• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision

  Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

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

    “Upon consideration of the parties’ arguments and for the reasons explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision for the following reasons. First, the construction of “grid point” we adopt here is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Furthermore,” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34

  Patent outcomesUS 8,400,358 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,400,358
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Final written decision

  Claim 2 is unpatentable as anticipated by Shkedi; the Board did not reach the alternative obviousness ground based on Shkedi and Spain.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “After institution, Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 3, and 11. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 2. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 34, “Reply”), and Patent Owner filed a Sur-reply (Paper 39, “Sur-reply”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

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

    “contention that, because the district court referred to the data points within an area being statistically similar as the defining characteristic of a NUG region, the claimed grid points cannot exist until after the calibration data is gathered and analyzed. See PO Resp. 18–19. This contention, even if correct, is not persuasive because it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Patent Owner’s assertion that the ’379 provisional application and the ’784 patent both describe evaluating the statistical similarities of calibration data (PO Resp. 10, 20) also fails to provide a sufficient reason to import a requirement to evaluate the calibration data into the construction of “grid point” or “non-uniform grid point.” Similarly, Patent Owner’s assertion that is “of great importance” because it is fundamental to generating the grid points is unpersuasive. See PO Resp. 27. Even describing evaluation as being “of great importance” is an insufficient basis for importing a requirement for evaluation. See Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“[The Federal Circuit] has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an identical list of service antennas with substantially identical respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34

  Patent outcomesUS 7,561,104 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,561,104
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 14, 2025 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 7, 9, 32, 38, and 40 are unpatentable as anticipated by Spain and obvious over Spain as evidenced by Agiwal.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems. That person would have at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 18 (citing Ex. 1008 ¶ 44). Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. PO Resp. 13. 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March 16, 2013. Because the application and provisional application for the ’753 patent were filed before this date, the pre-AIA version of §§ 102, 103 apply. See Ex. 1001, codes (22), (60). Petitioner does not dispute that the filing date of the provisional application filing date applies. See Pet. 6; see generally Pet. Reply. 2 US 2003/0064735 A1, published April 3, 2003 (Ex. 1006). 3 Ankur Agiwal, LOCATOR – Location Estimation System For Wireless LANs, WMASH 2004: Proceedings of the Second ACM International Workshop on Wireless Mobile Applications and Services on WLAN Hotspots, 102–109 (2004) (Ex. 1005). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “We agree with Petitioner that Patent Owner’s additional requirements of evaluating the calibration data to determine the boundaries of the area should not be included in the construction of “grid point.” Instead, based on the full record, and for the reasons explained below, we discern no reason to alter our prior construction in the Institution Decision of “grid point” as “a point associated with representative calibration data for an area.” Dec. 22– 23.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “The evidence supports that Petitioner has sufficiently demonstrated that Spain teaches “generating one or more sets of grid points for said calibration data,” as recited in limitation [1.2]. Spain states that: In another embodiment, the database is built by taking fingerprint measurements at predetermined locations and using intelligent algorithms that interpolate the fingerprints at all locations in between the sampled locations. Ex. 1006 ¶ 101. Relevant to this disclosure, Mr. Williams testifies that “Spain discloses generation of sets of grid points wherein each set includes newly interpolated grid points” because “the two grid points used to interpolate an additional grid point or points and the generated additional grid point or points are collectively a generated ‘set’ of grid points (i.e., a ‘set’ which includes the two calibrated grid points and the associated interpolated grid points).” Ex. 1008 ¶¶ 76–77 (citing Ex. 1006 ¶¶ 54, 55, 101). It is not disputed that Spain’s “fingerprints” are calibration data having characterizing parameters, such as observed signal strength, observed at calibration points. See Ex. 1006 ¶ 35. We find that this evidence demonstrates that Spain discloses generating one or more grid points, where the grid points are associated with calibration data.10 Accordingly, the evidence provides support that Spain’s interpolation of fingerprints at different locations discloses generation of one or more sets of grid points, where the grid points are associated with calibration data. Spain also discloses that: . . . the fingerprint corresponds not to one exact spot on the surface of the earth, but instead to a small area. The Lat and Long fields in this embodiment indicate a position inside the area, preferably the center point.” slip op. at 33

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

    “2. Discussion Petitioner refers to Agiwal to note that, like Spain, “Agiwal discloses an initial approximate location-based search of its database using live measurement data transmitted from a mobile device.” Pet. 18. Petitioner, however, relies only on Spain for its obviousness assertions. Id. at 22–38. The above discussion and Petitioner’s showing related to anticipation by Spain also equally apply to the obviousness showing over Spain as presented by Petitioner. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Patent Owner presents no additional arguments specifically directed to Petitioner’s showing as to obviousness under Spain that we have not already addressed. See generally PO Resp. Patent Owner also presents no evidence of objective indicia of nonobviousness. See generally PO Resp. Weighing the record as a whole in view of the findings and analysis above, we conclude that Petitioner has met its burden to show, by a preponderance of the evidence, that claims 1, 7, 9, 32, 38, and 40 would have been obvious over Spain as evidenced by Agiwal.” slip op. at 43

  Patent outcomesUS 8,406,753 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,406,753
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 14, 2025 · IPR2023-01211 · APJ Brian D Range · IPR · Final written decision

  Claims 4 and 26 are unpatentable: claim 4 is anticipated by Shkedi, and claims 4 and 26 are obvious over Zhu and Spain.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’494 patent. Namely, the ’494 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:58–4:2. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’494 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim words “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Id. at 18–20.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors 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) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 11–12. We adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also credit Mr. Williams’s testimony that determining which calibration data is representative of an area “would not require analysis” because “[i]t could be just the actual measurement,” and “analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:10–22. Patent Owner’s argument that this testimony is not instructive because Mr. Williams limited his responses to the construction of calibration data and avoided responding to the question asked is not persuasive. See Sur-reply 8–9. Although Mr. Williams did refer to “the calibration data construction” in his response, we disagree that he avoided responding to the question asked. He was asked: “To determine which of that calibration data is representative of an area would require analyzing that set of collected calibration data, right?” and directly responded: “It would not require analysis. It could be just the actual measurement.” Ex. 2023, 37:10–16. This testimony responded to the question asked. He then stated: “I believe that is an issue as part of the calibration data construction,” before concluding: “So analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:17–22. Merely expressing a belief that the issue or question asked relates to the calibration data construction does not equate to his response being limited to the calibration data construction.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Thus, “grid points” and “calibration points” in the ’494 patent are distinct elements that can overlap. Specifically, a “grid point” is a point associated with representative calibration data for an area, and a “calibration point” is a point at which calibration data is collected. These points can occupy the same physical location (i.e., the same longitude/latitude coordinates) but still be a “grid point” and a “calibration point.” For these reasons, we are not persuaded that the overlap between “grid points” and “calibration points” in Shkedi undermines Petitioner’s position and evidentiary showing. Petitioner, thus, has established by a preponderance of the evidence that Shkedi teaches each element of claim 4 including non-uniform grid points. We determine that the preponderance of the evidence establishes that claim 4 is anticipated by Shkedi.” slip op. at 42

  Patent outcomesUS 8,786,494 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,786,494
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 10, 2025 · IPR2023-01213 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 10, 12, 13, 21, and 22 are unpatentable as obvious over Crane and Spain; claim 11 is dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors 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) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”).” slip op. at 9

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

    “after November 13, 2018, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). This rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Pet. 15–18. Petitioner’s proposed constructions are consistent with the claim construction decision from related litigation or the parties’ prior stipulations regarding claim construction. Id.; Ex. 1023 (parties’ stipulation); Ex. 1027 (parties’ stipulation); Ex. 1028, pp. 24–32 (District Court order). Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. passim. We note that, the District Court held, in a non-final order, that claims 1 and 12 were indefinite because of the term “in proximity.” Ex. 1028, 24– 28. The District Court, however, did not issue a final ruling with respect to claims 1 and 12 because the parties narrowed the dispute concerning the ’784 Patent to only claim 11. Ex. 2018, ¶ 3. We also note that we do not need to assess whether or not the term “in proximity” renders claims 1 and 12 indefinite to assess the Petition. Rather, we agree with Petitioner that the “in proximity” language is at least broad enough to “encompass” the matter set forth in Petitioner’s claim construction. See Pet. 17, 37–41. This is sufficient definition to make it logically possible to reach the merits of Petitioner’s challenge. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (holding that indefiniteness only precludes a patentability determination 102 or 103 if the indefiniteness makes it “logically impossible” to reach such a decision).” slip op. at 11

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

    “Petitioner argues that it would have been obvious to implement Spain’s location determination system as part of Crane’s system and that such an implementation would have a reasonable expectation of success. Pet. 26 (citing Ex. 1008 ¶¶ 111–112). Patent Owner does not dispute Petitioner’s contentions regarding this recitation. Based on the entire trial record, we agree with Petitioner’s analysis and credit Mr. William’s testimony supporting Petitioner’s position. Thus, in view of the evidence of record, we find that Crane and Spain disclose the preamble of recitation 1.1.” slip op. at 20

  Patent outcomesUS 9,097,784 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,097,784
• Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentable
  PTAB · Dec 3, 2024 · IPR2023-01020 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa.” slip op. at 7

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

    “1. environment Patent Owner initially argues that “environment” should mean “physical surroundings in which a user operates.” PO Resp. 6. Petitioner responds that the plain meaning of environment “encompasses physical and virtual environments.” Reply 2. During the hearing, Patent Owner conceded that Petitioner’s construction for environment is correct. Tr. 49:24–50:10. We agree with this construction and apply it here. See, e.g., Ex. 1001, 28:16 (referring to “a physical or a virtual environment”). “Environment” encompasses physical and virtual environments.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “insufficient to support the concept of alerting a user that the user is leaving a virtual environment. In so deciding, we need not address the parties’ contentions about boilerplate. Regardless of whether the sentence at 168:15–16 of the ’140 application is boilerplate, we agree with Petitioner that “there is no suggestion of the specific claimed combination.” Reply 22 (citing Ex. 1146 ¶ 82). That is, if one views the “[e]xamples herein” from Figure 6 as taking place “in computer rendered spaces (VR)” or “in partially computer rendered spaces (AR),” there is still no disclosure of alerting a user that a user is leaving a virtual environment. See Ex. 1028, 168:15–16. For instance, if Alice in the Figure 6 example mentioned above is entering a virtual car instead of a real car, Alice is still in a virtual environment. See id. at 120:13–27. Thus, relying on Figure 6 to take place “in computer rendered spaces (VR)” does not support alerting that a user is leaving those virtual spaces. See id. at 168:15–16. Petitioner also correctly identifies a problem with analogizing the Alice example to a virtual environment—namely, it would no longer make sense to give Alice an audible warning. See Reply 22 (citing Ex. 1146 ¶ 82). In the example, Alice’s earphones switch from binaural sound to mono sound when Alice enters a real car because “[t]he state where Alice is located . . . prohibits drivers from localizing sound while driving a motorized vehicle.” Ex. 1028, 120:15–18. But it would not make sense (nor does the ’140 application disclose) for a state to prohibit Alice to localize sound while driving a virtual vehicle. We therefore find compelling Petitioner’s argument, supported by the testimony of Dr. Roginska, which we credit, that there is no “disclosure that 3D audio would not be permitted in a 3D virtual space.” Reply 22 (citing Ex. 1146 ¶ 82). Accordingly, Patent Owner’s second support argument fails.10” slip op. at 18

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

    “One benefit Petitioner proposes to support a rationale to combine is that a POSITA “would have implemented this feature to help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44 (citing, e.g., Ex. 1003 ¶¶ 90, 251–254). Petitioner provides additional argument and evidence supporting a motivation to combine, with a reasonable expectation of success. See id. at 42–46. We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 52 (citing Ex. 1003 ¶¶ 250–268). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 24

  Patent outcomesUS 10,448,184 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,448,184
• Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentable
  PTAB · Dec 3, 2024 · IPR2023-01019 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Accordingly, we are not persuaded that the ’140 application supports the claimed concept of warning or alerting a user that the user is leaving the virtual environment. Thus, the ’140 application does not support the full scope of the limitations “warning the user that the user is leaving the 3D virtual environment” in claim 1 and “alerting the user that the user is leaving the environment” in claims 7 and 14. The parties have not made any additional arguments regarding support in the ’140 application for limitations of the dependent claims. We conclude that no claim of the ’179 patent is entitled to priority to the ’140 application.” slip op. at 22

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

    “We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 51 (citing Ex. 1003 ¶¶ 250–263). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 26

  • ExcludeMotion to exclude, deniedGranted in part

    “paragraphs of Dr. Roginska’s declarations in Exhibits 1003 and 1146. Mot. 1; Reply to Opp. 1. Some of these paragraphs support Petitioner’s challenge based on Clement, Osman, and Sauk. Mot. 2–5, 7–11. Because we do not reach Petitioner’s challenge based on Clement, Osman, and Sauk, we do not rely on the portions of Dr. Roginska’s declarations addressing Clement, Osman, and Sauk. Accordingly, we dismiss this portion of Patent Owner’s Motion to Exclude as moot.” slip op. at 27

  Patent outcomesUS 10,368,179 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,368,179
• Global Shade Corporation v. With-U E-Commerce (Shanghai) Co., Ltd.All claims unpatentable
  PTAB · Aug 7, 2024 · IPR2023-00580 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 4, 13, and 14 are unpatentable under § 103; proposed substitute claims 15–19 are unpatentable over Rousselle, Tsai, Ohnishi, Hoober, and Seo, so the revised motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11

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

    “Petitioner asserts construction is unnecessary and does not propose any term for construction. Pet. 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner does not propose any specific claim construction for any term of the challenged claims. PO Resp. 14. On the full record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe 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 12

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

    “points to any teaching, suggestion, or motivation in either reference” to replace Tsai’s leg locks with Rousselle’s central lock. PO Resp. 44 (citing Pet. 36; Ex. 1002 ¶ 103). Petitioner disagrees, arguing that the Petition cites “voluminous disclosure” from Rousselle identifying the benefits of a central lock. Reply 18 (citing Pet. 35). We agree with Petitioner. The Petition provides several rationales, supported by Dr. Stein’s testimony, for making the alternative modification. Pet. 35–37. For instance, Petitioner argues that one of ordinary skill in the art would have been motivated to make this modification because Rousselle discloses the benefits of a central lock over Tsai’s individual leg locking system, such as making the canopy easier and more convenient for a single user to operate. Id. at 35–36 (citing Ex. 1002 ¶¶ 102–103; Ex. 1003, 3:38–47; Ex. 1005, 4:29–5:5, 8:5–33, Figs. 1, 2, 18, 19). Petitioner also argues that the proposed modification is the simple addition of one known element to another known element to obtain predictable results and uses a known technique to improve a similar device and yield predictable results. Id. at 36–37 (citing Ex. 1002 ¶¶ 105–107; KSR, 550 U.S. at 417). We have reviewed Petitioner’s arguments and evidence and find the reasons to combine persuasive. In sum, we determine that Petitioner’s proposed reasons to combine Rousselle and Tsai in accordance with the alternative modification are realistic, have rational underpinning, and are supported by expert testimony, which we find persuasive and credit. Thus, Petitioner’s evidence shows that a skilled artisan would have had reasons to combine the teachings of in doing so. slip op. at 32

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

    “We agree with Petitioner that Tsai’s disclosure of pulling the poles or legs apart to unfold the frame does not disparage central activation to the extent of discouraging one of ordinary skill in the art from investigating or considering Rousselle’s central lock in connection with Tsai’s shelter frame. See DePuy Spine, 567 F.3d at 1327 (holding a reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the manually pulling the four poles 1 outwardly.” Ex. 1005, 10:28–29 (emphasis added). As such, Tsai “merely expresses a general preference” for this technique (see DePuy Spine, 567 F.3d at 1327) and does not specifically require it. We agree with Petitioner that Tsai’s general preference for this technique does not teach away from any other method for unfolding the frame. Furthermore, Tsai’s statement that the shelter frame of Figures 16 and 17 is “somewhat difficult to unfold in that an extra person is sometimes needed to push the center strut C upwardly to its completely extended position” (Ex. 1005, 2:19–22) does not disparage all other center lock configurations, in particular the configuration taught by Rousselle. As Petitioner points out, Rousselle discloses that its collapsible shelter/tent with the central lock arrangement can be erected by a single person. Ex. 1003, 13:59–65. So, instead of requiring “an extra person,” the shelter frame of the combination of Tsai and Rousselle could be erected by a single person. Similarly, Tsai’s statement that the shelter frame of Figures 16 and 17 reduces headroom in the tent (Ex. 1005, 2:17–19) does not disparage all other center lock configurations. We agree with Petitioner that the inner units of both Rousselle and Tsai’s Figure 1 embodiment are different than the inner units shown in Figures 16 and 17, which are large scissors-type linkages located well below the canopy’s roof supported by center strut C. See Reply 11. In contrast, Rousselle discloses shelter/tent 10 in which collapsible frame 100 supports sheet-material cover 200. Ex. 1003, 6:30–32; Fig. 1(A). Unlike the shelter frame of Tsai’s Figures 16 and 17, Rousselle’s frame does not include an upwardly extending center strut propping up the sheet-material cover. Instead, sheet-material cover 200 rests directly on frame in which canopy supporting rods 3 (i.e., the “inner units”) form a canopy support for supporting the canopy material. Ex. 1005, 4:11–25, 7:15–20. Accordingly, neither Rousselle’s or Tsai’s frames present the headroom issue that Tsai identifies with respect to the prior art shelter frame of Figures 16 and 17.” slip op. at 27

  Patent outcomesUS 10,669,738 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,669,738
• Unified Patents, LLC v. Dynapass IP Holdings LLCSome claims unpatentable
  PTAB · Jul 12, 2024 · IPR2023-01331 · APJ Lynne H Browne · IPR · Final written decision

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

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedDecided for patent owner

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

  • Strike new argumentNew argument disregardedDecided for patent owner

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

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

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

  Patent outcomesUS 6,993,658 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,993,658

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.