• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · Oct 10, 2019 · IPR2019-00989 · APJ Jennifer S Bisk · IPR · Institution

  Institution was denied on claims 1, 4, 7-9, 18, 21, 24-26, 36, 38, 39, 42, 45, and 48 because Kobata did not teach the required identifier placement.

  RulingsInstitution decision

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

    “instituted unless the information presented in the Petition and Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the parties’ arguments, we conclude that the information presented does not establish a reasonable likelihood that Microsoft will prevail in challenging the patentability of claims 1, 4, 7–9, 18, 21, 24–26, 36, 38, 39, 42, 45, and 48 of the ’636 patent. We, therefore, decline to institute an inter partes review.” slip op. at 2

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

    “Each of the independent claims of the ’636 patent recites “a second instance of the digital asset” with a “second unique identifier” and requires “the second instance of the digital asset include[s] the digital content and at least one other portion that does not include the digital content.” Ex. 1001, 1 On October 11, 2018, the USPTO revised its rules to harmonize the Board’s claim construction standard with that used in federal district court. Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). This rule change applies to petitions filed on or after November 13, 2018. Id. 20:60–65 (claim 1), 22:34–39 (claim 18), 24:11–16. Further, the claims recite “the second instance of the digital asset include[s] the second unique identifier embedded in the at least one other portion of the second instance of the digital asset.” Id. at 20:67–21:3, 22:41–44, 24:17–20. We agree with Uniloc that “the at least one other portion of the second instance of the digital asset” refers to “the at least one other portion that does not include the digital content.” See Prelim. Resp. 5. Thus, we agree with Uniloc that the plain language of the claims requires “the second unique identifier” be “embedded” in a portion of the asset that “does not include the digital content” and is not, itself, embedded in the digital content. In fact, we see no other reasonable way to interpret this language. Further, we see nothing in the Specification that indicates the patentee intended an alternate meaning for any of the words at issue. For example, the Specification describes creating a first instantiation of the digital asset with “an original offset and serial number embedded within the digital content,” but does not specifically describe where the serial number resides in the second instantiation of the digital asset, noting only that “instead of merely copying the digital content as part of the transfer, the present invention creates a separate instantiation to facilitate tracking of each transfer (or transaction) within the system 100.” Ex. 1001, 14:22–33; see also id. at 15:25–30 (“At step 326 Customer Client Server module 124 marks the digital asset file with the new serial number and offset preferably using the same steganographic technique . . . and then stores the digital asset in a form suitable for later retrieval and play on the user’s system.”). Thus, we see nothing in the Specification demonstrating that the claims are meant to cover anything other than the plain meaning—the second unique identifier is embedded in a portion of the asset that does not include the digital content.” slip op. at 6

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

    “Nowhere, however, does Microsoft explain how “ID portion 418” is embedded in a portion of the asset that does not include the digital content. To the contrary, Figure 4 of Kobata shows 418 to be embedded within Digital Content Data 410. Indeed, this fact is emphasized by Microsoft’s annotations of the Figure. See Pet. 33 (showing ID Portion 418 in purple completely surrounded by Digital Content Data 410 in yellow). Based on this flaw in the Petition, we cannot conclude that Microsoft has established a reasonable likelihood that a skilled artisan would understand Kobata to teach or suggest the second unique identifier is embedded in a portion of the asset that does not include the digital content. Therefore, Microsoft has not shown that Kobata teaches or suggests “the second instance of the digital asset including the second unique identifier embedded in the at least one other portion of the second instance of the digital asset” as recited in the claim.” slip op. at 11

  Claim construction§ 103 obviousness
  Patents in suitUS 8,706,636
• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · Oct 9, 2019 · IPR2019-00976 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7–10, 12, 15–18, 20, 23, and 24 were obvious over the asserted references.

  RulingsInstitution decision

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

    “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. slip op. at 2

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

    “Id. ¶ 157. These maps/threads provide “[t]he capability to mine/gather the data associated with the digital content 320.” Id. ¶ 162 (emphasis added). Thus, Kobata’s super-distribution threads are stored as part of digital content 320 and provide a history of digital asset transfers—the “history of identities of computer devices that manipulated and/or forwarded the digital content 320.” Id. ¶ 152. However, the threads do not detect when such a transfer occurs. Nor do the cited paragraphs of the Golbeck Declaration relied upon by Petitioner explain how Kobata detects a transfer of the digital asset as required by claim 1. See Ex. 1003 ¶¶ 63–65 (discussing tracking, but not addressing detecting); see also Pet. 37 (citing same). Thus, Kobata does not support Petitioner’s assertion that Kobata’s super-distribution allows the “digital content [to] be tracked when transferred” as asserted by Petitioner. See Pet. 36.” slip op. at 18

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Kobata discloses an asset identification embedded within an “other portion” of the digital asset that does not include digital content, as required by claim 1. Petitioner asserts that ID portion 418 does not include digital content. Pet. 33–34 (citing Ex. 1003 ¶¶ 57, 60–65). The cited portions of the Golbeck Declaration, however, do not address the recited other portion. See Ex. 1003 ¶¶ 57, 60–65 (discussing the form of the digital content and tracking digital content, but not discussing the recited other portion). Paragraph 53 of the declaration does, noting that “the digital content package 320 can include a viewer module 416, the digital content data 410, the ID portion 418, the local digital rights database 412, [and] the personal rights manager module 414,” and summarily stating that “[t]hus, Kobata’s system includes . . . at least one other portion that does not include digital content.” Ex. 1003 ¶ 53 (citing Ex. 1005 ¶¶ 208–09). The cited portions of Kobata, however, do not address the components cited by Petitioner’s declarant. See Ex. 1005 ¶¶ 208–09 (discussing loading a file onto the recipient’s computer device, decrypting the file, and running the file, but not discussing the contents of ID portion 418). As Dr. Golbeck does not direct us to any other evidence to support her assertions, we accord her testimony little weight. See 37 C.F.R. § 42.65(a).” slip op. at 20

  • Skill levelSkill level board ownOther

    “Based on the Specification and the prior art of record, we find Petitioner’s definition reasonable and, for purposes of this Decision, adopt it as our own.” slip op. at 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,606,856
• Panasonic Avionics Corp. v. Linksmart Wireless Technology, LLCRehearing denied
  PTAB · Oct 8, 2019 · IPR2019-00043 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Panasonic’s rehearing request and left in place its denial of institution because the cited art did not teach the claimed redirection server.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “rehearing of our Decision Denying Institution of inter partes review of U.S. Patent RE46,459 (the ’459 patent) entered as Paper 7 (“Decision” or “Dec.”) on May 14, 2019. See Paper 8 (“Req. Reh’g.”). When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “redirecting a packet, i.e., one in which the NAS removes the request for the Subscriber’s packet and places it in a new packet to be sent to server 14. Req. Reh’g. 5–6 (citing Pet. 71, 78). Petitioner refers to this second technique as an address-replacement approach. Id. at 5. According to Petitioner, Malkin’s address replacement approach is consistent with our analysis that the ’459 patent requires modifying a request to access a destination on the network by changing the requested destination. Id. at 5–6 (citing Dec. 18). Petitioner overlooks that our analysis of Malkin is independent of how server 14 is accessed. Our Decision states, “When the NAS detects a user attempting unauthorized access, Malkin routes the user’s request to redirection server 14 within ISP 16.” Dec. 17 (emphasis added). We also stated that “Malkin either allows network access for authorized user requests or blocks network access for unauthorized user requests, but it does not redirect a request to another location on the network.” Id. (emphasis added). As our construction requires that the claimed redirection server perform some function other than allowing or blocking access to a network, i.e., redirecting the user to a network location that is different from the requested network location, we concluded that Malkin, which blocks access to the network, does not disclose the claimed redirection server. Id. at 17–18.” slip op. at 5

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

    “redirection server” means “a server operable to control network access by applying the following actions: block, allow, direct.” Pet. 15. We explained that a prior panel of the Board construed “redirection server” as “requiring[ing] some sort of redirection functionality” and that “blocking and allowing are ‘further’ functions of the redirection server.” Dec. 10. We agreed that “‘redirection’ requires the server perform a redirection function as distinguished from merely blocking or allowing user access, i.e., there must be some form of redirection of the user’s request.” Id. at 11. We phrased the construction of “redirection server” to mean a server that “at least must be capable of redirecting a user to a network location that is different from the network location in the user’s request.” Dec. 12. Our slip op. at 3

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

    “the user’s rule set correlated to a temporarily assigned network address. As an initial matter, we note that the Petition (i) cites Abraham as disclosing denying or allowing transmission of IP packets and (ii) argues it would have been obvious to augment the network server’s ability to deny or allow packets, as disclosed by Abraham, with Malkin’s packet redirection technique, thereby making Abraham’s network server a redirection server. Pet. 30–31. According to Petitioner, “it would have been obvious for Abraham’s network server to redirect packets that are blocked, as described by Malkin.” Id. at 32. As discussed above, because Malkin’s packet redirection technique is a blocking technique that fails to disclose Abraham does not alter our decision to deny institution. See also Dec. 18 (“As we are persuaded that Petitioner has not demonstrated the references disclose a redirection server as that term is properly construed within the meaning of the challenged claims, we conclude that Petitioner has not demonstrated a likelihood that it will prevail on its challenge to any of the claims.”).” slip op. at 6

  Claim construction§ 103 obviousness
• Unified Patents Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Aug 16, 2019 · IPR2019-00480 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Unified Patents’ rehearing request, leaving institution denied because Petitioner did not show a persuasive reason to combine Boykin with the other asserted references.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3

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

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because Petitioner’s arguments concerning Boykin1 were not persuasive and that a person of ordinary skill in the art would not have had reason to combine Boykin’s teachings with the other asserted references. Dec. on Inst. 14−21. Petitioner has filed a Request for Rehearing. Paper 9 (“Req. Reh’g”). Petitioner argues several points, but in particular, Petitioner argues that our Decision misapprehended Boykin in concluding that the Petition failed to show an adequate reason to combine. Id. at 9. According to Petitioner, Boykin supports the contention Petitioner presented in the Petition that Boykin triggers the incentive of awarding users with points or credits, which a person of ordinary skill in the art would find beneficial. Id. Petitioner then points to Dr. Vijay Madisetti’s testimony of the alleged benefit. Id. (citing Ex. 1004 ¶ 116). Petitioner faults our Decision for weighing Patent Owner’s arguments, which Petitioner criticizes as constituting attorney argument, and concludes that our Decision’s reasoning misapprehends that Boykin would provide a benefit despite our determination that a person of ordinary skill in the art would not derive the alleged benefit given the teachings of the other asserted references.” slip op. at 2

  • BurdenNot shown unpatentable

    “point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3

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

    “point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3

  § 103 obviousness
  Patents in suitUS 8,606,856
• Apple Inc. / LG Electronics, Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Aug 9, 2019 · IPR2018-00361 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 6-9, 12, 14, and 15 unpatentable over Riggins and Devarakonda and claim 20 not shown unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Patent Owner to show we misapprehended or overlooked the matter it requests that we review. We are not persuaded that Patent Owner has shown that we misapprehended or overlooked the matter raised in the Request for Rehearing.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  § 103 obviousness
  Patents in suitUS 6,216,158
• Hamamatsu Photonics K.K. v. Semicaps Pte Ltd.No claims unpatentable
  PTAB · Mar 18, 2019 · IPR2017-02112 · APJ Ken B Barrett · IPR · Final written decision

  Claims 2, 3, and 8–20 were not shown unpatentable because Hamada did not disclose the claimed sampling and accumulation, the obviousness theories were insufficient, and Quah was not proven prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “adequately address the pertinent issue—whether Petitioner’s proposed hypothetical person of ordinary skill in the art would lack the requisite experience and understanding of the art. Patent Owner does not identify adequately a substantive difference between Petitioner’s hypothetical person of ordinary skill in the art and Patent Owner’s. See PO Resp. 17–20. For example, Patent Owner does not argue that an electrical engineer or physicist with two years of experience utilizing electronic circuit testing equipment would lack adequate knowledge of the use of lasers in circuit testing. To the contrary, Patent Owner’s expert, Dr. Woods, “generally agree[s] with petitioner’s definition of a [person of ordinary skill in the art]”—including the type of education and level of experience—and testified that “[t]hese techniques [of OBIRCH and TIVA] were known and widely used around the time of the invention of the ’982 patent to determine the location of defects in a semiconductor device and would have been known to those of ordinary skill in the art.” Ex. 2029 ¶¶ 30–31. To the extent that Patent Owner’s proposed definition of the level of ordinary skill is more than merely an elaboration upon Petitioner’s, we find it to be directed to a super-expert in a very narrowly defined field and calculated to undermine Dr. Mercer’s credibility while simultaneously promoting the credentials of its own experts. We do not find this litigation-induced argument persuasive. We determine that the definition offered by Dr. Mercer comports with the qualifications a person would have needed to understand and implement the teachings of the ’982 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). Accordingly, we apply Dr. Mercer’s definition of the level of ordinary skill in the art.” slip op. at 10

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

    “Thus, the parties agree that accumulating encompasses, at least, adding values together. This understanding is consistent with the specification’s discussion of accumulated samples. See, e.g., Ex. 1001, 8:20–29. Petitioner initially asserted, in the Petition, that “accumulating” should be construed to include the act of averaging. Pet. 4–5. In the Institution Decision, we declined to construe “accumulating” as necessarily including the act of averaging. Inst. Dec. 7–8. In its Reply, Petitioner no longer advocates this as a matter of claim construction. See Pet. Reply 6. As discussed below, the parties address the issue as a factual matter, and specifically as to whether a prior art reference’s use of the term “average” discloses “accumulating” within the meaning of the claims of the ’982 patent. We again, as we did in the Institution Decision, Inst. Dec. 8, construe the term “accumulating” merely as encompassing the process of addition.” slip op. at 12

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

    “We do not find Petitioner’s dictionary-based “[b]y definition” argument to be persuasive as it is disconnected from the technology at issue. We cannot find that a person of ordinary skill in the art would apply, in this context, a lay dictionary’s general definition and thereby understand Hamada to disclose determining a plurality of samples. We credit the opinion of Dr. Woods, containing persuasive reasoning, and find that Hamada’s use of the word “average” does not disclose “determining a plurality of samples,” as Petitioner contends. We now turn to Petitioner’s arguments that are more closely related to the technology.” slip op. at 21

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

    “In support of its case, Petitioner reasons that “a POSITA would have considered it obvious to have configured Hamada’s electrical current meter 6 to determine a plurality of samples of the response signal, and to have configured signal processing and display 9 to add up this plurality of samples, in order to optimize Hamada’s averaging process.” Pet. at 23 (emphasis added) (citing Ex. 1004 ¶ 24; Ex. 1014 ¶ 205). Neither Petitioner nor its expert elaborates on the conclusory assertion that performing the claimed determining and accumulating steps would have “optimize[d]” Hamada’s averaging process. Petitioner further reasons that: it would have been obvious for a POSITA at the time of the invention to have configured electrical current meter 6 and signal processing and display unit 9 to respectively measure and add multiple samples of the response signal to allow Hamada’s averaging process, in turn, to be performed on multiple samples. Id. at 24 (citing Ex. 1014 ¶ 206). This reasoning is circular in that it is, effectively, an assertion that it would have been obvious to perform operations on multiple samples in order to perform the process on multiple samples. We also have considered Petitioner’s arguments in the Petition that the “motivation” comes from the “teaching or suggestion” provided by the disclosure of “averaging,” along with Petitioner’s string of reasons from KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). See Pet. 24, 43–44 (citing Ex. 1014 ¶¶ 206, 306). Petitioner does not develop adequately any of these reasons. An obviousness analysis requires more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In its Reply, Petitioner repackages its “[b]y definition” argument as purportedly an obviousness argument. Pet. Reply 19–20. Petitioner argues that, “to the extent that Hamada does not explicitly disclose this limitation, a POSITA would have considered the act of configuring Hamada to measure and add multiple samples to have been obvious because that is what the definition of ‘averaging’ requires.” Id. (citing Pet. 23–26; Ex. 1014 ¶¶ 204– 208). Although possibly an obviousness theory, this argument reads more like an assertion that the claimed determining and accumulating of a plurality of samples either is inherently or implicitly disclosed in Hamada (offered as an alternative if it is deemed not explicitly disclosed). Thus, Petitioner appears to take the position that the disputed limitation is not absent from Hamada, and Petitioner fails to explain why a person of ordinary skill would have seen a reason to modify Hamada. For the reasons discussed above, we do not find Petitioner’s “[b]y definition” argument persuasive in the anticipation context and, for those same reasons, do not find it persuasive when couched as an obviousness ground. We determine that Petitioner has failed to demonstrate that independent claim 1 would have been obvious over Hamada. Petitioner’s arguments as to dependent claims 2, 3, 8–16, 19, and 20 (Pet. 24–26, 44–45, 47) do not cure the underlying defect in its obviousness theory with regard to independent claim 1. Accordingly, Petitioner also has not demonstrated that those dependent claims would have been obvious over Hamada. F. The Remaining Obviousness Grounds Based on Hamada in Combination” slip op. at 29

  Patent outcomesUS 7,623,982 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,623,982
• Apple Inc. v. Uniloc 2017 LLCNo claims unpatentable
  PTAB · Mar 6, 2019 · IPR2017-01993 · APJ Miriam L Quinn · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

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

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

  • Expert testimonyPetitioner expert discountedDecided for patent owner

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

  Patent outcomesUS 9,414,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,414,199
• Facebook, Inc. / Whatsapp, Inc. et al. v. Uniloc 2017 LLCRehearing denied
  PTAB · Jan 17, 2019 · IPR2017-01428 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact the determination that claims 9–12, 14–17, 25, and 26 are unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, 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 3

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

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, 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 3

  Claim construction
  Patents in suitUS 8,995,433
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCRehearing denied
  PTAB · Jan 17, 2019 · IPR2017-01427 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied rehearing, rejecting Patent Owner’s argument that LG Electronics was estopped from maintaining the proceeding because its joinder made it Facebook and WhatsApp’s privy.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Finally, we are not persuaded that in our Final Written Decision we overlooked or misapprehended the role of LG Electronics in this proceeding as an alleged “privy,” as this issue is presented for the first time on rehearing. III. ORDER Patent Owner’s Request for Rehearing is denied.” slip op. at 6

  • PTAB / AIA Trials › §315(e) estoppelDecided for patent owner

    “When deciding “privity,” for estoppel purposes, however, it makes sense to focus on the relationship between the named Petitioner and the alleged privy in the prior inter partes review, i.e., the -225 case. See WesternGeco LLC v. Ion Geophysical Corp., 889 F.3d 1308, 1317–22 (Fed. Cir. May 7, 2018) (discussing that a privity inquiry must be grounded in due process and that, in the context of § 315(b), the inquiry focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit and noting that “privity analysis seeks to determine whether the relationship between the purported privy and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels”); see also Shamrock Techs. Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 793 (“What constitutes ‘privity’ varies, depending on the purpose for which privity is asserted.”). LG Electronics was not a party to the -225 case, and there is neither fact nor allegation in the record of actions 5 by LG Electronics in connection with any prior inter partes review that warrants a privity inquiry, at this stage in the proceeding.” slip op. at 5

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “sense to focus on the relationship between the named Petitioner and the alleged privy in the prior inter partes review, i.e., the -225 case. See WesternGeco LLC v. Ion Geophysical Corp., 889 F.3d 1308, 1317–22 (Fed. Cir. May 7, 2018) (discussing that a privity inquiry must be grounded in due process and that, in the context of § 315(b), the inquiry focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit and noting that “privity analysis seeks to determine whether the relationship between the purported privy and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels”); see also Shamrock Techs. Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 793 (“What constitutes ‘privity’ varies, depending on the purpose for which privity is asserted.”). LG Electronics was not a party to the -225 case, and there is neither fact nor allegation in the record of actions 5 by LG Electronics in connection with any prior inter partes review that warrants a privity inquiry, at this stage in the proceeding.” slip op. at 5

  None
  Patents in suitUS 8,995,433
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 16, 2019 · IPR2017-01667 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 3, 6–8, 10–35, 38, and 39 are unpatentable; claims 4 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeOther

    “Response in each case. IPR2017-01667, Paper 17 (“1667 PO Resp.”); IPR2017-01668, Paper 16 (“1668 PO Resp.”). Petitioner4 then filed Replies. IPR2017-01667, Paper 24 (“1667 Reply”); IPR2017-01668, Paper 22 (“1668 Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in each case (“Mot. Excl.”), and Petitioner filed an Opposition as Paper 24 in each case (“Opp’n”). We held a consolidated oral argument in both proceedings, as well as in related proceeding IPR2017-01428, on August 30, 2018. A transcript of the oral hearing (“Tr.”) has been entered into the record of IPR2017-01667 as Paper 31 and into the record of IPR2017-01668 as Paper 29.” slip op. at 3

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

    “01668, Paper 6 (“1668 Prelim. Resp.”). We instituted inter partes review pursuant to 35 U.S.C. § 314 as to all challenged claims. IPR2017-01667, Paper 8 (“1667 Dec. on Inst.”); IPR2017-01668, Paper 8 (“1668 Dec. on Inst.”). During the pendency of the proceedings, Huawei Device Co., Ltd. and LG Electronics, Inc. filed a petition and motion for joinder requesting to join IPR2017-01667, which we granted. IPR2017-01667, Paper 12. Similarly, Apple Inc. filed petitions and motions for joinder requesting to join IPR2017-01667 and IPR2017-01668, which we also granted. IPR2017- 01667, Paper 29; IPR2017-01668, Paper 27.” slip op. at 3

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

    “1. Instant Voice Message Independent challenged claims 3, 27, and 38 recite the term “instant voice message.” In particular, claim 3 recites a messaging system that “receives an instant voice message” from one of a plurality of instant voice the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). message client systems, “wherein the instant voice message includes an object field including a digitized audio file.” Claims 27 and 38 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claim 27 further requires an “instant voice messaging application” that “includes a document handler system for attaching one or more files to the instant voice message.” Certain of the challenged dependent claims recite additional limitations concerning, for example, additional fields included in the instant voice message (claims 4–8), storage, deletion, or retrieval of instant voice messages (claims 10, 14, 17, 28, 31), the generation of the instant voice messages (claims 13, 18, 32), encryption/decryption of instant voice messages (claims 19, 33), compression/decompression of instant voice messages (claims 20, 34), effects indicating receipt of instant voice messages (claims 23, 35), and display of instant voice messages (claim 30). Our Institution Decision in IPR2017-01667 noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1667 Dec. on Inst. 18, 22–23. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. at 19, 23. The parties were invited to brief the claim construction during trial. Id. at 19–20, 23. In its Response in IPR2017-01667, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1667 PO Resp. 11–13, 15. In particular, Patent Owner relied on the specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message”” slip op. at 12

  Patent outcomesUS 8,724,622 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 8,724,622

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.