- Kaijet Technology International Limited, Inc. v. Sanho CorporationAll claims unpatentablePTAB · Oct 25, 2022 · IPR2021-00886 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–6 and 13–17 are unpatentable over Kwon and Kuo, and over O’Shea, Kuo, and Chang; the O’Shea and Kuo ground alone fails for claim 1.
RulingsFinal written decision- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 18
- Expert testimonyOther
“1. Petitioner’s initial burden of production” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“For these reasons, we clarify that a main port module is a component” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. Petitioner’s initial burden of production” slip op. at 24
Patent outcomesUS 10,572,429 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,572,429 - Intel Corporation v. Parkervision, Inc.All claims unpatentablePTAB · Jun 30, 2022 · IPR2021-00346 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1, 6–9, 12, and 17–20 are unpatentable as obvious over Downey and Sedra, with Hahnel added for claims 6–9 and 17–20.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededDecided for petitioner
“second sentence using the pronoun “it” and specifically states that “[t]ypically” the type of input that may control the switch is “an electrical or electronic input.” This sentence is important at least because the patentees chose to describe these control inputs as “typically.” The use of “typically,” in this context, is non-limiting. In other words, the ’108 patent expressly leaves open the option that the described switch may be controlled with an input that is not electrical or electronic. The fourth, and final, sentence of this paragraph is critical. It specifically states that “[i]f the switch is controlled by an electronic signal, it is typically a different signal than the signals connected to either terminal of the switch.” This sentence is significant for several reasons. First, by stating “if the switch is controlled by an electronic signal” (emphasis added), the Specification reaffirms that the switch may be controlled by an input that is not an electronic signal. Second, reading the sentence as a whole, it states that “[i]f the switch is controlled by an electronic signal, it is typically a different signal than the signals connected to either terminal of the switch” (emphasis added). To clarify, a signal that is different than the signals connected to either terminal of the switch is what the parties refer to as “an independent control signal.” Thus, the fourth sentence, in the context of the parties’ dispute, means that if the switch is controlled by an electronic signal, it is typically an independent control signal. The same meaning of “typically” applies here, i.e., it is non-limiting. Thus, if the first part of the sentence that provides the conditional clause (if) is met, i.e., the switch is controlled by an electronic signal, the electronic signal is not always an independent control signal because typically does not require always. Putting the discussion above into context, particularly in comparison to the construction advocated by Patent Owner, it is important to recognize that the lexicographic definition does not require a switch to be “dictated by an independent control input” because the definition specifically says that if the switch is controlled by an electronic control signal it is typically a different signal (i.e., an independent signal). Thus, Patent Owner’s proposed construction seeks to limit the term “switch” to what is expressly stated in the Specification as typical.” slip op. at 21
- Skill levelSkill level board ownOther
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in 5 Neither party presents evidence of objective indicia of nonobviousness. electrical engineering or a related subject and two or more years of experience in the field of radio frequency circuit design.” Pet. 40 (citing Ex. 1002 ¶ 29). Patent Owner contends that a person of ordinary skill in the art “would have: (a) a Bachelor of Science degree in electrical or computer engineering (or a related academic field), and at least two (2) additional years of experience in the design and development of radio frequency circuits and/or systems, or (b) at least five (5) years of experience and training in the design and development of radio frequency circuits and/or systems.” PO Resp. 5 (citing Ex. 2022 ¶ 20). We determine that the two proposed levels are closely aligned and are consistent with the ’108 patent and the asserted prior art.6 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt the following level in determining the patentability of the challenged claims: a person of ordinary skill in the art would have had a bachelor’s degree in electrical or computer engineering, or a related subject, and two years of experience in the field of radio frequency circuit design and development.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Downey alone discloses this limitation. As discussed above, Patent Owner argues at length about why inverter U5A in Downey’s frequency tripler circuit is not configured as a switch and does not operate as a switch. Patent Owner’s arguments are based on the specific circuit components shown in Downey’s frequency tripler circuit and characteristics of the MM74C04 inverter. Patent Owner does not address Petitioner’s contention that the combination of Downey and Sedra also teaches this limitation, except to argue that Sedra’s inverter when combined with Downey “would not change the operation of Downey’s frequency tripler circuit,” and that a person of ordinary skill in the art “would have to ignore all of the disclosure in Downey, and abandon all of the teachings and suggestions of Downey” to combine the two references. PO Resp. 49–50. Patent Owner therefore does not meaningfully address Petitioner’s proposed combination. See In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (“the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art”) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). The claims require “a first switch configured to up-convert.” Sedra specifically discloses a switch used to implement an inverter, and also states that an “inverter is basically a voltage-controlled switch”—disclosure that Patent Owner does not dispute. See Ex. 1004, 908–09, Fig. 13.2. Patent Owner also does not dispute that Downey’s frequency tripler circuit includes an inverter that upconverts the input signal. Ex. 1003, 4:8–13. Patent Owner’s arguments are directed to the inverter U5A that operates as a non-linear amplifier, as disclosed in Downey. PO Resp. 46–50. Patent Owner specifically argues “[i]nverter U5A in the frequency tripler circuit of Downey is not configured as a switch, nor can it be without rendering the circuit unsuitable for its intended purpose.” PO Resp. 48. But Sedra’s inverter is a switch. Patent Owner does not explain why a switch-based inverter would not work in Downey to accomplish the up-conversion.” slip op. at 39
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Decided for petitioner
“IV. PETITIONER’S OBJECTION TO PATENT OWNER’S DEMONSTRATIVES At the oral hearing, Petitioner objected to Patent Owner’s demonstratives 81 and 82 (see Paper 30) as containing new arguments that were not previously presented by Patent Owner. Tr. 6:17–7:1. Petitioner argued that those demonstratives contain testimony from Dr. van der Weide that Patent Owner did not cite in its Sur-reply and address an issue that was not presented in Patent Owner’s Response. Id. Patent Owner did not rely on those demonstratives during the oral hearing. Id. at 8:10–15 (Patent Owner’s counsel stating that he may not refer to those demonstratives during the hearing). We therefore dismiss Petitioner’s objection as moot.21” slip op. at 70
Patent outcomesUS 8,190,108 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,190,108 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision
Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableUnpatentable
“added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20
Patent outcomesUS 9,591,360 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,591,360 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00219 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–5, 7, 11–13, 17, 18, 20, and 22 are unpatentable as obvious over Eyal and ASX Files and over Madison and Holtz.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art of the ’635 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent, and at least two years of experience in distributed systems, multimedia streaming, and various HTTPrelated technologies, or an equivalent amount of relevant work or research experience.” Pet. 20 (citing Houh Decl. ¶¶ 57–60). Patent Owner contends a person of ordinary skill “would have: (a) a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or media streaming, or (b) at least five 5 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. 14 years of work experience and training in the design and development of distributed network systems and/or media streaming.” PO Resp. 6–7. Neither party points out any meaningful difference between the” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“have been obvious to combine two references. Reply 14. We do not agree with Patent Owner’s argument, that just because Eyal’s system “works perfectly well,” a person of ordinary skill would not seek to improve its performance. We rely, instead, on Dr. Houh’s testimony, summarized above, that there would be advantages in combining the teachings of Eyal and ASF Files. Houh Decl. ¶¶ 140–141. For example, as discussed supra, Dr. Houh testifies that a person of ordinary skill would have been motivated to modify Eyal to utilize the ASX files “to improve the ability of its play-lists to work effectively with Windows Media Player end user terminals.” 23 Id. ¶ 140. Further, we credit his testimony that a person of ordinary skill would have been motivated to combine Eyal’s disclosure with ASX Files to improve advertising features disclosed in Eyal. Id. at 141. He testifies that a person of ordinary skill would have had “a reasonable chance of success” because the ASX file format is XML, “a common format for data exchange on a network.” Id. ¶ 142. In contrast, Mr. Adams testifies that “there is no motivation to add the use of ASX files to Eyal.” Adams Decl. ¶ 139. Mr. Adams supports this testimony by asserting that “the Eyal system builds a simple play list and nothing more.” Id. We disagree with this assertion by Mr. Adams and with the implication that follows, that because the Eyal system is “simple,” a person of ordinary skill would not seek to improve it. See discussion of Dr. Houh’s testimony, supra. We are also not persuaded by Mr. Adams’s testimony that Eyal’s disclosure of Windows Media Player is “not in [and] of itself” a reason to consider using ASX files in Eyal, “when Eyal works perfectly well without it.” Adams Decl. ¶ 141. This testimony is unavailing for several reasons. First, the evidence of record links Windows Media Player with use of ASX Files. See Ex. 1017, 1 (“ASX files are simply text files that act as links from Web pages to ASF files on Windows Media Services or HTTP servers.”). Also, Mr. Adams’s testimony assumes (incorrectly) that because Eyal may work with other files, a person of ordinary skill would ignore the teachings that ASX files are used by Windows Media Player.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“filing date because the ’519 application does not disclose the claimed “play script” or the claimed “instructions.” Pet. 11–12; Reply 11–14. We agree and find that the ’635 patent is not entitled to that earlier date for the reasons given by Petitioner. As Petitioner points out, the ’519 application does not refer to a play script. Reply 8. The written description of the play script was not added until 2002. Id. Patent Owner contends that in the priority documents, “play script is used interchangeabl[y] with play list.” PO Resp. 34–45. Patent Owner fails to demonstrate persuasively that lacking the 11 description added in 2002, the “play list” disclosed in the ’519 application has the required elements of the play script claimed in the ’635 patent. Reply 12. One of those required elements of the claimed play script is “one or more instructions for use by the communication device together with the at least one URL to cause the at least one portion of the requested media to be streamed to the communication device.” See claim element 1.c.4, Ex. 1001, 51:8–11. We find that there is inadequate written description in the ’519 application of “instructions . . . to enable the communication device to obtain the at least one portion of the requested media.” Reply 8–9. We agree with Petitioner that the “presentation identification” relied on by Patent Owner (Ex. 2015, 7) does not provide “instructions…to enable the communication device to obtain the at least one portion of the requested media.” Reply 13. Instead, the “presentation identification” “identifies a particular presentation . . . and its associated media.” Id. (quoting PO Resp. 36). Absent an adequate written description in the ’519 application of these claimed features, Patent Owner’s attempt to obtain the benefit of the filing date of that application for the challenged claims of the ’635 patent fails. “It is elementary patent law that patent claims are entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
Patent outcomesUS 9,135,635 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,135,635 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00206 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 are unpatentable as obvious over the stated prior-art combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“U.S. Patent No. 8,825,887 (“the ’887 patent”). The claims of that patent include the same term referring to “at least one portion,” and the ’887 patent shares its written description with the ’636 patent. In our Final Written Decision in CBM2020-00028 (Paper 33, 9−13), we found that the plain and ordinary meaning of this term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” CBM2020-00028, Paper 33 at 10–11. We declined to adopt Patent Owner’s implicit claim construction because it improperly imports extraneous limitations into the claims and excludes a preferred embodiment. Id. at 11–” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“as “a file containing one or more media references and other information used by a communication device to obtain media.” PO Resp. 14–17. Patent Owner contends that “a play script is not itself limited to being a list.” Id. at 15. Patent Owner argues that a script “is a file, which can be processed by a computer to obtain media” because the claims recite that the play script contains “instructions.” Id. Patent Owner also cites the district court’s adoption of this construction. Id. at 13–14. Whether or not a playlist is a file is not a meaningful distinction for the purposes of this Final Written Decision. As Petitioner notes, all of the “play scripts” identified by Petitioner in the prior art are files. Reply 6. We agree with Petitioner that we need not determine which party’s construction applies for purposes of our analysis. Nidec, 868 F.3d at 1017.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“reservation. Patent Owner now proposes the following construction: “arrangement regarding reserved resources of a streaming system.” PO Resp. 17. Patent Owner cites the specification and Mr. Adam’s testimony 13 for support. Id. (citing Ex. 1001, 10:33−37; Adams Decl. ¶ 110). Mr. Adam relies on the ’636 patent specification, which states that “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37. Further, “[t]he reservation uniquely identifies the viewer 118 or 120 and the customized play script.” Id. at 10:27–28, 10:34–37. The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Based on the description in the specification, we construe “reservation” as “a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party points out any meaningful difference between the parties’ assessments. We therefore apply Patent Owner’s more detailed assessment on the level of ordinary skill in the art. This proposal is consistent with the ’636 patent, the prior art of record, and is supported by 16 the testimony of Mr. Adams. Adams Decl. ¶¶ 27–29. However, our analysis would be the same under either party’s description.” slip op. at 16
Patent outcomesUS 9,135,636 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,135,636 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Apr 25, 2022 · IPR2021-00308 · APJ Joni Y Chang · IPR · Final written decision
Claims 39, 40, 45, 47, 52, 68, 98–101, 103, 105, 111, and 115–117 are unpatentable as obvious over the asserted prior-art combinations.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“streaming media. When asked “what is the point of having commercials in streaming media” during cross-examination, Mr. Adams admitted that “[t]here are a number of different reasons why you might want to include commercials,” such as “to generate revenue for the service.” Ex. 1083, 40:10–18 (emphasis added). We agree with and credit Dr. Houh’s testimony that such an artisan would have recognized the benefits of applying Wolfe’s teachings of targeted advertisements, revenue sharing, and settlement recording to Madison’s system—e.g., “tracking played advertisements to more accurately report effectiveness and tailor billings and revenues based on ad impressions by making ‘an accounting . . . of the total advertising air time used and . . . [billing] advertisers . . . accordingly.’” Ex. 1003 ¶¶ 295– 296, 309; Ex. 1044, 1:24–31, 1:43–48, 1:55–60, 5:37–44. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 418 (quoting Sakraida, 425 U.S. at 282).” slip op. at 76
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“’887 patent makes clear that the presentation itself, not the presentation ID, “may include special instructions, such as special media sequencing instructions, late binding media instructions, and/or special routing instructions.” Ex. 1001, 8:27–32. Therefore, Patent Owner’s argument that the presentation ID is an instruction executed by the communication device “to obtain at least one portion of the requested media,” as required by the claims, is not supported by the ’993 application, the ’519 application, or the draft application, and it is also inconsistent with the Specification of the ’887 patent. For the foregoing reasons, we find that none of the three applications provides adequate written description for the claimed “instructions.”” slip op. at 52
Patent outcomesUS 8,825,887 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,825,887 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Apr 15, 2022 · IPR2021-00158 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–3, 5, 6, 19–21, 23, 26, 27, 30, 31, and 33 are unpatentable as obvious over Eyal and Wiser; claims 1–3 and 6 are also unpatentable over Madison and Holtz.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“I. INTRODUCTION Hulu, LLC (“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of claims 1−3, 5, 6, 19−21, 23, 26, 27, 30, 31, and 33 (“the challenged claims”) of U.S. Patent No. 9,026,673 B2 (Ex. 1001, “the ’673 patent”). Paper 2 (“Pet.”), 1. SITO Mobile R&D IP, LLC and SITO Mobile Ltd. (collectively, “Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). On April 20, 2021, we instituted the instant inter partes review as to all of the challenged claims for all of the grounds of unpatentability asserted in the Petition. Paper 9 (“Dec.”).” slip op. at 2
- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“server to validate and authenticate the user requesting the media file.” Ex. 1003 ¶¶ 150−151. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). For the foregoing reasons, we find that Petitioner has articulated an adequate reason to combine the teachings of Eyal and Wiser. 8. Conclusion on Obviousness over Eyal and Wiser” slip op. at 50
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“For the foregoing reasons, we agree with Petitioner that neither the” slip op. at 54
Patent outcomesUS 9,026,673 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,026,673 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision
Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30
Patent outcomesUS 8,825,887 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · PhillipsPatents in suitUS 8,825,887 - Unified Patents, LLC v. B# On Demand, LLCAll claims unpatentablePTAB · Nov 10, 2021 · IPR2020-00995 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–10, 13–22, and 25–34 are unpatentable under § 103 over Schmeidler alone.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityNot time barredDecided for petitioner
“Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38, 5 (PTAB Mar. 4, 2016) (precedential) (“§ 312(a) is not jurisdictional”); see also SharkNinja , Paper 11 at 17 (PTAB Oct. 6, 2020) (precedential) (“Section 312(a)(2) . . . serves important notice functions”). Furthermore, Lumentum makes clear that the Board may permit a party to rectify an issue of compliance with the requirements of § 312(a). Lumentum, Paper 38 at 5. Second, there were facts in RPX Corp. not present in this case. In particular, in RPX Corp., an unnamed RPI, Salesforce, had been served with a complaint for infringement more than one year prior to the filing of the Petition. RPX Corp., Paper 128, 7 (limiting “analysis to whether the § 315(b) time-barred entity Salesforce should have been identified as an RPI or privy”). The Board recognized that failing to name a time-barred RPI “creates the danger of ‘two bites at the apple’ that the statutes were meant to prevent via § 315(e) estoppel provisions and the § 315(b) time bar.” Id. at 34. In this case, although Spotify is now time barred, Patent Owner does not contend that Spotify or any other member of Petitioner was time barred as of the date the Petition in this case was filed. Tr. 40:1–6 (Patent Owner agreeing that Spotify was not time barred when the Petition was filed.). Consequently, even if we were to determine that Spotify is an RPI of Petitioner, the § 315(b) time bar is not implicated because Spotify was not time barred at the time the Petition was filed. Any estoppel issues under § 315(e) are purely speculative at this point because the Delaware Litigation has been voluntarily dismissed by Patent Owner. Tr. 40:7–10. If Patent Owner decides to again sue Spotify, Patent Owner may move the District Court to invoke § 315(e) estoppel against Spotify. Because we determine that neither the time bar nor estoppel provisions of 35 U.S.C. § 315 are implicated in this case, “we need not address whether [Spotify] is an unnamed RPI.” SharkNinja, Paper 11 at 18.” slip op. at 49
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Denied
“Patent Owner does not provide any documents filed in New Vision Gaming for our review, does not provide a reference to a docket entry, or make any attempt to articulate the alleged “reasons explained in detail” by the patent owner in New Vision Gaming. However, even if Patent Owner did provide such documents, that would be an improper incorporation by reference. 37 C.F.R. § 42.6(a)(3). Nonetheless, we note the Federal Circuit found no due process violation when the same panel of PTAB judges decides both the decision on institution and the final written decision. See Ethicon Endo Surgery Inc. v. Covidien LP, 812 F.3d 1023, 1031 (Fed. Cir. 2016) (“We see no due process concerns combining the functions of initial decision and final disposition on the merits.”). Consequently, we deny Patent Owner’s request for replacement of the existing panel members.” slip op. at 52
- BurdenFwd all claims unpatentableUnpatentable
“For all the foregoing reasons, we determine that Petitioner establishes by a preponderance of the evidence that claim 1 would have been obvious over Schmeidler.” slip op. at 37
Patent outcomesUS 9,553,880 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 9,553,880 - One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.All claims unpatentablePTAB · Oct 10, 2018 · IPR2017-01132 · APJ Joni Y Chang · IPR · Final written decision
Claims 12–21 are unpatentable as anticipated by Menard; the Board did not reach the Menard and Lee obviousness ground for claims 13 and 21.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Ex. 1001, 5:42. Petitioner asserts that the term “status of the movable barrier” should be construed as the state of the moveable barrier (e.g., whether a door is open or closed). Pet. 7. Petitioner argues that the Specification supports this construction as it discloses that, “[i]n order to check the status of the movable barrier[,] the user would go look at the movable barrier to see if it was open or closed.” Id. (citing Ex. 1001, 1:26−28) (emphasis omitted). Petitioner further notes claims 15 and 16 recite “wherein the status of the movable barrier is open,” and “wherein the status of the movable barrier is closed,” respectively. Id. at 7−8; Ex. 1001, 6:11−14. Patent Owner does not dispute Petitioner’s proposed claim construction as to this term. See Prelim. Resp. 2−3; PO Resp. 2. In light of the Specification including the dependent claims, we agree with and adopt Petitioner’s claim construction, construing “status of the movable barrier” as “the state of the moveable barrier (e.g., whether a door is open or closed).”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“However, Patent Owner’s proposed claim construction, interpreting “computer” as “personal computer,” would improperly import a limitation from a preferred embodiment or specific example into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (limitations are not to be read from the specification into the claims). Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (citations and quotation marks omitted); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting that “it is important not to import into claim limitations that are not a part of the claim”). Moreover, Dr. Davis conceded during his cross-examination that the term “computer” as used in the ’977 patent is broader than the term “personal computer.” Ex. 1015, 11 87:3−7 (stating that “if you look at all of the devices back in column 2 [of the ’977 patent], a cellular phone, a personal computer, a PDA, at some level, they’re all a computer”). Thus, we decline to adopt Patent Owner’s narrow construction, and conclude that no further construction of “computer” is necessary.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) (citation omitted). Mr. Lipoff testifies that a person with ordinary skill in the art “would have had at least an undergraduate degree in electrical engineering, or equivalent education, and one to two years of work experience in the fields of: (i) network communication systems; (ii) systems for access control or automated door systems; or (iii) equivalent work 3 Neither party presents objective evidence of nonobviousness in this trial. 13 experience or training.” Ex. 1008 ¶ 30. Patent Owner does not dispute Mr. Lipoff’s assessment regarding the level of ordinary skill in the art. See generally PO Resp. Based on the record before us, we agree with and apply Mr. Lipoff’s assessment regarding the general knowledge of a person with ordinary skill in the art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“(Ex. 2001 ¶¶ 25−35), however, are based on an unduly narrow interpretation of Menard’s teachings. Anticipation is not an ipsissimis verbis test. See Gleave, 560 F.3d at 1334; Bond, 910 F.2d at 832. It is well established that “‘the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from [the prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (citation and emphasis omitted). Significantly, Patent Owner conflates Menard’s disclosures regarding a one-way pager, which can only receive messages, not transmit them, with a two-way pager, which can receive and transmit messages. Menard explains that the user, using a one-way pager, “may operate the door opener . . . using another communication channel, including for example, a cellular telephone or a personal communication device.” Ex. 1003 ¶ 50 (emphasis added). In contrast, Menard discloses “[u]sing a two way pager, the user may operate the door opener, or operate an actuator, using the reply communication channel of the pager.” Id. (emphasis added). In the very next sentence, Menard states that “[t]he outbound signal (e.g., indicating the 26 door position) may be transmitted to the pager . . . upon inquiry.” Id. (emphases added). As Mr. Lipoff explains, “the” before “pager” refers to the two-way pager from the immediately preceding sentence, which uses a communication channel and “reply” communication channel. Ex. 1014 ¶ 26. The “upon inquiry” wording in paragraph 50 cannot be read in isolation; rather, a person of ordinary skill in the art would have read it in context with the surrounding disclosure in Menard. Mr. Lipoff testifies that such an artisan would have understood from Menard’s full disclosure that the user uses the same two-way pager to request and receive the door position status over the same network. Ex. 1008 ¶¶ 78−79, 89−93; Ex. 1014 ¶¶ 24−26. Again, we credit Mr. Lipoff’s testimony, as it is consistent with Menard’s disclosure (Ex. 1003 ¶¶ 9−11, 29, 41, 44, 50, 69).” slip op. at 26
Patent outcomesUS 6,998,977 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,998,977
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.