- PTAB · Jan 22, 2025 · IPR2024-01090 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–3, 21, 29–31, 42–44, 54, and 62–65 based on the §103 combination of Blumenberg, Bhumkar, and Griffin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Patent Owner may bear a burden of production, however, to show that the Challenged Claims are entitled to the benefit of an earlier filing date. Id. at 1379–80.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, we preliminarily agree with Petitioner that the claim limitations amount to a combination of known elements that a POSITA could have combined to achieve predictable results. See Intel, 21 F.4th at 799–800 (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option). Among other reasons, the preliminary record supports Petitioner’s arguments that combining the teachings of Blumenberg, Bhumkar, and Griffin amounts to applying known solutions in the field of computer interfaces with predictable outcomes. See Pet. 12–18. As noted above, we encourage the parties to address the scope and meaning of the “when” limitations as a matter of claim interpretation, but we do not currently understand the plain language of Limitation [1.o] to require that the “portion of the second web page” or “menu” is displayed only after expiration of the “second user-configurable predefined duration,” termed by Patent Owner the “Alternative Modification.” Again, we encourage the parties to fully address this issue as a matter of claim construction. We additionally note that, even if we were to interpret the claims to require that the recited functions of Limitation [1.o] occur only the “prerequisite elements” are satisfied, we are still preliminarily persuaded by Petitioner’s arguments that combined teachings of the prior art satisfy the claim elements as a mere combination of known elements combined according to their known functions with predictable results.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“scenarios. Pet. 1 (characterizing three claimed scenarios as (i) an “inadvertent” contact, (ii) a “tap” contact, and (iii) a “hold” contact), 4 (“Independent Claims 1 and 42 outline three scenarios regarding a user’s contact with a touch screen device”); Prelim. Resp. 3 (“With respect to claim 1, these three scenarios include: . . . .”); see Ex. 2001 ¶¶ 28 (“As recited in claim 1, the three different claimed functionalities are executed ‘when’ the prerequisite elements are met (described as three scenarios by Dr. Cockburn.”) (citing Ex. 1001, 102:50–103:55; Ex. 1003 ¶¶ 33–35), 29–32 (describing the first, second, and third scenarios). In substance, the parties’ dispute appears to concern whether the plain language of the claims requires that a recited function must be performed only after or in response to expiration of a threshold (and other prerequisites), as opposed to requiring a function that begins before and continues after expiration of a threshold. Notably, dependent claim 3 recites: “The electronic device of claim 1, wherein the electronic device is configured such that the first feedback that is perceptible by touch is output prior to the display of the menu.” Ex. 1001, 104:1–4 (emphasis added). Given that independent claim 1 is necessarily broad enough to include claim 3, it seems on this record that the functions recited in Limitation [1.o] necessarily can happen at different times, as opposed to, for example, only responses that are triggered by the so-called “prerequisite elements.” We encourage the parties to address this issue as a matter of claim interpretation in future briefing. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,725,581 - PTAB · Jan 16, 2025 · IPR2024-01088 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Apple would prevail on its § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute inter partes review as to the challenged claims of the ’758 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (internal citations omitted) (citing Ex. 1003 ¶¶ 41–53). For the purposes of institution, Patent Owner did not dispute this level of skill. Prelim. Resp. 6 (“Patent Owner does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.”) The portion of the definition proposed by the Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” appears to be consistent with the problems and solutions in the ’758 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of the definition relating to the substitution of years of experience for a degree at this time. Additionally, we do not herein adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’758 patent.” Pet. 7.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner also notes that in the pending District Court Litigation, Petitioner contends that eight claim terms found in the challenged claims are indefinite: “performing an operation [in connection with / on] the first application icon,” “application-launch criteria,” “action-option-display criteria,” “operation criteria,” “movement criteria,” “action options,” “action option objects,” and “evaluating the first single-finger touch input against at least one of a plurality of criteria, including evaluating a duration of the first single-finger touch input against at least one of: one or more application-launch criteria, one or more action-option-display criteria, or one or more operation criteria, and further including evaluating a movement of the first single-finger touch input against one or more movement criteria.” Prelim. Resp. 6–7 (citing Ex. 2003, 9–75). Patent Owner further notes that, contrary to its position in the pending District Court Litigation, Petitioner does not assert that any of these terms are indefinite in this proceeding. Id. For institution and on our present record, we determine that none of these claim terms require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 3. Other Terms For institution and on our present record, no other claim terms require construction. See Nidec, 868 F.3d at 1017.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We determine that, on this record and for the purposes of institution, Petitioner has made a sufficient showing regarding motivation for its proposed combination of Chaudhri, Martyn, and Griffin. For the combination of Chaudhri and Martyn, we determine, on the present record and for the purposes of institution, that Petitioner has sufficiently shown support for the use of Martyn’s snap-shot menu with Chaudhri’s user interface. We acknowledge Patent Owner’s declarant’s examples of instances in which devices that incorporated “popular user interface features . . . did not achieve the same level of success because of poorly articulated design implementation.” Ex. 2001 ¶ 127 (cited at PO Resp. 23). However, on the present record, this evidence does not specifically address whether one of ordinary skill would have found such examples significant enough or relevant enough to the proposed combination to dissuade one of ordinary skill from considering such a combination to be reasonably likely to succeed, especially in light of the testimonial evidence before us that similar menus were often incorporated into GUIs similar to Chaudhri’s, which is adequately supported by reference to numerous examples. See Ex. 1003 ¶¶ 43–48, 64–65 (cited at Pet. 16). Additionally, we find compelling that Chaudhri describes a pop-up dialogue sub-menu for a different purpose (modifying the user interface object). See Ex. 1004 ¶¶ 274, 317, Figure 5LLL; Pet. 18–19; Ex. 1003 ¶ 69. On the present record, one of ordinary skill in the art would have found the use of the similar snap-shot menu from Martyn (offering different functionality) to be further prompted by this sub-menu, and not to have been redundant or “already solved” in Chaudhri, as Patent Owner argues (PO Resp. 26–27). See Pet. 18–19; Ex. 1003 ¶ 69. introduced to the combination of Chaudhri and Martyn to address a conflict that arises because Petitioner proposes a combination of Chaudhri and Martyn that “create[s] a conflict of assigning two functions to the same gesture.” PO Resp. 20. However, Petitioner provides a number of rationales to combine, and Petitioner’s argument that one of ordinary skill would have sought details from Griffin to implement Chaudhri’s teachings describing different user functionality being launched by user touches of different user durations (Pet. 19–21) adequately supports the use of the material from Griffin in the proposed combination. See Ex. 1004 ¶¶ 217, 218; Ex. 1002 ¶¶ 70–73, 75; see also PO Resp. 24 (describing “multiple types of gestures” used Chaudhri). While the proposed combination of Chaudhri and Martyn would, as Petitioner asserts, result in “three distinct operations invoked by duration-based touch gestures at an application icon” (Pet. 21), two of these distinct operations are found in Chaudhri’s teachings, and thus, on the present record, the motivation to look to Griffin does not arise only from the proposed combination of Chaudhri with Martyn. On the present record and for the purposes of institution, we determine that Petitioner has adequately shown that one of ordinary skill would have looked to Griffin to supply additional information regarding implementation of Chaudhri’s (and the Chaudhri and Martyn combination’s) use of parameters of a user’s touch, including duration, to enable different functionalities. Ex. 1006 ¶¶ 40, 53, Fig. 7; Ex. 1002 ¶¶ 70–73, 75. With respect to the use of the “press-and-hold” feature from Martyn, rather than other possibilities from Martyn for triggering its snap-shot menu and rather than adding a second touch point as Patent Owner suggests (PO Resp. 27–28, 32, 33 (citing Ex. 2001 ¶¶ 142–143, 156, 166, 172–173)), on to have been a suitable option. Pet. 15–16; Ex. 1003 ¶¶ 49–53, 63–64; Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021) (determining that a showing of the obviousness in “predictable use of prior art elements according to their established functions” (as per KSR, 550 U.S. at 417) requires only a showing that the combination be a suitable option, rather than a showing that it is the best option).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,758 - PTAB · Jan 14, 2025 · IPR2024-01087 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–13, 15–35, and 37–43 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine Petitioner’s showing discussed above regarding Limitations [1.i–1.l] to be sufficient for institution. Petitioner’s showing in large measure relies on Hackborn’s straightforward description of changing the appearance of grass displayed in “live” wallpaper in response to a finger swipe in combination with Westerman’s disclosures of interpreting user input on touch screens as swipes. See, e.g., Pet. 22–23; Ex. 1004 ¶¶ 28, 33; Ex. 1005 ¶¶ 18–19. With regard to the contested Limitations [1.i and 1.k], we note particularly that Petitioner’s combination relies on Westerman’s disclosure of interpreting user inputs that exceed various thresholds as “a swipe event.” This showing is sufficient for institution to show the threshold determination required by Limitation [1.j]. See, e.g., Ex. 1005 ¶¶ 19; Pet. 22 (citing Ex. 1005 ¶ 19). Petitioner’s combination relies on Hackborn’s animation of the grass on the wallpaper “that makes the grass blades look as if the finger is actually contacting them as it drags across the screen of the device.” Ex. 1004 ¶ 33; see Pet. 23 (quoting Ex. 1004 ¶ 33). On this preliminary record, Petitioner’s position that “the farther the swipe, the more extreme the grass movement expected from Hackborn” naturally follows from Hackborn’s description. Pet. 23. As such, we determine Petitioner’s showing that the proposed combination of Hackborn and Westerman changes the grass appearance based at least in part of the magnitude of the swipe to be sufficient for institution for Limitation [1.k].” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 9 n.2 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Ex. 1003 ¶ 26.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we agree with the parties that no terms need to be construed expressly. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hackborn’s mobile device with a touch screen able to display “live” wallpaper and Westerman’s techniques for interpreting swipe gesture inputs, including distinguishing between tap and swipe gestures using predetermined thresholds. Pet. 9–11, 12–13; see Pet. 9–14 (describing Petitioner’s “Hackborn-Westerman Combination”). Petitioner contends that “[a] POSITA reviewing Hackborn would have naturally looked to Westerman to better understand how to implement Hackborn’s teachings, for example, how to discern between different user inputs (e.g., tap or swipe).” Pet. 12–13 (citing Ex. 1003 ¶ 52). Petitioner contends that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner Petitioner proposes. Pet. 13–14. Specifically, Petitioner asserts that, because “recognizing predetermined touch inputs was known, and Hackborn and Westerman both describe the use of touchscreen devices and would have reasonably understood the combination of Hackborn and Westerman to be successful with no unexpected results.” Pet. 14 (citing Ex. 1003 ¶ 53; Ex. 1004 ¶ 28, Ex. 1005 ¶¶ 18, 19, 25, 41, 59, 61–64).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,656,755 - PTAB · Jan 14, 2025 · IPR2024-01091 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR of claims 1, 27, 30, 32, 34, 59, 62, and 64 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d. Conclusion Regarding Asserted Obviousness over Kim In sum, for the reasons discussed above, Petitioner’s showing regarding claim 1 is sufficient for institution. Accordingly, having reviewed the Petition, Preliminary Response, and evidence cited therein, we determine that Petitioner has established a reasonable likelihood that Kim renders obvious claim 1. As such, Petitioner’s showing is sufficient to institute an inter partes review on all challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Notwithstanding, we address other claims and other grounds below, particularly in response to Patent Owner’s preliminary arguments.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 10 n.4 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Id. Patent Owner indicates it “does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 4. Dr. Surati indicates that his opinions provided in his declaration in support of Patent Owner’s Preliminary Response are “provided from the perspective of the POSITA” proposed by Dr.Cockburn. Ex. 2001 ¶ 38 (citing Ex. 1003 ¶ 26). consistent with the prior art of record. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“standards for finding lexicography in a specification are exacting. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotations omitted). As Patent Owner correctly notes, the specification states: In various embodiments, the contact pressure level may be represented by a touch state. In the context of the present description, a touch state refers to a predefined subset of the range of measurable contact pressures. For example, in one embodiment, contact pressure levels may be represented as one of four predefined touch states: no touch, light touch, medium touch, and heavy touch. Ex. 1001, 19:35–41; Prelim. Resp. 27 (quoting Ex. 1001, 19:35–41). Patent Owner, however, has not identified any words of manifest exclusion or restriction in that passage that indicate an intent to redefine the claim term. Rather than indicating the claims are to be restricted, the specification indicates how that the term “touch state” is to be understood in the descriptions presented in the specification. Ex. 1001, 19:36–37.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have been obvious over Kim and Bowens to be sufficient for institution. Petitioner generally relies on Kim’s description as discussed above. Pet. 62–68. Specifically, in its combination, Petitioner relies on Kim’s hold event and scaling operation for Limitations [1.g and 1.h]. Pet. 64–67. Petitioner additionally relies on Bowen as providing details on recognizing and acting on specific gestures on a user interface. See, e.g., Pet. 55. Petitioner provides reasons one of ordinary skill would have combined the references in the manner proposed by Petitioner. See, e.g., Pet. 53–62. Petitioner also provides reasons one of ordinary skill would have reasonable expectation of success in combining the references in the manner proposed by Petitioner. Pet. 60–61.” slip op. at 30
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,936,114 - Netflix, Inc. v. VL Collective IP LLCAll claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00891 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–22 are unpatentable, including as anticipated by Comps; the majority finds Comps’s Tracks 1 and 3 example meets the claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and supported by the testimony of Dr. Bederson. See Ex. 1003 ¶¶ 28–30. Dr. Goodrich testifies that “Dr. Bederson and Petitioner offer a slightly different definition of the POSITA, which is similar to my definition” and that his “opinions would not change were” he “to adopt the definition of POSITA offered by Petitioner.” Ex. 2011 ¶ 54. Accordingly, we adopt Petitioner’s proposal, which is materially the same as Patent Owner’s proposal for purposes of this Final Written Decision, as Dr. Goodrich testifies. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“1. content-related data segments Claim 1 recites “content-related . . . data segments.” Patent Owner construes this phrase as “segments of content data that have a syntactical meaning within the respective data file.” PO Resp. 12. As Patent Owner notes, the ’794 patent specification states that “[t]he term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Id. at 12–13 (quoting Ex. 1001, 4:9–22); Ex. 1001, 4:9–22 (second emphasis added). The ’794 specification supports Patent Owner’s position that the emphasized sentence essentially defines the term “content-related . . . data segments.” PO Resp. 13–15. However, as Petitioner argues, nothing in the sentence restricts “content-related data segments” to “content” only, for example, “sampled audio,” instead of also including information relating to the content. See Reply 3 (arguing that “the phrase ‘content data’ appears nowhere in the ’794 patent and was not part of the ‘inventors’ express lexicography’ for ‘content-related . . . data segments,’ as P[atent] O[wner] incorrectly contends”). Petitioner points out that Patent Owner’s reliance on the specification refers to “content-related . . . data segments” and “contentbased data segments.” Id. (emphasis by Petitioner) (quoting Ex. 1001, 4:9– 22). Petitioner also contends that the specification refers to describing data, contradicting Patent Owner’s position that the data segments must include content. Id. at 7 (“[A]ccording to at least one embodiment of the invention, media data, in particular video or audio data, and/or metadata, in particular encoded according to the XML standard, are described by way of the first and/or second data file.”) (emphasis by Petitioner) (quoting Ex. 1001, 3:4– 10). Moreover, as Petitioner argues, “the word ‘data’ should be given its plain and ordinary meaning,” so that “even if the [unrecited] phrase ‘content data’ is included in the Board’s construction . . . . the term ‘content data’ would include any information relating to the content.” Id. at 4. As noted above, both parties point to the specification’s definition of “content-related . . . data segments”: “The term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Ex. 1001, 4:9–22. This passage indicates that data segments are content-related or include content, such as a “speech signal,” and that these segments “have a syntactical meaning” with respect to the source of the signal, such as a speaker. See Inst. Dec. 9 & n.8, 17 (observing that “[t]he term ‘content-related’ is somewhat subjective because there is not much guidance in the ’794 patent specification as to what a ‘syntactical meaning’ encompasses”). In context, one plain meaning of the term “syntax” is “[t]he way in which words are put together to form phrases and sentences.” Ex. 3002 (THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 1305 (1976)). However, as indicated above, the ’794 patent refers to video images and audio sounds with a syntactical meaning, showing that it embraces broader subject matter than the plain meaning of “syntax.” Patent Owner’s argument that the ’794 patent refers to “content-” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“segments.’”). Comps supports Petitioner and states that “two syllables represented by the fields TEXT[1] and TEXT[2] must be presented to the user.” Ex. 1004, 3:39–40 (emphasis added). Accordingly, Petitioner persuasively maps each of these text fields to an “associated one of the content-related first data segments [Nf3 and Nf4, respectively] on the basis of an assignment rule [the SYNCH process],” as claim 1 requires.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“1. Claim 6 Petitioner identifies particular passages in Comps and Wan as teaching or suggesting the subject matter additionally recited in claim 6 and provides reasons for combining the teachings. Pet. 50–51. The record supports Petitioner’s showing. See id. Patent Owner does not provide separate arguments for claim 6. See generally PO Resp. Based on the full record, we determine that Petitioner shows by a preponderance of evidence that Comps and Wan render claim 6 unpatentable. 2. Claims 7, 8, and 22 Claim 7 recites “[t]he method as claimed in claim 1, further” slip op. at 68
Patent outcomesUS 8,605,794 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01009 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language 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
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Schonfeld’s testimony cited by Petitioner does not rectify this problem. See Ex. 1003 ¶ 263. Dr. Schonfeld does not actually state that the well as the number of pixel differences, as “variables” that “were known to control the frequency response of the filter, or, in other words, how much particular frequencies would be filtered,” as allegedly shown by Gonzalez.9 Id. (citing Ex. 1020, 153, 273). But Dr. Schonfeld does not explain adequately how the cited portions of Gonzalez disclose that the coefficients were known to control the frequency response in a deblocking filter. Indeed, the cited portions of Gonzalez do not appear to discuss determining offsets for deblocking filtering or the coefficients used in an equation for determining offset. See Ex. 1020, 153, 273. Accordingly, this testimony is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,142,659 - Juniper Networks, Inc. v. Orckit CorporationInstitution deniedPTAB · Dec 11, 2024 · IPR2024-00895 · APJ Brent M Dougal · IPR · Institution
Institution was denied for claims 32–54 because the General Plastic factors favored discretionary denial of Juniper’s follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Thus, under the first General Plastic factor, we determine that the same petitioner previously filed a petition directed to materially3 the same claims of the ’111 patent, as all claims include language that is either identical to previously challenged claims or is not materially different from the previously challenged claims.” slip op. at 7
Discretionary denialPatents in suitUS 10,652,111 - Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCAll claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00923 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the asserted combinations of Handley, Basturk, and PacketCable; Judge McKone dissented over the printed-publication findings.
RulingsFinal written decision- Expert testimonyOther
“broadly, how skilled artisans in the cable industry in 1999 shared information, is not based on her expertise and should not be given any weight. See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 592, (1993) (“Presumably, this relaxation [in FED. R. EVID. 702] of the usual requirement of firsthand knowledge—a rule which represents ‘a ‘most pervasive manifestation’ of the common law insistence upon ‘the most reliable sources of information,’ ’ is premised on an assumption that the expert’s opinion will have a reliable basis in the knowledge and experience of his discipline.” (internal citation omitted)); FED. R. EVID. 701 (“If a witness is not testifying as an expert, testimony in the form of an opinion is limited to one that is: (a) rationally based on the witness’s perception.”). I would find that Dr. Hall-Ellis’s opinions are not based either on her expertise or her perception; thus, I would give her opinions no weight. As to matters within her expertise, Dr. Hall-Ellis testified that she searched the Wayback Machine and library cataloging resources (e.g., WorldCat) for PacketCable and did not find it as of December 1, 1999. 25:19–26:8, 36:13–15. She further testified that she has no knowledge of whether or how PacketCable was cataloged, on CableLabs’ website or elsewhere. Id. at 50:5–13, 51:10–52:8. This testimony is credible, as it is within her expertise. Thus, I believe Dr. Hall-Ellis that no sources typically consulted by librarians cataloged or recorded PacketCable in 1999. When her expertise is considered, all Dr. Hall-Ellis has been able to establish is that there is no evidence that PacketCable was stored or cataloged, in 1999, in the places where a librarian was apt to look.” slip op. at 108
- Skill levelOther
“VI. CLAIM CONSTRUCTION We interpret claim terms using “the same claim construction standard” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artUnpatentable
“Conclusion for Reasons to Combine We agree with Petitioner that Basturk teaches generating signatures “on-the-fly” as transmission proceeds in order to avoid slowing down the regular flow of data. Pet. 11 (quoting Ex. 1006, 12). We agree with Petitioner that Handley’s RTP protocol used for video conferences would benefit from Basturk’s protocol for high speed networks in order to provide secure video conferences as taught by Basturk. Id. (citing Ex. 1006, 5; Ex. 1003 ¶ 66). We agree with Petitioner that a person of ordinary skill in the art would have used Basturk’s technique of computing signatures “on-the-fly” with Handley’s internet conferencing architecture to provide the known benefits of transmitting data faster, reducing jitter, and reducing computing power. Id. at 10 (citing Ex. 1003 ¶ 64). We agree with Petitioner that Handley describes the need for providing authentication in a multicast environment, and that Basturk addresses this need as well as provides a solution. Id. at 12–13 (citing Ex. 1005, 13; Ex. 1006, 3; Ex. 1003 ¶ 68). We agree with Petitioner that modifying Handley’s RTP transport protocol to include Basturk’s known authentication method of generating signatures “on-the-fly” while transmitting data is “the mere application of a known technique to a piece of prior art ready for improvement.” Id. at 13 (citing Ex. 1003 ¶ 70); KSR, 550 U.S. at 417. In addition, we find that Dr. Houh’s testimony supports Petitioner’s reasons to combine Handley and Basturk. As discussed above, we find Dr. Houh’s testimony more persuasive than Dr. Stubblebine’s testimony because Dr. Houh’s testimony is supported by and consistent with the disclosures of Basturk and Handley. Dr. Houh testifies that generating a signature “on-the-fly” as data is being transmitted provides the benefits of transmitting data faster, reducing jitter, reducing computing power, and reducing latency in a live transmission. Ex. 1003 ¶ 64. We agree with Dr. Houh and find that a person of ordinary skill in the art, faced with the need to provide a signature at the application layer in Handley’s multimedia conferencing architecture as taught by Handley (Ex. 1005, 2, 13) while minimizing latency as taught by both Handley (Ex. 1005, 13–14) and Basturk (Ex. 1006, 7, 12), would have computed the signature “on-the-fly” as taught by Basturk (Ex. 1006, 7, 12) at the application layer of Handley to yield the benefits of authenticating data while minimizing latency as taught by Basturk. Ex. 1003 ¶¶ 63–70. Dr. Houh testifies that a person of ordinary skill in the art, in order to” slip op. at 40
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for patent owner
“Handley, Ex. 1005, qualifies as a prior art printed publication. I also disagree that Petitioner has shown that PacketCable qualifies as a prior art printed publication. Thus, I would not find that Petitioner has shown, by a preponderance of the evidence, that any claim of the ’682 is unpatentable. Accordingly, I dissent.” slip op. at 92
Patent outcomesUS 7,266,682 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,266,682 - Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2
- Expert testimonyOther
“being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25
Patent outcomesUS 7,436,980 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,436,980
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.