstrate that the Office erred with respect to its consideration of these references during prosecution of the ’427 patent. To the extent the Office substantively considered Neibauer and Cheng and concluded that their combination does not teach claim 1, this was material error. It is also notable that the Office cited and relied on both Neibauer and Cheng in the reexamination of U.S. Patent No. 8,135,801 B2, a parent in the same family as the ’427 patent, which resulted in cancellation of all claims of that patent. For the reasons discussed below with respect to the merits, the asserted combination of Neibauer and Cheng sufficiently teaches claim 1. Given the Petition’s detailed analysis, including the supporting testimony of Dr. Madisetti, and the sparse record developed by the Office addressing Neibauer and Cheng during prosecution of the ’427 patent, Petitioner has shown sufficiently that the Office materially erred when it found that the prior art does not teach claim 1.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 17. Petitioner’s description of a person of ordinary skill in the art is consistent with the ’427 patent and the prior art before us and is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Given this preliminary record, we do not see a basis for adopting Patent Owner’s proposed meaning of “uploading” as “data sent from a client to a server.” We do not discern a rationale in the claims or the intrinsic record to include the term “client” within the meaning of “uploading.” Rather, given the current record, we preliminarily determine that the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent and would have been understood by someone of ordinary skill in the art at the time of the claimed invention is “transferring data from an external data source to a set of servers.” This preliminary determination does not preclude the parties from proposing, presenting evidence, or arguing a different meaning for the term “uploading” during trial. To the extent the parties disagree with this preliminary determination, the parties should present their evidence and arguments as permitted by our rules.4 A final determination as to the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent will be made after the close of all the evidence and after any oral hearing in this matter.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,839,427 - PTAB · Jun 11, 2024 · IPR2024-00250 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Neibauer, Ausems, and Cheng combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006).” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. There is no dispute that Ausems and McElfresh were not considered by the Office. See Prelim. Resp. 8–12; Ex. 1001, code (56). Moreover, we do not agree with Patent Owner that Ausems is substantially the same as Rensin and that McElfresh is substantially the same as Dowling. For example, Petitioner relies on Ausems for a mobile communications device that incorporates a digital camera for recording, storing, and transmitting digital images. Pet. 24. The disclosures of Rensin 3 Petitioner’s citation to “POPR 13 (quoting Dowling, ¶0064)” on page 3 of Petitioner’s Preliminary Reply appears to be an error. Patent Owner addresses Dowling on page 11 of its Preliminary Response. cited by Patent Owner identify a camera as a PDA expansion slot device, but do not disclose expressly that captured images can be stored and transmitted as Ausems does. Compare e.g., Ex. 1006, 2:5–11, 5:17–22 with Ex. 2003, 2:2–21. We agree with Petitioner that Ausems was thus more relevant to the challenged claims, and more applicable to a prior art reference such as Neibauer, that disclose the ability of the user to upload photos to a remote server. Petitioner also relies on McElfresh for its teaching of selecting and delivering advertisements and integrating those advertisements with other content on the same webpage. See Pet. 52–60. For example, Petitioner describes how McElfresh’s “ad server or Rad Server 112 ‘performs the overall function of gathering the necessary information regarding a particular ad (or set of ads) and the particular user and generating a set of ads which have been optimized for placement on a webpage,’ based on (among other things) calculated click-through-percentage rates.” Pet. 55 (quoting Ex. 1014, 6:42–48). In contrast, Dowling’s disclosure cited by Patent Owner4 describes how a user may log into “a geographically controlled web site and configures the packet filter to display information related to a user’s needs,” such that that when the user drives along a mall, “a web page comes up and provides directions to the shopping mall and optionally provides an inside map of the mall to include directions to the desired store.” Ex. 3001 ¶ 64; 4 Patent Owner cites to Exhibit 2004 as Dowling (US 2005/0177645). Prelim. Resp. 11. However, Exhibit 2004 is U.S. Patent App. 2005/0171645, directed to a “Household Energy Management System,” listing inventors as Oswald and Tamsett. See Ex. 2004, codes (10), (54), 76. Dowling appears to have been filed as Exhibit 1030, not Exhibit 2004. Prelim. Resp. 11 (citing Ex. 2004 ¶ 64). Dowling’s disclosure is substantially different from McElfresh’s teaching of using a server to select and integrate particular advertisements onto a webpage. We have reviewed the portions of Rensin and Dowling cited by Patent Owner and do not see substantially the same structures or functionality relied upon by Petitioner in Ausems or McElfresh.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices. Pet. 5–6 (citing Madisetti Decl. ¶¶ 14–18). Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA [(“person having ordinary skill in the art)].” Prelim. Resp. 16. We regard Petitioner’s definition as consistent with the ’348 patent and the prior art before us and supported by testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006). Dr. Madisetti articulates this very rationale by testifying that [t]he techniques of Cheng would have provided a distinct technological advantage by allowing the club system described in Neibauer to be delivered to mobile devices by converting web pages provided via Neibauer, thus obviating the need for the Yahoo! server to generate multiple different versions of those web pages (including potentially multiple mobile versions based on different mobile device and browser types), thus making it considerably simpler to provide club functionality to the web browsers of mobile devices. Ex. 1002 ¶ 106.” slip op. at 25
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,922,348 - PTAB · Jun 11, 2024 · IPR2024-00249 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19, 21, and 22 on all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Neibauer, Ausems, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that neither Harvey nor Ausems was considered by the Office, nor that Harvey is not substantially the same as any reference that was before the Office. Prelim. Resp. 9–10; Prelim. Reply 3. Further, we do not agree with Patent Owner that Ausems is substantially the same as Rensin. Specifically, Petitioner relies on Ausems to teach the incorporation of a camera into a mobile device, permitting the recording, storage, and transmission of digital images. Pet. 23; Prelim. Reply 3. We have reviewed the section of Rensin to which Patent Owner directs us (Ex. 2003, 2:2–21), and we do not see substantially the same functionality. Although Rensin teaches that “PDA expansion slots may be used to enhance the PDA capabilities with a digital camera,” Patent Owner does not explain, and it is not clear from our review of Rensin, that Rensin discloses the use of the mobile device to transmit the images recorded by the camera. Ex. 2003, 2:2–21. Accordingly, we are not persuaded that Rensin is substantially the same as Ausems. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person of ordinary skill in the art would have combined the teachings of Ausems with those of Neibauer in the manner described above. See Ex. 1002 ¶¶ 114–117. Specifically, a person having ordinary skill in the art would have combined Ausems’s ability to share photos captured by a mobile device with Neibauer’s Yahoo! club in order to “dramatically expand[] the universe of image data that the club based on the current record, a person of ordinary skill in the art would have had a reasonable expectation of success. Id. ¶ 117. Accordingly, on the present record, the combination of Neibauer and Ausems teaches limitation 1a.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage, Patent Owner “applies Petitioner’s characterization of a person of ordinary skill in the art.” See Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed and implement the teachings of the ’578 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Madisetti. See Ex. 1002 ¶¶ 14–18.8” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 25–27, 65–66. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required.” Prelim. Resp. 16. 8 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. claim terms.9 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,619,578 - PTAB · Jun 11, 2024 · IPR2024-00248 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 19–23 on all asserted grounds, finding a reasonable likelihood that claim 19 would be unpatentable as obvious over Neibauer, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(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 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. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Neibauer, Cheng, and Squibbs. Pet. 3, 12–48. Based on the current record, we are sufficiently persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 19.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, it would have been obvious to a person having ordinary skill in the art to use the features of the Yahoo! club (information channels) with a mobile device, thus sending the photo “from a mobile device” and “permitting interaction between a user of the mobile device and one or more additional users,” as recited in claim 19. See Ex. 1002 ¶ 91. A person having ordinary skill in the art would have known that a person could use a conventional computer, such as a laptop computer, to run a web browser to visit pages on the internet, such as Yahoo!, including Yahoo! Clubs. Id. Because the ’039 patent describes a laptop computer as a “mobile device,” (Ex. 1001, 4:24–32), submitting a photo to a Yahoo! club from a laptop computer results in the receipt of the photo from a mobile device, as recited in claim 19.” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,032,039 - PTAB · Jun 11, 2024 · IPR2024-00247 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–25 on all asserted grounds; the Board found a reasonable likelihood that claim 1 would be unpatentable as obvious over Neibauer, Miller, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that Miller was not considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶96.) Pet. 18–19 (emphasis added).11 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Neibauer, Miller, Cheng, and Squibbs. 6. Analysis of Claims 2–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’801 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Based on the current record, the combination of Neibauer and Miller teaches “control[ling] activation of a mobile information channel,” as recited in claim 1. As discussed above, the first user can create a Yahoo! Club by supplying the necessary information and selecting “Yes! I accept.” Neibauer is silent on whether the user can select which specific mobile information channels are associated with the Yahoo! Club. However, Miller teaches a similar collaborative web-based system in which the group’s creator can use an interface to choose specific communication pathways to allow: FIG. 16 shows one possible user interface for selecting communication tools to be made available to group members. This screen can be presented to the user creating the environment after the group has been identified and its members selected. It is contemplated that a variety of communication tools can be provided, including a bulletin board service; advertisements; white pages (e.g., a listing of members, their e-mail addresses, telephone numbers, and the like); yellow pages (e.g., a listing of promotional and contact information); document security (e.g., shared access secure document storage services); anonymous e-mail (described above with respect to the first embodiment); threaded dialogs; a group newsletter creation tool; videoconferencing; and even other user-provided applications that can be specified by name an location (e.g., URL). Ex. 1004, 47:31–48:10 (emphasis added); see also id. at 42:29–32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”); Ex. 1002 ¶ 96. The combination of Miller’s teaching of selecting different methods of communication with Neibauer’s teaching of Yahoo! Clubs would allow the founder to select specific mobile information channels for the group to use. See Ex. 1002 ¶¶ 95–100. Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 97–100. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 99. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 100. Accordingly, the combination of Neibauer and Miller teaches” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’801 patent.8” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,825,801 - PTAB · Jun 11, 2024 · IPR2024-00246 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1, 6–11, 13–18, and 20–27, finding a reasonable likelihood that claim 1 is obvious over Neibauer, Miller, and Cheng.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’336 patent.10” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 28–29, 65. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required,” and further agrees “that the ordinary and customary meanings of the claim terms apply.” Prelim. Resp. 19. For the purposes of this Decision, we need not expressly construe any claim terms.11 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the particular features that will be included in the collaborative environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶104.) Pet. 19 (emphasis added).13 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 13 References to Miller are to Petitioner’s pagination in the exhibit, for consistency with the Petition. Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 105–108. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 107. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 108.” slip op. at 26
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,793,336 - PTAB · Jun 10, 2024 · IPR2024-00404 · APJ Garth D Baer · IPR · Institution
Instituted inter partes review of claims 1, 3, 4, 7–10, 13, 14, 16–18, and 22 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“1. “frame mode” Petitioner proposes we construe “frame mode” the same as we did in IPR2021-00822 as “having the keyboard face down on a surface with the screen face up, and the base and display components forming a non-zero angle.” Pet. 8–9. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “content mode” Petitioner proposes we construe “content mode” consistent with Patent Owner’s construction during the ’844 Reexam, where Patent Owner “argued for and received a construction of [‘Content Mode’] as meaning ‘displaying some information that represents a higher-level construct into which content is grouped.’” Id. at 9 (citing Ex. 1005, 6). Further, “[t]his recitation is distinct from merely displaying individual things (e.g., applications) that may be grouped into a content mode.” Id. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,624,844 - PTAB · May 31, 2024 · IPR2024-00255 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–4 and 6–11 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“that, because judgments have been entered in the district court actions, there is finality as that relates to Fintiv issues. In a similar instance, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished a Fintiv analysis under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, Inc., Paper 14 at 3. Further, the Director determined that, “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.9” slip op. at 12
- 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). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art. Pet. 7 n.2 (citing Ex. 1003 ¶¶ 8, 10, 26). Dr. Sundaresan testifies that a person having ordinary skill in the art “had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with . . . navigation and/or geolocation systems,” and “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. For the purposes of its Preliminary Response, Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. Prelim. Resp. 32. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’104 patent and the prior art. See” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“For purposes of this Decision, we adopt the district court’s construction of “grid point” as “a point associated with representative calibration data for an area.” See Ex. 1054, 18–20. This construction is consistent with the claim language and the specification of the ’104 patent and is further supported by the reasoning provided by the district court’s claim construction order. See id. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See 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 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,561,104 - PTAB · May 10, 2024 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 7, 9, 32, 38, and 40 on the asserted obviousness ground over Bhattacharya and Yost.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that because judgements have been entered in the district court actions, this suggests finality. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished the Fintiv analysis in AviaGames under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, IPR2022- 00530, Paper 14 at 3 (PTAB Mar. 2, 2023) (Decision on Director Review). Further, the Director determined that “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal duplicate the obviousness issues addressed here. The timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is rendered obvious by Bhattacharya and Yost.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. Pet. 6–7 (citing Ex. 1003 ¶ 8). Petitioner also contends that additional education could compensate for less work experience and vice versa. Id. at 7. For the purposes of the Preliminary Response, Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. Prelim. Resp. 26. For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Prior constructionPrior construction adoptedOther
“patent and district court issued claim constructions for some terms that were disputed. Ex. 1020; Ex. 1025. Petitioner uses the district court’s construction or the agreed-upon construction for the terms “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 7–9 (citing Ex. 1020; Ex. 1025). Petitioner proposes that all terms should be interpreted consistent with the Phillips standard. Id. at 7. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of this Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 26. For the purposes of this Decision, we will use the district court’s claim constructions and those agreed-upon by the parties in the litigations, where the adoption of those constructions have been agreed to by the parties at this juncture in this proceeding. We determine that we need not expressly construe any other claim terms at this juncture. See 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 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753
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.