• Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentable
  PTAB · Dec 5, 2019 · IPR2018-01138 · APJ Stacey G White · IPR · Final written decision

  Claims 1–10, 12–45 are unpatentable: claims 1–10, 12–15, 17–32, 34–43, and 45 as obvious over Rothbaum and Denison; claims 16, 33, and 44 over Rothbaum, Denison, and Ott.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Here, the same RPI issue was raised in the prior decisions, the RPI issue was actually litigated by the parties (replete with discovery and dispositive motions on this issue), and our determination that the RPI identification was proper was essential to the prior decisions (especially because Patent Owner has sought to have the proceedings terminated due to an allegedly improper identification of RPIs). As such, we agree with the parties’ assertion that collateral estoppel applies to the RPI issue in this case, and we conclude that no exception to collateral estoppel applies. Thus, we determine that collateral estoppel prevents the relitigation of the RPI issue in this proceeding. Accordingly, for the reasons given in the 1900 IPR Decision and in the Order on Patent Owner’s Motion to Terminate from IPR2017-00344, we determine that Petitioner identified all RPIs in this proceeding, as required by 35 U.S.C. § 312(a)(2).” slip op. at 15

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Thaine Allison III, testifies that a person of ordinary skill in the art would have had a four year technical degree (e.g. B.S. engineering) with a minimum of three years of experience in using, provisioning, designing or creating, or supervising the design or creation, of such theft prevention devices, and other related security devices. Extended experience in the industry could substitute for a technical degree. A [person of ordinary skill in the art] would have known how to research the technical literature in fields relating to theft prevention, including in retail and other environments, as well as security in general. Also, a [person of ordinary skill in the art] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also taken advantage of certain specialized skills of others in the team, e.g., to solve a given problem. For example, designers, engineers (e.g., mechanical or electrical), and computer scientists or other computer programmers may have been part of a team. Ex. 1019 ¶ 20; see Pet. 14 (citing Ex. 1019 ¶¶ 18–21). Based on the evidence of record, including the testimony of Mr. Allison, the subject matter at issue, and the prior art of record, we adopt the level of ordinary skill in the art set forth in the Decision on Institution, which is that a person of ordinary skill in the art would have had a four-year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. Dec. on Inst. 10; see also PO Resp. 17–18 (agreeing with statement of level of ordinary skill in the Decision on Institution). We apply this level of ordinary skill in the art in our analysis below.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther

    “usable in only a single retail store,” “unique to the single retail store and the programming station,” “a ‘housing’ with ‘a port,’” “logic control circuit,” and “‘invalidating’ the ‘key.’” Pet. 8–14. Patent Owner seeks construction of “single security code” and “invalidates the single security code,” and Patent Owner provides arguments responsive to Petitioner’s proposed construction of “usable in only a single retail store.” PO Resp. 12–17. Based on the issues before us, we discern a need to provide express construction for “single security code,” “unique to the single retail store and the programming station,” and “invalidating the single security code.” No other term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor slip op. at 8

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

    “Id. at 38. Petitioner responds by arguing that Patent Owner is not addressing the combination proposed in the Petition, which is “modifying Rothbaum’s system (used in a retail store) to have an electronic-key system instead of a mechanical-key system. It isn’t a vending machine.” Reply 4. Thus, Petitioner’s argument focuses on incorporating the teachings regarding Denison’s key into the retail security system of Rothbaum. Therefore, Patent Owner’s arguments that are directed to the features of Denison’s vending machines are not responsive to the proposed combination because the vending machine is not part of the proposed modified system. Mr. Allison’s testimony supports Petitioner by explaining that a [person of ordinary skill in the art] would have found it obvious that a retail store employing the modified Rothbaum system would not share or use the system (or individual parts of the system, for example, the programming station / “external computing device,” the electronic keys, and the security device / “strip or housing 12”) with another retail store because doing so would compromise the integrity of the security system. Ex. 1019 ¶ 116. We credit Mr. Allison’s testimony and find that one of ordinary skill in the art would have found it obvious to improve security by using Denison’s operation limits to limit the use of the security code to a single store because such a limit would reduce the possibility that unauthorized individuals would gain access to the code by, for example, obtaining a key from one store and using it in another store. See Ex. 1019 ¶¶ 113, 116. We determine that the findings made in our analysis of claim 1 of the ’762 patent along with our findings regarding the “usable in only a single retail store” limitation also support a finding of unpatentability of claim 17 of the ’472 patent. We are careful to view the claim as a whole and not just its constituent parts. We determine that the findings noted above as to prior related cases along with the findings we make in this Decision as to the disputed limitation are sufficient to establish the unpatentability of claim 17 as a whole. The prior findings were essential to determining the patentability of the prior challenged claims and the parties had a full and fair opportunity to litigate those claims. Therefore, we determine that Petitioner has shown by a preponderance of the evidence that claim 17 of the ’472 patent would have been obvious over Rothbaum and Denison. As noted above, our analysis equally applies to claims 1 and 39 of the ’472 patent. Therefore, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 17, and 39 are unpatentable.” slip op. at 26

  Patent outcomesUS 9,659,472 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,659,472
• Samsung Electronics Co., Ltd. v. Keynetik, Inc.All claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-00985 · APJ Stacey G White · IPR · Final written decision

  Claims 22 and 23 are unpatentable as obvious over Noguera and Liberty; the Board did not reach anticipation by Liberty.

  RulingsFinal written decision

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

    “the scope of the sleep command. As such, we agree with Petitioner that “under the [broadest reasonable interpretation] standard, the claim language merely recites that the sleep command temporarily deactivates the motion input algorithm from translating sensed movement into a command for a defined period of time.” See Reply 6. 2. Scope of “After the Command Is Executed” Claim 22 recites, in relevant part, sending the sleep command “after the command is executed.” According to Patent Owner, one of ordinary skill in the art would have understood this to require “a command within the step motion algorithm that is sent after the executed motion input algorithm command.” PO Resp. 29. Thus, Patent Owner argues that the executed command and sleep command must have a logical association with each other. Id. “In other words, the algorithmic steps must be part of the same algorithm – not merely disassociated, independent functions that can occur within the same device.” Id. at 32. Petitioner points out that the text of the ’146 patent merely describes the sleep command as “[f]ollowing execution of the command” and “does not identify any logical association or conditioning between the ‘sleep command’ and the ‘command [that] is executed.’” Reply 8–9 (quoting Ex. 1001, 14:22–24). We agree with Petitioner that the claim term “after” indicates a temporal relationship between the executed command and the sleep command that requires the executed command to occur and then at some point later in time the sleep command is issued. The claims provide no limit as to intervening acts that could occur between the executed command and the sending of the sleep command. The claims also do not describe any further relationship between the executed command and the sleep command.” slip op. at 10

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “understanding of a person of ordinary skill in the art at the time of the invention. The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In addition, the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). In the Institution Decision, we adopted Patent Owner’s description of a person of ordinary skill in the art as a person “familiar with the various motion-sensing technologies by way of experience and/or schooling. That person would likely have earned a bachelor’s degree in electrical engineering, computer science or another related field, and have at least two years of experience with motion-sensing technologies. More education can substitute for practical experience and vice versa.” Dec. 7; see PO Resp. 16 (“Patent Owner and its expert, Dr. Mohapatra, agree with the Board’s findings concerning the level of ordinary skill in the art.”). Based on the full record, including the testimony of Dr. Abowd, the subject matter at issue, and the prior art of record, we maintain our previously adopted description of the level of ordinary skill.” slip op. at 11

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

    “to be solved by the ’146 patent is not strictly focused on the removal of intentional movement. The specification also discusses a need for a motion sensor system and method of calculation “that does not require tracking of the device orientation to filter out the gravity and other motion interference” and it also addresses the desire to “minimize the numerical calculations, thus reducing required processing power.” Ex. 1001, 2:47–53. Thus, the problem to be solved is not singularly focused on removal of intentional movement. Regardless, Petitioner correctly argues that the cited art in an obviousness ground need not be directed to the same problem that the inventor was trying to solve. See Reply 20–21. The Supreme Court stated that “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Therefore, whether the cited references are directed to the same problem that the inventor was trying to solve is not conclusive concerning the obviousness analysis. Patent Owner also contends that an ordinarily skilled artisan “would not be motivated to combine the references because the combination of the Noguera ‘delay period’ with the Liberty ‘switch’ to ‘fine mode clicking’ would be, at best, redundant.” PO Resp. 61. For example, Patent Owner asserts that “if a button actuation caused ‘undesirable movement of the device,’ Noguera alone would ‘remove unintentional movement’ because it always operates on a ‘delay period.’” Id. at 62 (citing Ex. 2001 ¶ 186). Petitioner contends that this is a misstatement of the proposed combination because “Noguera’s delay period and Liberty’s classifier that switches to fine mode clicking are not the same . . . . For example, Noguera’s delay periods do not take into account execution of commands, much less commands relating to fine user interactions with Noguera’s device.” Reply 21 (citing Ex. 1006, FIGS. 3–4, 5:52–6:50). Petitioner points out that “the combined Noguera-Liberty system (unlike Noguera alone) links the delay periods to the periods directly following a command.” Id. at 22. We agree with Petitioner’s contention that this combination “would have advantageously removed unintentional motion data during fine user interactions with device 10 that could have resulted in unwanted device inputs (e.g., unwanted cursor movement).” Id. (quoting Pet. 68). This is true because Noguera operates on a system of continuous averaging and the addition of Liberty would allow for the periods to be timed based on the execution of command and Liberty provides for the filtering out of certain unwanted data which will allow more precision that the averaging scheme used in Noguera. We are persuaded that removing some undesirable movement would have allowed for more accurate calculations/commands because it would have improved the precision of the underlying data for the commands. As such, we find that Petitioner has shown sufficiently a rationale to combine the teachings of Noguera and Liberty.” slip op. at 25

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

    “been improved in light of the teachings of Liberty. Pet. 68. Specifically, Noguera’s delay period (sleep period) is used to filter out certain movement. Id. at 62. According to Petitioner, one of ordinary skill in the art would have improved that filtering with Liberty’s fine and coarse clicking techniques. Id. at 68. Liberty’s coarse mode is for large movements and the fine mode is for small carefully aligned movements. Ex. 1005, 17:12–18. “For fine mode clicking, the above-described processing technique operates to accurately remove unintentional motion data from the combined data output stream from the motion sensor(s) in the handheld device.” Id. at 17:20–24. “When a button press is detected by the hand held device, the output pointer movement from 916 is suppressed until either the distance exceeds a distance threshold or the amount of elapsed time exceeds a time threshold.” Id. at 16:34–38. Petitioner argues that Liberty teaches “rever[ting] to a prior state . . . ‘by deleting data samples taken from the motion sensor(s) during/after’ the user action. As such, the ‘errant movement’ that occurred during the user action is ‘ignored and ‘erased.’” Pet. 64 (quoting Ex. 1005, 16:65–17:2) (internal citations omitted). Additionally, Liberty “provide[s] a classifier to switch between the [coarse and fine] techniques.” Id. at 18:21– 22. Petitioner relies on Liberty’s teaching of switching to fine clicking mode from coarse clicking mode based on a classifier that indicates the velocity of the handheld device has slowed from a velocity indicative of coarse clicking mode to a velocity more appropriate for clicking a small target. Id. at 66 (citing Ex. 1002 ¶¶ 129–130; Ex. 1005, 17:12–16, 18:25–34). Petitioner contends that “the instruction to switch to the first technique (‘sleep command’) is sent only after movement of the 3D pointing device is detected and translated into a command to position the cursor over a small target (‘the command is executed’) and then stopped.” Pet. 42–43. Thus, the combination provides a classifier (sleep command) to begin Noguera’s delay period (sleep state) after the execution of a command. We are persuaded by Petitioner’s argument and that Petitioner has demonstrated that this disputed limitation would have been understood from the combined teachings of Liberty and Noguera.” slip op. at 21

  Patent outcomesUS 7,966,146 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,966,146
• Next Caller Inc. v. Trustid, Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00961 · APJ Jean R Homere · IPR · Institution

  The Board denied institution in IPR2019-00961 and IPR2019-00962 because substantially overlapping district court litigation was advanced and scheduled to conclude before a Board decision.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “discretion under § 314(a) to deny a petition upon determining that institution would be an inefficient use of Board resources. NHK Spring, IPR2018- 00752, Paper 8 at 19–20. In particular, the Board determined that it was proper to exercise discretion to deny institution in a case having a parallel district court proceeding involving (i) the same patent/parties, (ii) the same claim construction standard, (iii) the same prior art references, and (iv) the same arguments as in the district court proceeding, which was scheduled to be completed before a final decision would have been due in the Board proceeding.7 See id. The Board determined that these circumstances supported denial of the petition under § 314(a), considering the AIA’s objective “to provide an effective and efficient alternative to district court litigation.” Id. at 20 (quoting Gen. Plastic8). We agree with TRUSTID that the case before us presents circumstances that support denial of institution under § 314(a). Prelim. Resp. 15–19.” slip op. at 10

  • Other 314aInstitution denied discretionary otherInstitution denied

    “e. Additional Factor: Next Caller’s Delay Next Caller’s delay in filing the Petition weighs in favor of the Board exercising discretion to deny institution under § 314. As depicted in table 4 below, at the time of the ’039 Petition, Next Caller was aware or could have reasonably been aware of the prior art asserted in the challenges set forth in the instant proceeding.” slip op. at 15

  Discretionary denialcites Phillips
  Patents in suitUS 8,238,532
• Next Caller Inc. v. Trustid, Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00962 · APJ Jean R Homere · IPR · Institution

  The Board denied institution of IPR on claims 1–52 under § 314(a), finding the petitions duplicated parallel district court litigation scheduled to conclude before a Board final decision.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “discretion under § 314(a) to deny a petition upon determining that institution would be an inefficient use of Board resources. NHK Spring, IPR2018- 00752, Paper 8 at 19–20. In particular, the Board determined that it was proper to exercise discretion to deny institution in a case having a parallel district court proceeding involving (i) the same patent/parties, (ii) the same claim construction standard, (iii) the same prior art references, and (iv) the same arguments as in the district court proceeding, which was scheduled to be completed before a final decision would have been due in the Board proceeding.7 See id. The Board determined that these circumstances supported denial of the petition under § 314(a), considering the AIA’s objective “to provide an effective and efficient alternative to district court litigation.” Id. at 20 (quoting Gen. Plastic8). We agree with TRUSTID that the case before us presents circumstances that support denial of institution under § 314(a). Prelim. Resp. 15–19.” slip op. at 10

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

    “A threshold issue raised by the Preliminary Response is whether, pursuant to the precedent set forth in NHK Spring, we should deny institution under 35 U.S.C. § 314(a) in view of the similarities between this proceeding and the Parallel District Court Proceeding, and the expected completion date of the Parallel District Court Proceeding before the Board’s final written decision in this proceeding. Id. Because we determine that the specific factual circumstances of this case warrant denial of institution under § 314(a), this threshold issue is dispositive.5 35 U.S.C. § 314(a) states that [t]he Director may not authorize an inter partes review to be instituted unless the Director6 determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” slip op. at 9

  Discretionary denialcites Phillips
  Patents in suitUS 8,238,532
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Rehearing denied
  PTAB · Oct 7, 2019 · IPR2018-01506 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Cisco’s rehearing request, leaving intact the denial of institution because Cisco did not show that Ingate was a prior art printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (3) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). For the reason discussed below, Petitioner’s Request for Rehearing is denied.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Although Mr. Beer states that he has “personal knowledge regarding the content and publishing of the Ingate reference,” Mr. Beer does not assert that, except for his authorship, he had any role in publishing the Ingate reference. Ex. 1012, Beer Dec. ¶¶ 3–6. Mr. Beer does not state that he personally placed the Ingate reference on Ingate’s publically accessible website. Id. Mr. Beer offers no testimony as to what the legend “Ingate – Partner Information Guide” means or how the Ingate reference would have been published on the website, such that it would have been accessible to the public in the relevant time frame. Id. Mr. Beer provides no information about Ingate’s procedures for reviewing and approving articles prior to publication on Ingate’s website. Mr. Beer also does not describe how such articles were posted to the website, e.g., Mr. Beer does not describe procedures Ingate followed to load the reference to a publically accessible location, to assign a link to that location, who was responsible for carrying out such procedures, how long such procedures would have taken, how the reference would have been known to the public, or how an interested person would search for the Ingate reference. Dec. 17–18. Mr. Beer’s testimony that the Ingate reference was accessible at the website provides insufficient facts from which we can conclude the Ingate reference was accessible to interested members of the public. Although the Rehearing Request criticizes our Decision as focused on “indexing” (Req. Reh’g 9–10), our comments on indexing concern the factual deficiencies in Mr. Beer’s declaration concerning how a member of the public would have known about or located the Ingate reference: Mr. Beer’s Declaration also fails to address how, or if, the Ingate reference was indexed, or who was responsible for such indexing, such that interested members of the relevant public could obtain the information. For example, Mr. Beer’s declaration is silent about whether the website included any search feature or how keywords or other indicia would have been assigned to the Ingate reference to facilitate its identification by an interested person.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,137,205
• Snap Inc. v. Vaporstream, Inc.No claims unpatentable
  PTAB · Aug 1, 2019 · IPR2018-00439 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 4–6, 11, 13, 15, and 16 were not shown unpatentable under § 103 because the cited combinations did not establish the claimed recipient-side reduced-traceability displays.

  RulingsFinal written decision

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

    “Reply is improper because it was not raised adequately in the Petition. See Sur-Reply 17–18. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”); Trial Practice Guide Update (Aug. 2018), 14–15, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf (“‘[R]espond,’ in the context of § 42.23(b), does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). As explained above, Petitioner in its Petition relies solely on Wren as allegedly teaching the “provid[ing] a second plurality of reduced traceability displays via the recipient user device” limitation of claim 1. See Pet. 33–36 (arguing that the limitation is disclosed by Wren). Petitioner clearly explained its position as follows: Figures 9A and 9B from Wren together qualify as the second “plurality of reduced traceability displays,” under its broadest reasonable interpretation, because they display message content and recipient identifying information separately. As shown, Figure 9A of Wren shows identifying information associated with the message (e.g., sender identification “Jane Doe” and time “9:30AM”), but does not display any of the movie message content. Conversely, Figure 9B shows the movie message content, but does not include any identifying information. Figures 9A and 9B thus disclose “a second plurality of reduced traceability displays.” Pet. 34–35 (emphases and footnotes omitted). Petitioner never mentions Namias when addressing the limitation at pages 33–36 of the Petition. The only portion of the Petition cited by Petitioner in the Reply for the argument is pages 21–22, which pertain to Petitioner’s asserted motivation to combine the cited references. See Reply 12. In that section, Petitioner does not address how the absence of text in Namias would impact Wren. See Pet. 21–23. Moreover, even if Petitioner could now rely on a combination of Wren and Namias for the “second plurality of reduced traceability displays via the recipient user device” limitation, Petitioner never argued in the Petition that the proposed modified system would not support text (with video) in a message. See Sur-Reply 17–18.” slip op. at 33

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

    “the separation of header information and message content because there is no message content in Figure 9A. Wren’s silence as to what the “New Movie” text represents and where it originated is insufficient for Petitioner to prove that it is not message content. Also, reading the limited disclosure of paragraph 32 and Figures 9A and 9B in context with the rest of Wren, in particular with Wren’s description of “one-touch” messaging and Figure 9C, we agree with Patent Owner and Dr. Almeroth that Wren at least would have suggested to a person of ordinary skill in the art that the “New Movie” text is sent by the sending device to the recipient device as part of the message, not generated by the recipient device on its own as Petitioner contends. Ultimately, it is Petitioner’s burden to prove unpatentability by a preponderance of the evidence, which includes in this instance proving that a person of ordinary skill in the art would have understood Wren to teach “provid[ing] a second plurality of reduced traceability displays via the recipient user device.” See 35 U.S.C. § 316(e); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (emphasis added; citation omitted); see also Magnum Oil, 829 F.3d at 1376 (“Where, as here, the only question presented is whether [claims would have been obvious], no burden shifts from the patent challenger to the patentee,” and “[t]his is especially true” when the issues are “what the prior art discloses, whether there would have been a motivation to combine the prior art, and whether that combination would render the patented claims obvious.”). “Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Dynamic Drinkware, 800 F.3d at 1378–79 (quoting Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). Petitioner argues that Figures 9A and 9B of Wren constitute “reduced traceability displays” because “New Movie” in Figure 9A is not message content and Wren thus displays header information and message content separately, citing the very limited disclosure of Wren regarding those displays and the testimony of Dr. Chatterjee as to what a person of ordinary skill in the art allegedly would have inferred from that disclosure. In response, Patent Owner provides persuasive evidence to the contrary that a person of ordinary skill in the art would have understood “New Movie” to be sent by the sending device to the recipient device as part of the message, or at the very least, that Wren is ambiguous on the point such that there is no basis to draw the inference advocated by Petitioner. Based on the record presented, we agree with Patent Owner and are not persuaded that there is sufficient evidence to establish that Wren teaches providing a “second plurality of reduced traceability displays via the recipient user device.”” slip op. at 31

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Reply is improper because it was not raised adequately in the Petition. See Sur-Reply 17–18. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”); Trial Practice Guide Update (Aug. 2018), 14–15, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf (“‘[R]espond,’ in the context of § 42.23(b), does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). As explained above, Petitioner in its Petition relies solely on Wren as allegedly teaching the “provid[ing] a second plurality of reduced traceability displays via the recipient user device” limitation of claim 1. See Pet. 33–36 (arguing that the limitation is disclosed by Wren). Petitioner clearly explained its position as follows: Figures 9A and 9B from Wren together qualify as the second “plurality of reduced traceability displays,” under its broadest reasonable interpretation, because they display message content and recipient identifying information separately. As shown, Figure 9A of Wren shows identifying information associated with the message (e.g., sender identification “Jane Doe” and time “9:30AM”), but does not display any of the movie message content. Conversely, Figure 9B shows the movie message content, but does not include any identifying information. Figures 9A and 9B thus disclose “a second plurality of reduced traceability displays.” Pet. 34–35 (emphases and footnotes omitted). Petitioner never mentions Namias when addressing the limitation at pages 33–36 of the Petition. The only portion of the Petition cited by Petitioner in the Reply for the argument is pages 21–22, which pertain to Petitioner’s asserted motivation to combine the cited references. See Reply 12. In that section, Petitioner does not address how the absence of text in Namias would impact Wren. See Pet. 21–23. Moreover, even if Petitioner could now rely on a combination of Wren and Namias for the “second plurality of reduced traceability displays via the recipient user device” limitation, Petitioner never argued in the Petition that the proposed modified system would not support text (with video) in a message. See Sur-Reply 17–18.” slip op. at 33

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Upon review of all of the evidence, we find that Patent Owner’s declarant, Dr. Almeroth, articulates the more compelling position with respect to “New Movie.” See Ex. 2009 ¶¶ 75–86. Dr. Almeroth points out the speculative nature of Petitioner’s arguments, explains the deficiencies in Petitioner’s reading of Wren’s “one-touch” message disclosure, and explains in detail why Petitioner’s view that “New Movie” is not message content is unfounded, in particular with reference to Figure 9C. See id. We credit Dr. Almeroth’s testimony on this issue and find it more persuasive than the testimony of Dr. Chatterjee, for all of the reasons explained above.” slip op. at 29

  Patent outcomesUS 9,413,711 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,413,711
• Snap Inc. v. Vaporstream, Inc.No claims unpatentable
  PTAB · Aug 1, 2019 · IPR2018-00416 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 4–6, 11, 13, 15, and 16 were not shown unpatentable under § 103 because the asserted combinations did not teach the claimed recipient displays.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Ultimately, it is Petitioner’s burden to prove unpatentability by a preponderance of the evidence, which includes in this instance proving that a person of ordinary skill in the art would have understood Wren to teach “provid[ing] a second plurality of reduced traceability displays via the recipient user device.” See 35 U.S.C. § 316(e); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (emphasis added; citation omitted); see also Magnum Oil, 829 F.3d at 1376 (“Where, as here, the only question presented is whether [claims would have been obvious], no burden shifts from the patent challenger to the patentee,” and “[t]his is especially true” when the issues are “what the prior art discloses, whether there would have been a motivation to combine the prior art, and whether that combination would render the patented claims obvious.”). “Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Dynamic Drinkware, 800 F.3d at 1378–79 (quoting Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). Petitioner argues that Figures 9A and 9B of Wren constitute “reduced traceability displays” because “New Movie” in Figure 9A is not message content and Wren thus displays header information and message content separately, citing the very limited disclosure of Wren regarding those displays and the testimony of Dr. Chatterjee as to what a person of ordinary skill in the art allegedly would have inferred from that disclosure. In response, Patent Owner provides persuasive evidence to the contrary that a person of ordinary skill in the art would have understood “New Movie” to be sent by the sending device to the recipient device as part of the message, or at the very least, that Wren is ambiguous on the point such that there is no basis to draw the inference advocated by Petitioner. Based on the record presented, we agree with Patent Owner and are not persuaded that there is sufficient evidence to establish that Wren teaches providing a “second plurality of reduced traceability displays via the recipient user device.”” slip op. at 31

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Upon review of all of the evidence, we find that Patent Owner’s declarant, Dr. Almeroth, articulates the more compelling position with respect to “New Movie.” See Ex. 2009 ¶¶ 75–86. Dr. Almeroth points out the speculative nature of Petitioner’s arguments, explains the deficiencies in Petitioner’s reading of Wren’s “one-touch” message disclosure, and explains in detail why Petitioner’s view that “New Movie” is not message content is unfounded, in particular with reference to Figure 9C. See id. We credit Dr. Almeroth’s testimony on this issue and find it more persuasive than the testimony of Dr. Chatterjee, for all of the reasons explained above.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that presentation of this theory in the Reply is improper because it was not raised adequately in the Petition. See Sur-Reply 17–18. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”); Trial Practice Guide Update (Aug. 2018), 14–15, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf (“‘[R]espond,’ in the context of § 42.23(b), does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). As explained above, Petitioner in its Petition relies solely on Wren as allegedly teaching the “provid[ing] a second plurality of reduced traceability displays via the recipient user device” limitation of claim 1. See Pet. 33–36 (arguing that the limitation is disclosed by Wren). Petitioner clearly explained its position as follows: Figures 9A and 9B from Wren together qualify as the second “plurality of reduced traceability displays,” under its broadest reasonable interpretation, because they display message content and recipient identifying information separately. As shown, Figure 9A of Wren shows identifying information associated with the message (e.g., sender identification “Jane Doe” and time “9:30AM”), but does not display any of the movie message content. Conversely, Figure 9B shows the movie message content, but does not include any identifying information. Figures 9A and 9B thus disclose “a second plurality of reduced traceability displays.” Pet. 34–35 (emphases and footnotes omitted). Petitioner never mentions Namias when addressing the limitation at pages 33–36 of the Petition. The only portion of the Petition cited by Petitioner in the Reply for the argument is pages 21–22, which pertain to Petitioner’s asserted motivation to combine the cited references. See Reply 12. In that section, Petitioner does not address how the absence of text in Namias would impact Wren. See Pet. 21–23. Moreover, even if Petitioner could now rely on a combination of Wren and Namias for the “second plurality of reduced traceability displays via the recipient user device” limitation, Petitioner never argued in the Petition that the proposed modified system would not support text (with video) in a message. See Sur-Reply 17–18.” slip op. at 33

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Motion to Amend In its Motion to Amend in IPR2018-00439, Patent Owner proposes substitute claim 50 for claim 13 “only if the Board concludes that claim 13 is unpatentable.” Mot. 1. As explained herein, we do not determine that claim 13 is unpatentable and, therefore, dismiss the Motion to Amend as moot.” slip op. at 36

  Patent outcomesUS 9,413,711 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,413,711
• Snap Inc. v. Vaporstream, Inc.All claims unpatentable
  PTAB · Jun 28, 2019 · IPR2018-00369 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–6 and 9 are unpatentable under § 103; the Board did not reach alternative grounds for claims 2 and 3.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 software engineering, computer science, or computer engineering with at least two years of experience in the design and implementation of systems for sending and receiving messages over a communications network, such as the Internet (or equivalent degree or experience).” Pet. 5 (citing Ex. 1002 ¶¶ 13–16). Patent Owner’s declarant, Dr. Almeroth, “generally agree[s]” with Petitioner’s characterization of the person of ordinary skill with the caveat “that such a person of ordinary skill would also have a working knowledge of design principles for software user interfaces. Such knowledge often would be learned in an undergraduate course in Human Computer Interaction (HCI).” Ex. 2009 ¶ 21; see also Ex. 2001 ¶ 14 (Patent Owner’s previous declarant, Dr. Shamos, generally agreeing with Petitioner’s description of one of ordinary skill). We agree, as the ’155 patent discusses the design of an interface that purports to reduce the traceability of electronic messages. See, e.g., Ex. 1001, 1:66–3:3. In the Institution Decision, we adopted Petitioner’s proposed description of the person of ordinary skill in the art. Inst. Dec. 11. Based on the record developed during trial, including our review of the ’155 patent and the types of problems and solutions described in the ’155 patent and the cited prior art, we agree with and adopt Petitioner’s description of the person of ordinary skill in the art, with the caveat that such an individual would have had a working knowledge of design principles for software user interfaces, which may be achieved via study of human-computer interaction (HCI).” slip op. at 11

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

    “We did not construe “reduced traceability displays” in our Institution Decision. See Inst. Dec. 9–10. In the Institution Decision in related Case IPR2018-00408, we adopted the district court’s construction for this phrase. See Snap Inc. v. Vaporstream, Inc., Case IPR2018-00408, slip op. at 8–9 (PTAB July 10, 2018) (Paper 10). In that proceeding, the parties did not dispute our preliminary interpretation of “reduced traceability displays,” and we do not perceive any reason or evidence that compels any deviation from that interpretation in this proceeding. See PO Resp. 24–25 (referencing the construction in IPR2018-00408). We, thus, adopt the district court’s interpretation of “reduced traceability displays” as the broadest reasonable interpretation in light of specification of the ’155 patent—namely, “an arrangement of displays that enables reduced traceability of electronic messages (e.g., by separately displaying identifying information and message content).”” slip op. at 13

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

    “We are not persuaded by Patent Owner’s argument that one of ordinary skill in the art would not have selected Namias’s multi-screen interface over Stevenson’s integrated interface. Under Federal Circuit precedent, obviousness “does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (citing Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Here, we are presented with persuasive evidence from Dr. Chatterjee showing that one of ordinary skill in the art would have looked to Namias to design a video messaging system that was easy to use. Dr. Chatterjee’s opinion is supported by a 1997 reference book, Mandel (Ex. 1054), discussing the elements of user interface design. See Ex. 1049 ¶ 13 (citing Ex. 1054). Indeed, Mandel indicates that wizard-type layouts (like the one disclosed in Namias) are useful because “[i]t is better to have a greater number of simple pages with fewer choices than a smaller number of complex pages with too many options or text.” Ex. 1054, 341 (cited at Ex. 1049 ¶ 13). Further, as Patent Owner’s declarant, Dr. Almeroth, noted, a person of ordinary skill in the art would be versed in user interface design and may have taken undergraduate courses in human-computer interaction (HCI). Ex. 2009 ¶ 21. Thus, Mandel with its focus on “Foundations of User Interface Design,” including “understanding . . . how humans read, learn, and think to help design computers that work within the psychological capabilities and limitations of the people for whom they are designed,” would be indicative of the knowledge of a person of ordinary skill at the time of the invention of the ’155 patent. See Ex. 1054, Cover, xv (emphases omitted).” slip op. at 28

  • ExcludeOther

    “PATENT OWNER’S MOTION TO EXCLUDE Patent Owner filed a Motion to Exclude Exhibits 1056 and 1057 as lacking authentication as required by Federal Rule of Evidence 901. Paper 32, 1–2. Exhibits 1056 and 1057 are cited in Dr. Chatterjee’s Reply Declaration. Ex. 1049 ¶ 16. We need not determine the admissibility of Exhibits 1056 and 1057 because we do not rely on them in making our determinations here. Thus, Patent Owner’s Motion is moot. IV.” slip op. at 59

  Patent outcomesUS 9,313,155 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,313,155
• Talari Networks, Inc. v. Fatpipe Private Networks LimitedRehearing denied
  PTAB · Mar 15, 2019 · IPR2016-00976 · APJ Stacey G White · IPR · Rehearing

  The Board denied Talari’s rehearing request, leaving in place its determination that claim 19 was not proven unpatentable over Karol.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting rehearing of a decision, the challenging party must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the record. Id. We have considered Petitioner’s Request, but for reasons that follow, we decline to modify our Decision. slip op. at 2

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

    “relevant part, “wherein the step of sending a packet to the controller site interface is repeated as multiple packets are sent, and the controller sends different packets of a given message to different parallel networks.” In the Decision, we found that Petitioner did not establish that Karol disclosed sending different packets of a given message to different parallel networks. Dec. 37. Petitioner contends that we “overlooked the teachings of the ’235 patent regarding a ‘message,’ misinterpreted the scope of claim 19, and misapprehended [Petitioner’s] argument regarding Karol, in finding that Karol does not also anticipate or render obvious claim 19.” Req. Reh’g 1. According to Petitioner, our analysis as to Karol’s usage of the terms “packet,” “datagram,” and “message” was in error because we misapprehended the meaning of a message in the context of the ’235 patent. Id. at 1–2. All of Petitioner’s arguments are premised on its assertion that a session is an example of a message. See generally id. For reasons stated below, we disagree with Petitioner’s assertion and thus, we are not persuaded of error as to claim 19.” slip op. at 2

  § 103 obviousness
  Patents in suitUS 6,775,235
• Talari Networks, Inc. v. Fatpipe Networks Private LimitedRehearing denied
  PTAB · Mar 15, 2019 · IPR2016-00976 · APJ Stacey G White · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and maintained its determination that claims 4 and 9 would have been obvious over Karol.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting rehearing of a decision, the challenging party must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the record. Id. We have considered Patent Owner’s Request and for reasons that follow, we clarify our reasoning in the Decision regarding the unpatentability of claims 4 and 9 and we maintain our determination that Petitioner established by a preponderance of the evidence the unpatentability of claims 4 and 9. slip op. at 2

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

    “Thus, we were tasked with looking to see if the assertion of knowledge and common sense of the person of ordinary skill was supported with “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by our reviewing court. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). In support of his opinion that per-packet routing was within the knowledge of one of ordinary skill, Dr. Negus discusses the passage in question. Id. ¶ 192. Specifically, he argues that the ’235 patent admits that routing on a per-packet basis was known at the time of the patent’s invention. Id. He testified that “routing decisions that are based entirely upon the origin (for example, source address) of the packet independent of the particular flows or sessions that particular packets from such an origin are associated with (see, for example, Ex. 1001 at 4:15–23)” were discussed in the ’235 patent. Id. As further evidence of the knowledge of a person of ordinary skill he also cited “Stallings, a common reference textbook on data and computer communications, [that] describes ‘source routing’ whereby the ‘source station specifies the route by including a sequential list of routers in the datagram’ (see, for example, Ex. 1011 at p. 539).” Id. ¶ 1.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for petitioner
  • Expert testimonyPetitioner expert creditedDecided for petitioner
  § 103 obviousnesscites KSR
  Patents in suitUS 6,775,235

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.