• Renesas Electronics Corporation v. Broadcom CorporationAll claims unpatentable
  PTAB · Nov 12, 2020 · IPR2019-01040 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1 and 9–14 are unpatentable as obvious; the motion to amend is denied for substitute claim 15 and granted for substitute claims 16–19.

  RulingsFinal written decision

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

    “§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of claims 1 and 9–14. Paper 9 (“Institution Dec.”). In the Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would prevail as to the challenged claims, and we instituted trial on all challenged claims and all grounds in the Petition. Institution Dec. 35.” slip op. at 2

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Petitioner contends that “a person of ordinary skill in the art” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Accordingly, we construe “configurable” in this context to mean” slip op. at 20

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

    “Accordingly, based on our review of the record and the parties’ submissions, we determine that the record establishes that each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as claimed, and that Fandrianto ’459 would have taught the second limitation of claim 1. d) Claim 1 Summary In sum, based on our review of the record and the parties’ submissions, we determine that the record establishes that RISC microprocessor 220 disclosed in Fandrianto ’459 is a “processor,” as required by claim 1, and each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as required by that claim. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that claim 1 of the ’844 patent would have been obvious in light of Fandrianto ’459.” slip op. at 33

  Patent outcomesUS 8,284,844 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 8,284,844
• ROKU, Inc. v. Universal Electronics, Inc.Institution denied
  PTAB · Nov 10, 2020 · IPR2020-00952 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution on claims 1, 2, 6, and 8 because the petition was time-barred under § 315(b), and denied Roku’s motion for joinder.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “III. ANALYSIS “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). The parties agree that the Petition was filed more than one year after the date on which Petitioner was served in the related litigation with a complaint” slip op. at 8

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “Petitioner’s argument is nevertheless foreclosed by the Federal Circuit’s recent decision in Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (Fed. Cir. 2020). In that decision, the Federal Circuit expressly considered the impact of Thryv, determining that the Board’s joinder decisions are “unlike” the challenges it is precluded from reviewing and “more like” those that it may review. Windy City, 973 F.3d at 1332. the Board’s joinder decisions.” Id. And after reviewing such a joinder decision, the court further concluded that 35 U.S.C. § 315(c) “does not authorize same-party joinder, and does not authorize the joinder of new issues.” Id. at 1333–38. In accordance with the Federal Circuit’s decision, we deny Petitioner’s Motion for Joinder. Consequently, we conclude that the Petition is time-barred and that no exception applies under the facts before us. We therefore deny the Petition.” slip op. at 9

  Discretionary denial
  Patents in suitUS 9,716,853
• ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing denied
  PTAB · Nov 4, 2020 · IPR2019-01203 · APJ Christopher L Ogden · IPR · Rehearing

  The Board denied CyWee’s rehearing request, leaving intact its decision allowing joined petitioner LGE to oppose CyWee’s revised motion to amend.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 3

  • PTAB / AIA Trials › Motions to amend / substitute claimsDecided for petitioner

    “In our Rehearing Decision, we determined that “the adversarial system is better served if we allow a Petitioner to raise [statutory, regulatory, or patentability] issues in response to CyWee’s Revised Motion to Amend.” Reh’g Dec. 8. Therefore, we held that LGE may present arguments and evidence, independently from ZTE, in response to CyWee’s Revised Motion to Amend, and that LGE may request an oral hearing limited solely to the issues raised in the Revised Motion to Amend. Id. at 9.” slip op. at 3

  None
  Patents in suitUS 8,441,438
• ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing denied
  PTAB · Nov 4, 2020 · IPR2019-00143 · APJ Christopher L Ogden · IPR · Rehearing

  The Board denied CyWee’s rehearing request, leaving in place its decision allowing joined petitioner LGE to oppose the Revised Motion to Amend.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 3

  None
  Patents in suitUS 8,441,438
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing

  Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,515,825
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01012 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Petitioner’s rehearing request and held claims 1–3, 5, 7–8, 11–13, 15, 17, and 18 unpatentable, including claims 4, 5, 12, and 13 over the Digital River Publications.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.”” slip op. at 5

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

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 4 is met by the Digital River Publications.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 9,043,228
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01011 · APJ Patrick M Boucher · IPR · Rehearing

  Petitioner’s rehearing request was granted; claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 were held unpatentable over the listed grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2

  • Expert testimonyPetitioner expert creditedOther

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’876 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

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

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,639,876
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCInstitution denied
  PTAB · Oct 13, 2020 · IPR2020-00823 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution because LKQ did not show a reasonable likelihood that the sole challenged claim was obvious over the Avenir Article and Lau.

  RulingsInstitution decision

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

    “determine that the circular portion, horizontal extensions and shape of the vertical tines contribute to the overall visual impression of the design claimed in the ’105 patent. In light of that, we determine that LKQ has not made a threshold showing that Avenir Article is a single reference that creates basically the same visual impression as the claimed design. High Point Design, 730 F.3d at 1312. We further determine on this record, that the circular portion and horizontal extensions as well as the shape of the vertical tines all contribute to the overall visual impression of the claimed design. In light of that, we conclude that even if a designer of ordinary skill were to have combined the Avenir Article and Lau, the result would not be prior art that accounts for the overall visual appearance of the ’105 design. See High Point Design, 730 F.3d at 1311. For the foregoing reasons, we determine that LKQ has not met its burden of demonstrating a reasonable likelihood that the challenged claim is unpatentable over the Avenir Article in combination with Lau. III. CONCLUSION LKQ has not demonstrated that that it is more likely than not that the challenged design claim of the ’105 patent is unpatentable based on the challenges presented.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “B. The Designer of Ordinary Skill LKQ contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design and work experience in the field of transportation or automotive design, or someone who has several years’ work experience in transportation or automotive design. Pet. 33 (citing Ex. 1003 ¶ 45; Ex. 1004 ¶ 44). GM argues, without citation to evidence, that: [a] designer of ordinary skill in the art relevant to the ’105 patent would have at least an undergraduate degree in automotive design, or other related industrial design field, with at least two years of relevant practical experience in designing automotive body parts. An increase in experience could compensate for less education, and an increase in education could likewise compensate for less experience. Prelim. Resp. 9. The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. For purposes of this decision and on the record currently before us, which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the ordinary designer. Also, we point out that adopting GM’s definition would not alter the outcome of this Decision.” slip op. at 9

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

    “central circular portion and the horizontal extensions shown in the claimed design, as compared to Avenir Article, would be considered de minimis by a designer of ordinary skill in the art. For instance, Mr. Gandy testifies that “a designer of ordinary skill would have been motivated to increase the dimensions of the circular portion of the vehicle grille in order to accommodate a larger emblem in the grille.” Ex. 1003 ¶ 66. This testimony expresses a reason for enlarging the circular portion. It is not, however, persuasive evidence that the larger circle size does not have a significant impact on the overall visual impression of the claimed design. Indeed, the larger central circle and angled horizontal extensions of the claimed design are not, in our view, insignificant or minor aspects of the claim. When compared to Avenir Article, the claimed central ornamental elements work together in the context of the overall design such that the larger circle and the proximal tapered and angled ends of the horizontal extensions present a proportionally larger and dynamic emblematic element relative to the bezel and vertical tines. Although both designs are for a vehicle front grille and include a similar bezel profile and generally show vertical tines, the smaller circle and linear blade-like horizontal extensions in Avenir Article do not look like the larger and proportionally dominating central circular portion and horizontal extensions with angled and tapering proximal ends adjacent the circular portion of the claimed design. Add to this the claimed design having vertical tines with decreasing depth portions adjacent the bezel, and thus the claimed design presents a more muscular and dynamic impression than the straight blade-like horizontal extensions and smaller circular portion in Avenir Article. In light of these differences we are not persuaded that a designer of ordinary skill would have viewed Avenir Article as providing the same visual impression as the claimed design so as to be an appropriate primary reference.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “2. The Asserted Secondary Reference – Lau Even were we to find that Avenir Article was a proper primary reference, which we do not, and that a designer of ordinary skill would have determined that Lau was so related in ornamental appearance to Avenir Article and would suggest the application of those features Avenir Article, the combination still fails to address the conspicuous discrepancies between the designs discussed above. See In re Carter, 673 F.2d 1378, 1380 (CCPA 1982) (“The designs of other references may properly be relied upon for modification of this basic design when the references are ‘“so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.’”).7 LKQ acknowledges that the images in Avenir Article do not reveal the partial tines as shown in the claimed design. Pet. 52. LKQ relies on Lau mostly for its disclosure of a vehicle grille and “partial tines” along the bottom of the grille interposed between the substantially vertical tines. Id. at 52. We reproduce Petitioner’s annotated figures comparing the claimed design, Avenir Article, and Lau, below. 7 Because we determined that Avenir Article was not a sufficient primary reference, we need not make a finding here as to whether a designer of ordinary skill in the art would have combined Avenir Article and Lau. We assume, only for the sake of argument, that the combination is appropriate.” slip op. at 22

  § 103 obviousness
• Facebook, Inc. / Instagram, LLC et al. v. Blackberry LimitedAll claims unpatentable
  PTAB · Oct 1, 2020 · IPR2019-00925 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1, 4–7, 10–13, and 16–18 are unpatentable, principally as obvious over Ording, Abiko, and Dvorak, with McPherson added for claims 6, 12, and 18.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “teachings accounts for the “numeric character” limitation. First, Ording, as stated above, already teaches that the icon can include a numeric character that is updated to reflect new messages. Pet. 41; Ex. 1103, 13:12−21. Thus, the technical feature of displaying and updating a number on a displayed icon to reflect the status of an e-mail folder is known, as taught by Ording. The remaining issue is whether it would have been obvious for Ording’s number to mean something else. That meaning is provided by Abiko’s e-mail program, which Petitioner contends, and we agree, places a distinct emphasis on organizing e-mail by senders. Pet. 42 (citing Ex. 1109 ¶ 11). According to Petitioner, and we agree, Abiko “explains that the menu information, which includes the number of distinct senders (e.g., Fig. 10(b)), could be created ‘when a new message is received.’” Id. (citing Ex. 1109 ¶ 15) (emphasis omitted). Dr. Chatterjee’s testimony, which we credit in this regard, is that Abiko’s sender table and menu essentially count the number of distinct senders, and that this count would have reflected distinct sender’s unread emails because “new messages generally hold more 29 immediate importance to the user because their contents are yet unknown.” Chatterjee Decl. ¶¶ 95−96. In sum, we find that the combination of teachings boils down to Abiko’s e-mail program supplying the count of senders from which unread messages remain in the inbox, and supplies this count for Ording’s icon to display. The reason to combine is twofold. First, Abiko teaches sender-focused e-mail organization, which a person of ordinary skill in the art would have found useful for supplying a count of senders. Ex. 1109 ¶¶ 11, 15. Second, Dr. Chatterjee testifies on the importance of focusing on newly received messages, and that based on that recognition, a person of ordinary skill in the art would have implemented Abiko’s sender table to report on the unread messages by sender. Chatterjee Decl. ¶¶ 95−96. See KSR, 550 U.S. at 418 (“it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new inventions does.”).” slip op. at 29

  • Skill levelOther

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner proffers that a person having ordinary skill in the art “would have possessed at least a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering with at least two years of experience in software application development, including development of graphical applications on wireless devices, such as development of associated user interface features and functionality (or equivalent degree or experience).” Pet. 6 (citing Ex. 1002 ¶¶ 12−15). Patent Owner, through the Declaration of Dr. Surati, proffers a similar level of education and experience, except for adding that the two years of experience may involve either work or research experience in the fields of “computer hardware, networking, and/or user experience design, or an equivalent subject matter, sufficient to understand fundamental computer 10 networking and hardware architecture and user-interface design.” PO Resp. 12 (citing Ex. 2013 ¶¶ 7−9). Although we are confronted with very similar proposals from both parties, neither party argues that the obviousness determination hinges on a particular level of ordinary skill. And our decision here is the same regardless of which proposal we adopt as the appropriate level of ordinary skill. Accordingly, we do not find it necessary to define the level of skill with specificity save to note that the level of ordinary skill is evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther

    “Patent Owner “does not dispute these three interpretations for purposes of this” proceeding. PO Resp. 12−13. Petitioner does not raise any claim construction disputes. See generally Reply 28. Accordingly, we adopt the above-identified claim construction positions as our final determination and note that no claim terms are in dispute. Thus, for purposes of this decision, we do not expressly construe any other term. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, 9 Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9

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

    “for a person of ordinary skill in the art to combine the teachings of Ording’s userbar icon with the wireless mobile device of Abiko. We credit the testimony of Dr. Chatterjee, summarized above, in this regard. As stated above, Ording touts the usefulness of the userbar, specifically to address a limited screen space environment, which undoubtedly includes a mobile device display. Further, we agree with and credit Dr. Chatterjee’s testimony (Chatterjee Decl. ¶ 74) that as mobile devices were becoming widely available by December 2003, with increasing number of features and applications, including email messaging, a person of ordinary skill in the art would have been motivated to make those features and applications easier to access by providing the Ording user interface (read here, the userbar with the icon representing the features and applications). Such a motivation 19 comports with KSR’s guidance that “[o]ften, it will be necessary for a court to look to . . . the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 418−419 (2017). Patent Owner argues that the Petition proffers five layers of modifications to Ording’s computer. PO Resp. 14; see also Sur-Reply 1−4. Patent Owner identifies the combination of Ording’s icon with Abiko’s wireless mobile device as the first “modification to Ording’s computer.” PO Resp. 14. Patent Owner asserts that each modification must be supported by an articulated reasoning, and argues that Petitioner failed to show any. Id. at 15−16; Sur-Reply 1−4. Patent Owner’s argument is not persuasive for two reasons. First, Petitioner is not relying on any modification of Ording. The asserted reasoning for the combination is that Abiko’s wireless mobile device would benefit from the teaching of Ording’s userbar with icons. Second, Petitioner has provided sufficient articulated reasoning with a rational underpinning supporting the motivation to combine as stated above—focusing on a market demand and the recognized benefit of using the userbar with Abiko’s device.” slip op. at 19

  Patent outcomesUS 8,209,634 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,209,634
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Neodron Ltd.Rehearing denied
  PTAB · Sep 15, 2020 · IPR2020-00282 · APJ Christopher L Ogden · IPR · Rehearing

  The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “a party requests rehearing on a decision on whether to institute inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c) (2019). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “We disagree. Nowhere in the cited passages in the Petition does Samsung argue that we should construe the term “row wrap-around connections” according to the explicit construction that Samsung now suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather, Samsung argued that “Petitioners do not believe any term requires explicit construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms in the challenged claims should be construed according to their plain and ordinary meaning. See Reply 1, 4–5. However, apart from arguing that Samsung had proposed construing limitation 1C in the co-pending district court proceeding according to its plain and ordinary meaning,3 Samsung did not propose any specific construction for the phrase “row wrap-around connection,” or point to any evidence as to what the ordinary and customary meaning of that phrase was to a person of ordinary skill in the art. Therefore, we decline to adopt Samsung’s new proposed construction on rehearing.” slip op. at 6

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

    “We determined that Samsung had not provided sufficient evidence of its proposed motivation to combine the two references. See Dec. 16 (“[N]either Samsung nor Dr. Wolfe supports this conclusion with any evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In particular, we found that “Dr. Wolfe does not explain how or why the combination of Barkan and Tagg would minimize RC delay or allow for the use of lengthier columns and rows of electrodes, or cite to any facts, data, or authorities to support that opinion.” Dec. 17. We stated that “there is no evidence in the record suggesting that RC delay was a recognized problem . . . or that a person of ordinary skill in the art would have understood that a connection to both sides of a row of electrodes would be a solution to that problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as to how a person of ordinary skill in the art would have modified Barkan’s leads 160 to incorporate external connections such as those in Tagg.” Id. (citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).” slip op. at 13

  Claim construction§ 103 obviousness
  Patents in suitUS 7,821,502

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.