• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision

  Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40

  • ExcludeMotion to exclude, deniedDenied

    “to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29

  Patent outcomesUS 7,953,667 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish
  Patents in suitUS 7,953,667
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

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

    “object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18

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

    “pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7

  Patent outcomesUS 7,904,680 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,904,680
• American Megatrends, Inc. / Micro- Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01488 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–50 are unpatentable: claims 1 and 14 over Shipman; claims 2–5, 7–13, 15–18, 20–30, 32–42, and 44–50 over Shipman and Harmer; claims 6, 19, 31, and 43 over Shipman, Harmer, and Patel.

  RulingsFinal written decision

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

    “In the Decision to Institute, we applied the following claim constructions. Dec. to Inst. 10–12. We determined that “BIOS initialization code” as recited in claims 1, 14, 27, and 39 as “predetermined amount of BIOS initialization code” does not require further construction. Id. at 11. We also determined that “dispatch manager” as recited in claims 1–4, 14–17, 27–29, and 39–41, is construed as a program that handles the locating, loading and executing of task code. Id. at 12. Finally, we adopted the parties’ agreed construction of “system memory” as “random access memory (RAM).” Id. As neither Petitioner’s nor Patent Owner’s arguments persuade us to revise our interpretations of “BIOS initialization code,” “dispatch manager,” or “system memory,” we adopt as final our determinations of the broadest reasonable interpretations of those terms. Dec. to Inst. 10–12.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art for the ’189 patent would be “a person having at least a Bachelor of Science degree in computer science or software engineering or a Bachelor of Science degree in a technical field requiring computer science or software engineering courses and at least one year of industry experience in computer science or engineering related to firmware.” Pet. 10 (citing Ex. 1013 ¶ 15). Patent Owner does not dispute this proposed level of skill in the art. Based on the full record, we agree with Petitioner.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Mr. Perla’s declaration testimony (Ex. 1013 ¶ 56) is contradicted and undermined by his deposition testimony that shows him scrambling and leading counsel “on a wild goose chase” to support his declaration (PO Resp. 3–54 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20–33:6, 33:15–20, 33:21– 34:14; 35:7–36:25, 46:1–12)). Patent Owner argues that Mr. Perla’s testimony should be ignored because he “fabricates an aspect of modularity” in the Harmer reference to combine it with the modularity contemplated in the Shipman reference. PO Resp. 3–5. We disagree, finding that the deposition testimony cited by Patent Owner concerning “portions of BIOS” as contrasted with “BIOS modules” does not support the conclusion that Mr. Perla’s testimony should be disregarded in its entirety or given no weight. Considered in its entirety (Ex. 2010 and Ex. 1013), we find sufficient support and explanation for Mr. Perla’s testimony regarding modularity of Harmer and Shipman. In addition, Patent Owner’s deposition questions are 4 We note that Patent Owner’s citations to the testimony of Mr. Perla (PO Resp. 3–5) do not support Patent Owner’s contentions. For example, the Patent Owner response quotes Mr. Perla’s testimony (PO Resp. 3–4), but the deposition exhibit citations (Ex. 2010, 28:7–8, 28:10–12, 28:13–16), do not contain the quoted language and do not support Patent Owner’s contentions. In the absence of accurate citations to the record, we have considered Mr. Perla’s testimony in its entirety (see Ex. 2010). narrowly drawn and fail to support Patent Owner’s contentions that Mr. Perla fabricated his testimony regarding the modular teachings of the Harmer reference. PO Resp. 3–5 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20– 33:6, 33:15–20, 33:21–34:14; 35:7–36:25, 46:1–12). Accordingly, we do not disregard the testimony of Mr. Perla.” slip op. at 13

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

    “Patent Owner contends that there is no motivation to combine the Harmer and Shipman references because there is no support for the testimony of Mr. Perla that Harmer contemplates modular BIOS. PO Resp. 3–5, 11–13. As discussed above, we disagree with Patent Owner’s argument that Mr. Perla’s deposition testimony shows there is no support for his opinion that a skilled artisan would have been motivated to combine Harner and Shipman given that both deal with BIOS modularity because “Harmer’s purported BIOS modularity was fiction.” PO Resp. 11. Considering Mr. Perla’s testimony in its entirety, Mr. Perla’s deposition testimony is consistent with his declaration testimony that Harmer’s teachings of expansion BIOS are similar to the teachings in Shipman relied upon by Petitioner. Compare Ex. 1013 ¶ 56, with Ex. 2010, 30:3–11. We do not find that Mr. Perla’s deposition testimony undermines the testimony regarding what Harmer teaches a person of ordinary skill in the art. Petitioner relies on Harmer to establish that it was known, prior to the time of invention of the ’189 patent, to store BIOS modules in a protected area of a secondary nonvolatile storage device to reduce the cost of the ROM by relocating BIOS components to the mass memory storage of peripheral computer devices. Reply 9–10; Ex. 1013 ¶¶ 110–111; Ex. 1003, 4:63–67; Pet. 32–33. We are not persuaded by Patent Owner’s argument based solely on the” slip op. at 20

  Patent outcomesUS 7,185,189 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,185,189
• American Megatrends, Inc. / Micro-Star International Co. Ltd et al. v. Kinglite Holdings Inc.Some claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01515 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable under § 103; claims 15, 16, 28, 29, and 50 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “evidence of record that certain claims of the ’912 patent are unpatentable as summarized in the table below: Claim(s) Reference(s) Basis unpatentable 1–14, 17, 18, 24–27, Chang and Dent 35 U.S.C. § 103 30, 32, 35–49, 51– 53, 55, 56, 59 and 60 Chang, Dent and Bizzarri 35 U.S.C. § 103 19, 21–23, and 54 Chang, Dent, and Aegis 35 U.S.C. § 103 33 and 34 Flaherty and Chang 35 U.S.C. § 103 57 and 58 Petitioner has not established unpatentability of claims 15, 16, 28, 29 and 50 by a preponderance of the evidence IV. ORDER For the reasons given, it is: ORDERED that claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable; and” slip op. at 64

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

    “Patent Owner argues that there is no motivation to combine Chang and Dent. PO Resp. 6–7. According to Patent Owner, Petitioner’s analysis ignores fundamental differences in operation between the systems taught in the two references. PO Resp. 6. Chang establishes a connection with a server upon detection of a program in the PROM. Pet. 6–7 (citing Ex. 1003 at 6:55–57 (“The system BIOS detects the existence of a program in a ROM socket on a network interface card (step 35) and passes control to this program (step 37).”)). Dent establishes communication only when there is a boot error. Ex. 1004 at 3:4–8 (“to enable remote system level diagnostics through a privately or publicly accessible network in the event of a boot error”). Patent Owner argues that given these differences, there would have been no motivation to combine these references. PO Resp. 6−7. We determine that the differences noted by Patent Owner would not dissuade one of ordinary skill from combining the teachings Chang and Dent. As noted above, Chang, during a boot sequence and prior to loading its operating system (OS), uses its BIOS to enable network communication. Dent describes a boot sequence that establishes an interconnection over a network for remote servicing of an electronic system upon experiencing a boot error. Thus, they address the same general problem and are similar in overall approach to solving that problem.” slip op. at 21

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

    “Patent Owner continues to argue for a more restrictive construction of “network-enhanced software” that would require various specific functions of software described in the Specification. PO Resp. 8. However, we do not read into this claim term limitations of particular embodiments in the absence of a reason to do so. Here there is none. The term “network-enhanced software” appears only in the claims and not elsewhere in the Specification. We find no description of the term “network-enhanced software” in the Specification that would rise to the level of a definition. Embodiments are described as including a “network-enhanced BIOS.” The term “BIOS” appears in some, but not all, of the claims. We regard the term “network-enhanced software” as being broader in scope than “network-enhanced BIOS” based on our understanding that the term BIOS connotes to computer engineers specialized software particular to the rudimentary operation of a computer. We therefore adopt our preliminary constructions along with our reasoning expressed in our Decision to Institute for purposes of this decision. Dec. to Inst. 12−14.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “knowledge of one of ordinary skill when reading Chang and Dent. This knowledge includes the subject matter described by Melo, Banset, IBM and Bartek. The ordinarily skilled person reading these references would appreciate that when a computer using an Intel 80386 or 80486 processor is first turned on, it begins operation in “real mode.” Pet. 37; Ex. 1019 ¶ 53. Petitioner establishes that Chang meets the “second BIOS” limitation by offering the unrebutted Righi testimony which explains the knowledge of one of ordinary skill of real and protected modes, and that it would have been obvious to execute the second BIOS in protected mode, which was well-known at the time of the invention. Ex. 1019 ¶¶ 48–57. Patent Owner offers no testimony to counter the Righi testimony. We find that, at the time of the invention, real and protected modes were commonly used modes of operation in Intel processors and that these modes would have been known to those of ordinary skill. One of ordinary skill would have applied this knowledge along with the specific teachings of Chang and Dent to make the claimed invention. We therefore conclude that Petitioner has established by a preponderance of the evidence that claims 37 and 51 are unpatentable based on Chang and Dent.” slip op. at 26

  Patent outcomesUS 5,978,912 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 5,978,912
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.

  RulingsFinal written decision

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

    “guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8

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

    “We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,177
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision

  Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.

  RulingsFinal written decision

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

    “In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5

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

    “7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,516,177
• Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCSome claims unpatentable
  PTAB · Oct 20, 2016 · IPR2015-01036 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 10, 11, 13, 15, 17, 18, and 20 are unpatentable as obvious; claims 7, 14, and 21 were not shown unpatentable because the references lack per-user server tracking.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “A given reference is publicly accessible upon a satisfactory showing that such document has been [1] disseminated, or [2] otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95 (Fed. Cir. 2008. Even though Chen issued prior to the USPTO PAIR system, Chen FH was and remains easily requisitioned by any interested person from the USPTO by making the appropriate request and paying the appropriate fee.” slip op. at 18

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

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace. We find that if Chen were operated initially in “rush” mode, it would” slip op. at 29

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace.” slip op. at 29

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “We find that ISO-11172 would have been well known to those of ordinary skill. It was at the time of the ’839 patent already published and utilized. ISO-11172 demonstrates that it was known to encode frames at constant and variable bit rates. We are not persuaded that Chen’s focus on variable bit rates teaches away from the use of either constant or variable bit rates. The fact that a standard, published before Chen, describes the use of both in detail suggests that it was well known to those of ordinary skill in the art. We therefore conclude that Petitioner has established by a preponderance of evidence of record that Chen describes the constant bit rate feature of claims 3, 10 and 17. We find that Petitioner has produced sufficient evidence to establish that claims 3, 10, and 17 are unpatentable over Chen, Chen FH, and ISO-11172. See Pet. 38–39 (citing Ex. 1003 ¶¶ 68–70).” slip op. at 35

  Patent outcomesUS 8,364,839 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,364,839
• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12

  Patent outcomesUS 8,081,536 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536
• Sandisk Corp. v. Netlist, Inc.Some claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision

  Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.

  RulingsFinal written decision

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

    “We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24

  Patent outcomesUS 7,881,150 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115

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.