• Google LLC v. Eyesmatch Ltd.Some claims unpatentable
  PTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14

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

    “Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11

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

    “persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23

  Patent outcomesUS 8,982,110 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,110
• Google LLC v. Security First Innovations, LLCSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00212 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 5, 9, and 11–14 were held unpatentable as obvious over Tajima and Foster or Foster and Hayhurst; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 4 (citing Bhattacharjee Decl. ¶¶ 41– 45). Petitioner further asserts that a “higher level of education may substitute for less experience.” Id. At the institution stage, Patent Owner did not oppose Petitioner’s assertions or provide a definition of a person of ordinary skill in the art. See generally Prelim. Resp.; Rubin I Decl. ¶ 20 (accepting Dr. Bhattacharjee’s proposed qualifications for the purposes of his declaration). We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 11. Post-institution, neither party has contested this description. See Rubin II Decl. ¶ 20 (accepting Dr. Bhattacharjee’s definition). For the reasons given, we maintain our previous description of the person of ordinary skill.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Ex. 1005 ¶ 0111. Dr. Rubin testifies, succinctly, that “I do not believe that a [person of ordinary skill] would understand that Tajima uses the term ‘information regarding the key’ to refer to the key. If Tajima meant to say the ‘key,’ there would be no need to use the phrase ‘information regarding the key.’” Rubin II Decl. ¶ 41. He further testifies that “[w]hen Tajima wishes to refer to a ‘key,’ it does so directly” (citing many instances where Tajima makes explicit reference to keys). Id. ¶ 42 (citing Ex. 1005 ¶¶ 67, 70, 71, 75, 77, 86, 88, 89). We find Dr. Rubin’s reasoning on this issue persuasive. On the other hand, we find Dr. Bhattacharjee’s response less convincing. Bhattacharjee II Decl. ¶¶ 5–23. We find that he does not 5 Petitioner states that it does not rely on the doctrine of inherency to establish that this limitation is met by Tajima. Pet. Reply 2. understand that Tajima uses the terms “information regarding the key” and “key information” to refer to an encryption key. Id. ¶ 5 (citing Bhattacharjee I Decl. ¶ 103, 131). Lacking support for disclosure of an encryption key in Tajima itself, Dr. Bhattacharjee turns to other references, including Foster. Id. ¶¶ 7–9. Dr. Bhattacharjee testifies that “Foster’s use of the term ‘key information’ to describe information that includes the key and additional information . . . explains why Tajima did not just say ‘key’ when referring to the information attached to the data fragments.” Id. ¶ 8. Dr. Bhattacharjee’s testimony is unconvincing. In Foster, there is explicit disclosure of including the encrypted title key itself in the header extension. Ex. 1006 ¶ 66 (“As depicted, header extension 118 includes encrypted title key 112 . . . “). In contrast, Dr. Bhattacharjee cites no similar disclosure in Tajima. In fact, Dr. Bhattacharjee’s reliance on other references to support anticipation runs contrary to the rule that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added). We do not find Dr. Bhattacharjee’s testimony based on Foster and other references convincing of anticipation by Tajima. Nor do we find Petitioner’s alternative obviousness challenge based on Tajima persuasive. Pet. 22. The Petition includes a single-sentence explanation of this obviousness contention: “Even if Tajima had not disclosed that its key information includes the corresponding key, that would have been an obvious and conventional way to implement what Tajima discloses—i.e., a system that needs only the key information to decrypt data fragments and not additional key management infrastructure.” Id. (citing paragraph 104 of his initial declaration mirrors the Petition and provides no record citations to support his opinion of obviousness. Such unsupported expert testimony is entitled to little weight. “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); PTAB Consolidated Trial Practice Guide 40 (Nov. 2019) (“Trial Practice Guide”) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).6” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Patent Owner responds that Petitioner “fails to demonstrate” a motivation to combine the references. PO Resp. 9. Patent Owner argues that “Tajima and Foster are directed to entirely different fields and to different problems.” Id. We disagree. As Petitioner points out, both Tajima and Foster are in the field of securing data, as is the ’116 patent. Pet. Reply 13–14 (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 3). Dr. Bhattacharjee testifies, “Tajima and Foster also both describe techniques for securing data using encryption and securely storing keys with encrypted data.” Bhattacharjee II Decl. ¶ 35 (citing Ex. 1005 ¶¶ 109–114; Ex. 1006 ¶¶ 64–71). Patent Owner argues Foster’s disclosure of a KEK would have been “redundant” to Tajima’s key-securing obfuscation technique. PO Resp. 18. We find this argument is unavailing. As Petitioner points out, Patent Owner’s argument “ignores Tajima’s vulnerability that Foster’s key-encryption addresses.” Pet. Reply 16. More specifically, “[r]equiring an attacker to obtain KEKs to decrypt Tajima’s encryption keys in addition to de-obfuscating them is not ‘redundant’ to only having to de-obfuscate them.” Pet. Reply 16 (emphasis omitted) (citing Bhattacharjee II Decl. ¶¶ 41–44). We find that Petitioner’s argument for combining the references is persuasive for the reasons given. Patent Owner further argues that Tajima and Foster address different problems and disclose solutions that are “fundamentally at odds.” PO Resp. 9–16, 25–27. Patent Owner asserts that “Foster’s system requires synchronizing the transmission of encrypted content packets with the keys used to encrypt those packets, so that each packet can be viewed immediately upon receipt.” Id. at 15 (emphasis omitted). Patent Owner attaching it to a different data fragment, the problem Foster sought to solve is the ‘need . . . for a key used to encrypt content to be itself encrypted, and transmitted as an integral part of the [same] content.’” Id. (alterations in original) (citing Ex. 1006 ¶ 7). We are not persuaded by this argument. As noted supra, for the reasons given, we find that both Tajima and Foster are in the field of securing data from unauthorized access. Pet. Reply 13. Furthermore, as Petitioner points out, we find that in Petitioner’s combination of Tajima and Foster, Tajima’s data (which does not require synchronization) is secured, not Foster’s. See Pet. 34–36 (providing reasons for encrypting Tajima’s keys); Pet. Reply 17–18 (“Synchronization of Foster’s data is irrelevant to Tajima-Foster because Tajima-Foster does not restore Foster’s data.”). Thus, we find that Patent Owner’s argument based on the need to synchronize Foster’s data for streaming is unavailing. We have considered Patent Owner’s other arguments and find them lacking. See, e.g., Patent Owner’s Sur-reply, which repeats the arguments that Tajima and Foster are in a “different field,” “fundamentally at odds,” “[i]n direct contrast,” and that applying Foster’s KEK teachings to Tajima would be “redundant.” PO Sur-reply 2–9. For reasons already discussed, we find these arguments unconvincing. In sum, we find for the reasons given that Petitioner has proved by a” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundNot shown unpatentable

    “Dr. Rubin explains that Kerckhoff’s Principle “holds that a cryptosystem should be secure, even if everything about the system, except the key, is public knowledge.” Rubin II Decl. ¶ 94. Citing this testimony, Patent Owner argues, “Shyu’s anti-piracy system is a prototypical attempt to achieve security through obscurity, to the extent it proposes to conceal or obscure the encryption algorithms.” PO Resp. 33. Petitioner does not persuasively respond to this argument. Pet. Reply 20–21. Petitioner argues that “Shyu does not use secret algorithms.” Id. at 20. Instead, according to Petitioner “Shyu selects from among known algorithms to secure different data segments.” Id. However, we find Shyu’s disclosure that “the scrambling algorithm and the key word for the source data are dynamically changed to effectively guard against piracy” is telling evidence that the underlying algorithms themselves are not secure, and therefore Kerckhoff’s principle applies here. See Ex. 1016, 1:37–39. We also find persuasive reasoning in Patent Owner’s assertion that “[c]ombining associated with maintaining multiple encryption algorithms and tracking encryption algorithm ‘metadata,’ without providing any substantial security.” PO Resp. 34–35. In sum, for the reasons given, we agree with Patent Owner that Petitioner fails to prove sufficiently that a person of ordinary skill would have been motivated to combine Tajima and Rivest. Further, Petitioner fails to demonstrate that even assuming that Tajima and Rivest would have been combined, a person of ordinary skill would have further combined their teachings with Shyu.” slip op. at 25

  Patent outcomesUS 11,178,116 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 11,178,116
• Meta Platforms, Inc. v. Eight KHZ, LLCSome claims unpatentable
  PTAB · Jan 7, 2025 · IPR2023-01003 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 3, 6, 15, 16, and 19 are unpatentable; claims 2, 8–10, 12, 14, 17, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “1. “Call” Terms (Claims 1, 8, and 15) The parties, and their respective experts, agree that “telephone call” (claim 1), “electronic call” (claim 8), and “electronic phone call” (claim 15) should be interpreted to mean “voice communication over an electronic network between at least two parties,” which was Patent Owner’s proposal in the district court case. See Pet. 16, 19 n.8, 58 (citing Ex. 1027, 9);1 Ex. 1003 ¶ 82; Ex. 2011 ¶¶ 51–53; Ex. 2016, 176:10–177:6 (Dr. Kyriakakis agreeing that “there is live voice exchange during a telephone call” (in addition to “background noise”)), 180:22–181:11 (same). Based on our review of the ’090 patent, we agree as well and adopt that interpretation for purposes of this Decision. See, e.g., Ex. 1001, col. 3, l. 1–col. 5, l. 44 (“Consider an example in which a listener sits at his kitchen table and has an electronic telephone call with his mother.”), Fig. 1. 1 When citing non-patent references, we refer to page numbers added by Petitioner in the bottom-right corner of the exhibit. Listening Person” (Claim 1) and “Sound Localization Point . . . Away From and Proximate to the First Person” (Claim 15) a) Procedural History As explained above, the parties did not propose any express interpretations in their Petition and Response. See Pet. 15; PO Resp. 3. Patent Owner argued, however, that “Petitioner and Dr. Kyriakakis misapprehend the scope and meaning of the [c]hallenged [c]laims.” PO Resp. 35–49. For example, Patent Owner argued that they “mischaracterize [c]laim 1’s scope as exclusively directed at binaural recording (but not binaural synthesis),” claim 8 “inherently us[es] binaural synthesis and HRTF processing,” and “binaural synthesis methods must be employed” for claim 15. Id. at 36, 46, 48–49 (emphasis omitted). In its Reply, Petitioner characterized the dispute between the parties as pertaining to the phrase “away from and proximate to,” where Petitioner proposed an interpretation of “a distance from” and Patent Owner allegedly was proposing “externalization of sound through HRTFs and [6 degree of freedom (6DOF)] tracking of the listener relative to the SLP that represents the talker.” Reply 2–12. Patent Owner responded in its Sur-Reply by stating that Petitioner “mischaracterizes” Patent Owner’s arguments, Petitioner “disputes constructions that [Patent Owner] never proposed,” and Petitioner’s focus on certain claim language for which Patent Owner “never proposed construction” was “misplaced.” Sur-Reply 1–2, 11. Patent Owner agreed, though, that the parties’ disagreement was “whether the claims require HRTF processing and whether [the] prior art teaches such processing.” Id. at 5; see Tr. 49:19–21 (Patent Owner agreeing that the dispute is “whether the claims require . . . processing with HRTFs”). dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 13

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

    “dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 15

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

    “Petitioner relies on its earlier arguments regarding claim 17. Pet. 41; see Ex. 1003 ¶ 184 (citing earlier analysis of Bedingfield). Petitioner further contends that a person of ordinary skill in the art “would have been motivated to apply Ballas’s wearable frame with head tracking and HRTF processing to Bedingfield-Andrea’s headphones” to “provide[] a more realistic virtual experience,” but does not make any argument that Ballas teaches changing an ITD. Pet. 39–43; see Ex. 1003 ¶¶ 175–191. For the reasons explained above, we are not persuaded that Bedingfield teaches changing an ITD. See supra Section II.D.6. Accordingly, Petitioner has not proven, by a preponderance of the evidence, that claim 18 would have been obvious based on Bedingfield, Andrea, and Ballas under 35 U.S.C. § 103.” slip op. at 61

  • Strike new argumentNew argument consideredDenied

    “exceptional remedy of striking sentences in the Sur-Reply. Patent Owner filed the deposition transcripts of Dr. Welch and Dr. Roginska “only for the limited purpose of allowing the Board to understand the context of the cross-examination” and “does not rely on the[] [e]xhibits for any substantive argument in [the] Sur-Reply.” Sur-Reply v–vi. Patent Owner does not cite Exhibits 2029 and 2030 themselves in its Sur-Reply; it only cites Dr. Kyriakakis’s deposition transcript in this proceeding. Id. We agree with Patent Owner that its arguments in the Sur-Reply are properly responsive to the Reply because they address Dr. Kyriakakis’s cross-examination testimony where he was questioned about the opinions in his reply declaration (but we do not agree with Patent Owner’s claim interpretation arguments on the merits, for the reasons explained above). See Mot. to Strike Opp. 3; supra Section II.B.2.e. We also agree, under the particular factual circumstances presented, that filing Exhibits 2029 and 2030 was proper so the Board has the full context in which to evaluate Dr. Kyriakakis’s cross-examination testimony. Petitioner’s Motion to Strike is denied.” slip op. at 79

  Patent outcomesUS 9,226,090 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,226,090
• Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCSome claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01023 · APJ Lynne H Browne · IPR · Final written decision

  Claims 1, 3–9, and 11–14 are unpatentable under §103; claims 2, 10, and 17–20 were not shown unpatentable under either asserted ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “research experience in virtual/augmented reality, including visual and audio modeling and rendering” and that “[a]dditional education can compensate for less experience, and vice-versa.” Pet. 4–5 (citing Ex. 1003 ¶¶ 32–37). “Patent Owner accepts Petitioner’s definition of [a POSITA].” PO Resp. 2. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “Petitioner asserts that “[t]he challenged claims are unpatentable under any reasonable construction, including their plain meaning.” Pet. 5. We understand Petitioner’s position to be that no claim construction is required. See id. Patent Owner contends “that ‘no express constructions of the claims are necessary.’” PO Resp. 2 (citing Dec. 10). We agree with the parties that no claim terms require express construction. See Vivid Techs. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8

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

    “preponderance of the evidence that the combined teachings of Pedrotti, Jang, and Begault disclose or suggest “highlighting, while the user is located in the zone and with a display of the WED, one of the multiple SLPs in the zone when the PED held in the hand of the user is pointed at one of the multiple SLPs in the zone” as required by claim 1. Even if we assume (without deciding) that Pedrotti’s virtual fence is an SLP, we agree with Patent Owner that Pedrotti’s virtual fence is “at the boundary” of its “safe area” (i.e., zone), not “in the zone” as required by limitation 1[c]. PO Sur-reply 4; Ex. 1005, 11:66–12:15. In other words, the virtual fence “defines the zone itself and thus is not in the zone” as the claim requires. PO Sur-reply 4. Petitioner has not addressed this difference between what is claimed and what is disclosed by Pedrotti or explained why the combined teachings of Pedrotti, Jang, and Begault would have rendered placement of the virtual fence “in the zone” obvious to one of ordinary skill in the art. We further agree with Patent Owner that Petitioner has not adequately demonstrated that it would have been obvious for highlighting to occur in response to the user pointing a PED at the virtual fence (or any other virtual image). Rather, Petitioner repeatedly asserts that a person of ordinary skill in the art would have understood that Pedrotti’s system could have used highlighting when the PED is pointed at one of the SLPs, without pointing to sufficient basis in Pedrotti’s disclosure or explaining why one of ordinary skill in the art would have been motivated to implement highlighting in the manner claimed. Pet. 20–22. Dr. Welch similarly testifies, without sufficient support in Pedrotti, regarding what a person of ordinary skill in the art “could” have done. See, e.g., Ex. 1003 ¶¶ 268–272, 275–276. Such reasoning is inadequate to demonstrate obviousness because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also makes a number of new arguments in its Reply that a person of ordinary skill in the art “would have used Pedrotti’s system to highlight other SLPs, such as Pedrotti’s virtual ‘weapon[s],’” relying in part on “additional references.” Reply 6–10. Petitioner, however, only briefly referenced virtual sword 802 in its Petition and did not advocate the same theories for limitation 1[c] in its Petition. See Pet. 13 (mentioning a “virtual weapon” in connection with limitation 1[a]), 19–20; Tr. 53:17–55:1. Accordingly, these arguments in the Reply are improper new arguments, which we do not consider. See 37 C.F.R. § 42.23(b) (“[a] reply may only respond to arguments raised in the corresponding . . . patent owner response”); Patent Trial and Appeal Board Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“CTPG”) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.”); Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not err in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not err in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 19

  Patent outcomesUS 10,798,509 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,798,509
• Halliburton Energy Services, Inc. v. U.S. Well Services, LLCSome claims unpatentable
  PTAB · Aug 12, 2024 · IPR2023-00558 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–12 and 14 are unpatentable; claims 13, 15, and 16 were not shown unpatentable, because the asserted obviousness grounds did not establish all their limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “deliver a true 2500 hp directly to each pump 22.” Ex. 1005 ¶ 49 (emphasis added). Dr. Durham provides no persuasive explanation for his bare conclusion that a person of ordinary skill in the art would have understood from this disclosure that Coli’s motor has a maximum continuous power output of about 1750 brake horsepower or more. See Ex. 1002 ¶ 203. In particular, he does not discuss how Coli’s described “true 2500 hp” informs a person of ordinary skill in the art that Coli’s motor might be capable of outputting 1750 horsepower or more for any particular minimum amount of time. See id. Thus, on the record presented, Petitioner has not established paragraph 49 of Coli describes a motor that satisfies the requirement of claim 15.” slip op. at 69

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “(iv) Conclusion We conclude Loucks is analogous art to the ’870 patent, because it is” slip op. at 94

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “system, that is outweighed by the cooling functionality achieved by the addition of those components. See In re Urbanski, 809 F.3d 1237, 1243–44 (Fed. Cir. 2016) (persons of ordinary skill in the art may be motivated to pursue desirable properties of one prior art reference, even at the expense of foregoing a benefit taught by another prior art reference). Dr. Nikolaou testifies that “implement[ing] a cooling system, like the one in Loucks, in Coli’s fracturing operations . . . would require a larger on-site footprint and increased infrastructure . . . similar to the one that Coli specifically warns against.” Ex. 2002 ¶ 95 (citing Ex. 1005 ¶ 39). However, he does not provide any supporting explanation for that conclusion. See id. We find that the heat sink, thermal sensors, and microprocessor of Petitioner’s combination represents far less infrastructure and footprint within Coli’s system than the diesel power machinery (transmission, torque converter, clutch, drive shaft, and hydraulic system) rendered useless by Coli’s conversion to electric power. See Ex. 1005 ¶ 39.” slip op. at 107

  Patent outcomesUS 11,136,870 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,136,870
• Unified Patents, LLC v. Dynapass IP Holdings LLCSome claims unpatentable
  PTAB · Jul 12, 2024 · IPR2023-01331 · APJ Lynne H Browne · IPR · Final written decision

  Claim 5 is unpatentable over Veneklase and Jonsson; claims 1, 3, 4, and 6 were not shown unpatentable over Kew and Sormunen.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that it is too late for Petitioner to file a copy of the infringement contentions and argue that Patent Owner’s position in this Proceeding is inconsistent with its position in that proceeding. Petitioner had ample opportunity to raise its arguments about the infringement contentions well before the oral hearing. PO Resp. to Supp. 2. Patent Owner complied with our mandatory notice provision. Further, we agree with Patent Owner that its position in the infringement contentions is not inconsistent with its position in this proceeding. Paper 3, 1. For these reasons, we decline to exercise our authority under 37 C.F.R. § 42.5(b) to consider the infringement contentions and the new arguments during an oral hearing.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA6”) “for the ’658 Patent would have had at least (1) an undergraduate degree in electrical and computer engineering or a closely related field; and (2) two or more years of experience in security. EX1001, generally; EX1003, ¶¶49-51.” Pet. 5. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. Based on the record presented, including our review of the ’658 Patent and the types of problems and solutions described in the patent and the cited prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner

    “Applicant’s foregoing computer security embodiment, utilizes two distinct communications channels and a random number generator in order to ensure that an authorized user of a computer system is notified that someone or something is seeking access to the computer system with his or her password. Moreover, Applicant’s foregoing invention is very cost effective as it employs substantially “off the shelf” and readily available components. Further, the use of a “secret” password, a “secret” substantially random number, and a “secret” second channel allows for multiple levels of security before access to the computer system is achieved and provides enhanced security over the prior art. Ex. 1005, 7:16–28. We do not agree with Patent Owner that these statements unequivocally support its position that Veneklase’s two-step authentication process is a principle of operation of its system. Rather, the quoted statements indicate that Veneklase’s use of two distinct communication channels and a random number generator are key features of Veneklase’s system that provide multiple levels of security and enhance security of that system. As modified Veneklase’s system still uses two distinct communication channels and a random number generator. Thus, to the extent that Veneklase’s enhanced security measures (i.e. two distinct communication channels and a random number generator) are a principle of operation of Veneklase’s system, the proposed modification does not destroy this principle of operation or render Veneklase’s system inoperable. Moreover, incorporating Jonsson’s teachings related to using an algorithm to create a new password would not destroy the principle of operation of Veneklase’s security system because it only changes how Veneklase accomplishes its goal of preventing unauthorized access to a computer system, rather than defeating its goal of preventing such access. See In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012). Further, we do not agree that Plas-Pak (a routine decision11) supports Patent Owner’s contention that the proposed combination impermissibly changes Veneklase’s principle of operation as Patent Owner has not identified differences between the two authentication processes that would be “unlikely to motivate a person of ordinary skill to pursue” the proposed combination. Plas-Plak, 600 F. App'x at 757-59.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “motivation to combine Veneklase and Johnson. PO Resp. 20–21. Petitioner does not propose modifying Veneklase to include Jonsson’s teachings solely because the security of the proposed combination is superior to the security in Veneklase. Rather, Petitioner asserts that “[a] POSITA would have been motivated to make such a combination because having only the one password transmitted via the computer system is more efficient and secure.” Pet. 31 (citing Ex. 1003 ¶ 91). The Petition explains how the combination is more efficient in that it requires only a single step which reduces the amount of time required for the authentication process. Id. We also agree with Petitioner’s reasoning that a person of ordinary skill in the art would have been “motivated to combine Veneklase and 11 “A routine decision is binding in the case in which it is made, even if it is not designated as precedential or informative, but it is not otherwise binding authority.” Patent Trial and Appeal Board, Standard Operating Procedure 2 (Rev. 11) 2 (July 24, 2023), available at https://www.uspto.gov/sites/default/files/documents/20230724_ptab_sop2_r ev11_.pdf. Jonsson because the combination merely uses a known technique to improve similar devices in the same way.” Pet. 33 (citing KSR, 550 U.S. at 401). Jonsson discloses a known algorithm and Veneklase discloses a system that is similar to Jonsson’s. In the absence of any evidence that applying Jonsson’s algorithm to Veneklase’s system is beyond the skill of a person of ordinary skill in the art, we agree that “the improvement is [no] more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 401.” slip op. at 26

  Patent outcomesUS 6,993,658 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,993,658
• Unified Patents, LLC v. Dynapass IP Holdings LLCSome claims unpatentable
  PTAB · Jul 12, 2024 · IPR2023-00425 · APJ Lynne H Browne · IPR · Final written decision

  Claim 5 is unpatentable as obvious over Veneklase and Jonsson; claims 1, 3, 4, and 6 were not shown unpatentable over Kew and Sormunen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 12

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

    “v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “all terms should be given their plain meaning.” Pet. 6. Yet, Petitioner proposes claim construction for “cell phone network” and “[n]ot known to the user.” Pet. 9–13.7 As these terms are not in controversy, we do not construe them.” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that it is too late for Petitioner to file a copy of the infringement contentions and argue that Patent Owner’s position in this Proceeding is inconsistent with its position in that proceeding. Petitioner had ample opportunity to raise its arguments about the infringement contentions well before the oral hearing. PO Resp. to Supp. 2. Patent Owner complied with our mandatory notice provision. Further, we agree with Patent Owner that its position in the infringement contentions is not inconsistent with its position in this proceeding. Paper 3, 1. For these reasons, we decline to exercise our authority under 37 C.F.R. § 42.5(b) to consider the infringement contentions and the new arguments during an oral hearing.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Ex. 1005, 7:16–28. We do not agree with Patent Owner that these statements unequivocally support its position that Veneklase’s two-step authentication process is a principle of operation of its system. Rather, the quoted statements indicate that Veneklase’s use of two distinct communication channels and a random number generator are key features of Veneklase’s system that provide multiple levels of security and enhance security of that system. As modified Veneklase’s system still uses two distinct communication channels and a random number generator. Thus, to the extent that Veneklase’s enhanced security measures (i.e. two distinct communication channels and a random number generator) are a principle of operation of Veneklase’s system, the proposed modification does not destroy this principle of operation or render Veneklase’s system inoperable. Moreover, incorporating Jonsson’s teachings related to using an algorithm to create a new password would not destroy the principle of operation of Veneklase’s security system because it only changes how Veneklase accomplishes its goal of preventing unauthorized access to a computer system, rather than defeating its goal of preventing such access. See In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012). Further, we do not agree that Plas-Pak (a routine decision11) supports Patent Owner’s contention that the proposed combination impermissibly changes Veneklase’s principle of operation as Patent Owner has not identified differences between the two authentication processes that would be “unlikely to motivate a person of ordinary skill to pursue” the proposed combination. Plas-Plak, 600 F. App'x at 757-59.” slip op. at 25

  Patent outcomesUS 6,993,658 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,993,658
• Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20

  Patent outcomesUS 8,605,794 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,605,794
• ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentable
  PTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25

  Patent outcomesUS 10,930,276 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,930,276
• Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentable
  PTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12

  Patent outcomesUS 8,378,875 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,378,875

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.