• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. 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 Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “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”).” slip op. at 31

  Patent outcomesUS 10,129,825 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,129,825
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17

  Patent outcomesUS 10,524,202 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202
• Intuit Inc. v. Samesurf, Inc.No claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–16 were not shown unpatentable over Lebrun and Wang or over Prajapat and Wang because the combinations did not teach key invitation and webpage retrieval limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, 7 Patent Owner has not offered objective evidence of non-obviousness. See generally PO Resp.; PO Sur-reply; see also Pet. 21 (indicating Petitioner is not aware of any evidence of secondary considerations). least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 12; see Dec. 10–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 37. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29

  • Strike new argumentNew argument disregardedGranted in part

    “surfing server as forwarding the session-creation message to the invited web client. PO Sur-reply 12. Although Lebrun describes the group-surfing server as “informing the participants in the group-surfing server session” after receiving the session-creation message and creating the group-surfing session, Lebrun does not describe forwarding or otherwise sending the session-creation message to the participants. Ex. 1005, 32:26–28, 44:12–14. Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “receive webpage content from the website server in particular ways as identified in limitations [1e] and [1g]. Similarly, claim 1 requires the invitee device to retrieve data from the website server in response to receiving “the information related to the shared web browsing interaction from the synchronization server” (limitation [1f.iii]). For the reasons discussed above, Petitioner has not shown by a preponderance of the evidence its combination of Lebrun and Wang does so. For the required website server interaction, in its Petition, Petitioner relies on Lebrun’s description of an alternative embodiment applicable only when no cookies or other identity information are involved (Ex. 1005, 35:17–19). See, e.g., Pet. 30 (citing Ex. 1005, 35:17–19). As Patent Owner indicates, this alternative is not relevant to the subject matter recited in claim 1 which requires identity information. PO Resp. 45. Petitioner does not address this shortcoming in its Reply. See generally Pet. Reply. Rather, in its Reply, for website server interaction, Petitioner relies on Lebrun’s functionality of sending a web page from the web server to the web client as shown in Lebrun’s Figure 1. See, e.g., Pet. Reply 11 (citing Ex. 1005, 32:21–24, 31:27–30, Fig. 1). Specifically, Petitioner contends that Lebrun discloses that (i) a URL for the initial web page is included in session-creation message 151 (Ex. 1005, 32:21–24), (ii) the web site sends a web page directly to the web client (Fig. 1), and (iii) the web site delivers information 132 to web clients or the group-surfing server 140 “in response Pet. Reply 11. Although this shows the web site sending a web page directly to a web client, the prior art of Lebrun does not do so in the manner required by the claims (limitations [1e], [1f.i], [1f.iii], [1g]).” slip op. at 46

  Patent outcomesUS 9,483,448 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,483,448
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution denied
  PTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,010,330
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentable
  PTAB · Sep 6, 2022 · IPR2021-00542 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 11, 12, 14, 22, and 24 were not shown unpatentable under § 103 over Khandekar, Le, and Matthews because the petition did not establish a required image-instance limitation.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “in this case (see Dec. 10–11) or in the Institution Decision or Final Written Decision in related IPR2020-01582 (see IPR2020-01582, Paper 9 at 9–10 (PTAB Mar. 15, 2021); ’1582 Final Written Decision at 10–12). Consistent with the ’1582 Final Written Decision, we agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the limitation is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 15; PO Resp. 31–32. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claim 19. Ex. 1001, 36:35–37, 36:50–52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the limitation. We again need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire limitation, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 13

  • Skill levelSkill level board ownOther

    “We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 18

  • Strike new argumentNew argument disregardedDecided for patent owner

    “new theory distinct from the first and second theories offered in the Petition. Although the Petition included a citation to Khandekar’s disclosure of applications installed and loaded for running on the VM (see Pet. 41 (citing Ex. 1004, 6:42–56; Ex. 1003 ¶ 137)), the arguments presented in the Petition do not explain Petitioner’s third theory, elucidated for the first time in the Reply. It is improper for Petitioner on Reply to point to vague, isolated arguments and citations to the prior art from the Petition and advance a new theory that was not explicitly offered or explained in the Petition. Permitting a petitioner to advance a new theory on reply in this manner would put the burden on a patent owner to deduce and respond to all possible theories that could have been, but were not, explicitly raised in a petition. But this would be an unfair burden to place on a patent owner—and one that governing law and Board regulations and guidelines make clear the patent owner does not bear. See, e.g., 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)‒(5); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 73–75. Rather, it is a petitioner’s burden to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 312(a)(3). As the Federal Circuit has explained,” slip op. at 36

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner makes an inadequate showing for this limitation. Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s disclosures of virtual disk image files for pre-built, custom-built, and instantly deployable VMs teach or suggest “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines.” In particular, giving the words of the entire limitation their ordinary and customary meaning, Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s VM images or virtual disk image files for pre-built, custom-built, and instantly deployable VMs are “executable on the plurality of virtual machines” (i.e., capable of execution on the plurality of virtual machines). At best, Petitioner cites Khandekar’s teachings that it is the operating system and applications of Khandekar’s virtual disk image files—not Khandekar’s virtual disk image files themselves—that are executable on the virtual machines. See Pet. 41 (citing Ex. 1004, 6:42–56 (disclosing applications installed and loaded for running on the VM); Ex. 1003 ¶ 137). But this is inconsistent with Petitioner’s position that it is Khandekar’s virtual disk image files themselves that teach “a plurality of image instances of a plurality of software applications.” See id. at 36–37; see also Pet. Reply 12 (confirming Petitioner’s position (citing Pet. 36–41)). For the foregoing reasons, Petitioner does not demonstrate that Khandekar teaches, suggests, or renders obvious “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” as recited in claim 1, under Petitioner’s first theory.” slip op. at 30

  Patent outcomesUS 8,572,138 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,572,138
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentable
  PTAB · Mar 11, 2022 · IPR2020-01582 · APJ Kristen L Droesch · IPR · Final written decision

  The Board held claims 1–5, 9, 10, 17, 19–21, and 26 not unpatentable because the prior-art combinations did not teach the claimed application image instances executable on the virtual machines.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Decision. See Dec. 9. We agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the claim phrase is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 13; PO Resp. 43–44. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claims 19 and 26. Ex. 1001, 36:35–37, 36:50– 52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the claim phrase. As in the Institution Decision, we need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire claim phrase, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 11

  • Prior constructionNot reached

    “Pet. 13; PO Resp. 8–42; Pet. Reply 5–17; PO Sur-Reply 5–17. Nonetheless, we note that both parties apply the construction of “image instance” to which they agreed in the related district court proceeding—specifically, “a snapshot, or copy, of installed and configured software.” Ex. 2003 (Joint Claim Construction and Prehearing Statement in the related district court proceeding), 1–2 (identifying this construction of “image instance” as a stipulated claim construction); PO Resp. 52–53 (citing Ex. 2001 ¶ 134; Ex. 2003, 2) (arguing that Petitioner “admits” to this construction and applying it to dispute Petitioner’s unpatentability showing); Pet. Reply 29– 30 (citations omitted) (characterizing this as “the agreed-upon construction of image instances” and applying it within the unpatentability analysis). Because there is no dispute about the proper construction of “image instance” on the record before us, we need not construe this claim term. 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.’” (emphasis added) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties in Khandekar and Le. See, e.g., Pet. 6; Ex. 1003 ¶ 12; PO Resp. 48–49, 51, 57–64; Ex. 1004, 4:67–5:1; Ex. 1005, 12:38. Patent Owner also uses the acronym VMM to refer to the claimed virtual machine manager. See, e.g., PO Resp. 34. To avoid confusion, throughout the Decision, we use VMM to refer only to a virtual machine monitor and use the full term for the claimed virtual machine manager. and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 15

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Patent Owner’s arguments that Khandekar’s disclosure of application installation files does not teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of “image instance.” See PO Resp. 52–53; Pet. Reply 29 (“Khandekar’s three types of VM images satisfy the agreed-upon construction of image instances: ‘a snapshot, or copy, of installed and configured software.’”). We agree with and credit Dr. Rosenblum’s persuasive testimony distinguishing Khandekar’s “executable installation file” from the recited “image instances of software applications.” See Ex. 2001 ¶ 137. Accordingly, Petitioner does not present sufficient argument or evidence to demonstrate that Khandekar’s application installation files teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of an “image instance” as “a snapshot, or copy, of installed and configured software.”” slip op. at 25

  Patent outcomesUS 8,572,138 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,572,138
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCNo claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01473 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–3, 5–9, and 11 were not shown unpatentable under § 103 over Keskitalo and Lindell because Petitioner did not adequately explain why a skilled artisan would combine their teachings.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner contends that “[c]laim 1 includes limitations in means-plus[-]function format, which creates a rebuttable presumption that the [Applicant] intended to invoke 35 U.S.C. § 112, ¶ 6.”3 Pet. 7; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function terms (Pet. 10–12), and we determined that Petitioner has set forth proposed structures that support these limitations. Dec. on Inst. 8–12; see 37 C.F.R. § 42.104(b)(3) (2018).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “As for the other claim limitations of independent claims 1, 6, and 7, and claims 2, 3, 5, 8, 9 and 11 depending therefrom, neither party has proposed a construction of any other term. See Pet. 6–7; PO Resp. 12–13. We determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. to an inter partes review).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Andrew C. Singer, Ph.D., testifies that a POSITA at the time of the invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 4–5; Ex. 1003 ¶ 35. Patent Owner does not dispute Dr. Singer’s assessment of the level of ordinary skill in the art. See generally PO Resp. We adopt and apply Dr. Singer’s assessment of the level of ordinary skill in the art, which is consistent with the level of ordinary skill reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “position of Patent Owner. In particular, we are unpersuaded by Petitioner’s contention that it would have been obvious to modify Keskitalo such that its predetermined thresholds for transmission power are average transmission power values in accordance with the teachings of Lindell. Pet. 26. That is, we are not persuaded that Petitioner has demonstrated by the preponderance of the evidence that it would have been obvious to have used Lindell’s average transmission power values as Keskitalo’s predetermined thresholds for transmission power. See Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); Magnum Oil Tools, 829 F.3d at 1380 (holding that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”).” slip op. at 24

  Patent outcomesUS 6,611,676 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,611,676
• Apple Inc. v. Uniloc 2017 LLCNo claims unpatentable
  PTAB · Mar 6, 2019 · IPR2017-01993 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because the asserted combinations failed to teach the claimed now-starting predetermined time period.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In sum, the claimed predicting requires that there be an amount of time during which locations of the user device can be determined. The claim undeniably specifies the end of that time period: at the end of the “predetermined maximum amount of time.” But such ending is relative to a beginning, which has been the source of dispute in this trial. As discussed above, the plain reading of the claim urges a beginning coincident with the start of the predicting step. We have found that the specification consistently supports this reading of the claim. And we have also found that time windows disclosed in the specification that start at a specified time in the future do not pertain to the “predetermined maximum amount of time.” Rather, they further modify other unclaimed features, such as whether an action (e.g., sending a promotional code) is performed during operation hours of an establishment, or whether certain predetermined locations are relevant to the predicting step only on week days during a lunch period. Consequently, we are persuaded that the claimed “within the predetermined maximum amount of time” is not as broad as Petitioner argues—to include a future-starting window. The plain and ordinary meaning of the claim language “within” relative to the predicting step dictates otherwise, and the specification provides the context and confirms that this reading aligns with what the inventor described as the invention. For the reasons stated above, we determine that “within the predetermined maximum amount of time,” as recited in the predicting step of claim 1, means that the duration of time or time period starts when the predicting takes place.” slip op. at 21

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Per our analysis of the “within” phrase, discussed above in Section III.A, the “predetermined maximum amount of time” is a period of time with a start time coincident with the predicting step. In contrast, Blegen’s specified time period is some period of time that starts in the future. We do not credit Dr. Robins’s testimony that an “afternoon” on a future date is a “predetermined maximum amount of time,” as that testimony is not based on the proper construction of the claim. Blegen’s future-starting window is not coincident with the prediction action, and no other alleged time window in Blegen has been shown to have the requisite start time. Rather, Blegen looks to future locations during a future-starting window. See Ex. 1004 ¶ 68. Consequently, we determine that Blegen does not teach the “within the predetermined maximum amount of time” limitation.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “opportunity in its Reply to brief the instant ground vis-à-vis the determination that the Petition provides insufficient explanation of the asserted combination. Reply 23−25. Petitioner again refers to Froloff’s “time radius” as a “maximum time period . . . between the present time and the estimated time of arrival,” and states that the Petition offered the operation of the modified system: “By sending the advertisement a period of time before the user is expected to arrive at a predetermined location, the advertisement’s relevance and value are enhanced.” Id. at 24 (citing Pet. 69; Robins Decl. ¶ 212). This explanation, however, is presented in the Petition under the heading “Reasons to Combine” and is substantially the same reason to combine provided for the combination of Charlebois and Gillies: “By targeting the advertisement to users who are likely to be at the predetermined location within the ‘time period’ associated with the “event,” the advertisement’s relevance and value are enhanced.” Pet. 45. Relying on this vague and conclusory rationale to combine as an explanation of how the proposed teachings are combined is insufficient. We are not persuaded that this explanation adequately provides the “operation” of the modified system. At best, the explanation informs us that sending an advertisement beforehand provides an advantage: relevance and value of the advertisement are enhanced. The explanation provides no detail of how Petitioner contends the Froloff “time radius” fits with the teachings of either Charlebois or Gillies. Further, asserting that the combination of Charlebois/Gillies/Froloff sends advertisements before the user arrives at a predetermined location does not factually distinguish this combination from the Charlebois/Gillies combination, which Petitioner asserts also performs the operation of sending beforehand advertisements to users likely to be at the sales event. In sum, Petitioner’s attempt in the Reply to explain the Petition as providing detail sufficient to show its obviousness contentions based on Froloff does not remedy the insufficiencies we noted in our Decision on Institution.” slip op. at 49

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner further urges us to consider the impact of Dr. Robins’s “unrebutted” opinion regarding the predicting step. Reply 12−13. We recognize that Petitioner filed a declaration in support of its Petition, while Patent Owner did not. However, we do not discount Patent Owner’s arguments on claim construction merely because no expert testimony supports those arguments, particularly when the arguments are based on the intrinsic record. We also do not credit expert testimony that is at odds with the claim language or the specification—as is Dr. Robins’s relevant testimony. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“A court may look to extrinsic evidence so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” (citation omitted)). For instance, Dr. Robins opines that the “predetermined maximum amount of time is ‘lunch time on weekdays’ from 11:30 am to 2:00 pm,” as disclosed in the “restaurant” example. Robins Decl. ¶ 45. Dr. Robins explains that this time window “specifies the maximum amount of time during which a lunch offer will be sent to the user device.” Id. (citing Ex. 1001, 2:17−27). But as we explained above, this time period serves to limit the applicability of the predetermined locations in the prediction, but does not refer to the “predetermined maximum amount of time.” Dr. Robins does not explain how the specification’s description of limiting applicability of the predetermined locations in any way also implicates the “predetermined maximum amount of time.” And just because Dr. Robins’s testimony in this regard is unrebutted does not mean that we should give it weight, especially when we find that it is not consistent with the ’199 patent disclosure. Accordingly, we are not persuaded by Petitioner’s arguments that we should construe the phrase as Petitioner proposes merely because its proffered expert’s testimony is unrebutted and Patent Owner has no expert.” slip op. at 18

  Patent outcomesUS 9,414,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,414,199
• HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution denied
  PTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “B. Principles of Law In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 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.”); In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]”).” slip op. at 15

  § 103 obviousnesscites KSR
  Patents in suitUS 7,206,587
• Unified Patents Inc. v. Red Rock Analytics, LLCRehearing denied
  PTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). III.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4

  • BurdenNot shown unpatentable

    “signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3

  Claim construction
  Patents in suitUS 7,346,313

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.