- PTAB · Dec 29, 2022 · IPR2022-01078 · APJ Scott B Howard · IPR · Institution
The Board instituted review of claims 1–9 and 11–13 on all asserted grounds, finding a reasonable likelihood that claim 1 would be obvious over Pedersen, Visser, and Alves.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Pedersen, Visser, and Alves. See Pet. 14–40 and 49–68. Based on the current record, we are persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 1.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“date, not the scheduled trial date. Interim Fintiv Guidance at 8–9. Because the Final Written Decision will be due approximately 2 months after the expected trial date, this factor weighs slightly in favor of exercising our discretion to deny the Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues “that no express constructions of the claims are necessary” and the terms “should be given their plain and ordinary meaning.” Pet. 13–14. Patent Owner agrees that the claim limitations should be given their “plain and ordinary meaning as understood by a person of ordinary skill in the art at the time of the purported invention of the ʼ701 patent.” Prelim. Resp. 13. Patent Owner also points out that Petitioner advances a different claim construction in the district court proceeding. Id. at 14. For the purposes of this Decision, we need not expressly construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”)7 “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of earphones and associated signal processing. The PHOSITA could have also obtained similar knowledge and experience through other means.” Pet. 13 (citing Ex. 1002 ¶ 17). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 13 (citing Pet. 13). Accordingly, for purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.8” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,057,701 - PTAB · Dec 14, 2022 · IPR2022-01009 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1, 2, 7, 8, 21, 22, 24, 25, 27, and 29 on all petition grounds, finding a reasonable likelihood of success on the Littleworth-Linder-Middlebrook obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“when there is an early trial date in related litigation as part of assessing all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). The Board evaluates six factors when making this assessment. See Fintiv Order, at 5–6. Further, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“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). Petitioner proposes constructions for two terms, “pitch” and “oblique perspective view.” 1. “Pitch” Petitioner argues that the term “pitch” should be construed to mean either “pitch” or “slope.” Pet. 8. Petitioner asserts that, during prosecution, the applicant stated that “prior versions of the claims ‘use[d] the word “pitch” while other places use the word “slope” and that ‘[t]hese words have the same meaning in the context of these claims, however to avoid confusion, the term “slope” [was] removed and replaced with the word “pitch” throughout to maintain consistency.’” Pet. 8 (citing Ex. 1002, 76– 77). Petitioner further argues that its construction is “supported by the ’961 patent itself which treats the terms interchangeably.” Id. (citing Ex. 1001, 1:52–67, 3:11–19, 4:19–30, 6:5–17, claims 1, 10, 16, 21–22, 24). Patent Owner does not dispute Petitioner’s proposed construction of “pitch” in its Preliminary Response. See Prelim. Resp. Based on the present record, we agree with Petitioner that “pitch” should be construed to encompass “pitch” and “slope.”” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“At the institution stage, the relevant issue is whether the record includes “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, Paper 29 at 13. As Hulu explains, the reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. Hulu additionally observes that, after institution, certain limited opportunities are available for a petitioner to present new evidence in support of its position, including in a motion to file supplemental information under 37 C.F.R. § 42.123. Hulu at 14–16. Based on the present record, we find that there is a reasonable likelihood that Littleworth was publicly accessible before the critical date of the ’961 patent. Petitioner introduces the testimony of Ms. Munford that “I have reviewed Exhibit NEARMAP-1005, “Three-Dimensional Mapping and As-Built Computer Modelling by Analytical Photogrammetry” by R.M Littleworth, D.M. Stirling and J.H. Chandler as published in International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5.” Ex. 1019 ¶ 6. This statement suggests that Ms. Munford reviewed information indicating that Exhibit NEARMAP-1005 was published in the International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5, and is sufficient for purposes of institution. As for Patent Owner’s argument that the 008 field does not show the date when Littleworth was cataloged by the Rochester Institute of Technology library, Petitioner introduces testimony from Ms. Munford that “the 008 field of the MARC record is reserved for denoting the date of creation of the library record itself.” Ex. 1019 ¶ 4. Ms. Munford further testifies that because the date of creation “typically occurs during the process of preparing materials for public access, it is my experience that an item’s MARC record indicates the date of an item’s public availability.” Id. Additionally, Ms. Munford states that because the 008 field “is the only date reflecting the inclusion of said materials within the library’s collection, it is my experience that an item’s 008 field accurately indicates the date of an item’s public availability.” Id. ¶ 5. Patent Owner does not introduce any expert testimony to the contrary, but rather relies on attorney argument about the nature of the 008 and 040 fields of a MARC record. Prelim. Resp. 38– 42. Based on the present record, we determine that the testimony of Ms. Munford provides sufficient evidence for purposes of institution that the 008 field of the MARC record for Littleworth indicates the date that Littleworth was cataloged and made publicly available.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,670,961 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · Dec 12, 2022 · IPR2022-01109 · APJ Thomas L Giannetti · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Practice Guide instructs us that a party seeking to maintain multiple challenges to the same patent claims carries a heavy burden of establishing that multiple petitions are necessary. Petitioner contends that Patent Owner has not carried that burden. Joinder Opp. 1. We agree. Petitioner has not explained why the 1492 IPR is an insufficient challenge. It is true that the 135 IPR involves Plamondon, another reference. But Petitioner has not explained how Plamondon differs from Crowds, Border, or MorphMix, or why granting joinder with the 135 IPR would be in the interest of justice, given Petitioner’s involvement managing the1492 IPR challenging substantially the same claims. In the words of our Trial Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” TPG 60. We see no evidence in the record suggesting that The Data Company is unqualified to manage the 135 IPR, or that Petitioner would add anything significant to that proceeding in its understudy role.” slip op. at 12
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“III. DENIAL OF INTER PARTES REVIEW It is undisputed that Petitioner was served with a complaint alleging infringement of the ’319 patent more than one year prior to filing the Petition in this proceeding. See Joinder Mot. 2; Joinder Opp. 1. Accordingly, in view of the denial of the requested relief of joinder with the 135 IPR, institution of inter partes review as requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). IV. CONCLUSION For the foregoing reasons, we deny Petitioner’s Motion for Joinder. Because Petitioner is barred under 35 U.S.C. § 315(b) from seeking inter partes review of the ’319 patent, we deny the Petition and do not institute review as to any of the challenged claims.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Not reached
“For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3
Discretionary denialPatents in suitUS 10,257,319 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · Dec 9, 2022 · IPR2022-01110 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims and grounds under § 314(a), and denied joinder because Petitioner could challenge the patent in the 1493 IPR.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“seeking to maintain multiple challenges to the same patent claims carries a burden of establishing that multiple petitions are necessary. Petitioner’s main argument for inter partes review institution and joinder is that, “it will represent Petitioner’s first and only IPR directed to the ’510 patent that will have been instituted.” Mot. Reply 2. Although we recognize that at the time of Petitioner’s statement it was true, since the filing of the Petition, we have granted the petition in the 862 IPR, and joined Petitioner to the 1493 IPR, where Code 200 is now the sole petitioner and controls the proceedings. Petitioner, Code200, has not explained why Plamondon is more material to the validity of the ’510 patent than Crowds, Morphmix, or Border presented in the 1493 IPR, nor explained why Petitioner needs more than one instituted proceeding. See TPG 59 (explaining why more than one petition on different grounds could be required). In short, no explanation has been provided as to why the 1493 IPR is not a sufficient challenge.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“In considering a balanced assessment of all relevant circumstances in this proceedings, we are not persuaded that institution of this case serves to promote the efficient administration of the inter partes review process. See TPG 56. Accordingly, in consideration of the circumstances of this case, we exercise our discretion under § 314(a) to deny institution of review of inter partes review.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 3 (PTAB Apr. 24, 2013); TPG 76. Our Trial Practice Guide states that “when an otherwise time-barred petitioner requests same party and/or issue joinder, the Board may exercise its discretion to permit joinder, but will do so only where fairness requires it and to avoid undue prejudice to a party.” TPG. at 75–76 (citing Proppant Express Invs. v. Oren Techs., IPR2018-00914, Paper 38 at 3–4 (PTAB Mar. 13, 2019) (precedential)). Here, considering that Petitioner has the control and opportunity to challenge the ’510 patent in the 1493 IPR, as discussed above, we determine that there is no undue prejudice to Petitioner. Accordingly, we deny Petitioner’s Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that the Motion for Joinder is denied; and FURTHER ORDERED that the Petition is denied as to all challenged” slip op. at 12
Discretionary denialPatents in suitUS 10,484,510 - Vmware, Inc. v. Cirba Inc.All claims unpatentablePTAB · Dec 7, 2022 · PGR2021-00098 · APJ Russell E Cass · PGR · Final written decision
Claims 1–63 are unpatentable under § 112(a) because the patent lacks written-description support for the claimed “already placed” and “issue instructions” limitations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pet. 20–54. With its Petition, Petitioner submitted the Declaration of Dr. Erik Zadok. Ex. 1006. Patent Owner elected to waive its Preliminary Response. Paper 11. We instituted trial on all grounds of unpatentability. (Paper 12 (“Inst. Dec.”)).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“term “placing” requires more than a theoretical placing or planning to place as part of an analytical solution. Turning first to the claim language, we agree with Petitioner that the language of the independent claims is consistent with “placement” occurring after and separately from the analytical evaluation process. See Pet. Reply 3. For example, claim 1 is directed to a system for “determining placement of source computer systems on target systems,” the system configured to “determine a placement” by employing operations to “evaluate compatibility.” Ex. 1001, 40:2–4, 40:8– 36. The second “evaluate compatibility” operation is “to determine if the specific source system can be placed with those other source systems on the specific target system,” which suggests that what is being evaluated is whether the source system can be actually placed (e.g., moved or transferred) to the target system. Id. at 40:18–27 (emphasis added). Similarly, the third “evaluate compatibility” operation involves “evaluating the impact on resource utilization of the specific target system of placing the specific source system on the specific target system,” which suggests that what is being evaluated is the impact on resource utilization once the source system is actually moved or transferred to the target. Id. at 40:28–32 (emphasis added). Additionally, the claim states that, based on the “evaluate” operations, the claimed system “determine[s]” a placement, not that it executes the placement. Id. at 40:8–11. The actual placement seemingly occurs after the final claimed operation of “issu[ing] instructions to place” the source system(s) on to the target system “in accordance with the determined placement.” Id. at 40:37–39. Independent claims 32 and 63 include similar language. Id. at 42:36–43:3, 45:1–46:19. Had the patent applicant wanted to cover systems that were merely “hypothetically placed,” language to that effect could have been added to the claim.” slip op. at 19
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“As noted above, the claim language requires evaluating compatibility between a specific source system and one or more other source systems “already placed” on the target system. Paragraph 82 does not disclose the evaluation of compatibility of a source system and another source system as part of the “forward consolidation.” Additionally, paragraph 82 does not disclose that “existing target systems 16” have source systems “already placed” on them. Thus, paragraph 82 does not provide the level of detail recited in the limitation under either party’s definition of “placed.” In addition, as noted above, we have interpreted “placed” to require an actual placement rather than merely “planning to place” or a theoretical placement. See § II.A.2, supra. Therefore, even if the “existing target system 16” had theoretical or hypothetical systems added to it as part of the consolidation analysis, those would not be systems that are “already placed” on the target system.” slip op. at 34
Patent outcomesUS 10,951,459 unpatentableClaim construction§ 112 disclosurePatents in suitUS 10,951,459 - Honeywell International, Inc. / Sierra Wireless, Inc. et al. v. 3g Licensing S.A.All claims unpatentablePTAB · Dec 6, 2022 · IPR2021-00906 · APJ Jameson Lee · IPR · Final written decision
Claims 1–4, 6, 8, 9, 12, 33–36, 38, 40, 41, 44, 56, 57, 62, and 63 are unpatentable; substitute claims 66–85 are allowed because unpatentability over the asserted prior art was not shown.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“evidence that any of Patent Owner’s proposed substitute claims 66–85 in the Revised Motion to Amend Claims are unpatentable over prior art. Patent Owner, on the other hand, has proved that its proposed substitute claims 66– 1 Petitioner entity Dell, Inc. was terminated from this proceeding on January 11, 2022. Paper 23. Petitioner entities ZTE Corporation and ZTE (USA) Inc. were terminated from this proceeding on October 20, 2021. Paper 17. Petitioner entity Cradlepoint Inc. was terminated from this proceeding on November 7, 2022. Paper 72. Accordingly, Patent Owner’s Revised Motion to Amend Claims is granted. A.” slip op. at 2
- Strike new argumentNew argument consideredDenied
“For the foregoing reasons, Patent Owner’s Motion to Strike is denied.” slip op. at 91
- ExcludeMotion to exclude, deniedDenied
“prejudicial to Petitioner because they all post-date the priority date of the ’388 patent. Paper 59, 3–4. However, as we explained above, these documents need not have pre-dated the critical date of the ’388 patent. It is not necessary that one with ordinary skill in the art would have had access to them prior to June 1, 2004, or July 20, 2004. Petitioner has not shown the alleged prejudice. Additionally, our consideration of these documents did not result in a favorable conclusion for Patent Owner, either on the matter of Patent Owner’s proposed claim construction or on the matter of Patent Owner’s alleged satisfaction of a long-felt need.” slip op. at 97
Patent outcomesUS 7,580,388 unpatentableNonecites Phillips · KSR · Graham · NautilusPatents in suitUS 7,580,388 - Metacluster LT, Uab v. Bright Data Ltd.Institution deniedPTAB · Dec 1, 2022 · IPR2022-00936 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Goldstein and Ling, with RFC 1122 for some claims, rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“As such, we find that that the Petition provides insufficient evidence of a rationale to modify Goldstein with Ling. Accordingly, we determine the evidence and argument presented do not show a reasonable likelihood that Petitioner would prevail in establishing that challenged independent claim 1 would have been obvious over Goldstein and Ling. Remaining challenged claims 2–27, 29, and 30 depend, directly or indirectly, from claim 1. Petitioner provides no additional evidence in the assertions for the challenged dependent claims that would cure the deficiencies as to claim 1. See Pet. 48–84. Accordingly, we determine the evidence and arguments presented do not show a reasonable likelihood that Petitioner would prevail in establishing that challenged dependent claims 2–9, 14–22, 24–27, 29, and 30 would have been obvious over Goldstein and Ling and challenged dependent claims 10–13 and 23 would have been obvious over Goldstein, Ling, and RFC1122.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the ’317 patent claims priority to a provisional application that was filed before this date, with Petitioner not contesting that priority, the pre-AIA versions of § 103 apply. See Ex. 1001, code (60). 3 US 2003/0149720 Al, published Aug. 7, 2003 (Ex. 1005). 4 US 2006/0206586 Al, published Sept. 14, 2006 (Ex. 1006). 5 Requirements for Internet Hosts – Communication Layers, Network Working Group, RFC 1122, October, 1989 (Ex. 1007). 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) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’317 patent, the background technical field, and the prior art, we agree with Petitioner’s proposed qualifications, absent the qualifier “at least” because it introduces vagueness, and adopt it for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties present their respective views on the interpretation of some claim terms. Pet. 20–23; Prelim. Resp. 18–21. Patent Owner asserts that disputes on the interpretation of most of the claim terms do not affect the determinations for the purposes of institution. Prelim. Resp. 18–21. In view of the issues we address below, we determine that it is not necessary to provide an express interpretation of any claim terms. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“With proposed modification (c), Petitioner further builds on the series of predecessor modifications: modifying Goldstein from its use of a fixed location personal computer to the use of a mobile device, and further modifying Goldstein to use Ling’s overlay network for location-based content delivery. With the next step of modification (c), Petitioner proposes modifying Ling to split its mobile device functionality. In view of the number and extent of modifications necessary to achieve the proposed combination of Goldstein and Ling, this suggests that the series of proposed modifications are the result of hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (criticizing use of the challenged patent as a “roadmap” for putting what the expert referred to as “pieces of a ‘jigsaw puzzle’” together). In the context of the steps of proposed modifications to Goldstein and Ling, we agree with Patent Owner that Petitioner appears to be employing hindsight bias to split Ling’s mobile device functionality by using the patent claim limitations as a guide because the limitations require that first device (client 301) send the first geographic location to the second device (second proxy 303). Prelim. Resp. 31–33; Ex. 2001 ¶ 91. Additionally, we are not persuaded by the Petitioner’s motivation to split Ling’s mobile device functionality. Ex. 2002 ¶ 92. Although, as Dr. Olivier testifies, Goldstein in its original form discloses that different configurations may be employed, Dr. Oliver does not address why a disclosure from an unmodified version of Goldstein should apply, in view of the series of proposed modifications to Goldstein (which include the use of mobile devices and Ling’s location-based content delivery), in order to support a further modification of Ling. See Ex. 1003 ¶ 113. Petitioner’s additional rationale to split Ling to allow Goldstein’s second proxy to process requests from multiple mobile devices with central updates represents yet another potential modification to Goldstein’s operation, which further indicates that impermissible hindsight has been employed. As such, we find that that the Petition provides insufficient evidence of a rationale to modify Goldstein with Ling. Accordingly, we determine the evidence and argument presented do not show a reasonable likelihood that Petitioner would prevail in establishing that challenged independent claim 1 would have been obvious over Goldstein and Ling.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,206,317 - PTAB · Nov 30, 2022 · IPR2022-00943 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–16: claims 1–11 and 13–16 on obviousness over Hart-787, Fu, and Rosenberg, and claim 12 with Hart-286 added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’267 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 16 (citing Ex. 2001 (declaration of Dr. Michael S. Scordilis) ¶¶ 21–28). Dr. Scordilis asserts that Petitioner’s definition “imports a number of specific and nuanced work-experience requirements that are not necessary to understand the invention of the ’276 patent,” but also notes that he performed his analysis from the point of view of a person of skill as defined by each party and “the differences between [the different levels of skill] did not affect my overall conclusions.” Ex. 2001 ¶¶ 25, 28. Based on the present record including the disclosure in the ’267 patent, for the purposes of institution, we preliminarily adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill as reflected in the prior art. We find that this definition is consistent with the level of skill in the art as reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our decision here would not be different if we applied Patent Owner’s proposed definition, in which we would substitute “approximately” for “at least” to avoid ambiguity.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner, while arguing that no construction is necessary, asserts that the proper interpretation of “one or more commands” in claim 1 would include “conventional remote control commands.” Pet. 18–19. Patent dispute this assertion. Prelim. Resp. 16–17. We need not construe this claim term at this point in the proceeding for the purpose of institution. Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On the present record and for the purpose of institution, we determine that Petitioner has adequately showed a proper combination of the prior art references. With respect to arguments regarding field of endeavor, we note that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In re Bigio in an inter partes context). Each of the prior art references is an “audio monitoring method[]” (Prelim. Resp. 28) in which information received by audio-receiving microphones is used to attenuate what is played by a device. Ex. 1004, code (57); Ex. 1005, code (57); Ex. 1006, code (57). are in the same field of endeavor. See Pet. 61 (citing Ex. 1003 ¶ 159). Additionally, based on the current record, we find Petitioner’s motivation to combine argument sufficient for institution. In particular, the distinction Patent Owner seeks to draw between the references does not undermine Petitioner’s argument and evidence that one of ordinary skill in the art would have, in order to effectuate Hart-787’s teaching of attenuating the audio output of a linked device if a user has indicated a command is to be issued, looked to Fu’s teaching of volume adjustment based on a predetermined threshold and Rosenberg’s teaching of a noise level threshold based on a measurement of environmental noise. Pet. 26–30. We additionally agree that Petitioner has, preliminarily and on this record, shown sufficiently that one of ordinary skill in the art would have been motivated to make the combination and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. Id. at 28– 31 (Ex. 1003 ¶¶ 89, 91, 93). Notably, we find particularly compelling Hart- 787’s express disclosure regarding the goal of improving SNR for spoken commands. Ex. 1004, 1:64–2:37 (cited at Pet. 28), 9:21–25 (describing attenuating the audio more if the ratio between the user’s utterance and the volume of the audio) (cited at Pet. 22, 27).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,930,276 - Meta Platforms, Inc. v. Almondnet, Inc.InstitutedPTAB · Nov 30, 2022 · IPR2022-01064 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 9–12 on all petition grounds, finding a reasonable likelihood that claims 9–12 would be shown obvious over Meyer, Zeff, Edlund, and Fisher.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine there is a reasonable likelihood Petitioner would prevail in showing that claims 9–12 are unpatentable under 35 U.S.C. § 103 over Meyer, Zeff, Edlund, and Fisher. E. Challenge to Claims 9–12 over Meyer, Zeff, Edlund, Fisher, and Tittel” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web). A person could also have qualified with more formal education and less technical experience, or vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not comment on Petitioner’s definition at this time, and does not offer an alternate definition. See Prelim. Resp. For the purpose of this decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. Petitioner asserts that it “does not believe an express claim construction is necessary at this time for this IPR.” Pet. 11. Patent Owner” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purpose of this decision and based on Petitioner’s citations to Meyer, Zeff, and Mr. Schmandt’s testimony (Ex. 1002), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Meyer to include electronically transferring a price cap that the BT company is willing to pay. See Pet. 45–47; KSR, 550 U.S. at 418. Petitioner asserts that Zeff discloses that auctions are a good place to buy and sell excess ad inventory, advertisers can usually get pretty good prices on well-recognized sites, and it is a way to generate revenue on inventory that would otherwise go unsold. See id. at 46 (quoting Ex. 1004, 81; citing Ex. 1002 ¶ 149). Petitioner contends that using an auction and bidding system in Meyer could have resulted in a substantially lower price than the account provider might otherwise have paid. See id. (citing Ex. 1002 ¶ 148). According to Petitioner, [a]n ordinarily skilled artisan would have also appreciated that using an auction would have solved a problem for the service provider in deciding how much to charge for advertising. A known benefit of auctions is their ability to obtain the most appropriate price based on direct purchaser feedback through competitive bidding. Id. at 46–47 (citing Ex. 1002 ¶ 147).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,830,615 - ROKU, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution deniedPTAB · Nov 29, 2022 · IPR2022-00953 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including because Whitehead’s relied-on association used PII.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) “would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements,” and that more experience might compensate for less formal education or vice versa. Pet. 9 (citing Ex. 1003 ¶ 15). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. For purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this juncture, we do not discern a dispute between the parties regarding the meaning of any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- BurdenNot shown unpatentable
“shows how RI mytes from different devices on the same network can be automatically associated—as seen in Blocks 340 and 360—without using PII. See Pet. 42–48; see also id. at 42–43 (“Specifically, as shown in FIG. 5 below, Whitehead describes using IP access session information to associate devices and their RI-mytes.”), 45 (“Using the corresponding IP access session information, the associated usage data and device identifiers are associated to the same user ID (e.g., ‘User1,’ ‘User2,’ and ‘User3’ respectively) representing the corresponding user profile.”). However, Whitehead Figure 5 uses PII in making that association.” slip op. at 17
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 8,566,164
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.