• Aylo Freesites Ltd v. DISH Technologies L.L.C.Some claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-00940 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over Leaning and over Leaning with Klemets; claims 12–20 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner does not address the level of ordinary skill in the art in its post-institution papers. We adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 11

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

    “We determine that no construction of “virtual timeline” is necessary. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Rather, as discussed below, the parties’ dispute appears to be about whether the “virtual timeline” identified by Petitioner is used to arrange the requested streamlets, as is also recited in claim 9. We address that argument below. See infra § II.D.10.” slip op. at 13

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

    “On this record, we determine that the recitation “to achieve continuous presentation” is limiting and requires an amount of continuous (uninterrupted) playback/presentation after an upshift or downshift. The specification describes agent controller 702 determining whether to upshift based on a trigger threshold Θup, which itself is based on various factors including a current read ahead margin and a minimum safety margin. See Ex. 1001, 17:44–58. If agent controller 702 can sustain upshift quality, then it will upshift and request higher quality streams. See id. at 17:58–61. Conversely, when an upshift is not possible, agent controller 702 determines whether to downshift based a different threshold Θdown, which itself is based on the same sort of factors. See id. at 18:4–7. When the stream quality is not adequate, it downshifts. See id. at 18:7–14. These disclosures are similar to the language of claim 12, which recites “repeatedly generating a factor indicative of a current ability to receive the digital content at a rate sufficient for presenting the digital content as the digital content is received, . . . wherein the factor relates to a performance of the network” and “making the successive determinations whether to change the requested bit rate based on the factor to achieve continuous presentation of the digital content using the individually-requestable portions of the highest bit rate one of the copies determined receivable at that time.” Ex. 1001, 20:5–16 (emphasis added). That is, claim 12 refers to “achiev[ing] continuous presentation” based on what is “sufficient for presenting the digital content,” trading quality to ensure continuous playback.” slip op. at 14

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

    “server comprises at least two servers and wherein at least one streamlet is requested from a first of the at least one server and at least one other streamlet is requested from a second server of the at least one server other than the first server.” Ex. 1001, 19:7–12. Petitioner references its mapping of the “at least one server” in claim 1 to Leaning’s server 1. Pet. 20 (citing Ex. 1004, 2:15–16, 2:18–22, 2:31–32, 5:8–14, Fig. 1), 23 (citing Ex. 1004, 6:13–26, 9:3–7, 16:6–12), 37; see supra §§ II.D.2.b–c. Petitioner contends that, “[t]o the extent Leaning does not disclose at least two servers wherein one sub-file (streamlet) is requested from a first server and another sub-file (streamlet) is requested from a second server such an arrangement would have been obvious in view of the knowledge of a [an ordinarily skilled artisan].” Id. at 37. Citing the common nature of such an arrangement, Petitioner contends that an ordinarily skilled artisan would have been motivated to provide multiple web servers containing the same sets of sub-files for streams in order to have redundancy in the system and allow for clients to establish connections with multiple servers and request a first sub-file from a first web server and, if the connection between the first web server becomes congested or the first web server otherwise fails or becomes unavailable, request a subsequent sub-file from the second web server. Id. at 37–38 (citing Ex. 1003 ¶ 85; Ex. 1012, 108,5 Fig. 4-11). Patent Owner does not dispute Petitioner’s analysis for claim 3. We are persuaded that it would have been obvious to implement Leaning’s server 1 as two servers that store different streamlets based on Dr. Houh’s uncontested testimony about system redundancy. See Ex. 1003 ¶ 85. His testimony is backed by a contemporaneous reference about HTTP that shows requests for different objects from different servers over parallel TCP connections. See, e.g., Ex. 1012, 108–09, Fig. 4-11. Thus, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 3 would have been obvious over Leaning.” slip op. at 34

  Patent outcomesUS 11,991,234 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,991,234
• Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.Some claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-00988 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 4–10, 13, and 15 are unpatentable over Phan; claim 2 was not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “experience or over 30 years of experience, for example. In addition, the ’683 patent is directed to “a pixel arrangement structure of an organic light emitting diode (OLED) display” (Ex. 1001, 1:19–21), whereas Patent Owner’s proposed experience is tied to “active-matrix displays.” PO Resp. 5. Given that the field of OLED displays includes both passive and active matrix designs (see generally Ex. 2009 ¶¶ 40–56), we see no reason to restrict the relevant experience to active matrix displays. For these reasons, we do not adopt Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Invention” section, Phan states that “[t]he invention [of Phan] relates to a display comprising pixels and dots, including but not limited to” various “display technologies” including “Organic Light Emitting Diode (OLED).” Ex. 1005, 1:17–29 (emphasis added). Accordingly, we find that Phan fairly suggests that the pixel arrangements disclosed in Phan—which are part of Phan’s “invention”—may be applied to OLEDs. See Twitter, Inc. v. VidStream LLC, 825 F. App’x 844, 850 (Fed. Cir. 2020) (quoting Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019)) (“[W]hen conducting an obviousness analysis, the Board must consider a prior art reference ‘not only for what it expressly teaches, but also for what it fairly suggests.’”). In making this finding, we note that obviousness is determined from the perspective of a person of ordinary skill in the art (see 35 U.S.C. § 103(a)), who in this case would have had “2 years of professional experience working with display design, including OLED displays.” See supra § II.B. In light of this specific experience, we find that an ordinarily skilled artisan would have been inclined to link Phan’s disclosed pixel arrangements with OLEDs based on the plain statement about related “display technologies” in Phan’s “Field of the Invention” section. See, e.g., Ex. 1003 ¶¶ 321, 410–414. For these reasons, we disagree with Patent Owner’s assertion that “Phan does not teach about OLED displays.” PO Resp. 32.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “6 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’683 patent. See id.; Pet. Reply 20. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 34

  • Strike new argumentNew argument disregardedGranted in part

    “6 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’683 patent. See id.; Pet. Reply 20. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 34

  Patent outcomesUS 10,854,683 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,854,683
• Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.Some claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-00987 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4 and 19–21 are unpatentable as obvious; claim 5 was not shown unpatentable because the Phan-based challenge did not establish its limitations.

  RulingsFinal written decision

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

    “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d at 988.” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “9 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’803 patent. See id.; Reply 21. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 63

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner

    “For these reasons, we accord Patent Owner’s evidence of long-felt” slip op. at 70

  • Strike new argumentNew argument disregardedGranted in part

    “9 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’803 patent. See id.; Reply 21. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 63

  Patent outcomesUS 9,818,803 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,818,803
• 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
• Microsoft Corporation v. Throughputer, Inc.Some claims unpatentable
  PTAB · Sep 18, 2023 · IPR2022-00574 · APJ John A Hudalla · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Stevens and Smetana, with Daly added for claim 2; claims 8–14 and 21–24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “science, computer engineering, or a related field, and 2-3 years of practical computer programming or engineering experience, including experience designing or researching parallel processing systems.” Pet. 6–7 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill, and Dr. Smith’s testimony is based on a similar definition. See Ex. 2002 ¶ 15. We adopt Petitioner’s definition of the level of ordinary skill in the art and we apply it in our obviousness evaluations below. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’353 patent and the asserted prior art.” slip op. at 8

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

    “We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “h. Conclusion for Claim 1 Petitioner has persuasively shown that the combination of Stevens and Smetana teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references. Thus, regarding claim 1, we determine that Petitioner has shown, by a preponderance of the evidence, that the claimed invention as a whole would have been obvious over the combination of Stevens and Smetana.” slip op. at 25

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

    “We find that Smetana teaches the implementation of multiplexers in hardware. See, e.g., Ex. 1005, 2:35–37, 2:60–4:3, Fig. 2. We also find that Stevens teaches matrices/nodes 150/800 that are sometimes dedicated to a particular task. See, e.g., Ex. 1003 ¶¶ 112–113; Ex. 1004 ¶¶ 95, 97, 133– 134, 137, 190. Furthermore, Petitioner persuasively shows that an ordinarily skilled artisan would have implemented Stevens’s multiplexers 280 and 955 as hardware multiplexers based on the teachings of Smetana to obtain the benefits of reduced propagation delay and reduced power consumption. See, e.g., Ex. 1003 ¶¶ 74–75; Ex. 1005, 1:13–18. We note that Stevens already describes the ACE as an integrated circuit hardware platform (see Ex. 1004 ¶¶ 2–3, 5), which supports that an ordinarily skilled artisan would have expected success in implementing the components of the ACE, such as Stevens’s multiplexers, as hardware resources based on Smetana’s teachings. See Pet. 27 (citing, inter alia, Ex. 1003 ¶¶ 74–75, 111).” slip op. at 23

  Patent outcomesUS 10,318,353 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,318,353
• Verizon Business Network Services, Inc. v. Huawei Technologies Co., Ltd.Some claims unpatentable
  PTAB · Jan 11, 2022 · IPR2020-01079 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, 5, 7, 9, 10, 12, and 14 are unpatentable over Becker and Kenoyer ’423; claim 6 was not shown unpatentable.

  RulingsFinal written decision

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

    “The principal difficulty with Patent Owner’s arguments is that they improperly conflate transferring desktop information with the claim’s 4 The ’288 patent instead uses the uncommon acronym “PAUNTSC,” presumably a result of incorrectly printing “L/” as “U.” recitation of “capturing” desktop information. Indeed, Dr. Bhattacharjee concedes that “the desktop information as described in the ’288 patent is transferred in digital form,” even as he maintains his opinion that desktop information is not limited to digital capture by the ’288 patent. Ex. 1020 ¶ 11. There is thus no dispute among the expert witnesses, nor the parties, that the ’288 patent describes the digital transfer of desktop information. As Dr. Bhattacharjee explains, this is a consequence of the fact that “the [’288] patent describes and claims transferring desktop information only after it is encoded.” Ex. 1020 ¶ 12. Because such encoding occurs only after the desktop information is captured, “the captured desktop information could either be digital or analog.” Id. The aspects of the intrinsic record that Patent Owner identifies as supporting its proposed construction are, in fact, consistent with this distinction between capture and transfer. For example, the “advantage of the invention” identified by Patent Owner is specifically described by the ’288 patent as raising clarity on the video communication terminal when “[d]esktop information of a PC is transferred directly in a digital coded bit stream mode without converting digital signal to analog signal.” See Ex. 1001, 2:35–39 (emphasis added). This is, moreover, consistent with the portion of the prosecution history Patent Owner identifies and which also makes clear that “the desktop information of a PC is transferred in a digital coded bit stream.” Ex. 1002, 159 (emphasis added). Petitioner’s expert, Dr. Bhattacharjee “agree[s] the desktop information as described in the ’288 patent is transferred in digital form,” even though it is not captured in digital form. Ex. 1020 ¶ 11. And although the ’288 patent’s remarks about the “second” prior-art” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “technical dictionary definitions. Id. When deciding to institute this proceeding based on the preliminary record, we declined to adopt Petitioner’s proposal, which was also not adopted by the district court in the related litigation. Dec. 12. The parties have not revisited this preliminary determination during the trial and we see no compelling reason to reach a different determination based on the full record. We according construe “bit stream” in accordance with its plain and ordinary meaning as a stream of bits.” slip op. at 17

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both proposals appear reasonable on the record before us. Although we invited the parties “to address whether material differences exist between their respective proposals and what impact, if any, the different proposed levels have on the obviousness analysis,” neither party has done so. See Dec. 11 n.3. We apply the proposal articulated by Patent Owner, but we would reach the same conclusions under either proposal.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “skill in the art] would be motivated to combine even when bandwidth is shared”: (1) “the shared nature of the bandwidth only highlights that reduced bandwidth usage for desktop information provides the capability of a higher quality signal for the live stream without any extra costs in components or processing”; (2) because Kenoyer ’423 “does not disclose using a dedicated or fixed amount of bandwidth . . . , any reduction in bandwidth would reduce overall usage”; and (3) “even in a dedicated environment, Kenoyer ’423’s reduced bandwidth needs for desktop information would reduce the amount of dedicated bandwidth that is required, potentially saving costs or power.” Reply 12 (citing Ex. 1020 ¶¶ 31–32). These reasons are directly responsive to arguments raised by Patent Owner in its Response and are therefore properly considered. See 37 C.F.R. § 42.23(b). We also find such reasons, which are supported by additional testimony by Dr. Bhattacharjee, adequately explain how Patent Owner’s distinction is accommodated within Petitioner’s expressed rationale of “minimizing bandwidth usage.” See Ex. 1020 ¶¶ 31–32. Second, Patent Owner contends that, if “Kenoyer ’423 were interpreted as teaching reducing bandwidth, it does so in a different manner than in Becker.” PO Resp. 37. Specifically, “Becker addresses bandwidth reduction by using signal compression techniques,” Patent Owner says, while “Kenoyer ’423 prevents the increase in bandwidth . . . by dynamically sharing bandwidth when both a live view of the presenter and the presenter’s computer screen are being shared.” Id. Dr. Bhattacharjee disputes this distinction by observing that Kenoyer ’423’s technique still “reduces the number of bits required to convey the same video information,” and is thereby broadly encompassed as a form of “signal compression.” Ex. 1020 ¶ 33. Dr. Rosing does not specifically disagree with Dr. Bhattacharjee’s characterization. See generally Ex. 2022 ¶ 99. Regardless, both Becker and Kenoyer ’423 support Petitioner’s rationale of “minimizing bandwidth usage.” Patent Owner inadequately explains how a distinction in the precise manner that might be accomplished by the two references diminishes the support provided by the rational underpinnings identified by Petitioner. See PO Resp. 37 (Patent Owner making the conclusory statement that “[a]s such, Petitioner fails to provide a valid motivation for combining Becker and Kenoyer ’423”).” slip op. at 26

  Patent outcomesUS 7,609,288 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,609,288
• Juniper Networks, Inc. v. Huawei Digital Technologies (Cheng Du) Co., Ltd.Some claims unpatentable
  PTAB · Jan 10, 2022 · IPR2020-01130 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 8 and 9 are unpatentable as obvious over Dubrovsky and Dubrovsky with Campbell, respectively; claims 1–7 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “request in Petitioner’s Moshchuk-Gribble combination is a URL for an HTML root page, neither the Content-Type field of the HTTP header nor the URL extension would indicate whether the requested Web page contained executable content. PO Resp. 10–16. Dr. Davis provides credible testimony that because, in Moshchuk, the file that is provided in response to the request is an HTML root page, the HTTP header for the file would have merely indicated that the returned file is an HTML file, which is not a file type associated with being an executable, and would not have indicated whether the file contains active or passive content. Ex. 2018 ¶¶ 94–100. Similarly, Dr. Davis provides credible testimony that “[a] POSITA would have known that the URL for an HTML file would have generally included an extension of .html or .htm” and that such extensions would not have been associated with executables. Id. at ¶ 106. Thus, Dr. Davis concludes “[t]he resulting Moshchuk-Gribble combination therefore would not have been able to determine if a requested Web page was an active page or a passive page based on the analysis of the URL.” Id. at ¶ 107.” slip op. at 36

  • Strike new argumentNew argument disregardedDecided for patent owner

    “The contentions from the Petition, taken together with Dr. Nielson’s initial testimony and the underlying disclosure from Gribble show that the Petition relies specifically on examining Gribble’s content-type HTTP header to determine whether the associated file is an executable. Thus, we agree with Patent Owner that Petitioner’s arguments in the Reply Brief relying on file headers generally, or those relying on other types of headers, such as the HEAD section or element, or other fields of the HTTP header, such as the Content-Script-Type field, are new arguments not presented in the Petition. Because these arguments were not raised in the Petition, it is impermissible to raise them in the Reply Brief. See Consolidated Trial Practice Guide3 at 73–75.” slip op. at 33

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

    “Based on the evidence of record and the parties’ arguments, we are persuaded by Petitioner that the Dubrovsky-Campbell combination teaches the limitations of claim 9. Initially, we note that we agree with Petitioner that one of ordinary skill would have been motivated to look to known ways of identifying file types, such as Campbell’s method of examining the file extension and the file header. We give credit to Dr. Nielson’s testimony in this regard that both Dubrovsky and Campbell recognize that executables were a frequent source of malware but that Dubrovsky does not provide specific details regarding how a file would be determined to be executable. Ex. 1005 ¶¶ 404–405. Because Campbell does provide these details, Dr. Nielson credibly testifies that a person of ordinary skill would have been motivated to combined Campbell’s techniques of identifying executables with Dubrovsky. Ex. 1005 ¶¶ 404–406. We agree with Petitioner that Campbell teaches that a file’s header can be used to determine that the file is an executable. Campbell teaches that spyware contains certain patterns that can be used to identify the nature of the file. Ex. 1013, 5:9–12. Campbell provides an example of a .CAB file that includes a header having a certain format. Id. at 5:12–13. Campbell explains that spyware scanners have access to spyware signature lists that can be compared with characteristics of spyware headers to identify spyware so that the spyware can be blocked. Id. at 13–24.” slip op. at 61

  Patent outcomesUS 10,027,693 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,027,693
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

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

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043

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.