- PTAB · Jul 24, 2024 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–24 on all petition grounds, finding a reasonable likelihood that Irwin renders at least one challenged claim obvious.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than the patents at issue in PGR2020-00084 and IPR2023- 01235. Challenging claims of different patents significantly distinguishes the facts here from those in General Plastic, and we decline Patent Owner’s invitation to extend General Plastic in this regard. Accordingly, we do not exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that Irwin would have rendered the subject matter of claims 1–9 and 11–24 of the ’451 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - PTAB · Jul 22, 2024 · IPR2024-00374 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“petition for inter partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016). In determining whether to exercise that discretion on behalf of the Director, the Board considers an early trial date in related litigation, among other factors, as part of an assessment of all relevant circumstances of the case—including the merits—to balance considerations such as system efficiency, fairness, and patent quality. Fintiv, Paper 11 at 5. When the same prior art is submitted in district court and to the Board, there are “concerns of inefficiency and the possibility of conflicting decisions.” Id. at 12. Petitioner can mitigate those concerns by presenting a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(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 a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in digital video processing, or a related field.” Pet. 3 (citing Ex. 10035 ¶¶ 76–78). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner uses the same skill level in its Preliminary Response. Prelim. Resp. 21. We also apply Petitioner’s proposed skill level in this Decision. Pet. 3.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,090,025 - PTAB · Jul 18, 2024 · IPR2024-00327 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Demircin renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’303 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny the Petition based on the parallel district court litigation. Prelim. Resp. 33– 39 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential)). Petitioner, however, presented a Sotera stipulation.8 Pet. 76 (citing Ex. 1029). Thus, we do not exercise our discretion to deny institution here. See Katherine K. Vidal, Interim” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Preliminary Analysis Regarding Claim 1 At this stage, we are persuaded by Petitioner’s contentions that the teachings of Demircin satisfy each limitation of claim 1. On the current record, we do not agree with Patent Owner’s arguments that Demircin does not satisfy the parties’ agreed construction. As cited by Petitioner (see, e.g., Pet. 33, 43), Demircin teaches that when additional bandwidth becomes available, NAL units that were previously discarded or only partially transmitted may be transmitted in a delayed manner (Ex. 1005 ¶¶ 34, 104– 128, Fig. 13, 14). We are currently persuaded that Demircin teaches or reasonably suggests that such delayed NAL units could be received out of order and would be rearranged, as claimed.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,986,303 - PTAB · Jul 18, 2024 · IPR2024-00372 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 2–4 and 11 on all petition grounds, finding a reasonable likelihood that Samsung would show them unpatentable as obvious over Phek, Segall, Martins, and He.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“such as system efficiency, fairness, and patent quality. Fintiv, Paper 11 at 5. When the same prior art is submitted in district court and to the Board, there are “concerns of inefficiency and the possibility of conflicting decisions.” Id. at 12. Petitioner can mitigate those concerns by presenting a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Here, Petitioner has presented such a stipulation: if the Board grants institution, Petitioner “agrees not to pursue any grounds raised in the petition, or any grounds [Petitioner] could have reasonably raised in the petition, in [the] district court litigation or any parallel proceeding” Ex. 1028, 1. “Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022).5 Thus, we decline to exercise our discretion to deny the Petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“present arguments specifically directed to the subject matter recited in the rest of the claim. See Prelim. Resp. Even so, Petitioner has the burden to show that the challenged claims are unpatentable. Thus, we have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them to be sufficient at this stage and on this record. From the current record, Petitioner has established a reasonable likelihood that it will prevail in demonstrating that claim 2 is unpatentable.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“digital video processing, or a related field.” Pet. 3–4 (citing Ex. 10036 ¶¶ 123–125). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. at 4. Patent Owner uses the same skill level in its Preliminary Response. Prelim. Resp. 13. We also apply Petitioner’s proposed skill level in this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s arguments, however, are based on an implicit construction for the second resolution converter. See § II.D.5.c supra. For the reasons discussed below, we disagree with Patent Owner’s arguments and the implicit construction. See id. Apart from rejecting the implicit construction of the second resolution converter, we agree with the parties that no claim term needs to be construed in this Decision.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,218,995 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00382 · APJ Karl D Easthom · IPR · Final written decision
Claims 19–29 are unpatentable as obvious: claims 19–21 and 25–27 over Knappe, Elliott, VPN Textbook, and Hendricks; claims 22–24, 28, and 29 with Drell added.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “believes a POSITA would have a bachelor’s degree in electrical engineering, computer science, or equivalent with two years or more of experience in computing systems development.” PO Resp. 12 (citing Ex. 2001 ¶ 3). The two proposals largely overlap. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’612 patent specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, even if we were to adopt Patent Owner’s proposal, we agree with the parties that the outcome would be the same. See Reply 2 (Petitioner arguing that “under either definition the result is the same”); Tr. 49:11–14 (Patent Owner contending that as to defining a “person of ordinary skill in the art,” he “can’t point to a material difference that would change the outcome of this” trial).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In any event, even if Exhibit 2002 includes construction of a claim term at issue here, we determine below that Petitioner shows that the challenged claims would have been obvious under constructions consistent to any such terms proposed by Patent Owner.7 Moreover, as Petitioner argues, “Patent Owner arguments do not actually rely on any of these claim constructions,” and “only a handful of the listed terms actually appear in the claims of the ’612 patent.” Reply 2. In its Sur-reply, Patent Owner does not direct attention to any dispositive issue that turns on the district court claim construction. Sur-reply 2. 7 As discussed below, Patent Owner presents an argument related to the district court claim construction of “VPN ‘tunnel.”’ See Ex. 2002, 13. explicit construction for any claim term is not necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 9
- BurdenUnpatentable
“reasons supported by the record as summarized above. See Pet. 35–37; Reply 10–13. For example, summarizing the Petition’s showing, Petitioner contends that “[i]t would have been obvious to a POSITA, in view of Elliott’s teachings, to implement Knappe’s transmission of various types of data as collaboration data, because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Reply 13 (citing Ex. 1003 ¶ 348); see also Pet. 35–36 (similar showing (citing Ex. 1006, 3:26–29; 5:31–33; Ex. 1003 ¶¶ 342–361, 409)). Therefore, Petitioner also provides articulated rationale with factual underpinnings to show persuasively that it would have been obvious to employ distinct collaboration data (distinct from audio and video data) in Knappe’s system based on the combined teachings of Knappe and Elliott to supplement the audio and video data during a conference. Based on the summary outlined above, Petitioner also shows persuasively that this collaboration data would have improved Knappe’s similar conferencing system, summarizing as follows: [T]he combination of Knappe and Elliott is merely the ordinary use of common techniques (transmitting collaboration web browsing data, application sharing data, and collaboration data per the T.120 standard as Elliott teaches) to improve the similar conferencing system of Knappe in the same way by allowing for enhanced collaboration among participants. Reply 14 (citing Ex. 1003 ¶ 352). Based on the record and foregoing discussion, we find that Petitioner articulates persuasive rationale supported by the record to show that the combined teachings of Knappe and Elliott satisfy steps 19.1.1 and 19.2.1.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasons supported by the record as summarized above. See Pet. 35–37; Reply 10–13. For example, summarizing the Petition’s showing, Petitioner contends that “[i]t would have been obvious to a POSITA, in view of Elliott’s teachings, to implement Knappe’s transmission of various types of data as collaboration data, because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Reply 13 (citing Ex. 1003 ¶ 348); see also Pet. 35–36 (similar showing (citing Ex. 1006, 3:26–29; 5:31–33; Ex. 1003 ¶¶ 342–361, 409)). Therefore, Petitioner also provides articulated rationale with factual underpinnings to show persuasively that it would have been obvious to employ distinct collaboration data (distinct from audio and video data) in Knappe’s system based on the combined teachings of Knappe and Elliott to supplement the audio and video data during a conference. Based on the summary outlined above, Petitioner also shows persuasively that this collaboration data would have improved Knappe’s similar conferencing system, summarizing as follows: [T]he combination of Knappe and Elliott is merely the ordinary use of common techniques (transmitting collaboration web browsing data, application sharing data, and collaboration data per the T.120 standard as Elliott teaches) to improve the similar conferencing system of Knappe in the same way by allowing for enhanced collaboration among participants. Reply 14 (citing Ex. 1003 ¶ 352). Based on the record and foregoing discussion, we find that Petitioner articulates persuasive rationale supported by the record to show that the combined teachings of Knappe and Elliott satisfy steps 19.1.1 and 19.2.1.” slip op. at 32
Patent outcomesUS 9,843,612 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,843,612 - Zoho Corporation / Zoho Corporation. PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00380 · APJ Karl D Easthom · IPR · Final written decision
Claims 10–18 are unpatentable as obvious under § 103(a) over Drell, Knappe, Elliott, Hendricks, and Doganata.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“electrical engineering, computer science, or equivalent with two years or more of experience in computing systems development.” PO Resp. 12 (citing Ex. 2001 ¶ 3). The two proposals largely overlap. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’612 patent specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, even if we were to adopt Patent Owner’s proposal, we agree with the parties that the outcome would be the same. See Reply 2 (Petitioner arguing that “under either definition the result is the same”); Tr. 49:11–14 (Patent Owner contending that as to defining a “person of ordinary skill in the art,” he “can’t point to a material difference that would change the outcome of this” trial).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In any event, even if Exhibit 2002 includes construction of a claim term at issue here, we determine below that Petitioner shows that the challenged claims would have been obvious under constructions consistent to any such terms proposed by Patent Owner.7 Moreover, as Petitioner argues, “Patent Owner arguments do not actually rely on any of these claim constructions,” and “only a handful of the listed terms actually appear in the claims of the ’612 patent.” Reply 2. In its Sur-reply, Patent Owner does not direct attention to any dispositive issue that turns on the district court claim construction. Sur-reply 2. Because any explicit construction would not alter the outcome, an explicit construction for any claim term is not necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” 7 As discussed below, Patent Owner presents an argument related to the district court claim construction of “VPN ‘tunnel.”’ See Ex. 2002, 13. (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“been obvious to implement a VPN tunnel with Drell’s system. Patent Owner does not dispute that Elliott specifically discloses a VPN tunnel that is consistent with the district court construction. Petitioner establishes persuasive motivation for employing Elliott’s well-known VPN tunnel in Drell’s conferencing system with a reasonable expectation of success. See Pet. 24–25, 32–33. For example, as noted above, Petitioner contends that Drell teaches that its “network 106 may comprise a packet switched network, such as the Internet” (Pet. 42 (quoting Ex. 1008, 3:33–38)), and Elliott “teaches communicating conferencing ‘media stream (e.g. voice, fax, data, video, etc.)’ over ‘the public Internet’ using ‘virtual private network (VPN) . . . IP-tunneling.’” (id. (quoting Ex. 1007, 2:66–3:1, 4:6–34, 6:43– 54)). Based on these teachings, Petitioner contends that it would have been obvious to employ a VPN tunnel in Drell’s network as Elliott teaches, in order to “provide Drell with secure communications as the communications traverse Internet network 106” between conference endpoints (rendering the endpoints/appliances secure). See id. at 42–43 (citing Ex. 1003 ¶ 236, “network 18 can be either a public or a carrier supported virtual private network (VPN) or local area network (LAN) which uses IP or IP-tunneling.” Reply 12 (citing Ex.1007, 4:28–32). Therefore, as Petitioner also argues “[t]his network allows for secure transmission of audio data via a VPN tunnel.” Id. (citing Ex. 1003 ¶¶ 234–236). Petitioner also persuasively explains that a POSITA would have understood that VPNs are beneficial because they reduce the need to lease private data lines, which reduces or avoids the costs for implementing a private network by communicating securely over the Internet. [Ex. 1003 ¶ 168] Indeed, the combination of Drell and Elliott is merely the ordinary use of a common technique (using VPN tunneling for conferencing data) in the similar conferencing system of Drell to yield predictable results of (1) securing the transmitted data, and (2) reducing or avoiding costs associated with leasing private data lines. Id. ¶169.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“because Elliot “teaches two independent calls with two independent remote parties connected to the call-center.” PO Resp. 27.10 Patent Owner also argues that Elliott “teach[es] away [from] sharing audio data between remote parties” so that “it would not be combined with Knappe or Drell which involve sharing audio and video between remote parties.” Sur-reply 7. Patent Owner points to teachings about Elliott’s agents to support its arguments. See id. at 4–8. 10 Again, Patent Owner presents this specific argument to unchallenged claim 19. See id. at 26–27. is not, teaching a different way to communicate audio (e.g., via “independent calls” between a call-center agent according to Patent Owner does not teach away from using audio or mixed audio. See PO Resp. 27. As noted above, Patent Owner admits that Elliott discloses “secure audio data . . .between the end user and call center,” therefore Elliott also does not teach away from transmitting and receiving “secure audio data” between remote parties. See PO Resp. 24. Moreover, Patent Owner’s arguments attack the references individually without addressing Petitioner’s specific reliance on different teachings in the references, where the Petition relies on Drell as teaching transmitting audio between remote parties and supplements that with the audio mixing teachings of Knappe, as summarized above. See Pet. 44–48. In addition, contrary to Patent Owner’s arguments, as Petitioner notes and as discussed above, Elliott generally discloses audio and also securing the transmission of audio data with VPN tunnels. See Reply 11 (stating that “Elliott teaches ‘collaborative Web browsing, audio conferencing, video conferencing, and application sharing” (citing Ex. 1007, 1:40–44; Ex. 1003 ¶ 133)). This parenthetical quotation by Petitioner is in a section titled “BACKGROUND OF THE INVENTION.” Ex. 1007, 1:32–45. Petitioner also shows that Elliott teaches the use of ‘“a virtual private network (VPN) . . . which uses IP or IP-tunneling’ for the transmission of ‘voice, fax, data, video’ and ‘[o]ther types of collaboration . . . data’ during the conference.” Reply 11 (emphasis added) (quoting Ex. 1007, 2:66–3:1, 4:30–32, 6:53–54; citing Ex. 1003 ¶ 133); accord Pet. 42 (materially similar showing (citing Ex. 1007, 2:66–1, 4:6–34, 6:43–54).” slip op. at 41
Patent outcomesUS 9,843,612 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,843,612 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32
Patent outcomesUS 9,094,525 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00378 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–8 are unpatentable under § 103(a): claims 1–4 over Drell, Knappe, and Voois, and claims 5–8 over Drell, Knappe, Voois, Elliott, and VPN Textbook.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 8. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 7 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.8 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))). Moreover, Petitioner’s proposed construction of “mixed data stream” is not inconsistent with the district court’s construction of “first mixed data stream” and “second mixed data stream,” in that both constructions include at least audio data and video data, and Patent Owner does not argue otherwise.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded that the combination of Drell and Knappe teaches limitation [1.1]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [1.1], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.10 See PO Resp. 16–18. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. Patent Owner also fails to explain how the alleged “fundamental” differences in Knappe and Drell have any bearing on how they are used in the proposed combination. See PO Resp. 16–18; Sur-reply 3–4. Rather, Patent Owner’s argument merely points out alleged differences between the references, while essentially ignoring their commonalities. To the extent Patent Owner is arguing that it would not have been obvious to physically combine Drell and Knappe or bodily incorporate them into each other,11 Petitioner states, with supporting testimony from Dr. Houh, that the 10 Although Patent Owner cites to paragraphs 21 and 22 of Mr. Dye’s Declaration (PO Resp. 17), this testimony does not support the arguments for which it is cited. In the Sur-reply, Patent Owner clarifies that the citation should have been to paragraph 20 of Mr. Dye’s Declaration (Sur-reply n. 1), but, as discussed below, this testimony merely repeats arguments made in the Sur-reply. See Sur-reply 4–5. 11 “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). proposed combination “permits, but does not require, physical incorporation of elements from Drell and Knappe.” Pet. 22 (citing Ex. 1003 ¶ 168) (emphasis added). In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 12 This is a new argument raised in the Sur-reply. However, even if we consider this argument, we do not find it persuasive for the reasons stated. (PTAB August 24, 2022) (precedential); see also 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.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 23
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15” slip op. at 25
Patent outcomesUS 9,094,525 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00377 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–12 are unpatentable under §103: claims 1, 2, 4, 5, and 7 over Knappe, Elliott, and VPN Textbook; claims 3, 6, and 8–11 with Drell; and claim 12 with Drell and Hoke.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Dec. 10–11. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the evidence of record, including the asserted prior art and the ’332 patent’s specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. Patent Owner does not argue, and we do not discern, that any claim terms are in controversy on the current record.8 See 8 Although Patent Owner mentions the district court’s claim construction for “Virtual Private Network (VPN)” and “VPN tunnel” in connection with its arguments for claims 1 and 8 (PO Resp. 21, 28), Petitioner argues, and we agree, that Patent Owner’s arguments do not suggest that Petitioner’s arguments are inconsistent with any of these constructions. Reply 2; see Tr. 8:1–9:1 (Petitioner’s counsel stating that “We don’t actually have a problem with [the district court’s] construction [of VPN]. I think it may be overly broad, but it doesn’t impact our analysis in either way.”); Tr. 9:2–14 (Petitioner’s counsel stating that “[T]here’s no difference between how Dr. Houh applied tunneling and how the [district court] construed it, so we’re fine with either construction . . . In fact, I see them as the same construction.”); Tr. 47:11–13 (Patent Owner’s counsel stating “I agree with [Petitioner’s counsel] that it may not matter whether his construction, his 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 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41
Patent outcomesUS 9,253,332 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,253,332 - PTAB · Jun 21, 2024 · IPR2024-00343 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–7 based on all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of claims 1–7 of the ’052 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board has set forth a two-part framework for this determination under § 325(d): (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.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“B. Analysis The Interim Procedure instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In this proceeding, Patent Owner has not challenged Petitioner’s definition for an ordinarily skilled artisan. See generally Prelim. Resp. In the Qualcomm litigation, however, Patent Owner described a person of ordinary skill in the art as having: a Bachelor of Science (or equivalent) degree in electrical engineering, computer engineering, or a related field, and 2–3 years of work experience in very large-scale integrated (“VLSI”) systems, such as application-specific integrated circuits (“ASICs”), application-specific standard parts (“ASSPs”), system-on-chip (“SoC”), or field programmable gate arrays (“FPGAs”), and has an understanding of on-chip interconnection networks. Ex. 1017, 11. In this proceeding, Petitioner’s definition is uncontested and appears consistent with the level of skill reflected in the specification of the ’052 patent (“Specification”) and in the asserted prior-art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, for purposes of this Decision, we adopt Petitioner’s definition. We note, however, that we would reach the same conclusions in this Decision if we were to adopt the definition that Patent Owner set forth in the Qualcomm litigation. To the extent the parties dispute the definition of an ordinarily skilled artisan during” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,594,052
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.