• Cisco Systems, Inc. v. K.Mizra LLCAll claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00594 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–7 and 9–18 are unpatentable as obvious over Shull, Farnham, and Mui; claim 5 is also unpatentable over those references and Adelman.

  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 “a bachelor’s degree in electrical engineering[,] computer engineering[,] or equivalent and two years of professional experience relating to computer networking systems that provide content filtering,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 17–19). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. PO Resp. 3. We determine that the level of ordinary skill proposed by Petitioner is consistent with the ’892 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We adopt that level in deciding the patentability of the challenged claims.” slip op. at 8

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

    “construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take 1315–17. Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party contends that any claim term requires construction. Pet. 12; PO Resp. 3. We determine that we do not need to expressly construe any terms to decide the issues in this proceeding.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “webpages were publicly accessible. Instead, Dr. Medvidovic testifies that “something like crawling MySpace was not possible until sometime in the second half of 2008,” i.e., much later than the time of the invention. Ex. 1040, 63:21–64:6. In view of the Internet Archive records as well as Mr. Nathaniel E. Frank-White’s testimony, discussed above, we do not find Dr. Medvidovic’s testimony credible. Moreover, Dr. Medvidovic testifies that the Internet Archive “does a certain kind of crawl over publicly accessible websites that allow that kind of crawling” (Ex. 1040, 65:3–6), thus, further supporting that the Internet Archive’s MySpace page captures from 2006 (Ex. 1011) demonstrate automated public accessibility of MySpace at that time. See In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“[o]bviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success” (quoting In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)).” slip op. at 29

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

    “skilled artisan would have had reason to combine the teachings of Shull and Farnham. Pet. 23–28. Although Shull does not specifically disclose social networking websites, like MySpace, as a source of potential data, Shull seeks to “bring massive amounts of data together . . . for the development of a reputational database,” and teaches obtaining data from numerous sources on the Internet, including “from enabling parties (such as ISPs, registrars, hosting providers, certificate authorities, etc.).” Ex. 1005 ¶¶ 40, 47, 68–69. We are persuaded that an ordinarily skilled artisan would have considered MySpace to be a data source for Shull’s system. For example, Shull defines “enabling party” as “any party that provides services facilitating an entity’s presence on the Internet.” Ex. 1005 ¶ 42 (emphasis added). Petitioner provides persuasive evidence that the MySpace platform did just that. Pet. 24–25 (citing Ex. 1011; Ex. 1003 ¶ 52) (explaining with an example how MySpace facilitates musical artist KanYe West’s presence on the internet and documents “data regarding friends, groups, etc., associated with KanYe West”); Pet. Reply 16 (citing Ex.1010, 1; Ex. 2014, 22:14–23:23). without limitation, registrars . . . and/or registries . . . , hosting providers . . . , ISPs . . . , DNS providers . . . , certificate authorities 145d, and/or the like.” Ex. 1005 ¶ 42 (emphasis added). Shull further explains that “[d]ata about and/or from these parties can include data compiled and/or maintained by these providers about their customers, . . . historical behavior of customers of a given provider, etc.” Id. Farnham discloses that MySpace makes similar data about its members publicly available. Farnham discloses the types of data available on MySpace groups, including comments posted by MySpace members. Ex. 1021, 119, 122–23, 126; Pet. 37–38. Dr. Reddy testifies that a person of ordinary skill in the art would have found MySpace’s relationship data as well as activity data useful in “identify[ing] relationships (e.g., friendships, group memberships, and related domains) and also to identify a person’s activity and associated content (e.g., comments, messages, blogs, etc.) that may directly impact the reputation score for the person and the web page.” Ex. 1003 ¶ 57. We credit Dr. Reddy’s testimony because it is consistent with Shull and Farnham’s disclosure.” slip op. at 25

  Patent outcomesUS 8,965,892 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,965,892
• ROKU, Inc. v. Universal Electronics, Inc.All claims unpatentable
  PTAB · Jul 5, 2022 · IPR2021-00261 · APJ Minn Chung · IPR · Final written decision

  Claims 3, 5, 6, and 18–20 were held unpatentable; claims 1, 2, and 4 were cancelled, and substitute claims 21–23 were denied for inadequate written-description support.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that the parties’ proposals are not materially different despite minor differences in wording between them (e.g., “at least two years” of “industry experience, including in consumer electronics, graphical user interfaces, cable or satellite television systems, set-top boxes, multimedia systems, or programmable remote controls” under Petitioner’s proposal, as opposed to “two years” of “work experience relating to communications or consumer electronics” under Patent Owner’s proposed definition). See Pet. 15; MTA 8; RMTA 15. For purposes of this Final Written Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. These proposals are similar for all purposes relevant to this Final Written Decision, and both are consistent with the level of ordinary skill in the art reflected in the disclosure of the ’514 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Nonetheless, for this Final Written Decision, we adopt Patent Owner’s definition of a person of ordinary skill in the art at the time of the claimed invention. Our analysis and conclusions in this Final Written Decision would be the same regardless of whether Petitioner’s or Patent Owner’s definition of the level of ordinary skill in the art is adopted.” slip op. at 13

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

    “Petitioner states that no construction is necessary in this proceeding. Pet. 15. Based on the full record, for purposes of this Final Written Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “contends, citing the testimony of Mr. Tinsman, that a person of ordinary skill in the art would have been motivated to combine Seidel with Caris because Seidel suggests using remote control key presses to initiate the remote control programming process and a person of ordinary skill in the art would have looked to Caris for its explicit description of a remote control with a “dedicated button” used to initiate a remote control set-up process. Pet. 20– 21 (citing Ex. 1003 ¶¶ 119–126; Ex. 1005, 12:30–35, 12:67–13:2, 13:48–64; Ex. 1006, 5:17–24, 5:47–6:3). Petitioner further contends that a person of ordinary skill in the art would have recognized that implementing the dedicated button would have provided the user with a simple and efficient way to initiate the remote control programming process. Id. at 22 (citing Ex. 1003 ¶ 123). According to Petitioner, combining Caris’s dedicated button with Seidel would have furthered “Seidel’s express goals of facilitating the ease of programming and minimizing user frustration” and “enabling the set-top control unit 110 to ‘interact with the user to improve the accuracy, efficiency and/or simplicity of detecting the particular mode code.’” Id. (citing Ex. 1005, 3:54–58, 13:48–50; Ex. 1003 ¶ 123). In addition, Petitioner asserts that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Seidel with Caris because “[b]oth Seidel and Caris use common and similar remote controls to perform similar operations.” Pet. 21 (citing Ex. 1003 ¶¶ 124– 126). Petitioner further argues that it would have been obvious to combine Caris’s remote control having a dedicated button with Seidel because “combining Seidel with Caris would have resulted in merely combining known elements to yield predictable results.” Id. at 22 (citing Ex. 1003 ¶¶ 124–126). Based on the complete record and for the reasons explained by Petitioner, we find that Petitioner has demonstrated sufficiently the combination of Seidel and Caris teaches all recitations of claim 3. We also find that Petitioner articulates sufficient rationale for combining the respective teachings of Seidel and Caris in the manner proposed by Petitioner to arrive at the subject matter recited in claim 3. Having weighed each of the Graham factors, including the scope and content of the prior art and the differences between the prior art and the challenged claim, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 3 is unpatentable under 35 U.S.C. § 103(a) over the combination of Seidel and Caris.” slip op. at 27

  • Expert testimonyOther

    “Based on the complete record and for the reasons explained by Petitioner, we find that Petitioner has demonstrated sufficiently the combination of Seidel and Caris teaches all recitations of claim 3. We also find that Petitioner articulates sufficient rationale for combining the respective teachings of Seidel and Caris in the manner proposed by Petitioner to arrive at the subject matter recited in claim 3. Having weighed each of the Graham factors, including the scope and content of the prior art and the differences between the prior art and the challenged claim, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 3 is unpatentable under 35 U.S.C. § 103(a) over the combination of Seidel and Caris.” slip op. at 28

  Patent outcomesUS 7,969,514 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,969,514
• Bytedance Ltd. / Tiktok Inc. v. Triller, Inc.All claims unpatentable
  PTAB · Apr 19, 2022 · IPR2021-00099 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Beauregard and Hozumi; the other asserted anticipation and obviousness grounds were not shown.

  RulingsFinal written decision

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

    “synchronizing . . . from a first beginning, the selected audio track at substantially the same time as a second beginning of capturing each video take of the plurality of video takes.” Patent Owner characterizes this term and the “beginning-beginning synchronization requirement.” PO Resp. 24 (emphasis omitted). Petitioner argues that this element “does not require ‘a first beginning’ and ‘a second beginning’ to be at the beginning of the audio track, but rather are a matching point between the audio track and the video clip.” Pet. 17. Patent Owner agrees with what was preliminarily determined in the Institution Decision, i.e., the “beginning-beginning requirement means that the ‘beginning’ of the audio track and the video take occur at the same time.” PO Resp. 18 (citing Inst. Dec. 19 (citing Ex. 1001, 26:63–67, Figs. 6A–6C, Fig. 7A). Thus, according to Patent Owner “the audio track must be playing while the video take is being captured.” Id. at 12 (citing Ex. 2009 ¶ 30). Petitioner argues that applying the plain meaning or Patent Owner’s proposed construction does not change the result and construction is not (Fed. Cir. 2011) (“claim terms need only be construed to the extent necessary to resolve the controversy.”)). We agree with Petitioner, and because applying either the plain and ordinary meaning or Patent Owner’s proposal, which we find is consistent with the plain and ordinary meaning, does not affect our final decision below, no express construction of this term is necessary. The third appearance is for “synchronized” and recites “at least two video takes of the plurality of video takes synchronized with the selected audio track.” Neither party argues any construction for this appearance and we apply the plain and ordinary meaning of “synchronized” as it appears in limitation 1.4. slip op. at 12

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

    “Consistent with the preceding, nothing in the Specification precludes a “video take” from being the same as or including a “video clip” or other piece of video. The Specification states that “each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track.” Ex. 1001, 10:24–26 (“each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track”). A “video take” is described as “a plurality of captured video takes synchronized to a selected audio track.” Id. at 11:4–6. Based on this, we find that a person or ordinary skill would have understood the Specification as describing a “video take” as sometimes the equivalent video clip or segment of video. See Ex. 1001, 10:24–26. We agree with Patent Owner that a “video take” is a continuous recording. Petitioner agreed during the ’663 Lawsuit claim construction process that a video take is “continuous.” PO Resp. 14–15 (citing Ex. 2011,6 8 (“agree any stoppages of recording (e.g., pausing) and restarting is not allowed”); Ex. 2012,7 4). Accordingly, we determine that “video take”” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Person of Ordinary Skill in the Art Petitioner alleges: A person of ordinary skill in the art as of the Critical Date of the ’429 Patent (“POSITA”) would have been a person with a working knowledge of digital video and audio technologies. The person would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. TIKTOK-1003, ¶12. Alternatively, the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Id. Pet. 6. Patent Owner does not comment on Petitioner’s proposal or propose an alternative. On this record, we adopt Petitioner’s proposed description of a person of ordinary skill, which is consistent with the disclosure in the ’429 patent and the cited prior art.” slip op. at 16

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

    “As to the reasons supporting the combination, Patent Owner focuses narrowly on the users of the Beauregard system and not what a person of ordinary skill in the art would have understood from the combination of Beauregard and Hozumi. Patent Owner cites no authority for its argument that a lack of “coordination and communication” between Beauregard’s users is required for a person of ordinary skill in the art to have had reason to make the proposed combination. Cf. In re Etter, 756 F.2d 852, 859–60 (Fed. Cir. 1985) (Patent Owner’s arguments regarding use are “basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the stated in the Shamos Declaration are unsupported by facts and thus entitled to little or no weight. See Ex. 2009 ¶ 115; 37 C.F.R. § 42.65(a). Although the references being in the same field of art is not conclusively a reason for a person of ordinary skill to make the combination, it is a factor. KSR, 550 U.S. 401 (“When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.”). As for Patent Owner’s argument about hindsight reasoning (PO Resp. 69), “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, Petitioner provides persuasive evidence that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Hozumi with Beauregard based on the disclosures of Hozumi and Beauregard and the evidence of the knowledge of a person of ordinary skill in the art at the time of the ’429 patent’s filing date. See, e.g., Pet. 53–56; Ex. 1003 ¶¶ 80–82. This is not evidence of hindsight bias. Patent Owner does not identify, and we do not discern, any particular knowledge used by Petitioner in its combination of Beauregard and Hozumi that was gleaned only from the ’429 patent’s disclosure and was not within the level of ordinary skill in the art at the time of the invention. and motivation for combining the teachings of Hozumi with Beauregard is sufficient. See Pet. 53–56.” slip op. at 37

  Patent outcomesUS 9,691,429 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,691,429
• Unified Patents, LLC v. Oceana Innovations LLCAll claims unpatentable
  PTAB · Feb 14, 2022 · IPR2020-01463 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–5 are unpatentable: claims 1–3 are anticipated by Jones, and claims 1–5 are obvious over the combinations stated in the grounds.

  RulingsFinal written decision

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

    “angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees,” i.e., pointing in opposite directions. See Pet. 28. First, the claim language supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” Claim 1 requires that “said third sides are substantially perpendicular to said first side.” Ex. 1001, 6:2–3. Claim 2 depends from claim 1 and requires that “said fifth sides are respectively and substantially perpendicular to said third sides.” Id. at 6:6–8. Thus, claim 2 defines an assembly with (1) third sides “substantially perpendicular” to the first side, i.e., third sides arranged about 90 degrees relative to the first side, and (2) fifth sides “substantially perpendicular” to respective third sides, i.e., fifth sides arranged about 90 degrees relative to respective third sides. In that assembly, the fifth sides are arranged about 180 degrees relative to the first side, and the fifth sides are “angled at 180 degrees” relative to each other. A dependent claim should narrow a base claim by containing a reference to the base claim and “then specify[ing] a further limitation of the subject matter claimed.” 35 U.S.C. § 112 ¶ 4 (2006); see Myco Indus., Inc. v. BlephEx, LLC, 955 F.3d 1, 14 (Fed. Cir. 2020). So if narrower claim 2 encompasses an assembly with fifth sides “angled at 180 degrees” relative to each other, then broader claim 1 also encompasses such an assembly. As an example, claim 1 covers an arrangement where the fifth side on the left has a slight inclination clockwise from horizontal (⸜) and the fifth side on the right has a slight inclination counterclockwise from horizontal (⸝), such that the sides angle upwardly (⸜ ⸝) relative to a centerline. As another example, claim 1 covers an arrangement where the fifth side on the left has a slight inclination counterclockwise from horizontal (⸝) and the fifth side on the right has a slight inclination clockwise from horizontal (⸜), such that the sides angle downwardly (⸝ ⸜) relative to a centerline. Patent Owner does not dispute that claim 1 covers these example arrangements. See Resp. 10–16; see also id. at 47–48, 50–51. Based on the claim language, claim 1 also covers an arrangement intermediate between these example arrangements where the fifth side on the left has no inclination from horizontal (–) and the fifth side on the right has no inclination from horizontal (–), such that the sides point in opposite directions (– –), i.e., the sides are “angled at 180 degrees” relative to each other. Second, the ’678 patent’s specification supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” See Ex. 1001, 3:66–4:19, Figs. 9–10. When describing the receptacle and the complementary plug depicted in Figures 9 and 10, the patent states that “[t]he third sides 373 (483) are substantially perpendicular to the first side 371 (481).” Id. at 4:14–16. The patent also states that “[t]he fifth sides 375, (485) are respectively and substantially perpendicular to the third sides 373 (483).” Id. at 4:18–19. Hence, similar to claim 2, Figures 9 and 10 depict an assembly with (1) third sides “substantially perpendicular” to the first side, i.e., third sides arranged about 90 degrees relative to the first side, and (2) fifth sides “substantially perpendicular” to respective third sides, i.e., fifth sides arranged about 90 degrees relative to respective third sides. Ex. 1001, 4:14–19, Figs. 9–10. In that assembly, the fifth sides are arranged about 180 degrees relative to the first side, and the fifth sides are “angled at 180 degrees” relative to each other. Id. at 4:14–19, Figs. 9–10. Further, when describing the receptacle and the complementary plug depicted in Figures 9 and 10, the ’678 patent states that “[t]he fifth sides 375 (485) are angled away from each other while extending from the fourth sides 374 (484) to the third sides 373 (483).” Ex. 1001, 4:11–13, code (57). Thus, the patent uses “angled away” to encompass “angled at 180 degrees,” i.e., pointing in opposite directions. Third, the ’678 patent’s prosecution history supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” See Ex. 1004, 17, 41–48, 144–51, 153–58; see also Ex. 1010, 2:52–54, 2:66–3:14, 3:46–4:31, Fig. 1. Application claim 1 became patent claim 1. Ex. 1004, 241. As filed, application claim 1 recited “said fifth sides being angled away from each other while extending from said fourth sides to said third sides.” Id. at 17. In the first Office action, the Examiner rejected application claims 1–3 and 7 as anticipated by Nishio. Ex. 1004, 42–44, 48, 144–51. In rejecting application claim 1, the Examiner found that Nishio discloses an assembly with “fifth sides being angled away from each other while extending from the fourth sides to the third sides.” Id. at 43, 145. As explained below, Nishio discloses an assembly with fifth sides “angled at 180 degrees” relative to each other. See Ex. 1010, 2:52–54, 2:66–3:14, 3:46–4:31, Fig. 1; infra § III.G.2(l). Petitioner provides an annotated excerpt from Nishio’s Figure 1 (reproduced below) depicting an assembly with fifth sides “angled at 180 degrees” relative to each other (Pet. 30): Figure 1 is “an exploded perspective drawing of an electrical connector” with “a section cut away.” Ex. 1010, 2:52–54, Fig. 1. The above annotated excerpt from Figure 1 includes two green lines denoting two fifth sides, and the two green lines are “angled at 180 degrees” relative to each other. See Pet. 30. The Applicant did not dispute the Examiner’s finding that Nishio” slip op. at 18

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

    “3. OTHER CLAIM TERMS We determine that no other claim terms require explicit constructions” slip op. at 24

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

    “2. INDEPENDENT CLAIM 1 (a) Preamble [1a] Claim 1’s preamble recites “[a]n electrical connector assembly.” Ex. 1001, 5:9. Petitioner contends that Jones discloses claim 1’s preamble because Jones discloses “a series of electrical connector assemblies each . . . comprising a socket and a corresponding plug.” Pet. 31 (alteration by Petitioner) (quoting Ex. 1007, 1:43–45). Patent Owner makes no arguments specific to claim 1’s preamble. See Resp. 16–28. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 29

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Alleged Objective Indicia of Nonobviousness (i) Background Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharm. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by showing that the objective evidence resulted directly from “the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373–74; see In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Thus, the Board employs a two-step analysis in evaluating whether a patentee has established a nexus between the evidence concerning objective indicia of nonobviousness and the merits of the claimed invention. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 32–33 (PTAB Jan. 24, 2020) (precedential). Initially, the Board considers whether the patentee has demonstrated that the “products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. Absent a presumption of nexus, the Board considers whether the patentee has demonstrated “a legally and factually sufficient connection” between the evidence and the claimed invention. See Henny Penny, 938 F.3d at 1332; Lectrosonics, IPR2018-01129, Paper 33 at 33.” slip op. at 81

  Patent outcomesUS 6,508,678 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,508,678
• Microsoft Corporation v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Oct 22, 2020 · IPR2019-00837 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–4, 14–19, 26, and 36–44 are unpatentable as obvious over Kiss and FIPA97, with some claims also challenged over Cohen.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Petitioner’s declarant, Dr. Lieberman, opines that a person of ordinary been someone familiar with the principles and conventions of computer science and computer networking, and also with multi-agent systems and inter-agent communication languages as documented in agent-centered literature by 1999. Ex. 1050 ¶ 32; see Pet. 5 (citing Ex. 1050 ¶ 32). Dr. Lieberman also testifies that a person of ordinary skill in the art may have been a graduate student in mathematics, engineering, or computer science, and may have had an advanced degree in one of these disciplines, and would also have had at least two years of experience working in the field of computer science, or a related field, and may have worked in academia, either as a professor or a graduate student, for a technology company, or for a government. Ex. 1050 ¶ 32. Citing the testimony of its declarant, Dr. Medvidovic, Patent Owner asserts that a person of ordinary skill in the art at the time of the ’560 patent’s effective filing date would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” PO Resp. 28 (citing Ex. 2032 ¶ 41). Patent Owner criticizes Petitioner’s articulation of the level of ordinary skill in the art as being “vague and uncertain” due to Petitioner’s and Dr. Lieberman’s use of the word “may” in their proposed definition. Id. at 28–29. Patent Owner contends that Petitioner’s proposed definition “leav[es] every aspect of the level of skill ‘fluid,’” which is “particularly problematic here, where Petitioner claims that it would have been obvious to create an agent system that is very complex and advanced in its facilitation, goal processing, and inter-agent communication capacities.” Id. at 29 (citing Ex. 2032 ¶ 44). alternatives—i.e., that a Skilled Artisan would have been at least a graduate student in several relevant fields, and would have had at least two years of work experience in those fields.” Pet. Reply 12; see Pet. 5. Petitioner also argues that Patent Owner does not articulate how any differences between the parties’ proposals that would alter or even affect the outcome of this proceeding. Pet. Reply 12. Patent Owner asserts that it has “identified how the difference between the proposals would affect this proceeding” because Patent Owner has pointed out that “it is Petitioner’s burden under the law to address each Graham factor and Petitioner has failed to proffer a coherent level of ordinary skill in the art, [and] Petitioner’s obviousness assertion fails for that reason alone.” PO Sur-reply 16–17 (citing PO Resp. 29).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner

    “1. “goal satisfaction plan” The claim term “goal satisfaction plan” is recited in challenged independent claims 1 and 26 of the ’560 patent. Ex. 1001, 30:7–15 (claim 1), 32:43–51 (claim 26). It is also recited in independent claim 50 of the ’560 patent, not challenged in this proceeding. Id. at 35:1–10. Petitioner contends that a “goal satisfaction plan” is a “procedure for sending one or more requests for service to one or more agents in order to satisfy a goal.” Pet. 9. Patent Owner disagrees and asserts that the claim term “goal a complex goal expression in an optimal or near-optimal manner that is consistent with any advice parameters or constraints.” PO Resp. 32. a. Claim Language We begin our claim construction analysis by considering the language of the claims themselves. Phillips, 415 F.3d at 1314. Addressing the claim language of the disputed term, we note that the claim language “a goal satisfaction plan” indicates that the term’s plain meaning is “a plan for satisfying a goal.” In independent claims 1 and 26, the recited “goal satisfaction plan” is further constrained by specific limitations recited in the claims. Claim 1 recites: a facilitating engine . . . further operable for generating a goal satisfaction plan associated with the base goal, wherein the goal satisfaction plan involves: using reasoning to determine sub-goal requests based on non-syntactic decomposition of the base goal and using said reasoning to co-ordinate and schedule efforts by the service-providing electronic agents for fulfilling the sub-goal requests in a cooperative completion of the base goal.” slip op. at 14

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

    “relevant public, exercising reasonable diligence, could have located FIPA 97 Version 1.0 in late 1997 on the FIPA website, housed at the time at http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Ex. 1049 ¶ 21; Ex. 1050 ¶ 146.” slip op. at 50

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

    “skill in the relevant field to combine the prior art teachings, Petitioner “must show some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. A reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)).” slip op. at 60

  Patent outcomesUS 7,069,560 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,069,560
• Microsoft Corporation v. Ipa Technologies, Inc.All claims unpatentable
  PTAB · Oct 15, 2020 · IPR2019-00813 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–3, 11, and 48–60 are unpatentable as obvious over Kiss and FIPA97; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “question is “vague, ambiguous, confusing, lacks foundation and calls for a legal conclusion.” Paper 35, 1. Patent Owner, however, does not explain adequately how the question is vague, ambiguous or confusing, other than to state that “Dr. Medvidovic[’s] testimony highlights the vague, ambiguous, and confusing nature of Microsoft’s question.” Id. at 2. Nor does Patent Owner explain adequately how the question lacks foundation or calls for a legal conclusion aside from pointing to Dr. Medvidovic’s response that “[t]his is a legal thing, not a technical thing” in reference to the term “preferred embodiment.” Id.” slip op. at 166

  • Skill levelSkill level board ownOther

    “description of a person of ordinary skill in the art at the time of the claimed invention. That is, a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” Our analysis and conclusions in this Final Written Decision would be the same regardless of whether Petitioner’s or Patent Owner’s description of the level of ordinary skill in the art is adopted.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, the challenged independent claims 1 and 29 do not recite all of the limiting features required by Patent Owner’s proposed construction of “goal satisfaction plan.” Thus, unless one of the established exceptions, such as lexicography or disavowal, applies, the challenged claims are not restricted as Patent Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal”) (citation omitted). Here, Patent Owner does not argue lexicography or disavowal. Nor does Patent Owner explain any other reason why the Specification limits “goal satisfaction plan” as it contends. Thus, claim construction in this case is governed by the general principle that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well established that claims are not limited to preferred embodiments, unless the specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly cautioned against limiting claims to a preferred embodiment.”))). Accordingly, none of the embodiments in the Specification cited by Patent Owner limits “goal satisfaction plan” as Patent Owner contends.” slip op. at 19

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

    “http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Id. ¶ 21; Ex. 1050 ¶ 146.” slip op. at 46

  Patent outcomesUS 6,851,115 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,851,115
• Intel Corporation v. VLSI Technology LLCAll claims unpatentable
  PTAB · Feb 4, 2020 · IPR2018-01035 · APJ Minn Chung · IPR · Final written decision

  Claims 1, 4, and 17 are unpatentable as anticipated by Schucker; claim 2 is unpatentable as obvious over Schucker and Maley.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “performed by the first and second circuits cancels out noise in the system or improve noise immunity, a “push/pull” function is not necessary to improve noise immunity or reduce noise in the system. Thus, to the extent improved noise immunity is a purpose of the invention, as Patent Owner argues, a “push/pull” function is not necessary to achieve that purpose. Accordingly, unlike Abbott Diabetes Care, Patent Owner’s argument here about the purpose of invention of the ’588 patent does not support a restrictive claim construction requiring a “push/pull” operation. In summary, none of the factors existing in Abbott Diabetes Care are present in this case. Thus, claim construction in this case is governed by the general principle that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well established that claims are not limited to preferred embodiments, unless the specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly cautioned against limiting claims to a preferred embodiment.”))). As discussed above, the Specification describes several embodiments that do not require a “push/pull” operation. Accordingly, based on the complete record and the foregoing discussion of the arguments and evidence presented by Petitioner and Patent Owner, we determine that the claim term “couples” recited in claim 1 does not require the isolation paths to operate in a “push/pull” configuration. Instead, we construe the claim term “couples” according to its plain meaning and determine that the term “couples”” slip op. at 64

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

    “arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated sufficiently that Schucker discloses all limitations recited in claim 1. Accordingly, based on the complete record, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Schucker.” slip op. at 66

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

    “instead only addresses its asserted ground based on Schucker and Maley. See Reply 22–25. Accordingly, based on the complete records, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, the subject matter of claim 2 would have been obvious under 35 U.S.C. § 103(a) over the combination of Schucker and the knowledge of a person of ordinary skill in the art.” slip op. at 86

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “E. Patent Owner’s Constitutionality Arguments Patent Owner contends cancelling claims in this proceeding would contravene the Appointments Clause of the U.S. Constitution as inter partes review is unconstitutional when conducted by administrative patent judges not nominated by the President and confirmed by the Senate. PO Resp. 61. Patent Owner also argues that “[t]he Constitution also forbids retroactive application of IPR to the Patent, which was filed before the Leahy-Smith America Invents Act (‘AIA’), Pub. L. No. 112-29, 125 Stat. 284 (2011) was enacted and issued before it took effect.” Id. at 61–62. We decline to consider these constitutional challenges as they have been addressed by the Federal Circuit in Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019) and Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). IV. CONCLUSION15 For the foregoing reasons, we conclude that Petitioner has met its” slip op. at 86

  Patent outcomesUS 7,268,588 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,268,588
• Google LLC v. Spring Ventures Ltd.All claims unpatentable
  PTAB · Jan 15, 2019 · IPR2017-01653 · APJ Scott E Bain · IPR · Final written decision

  Claims 1–16 are unpatentable under § 103 over the specified combinations of Belfiore, Koren, Sotomayor, Osaku, and Breese; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “2. Level of Skill in the Art Relying on the testimony of their respective experts, the parties agree that one of ordinary skill in the art would have had at least an undergraduate degree in computer science or software engineering, and two years of experience with interactive software applications such as web-oriented software or browsers. Pet. 13–14 (citing Ex. 1002 ¶ 11); PO Resp. 17 (citing Ex. 2005 ¶ 14). We adopt this assessment and apply it to the obviousness analysis below. Patent Owner further argues that a person whose experience constitutes “merely using” web browsers or search engines has less than the level of ordinary skill. PO Resp. 18. Patent Owner asserts that one of ordinary skill, therefore, necessarily should have experience actually “designing, writing, or implementing web based applications.” Id. Although we agree with Patent Owner’s premise that “merely using” the foregoing tools (e.g., as an Internet user) does not impart a level of ordinary skill in the art (and does not satisfy our finding in the preceding paragraph), we do not agree that Patent Owner’s conclusion follows that premise. As explained below in our discussion of Patent Owner’s Motion to Exclude Petitioner’s expert testimony, there are other ways of acquiring a level of ordinary skill in the art (and “experience” with interactive software applications) besides “designing, writing, or implementing web based applications,” as Patent Owner alleges. We, therefore, decline to adopt Patent Owner’s additional requirements for one of ordinary skill in the art.” slip op. at 15

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

    “In an obviousness analysis, prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art,” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994), and we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. A rationale to combine references also may be found within the references themselves. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1365 (Fed. Cir. 2006). Here, the references themselves provide ample rationale and motivation for the proffered combination. Both Belfiore and EchoSearch (Koren/Sotomayor) are directed to the common objective of text search and website retrieval on the Internet. Koren discloses that it was a “common frustration” in this field that “not every engine will return the same information.” Ex. 1022, 2. To get the best result, Koren explains, “you ha[d] to perform the same search using multiple search engines.” Id. EchoSearch, as Koren explains, solves that problem because it “can search in multiple engines simultaneously.” Id. Accordingly, one of ordinary skill, utilizing the Belfiore enhanced browser, would have recognized the benefits of incorporating the EchoSearch multiple-engine search functionality, as described in Koren and Sotomayor. Moreover, Koren, like Belfiore, expressly teaches the desirability of focusing the number of search results. Koren explains, “[i]f you’ve ever used a search engine on the World Wide Web, you know how frustrating it can be when your search yields numerous hits that don’t have anything to do with the topic or concept you’re searching for . . . EchoSearch 2.0 addresses this problem by limiting the amount of dross you have to wade through.” Ex. 1022, 2 (emphasis added). Thus, Koren teaches the desirability of limiting or focusing search results, not just expanding or diversifying the search area, as Patent Owner argues. Accordingly, we are not persuaded by Patent Owner’s argument (and testimony offered in support of that argument) that Koren teaches away from Belfiore, because the argument is contradicted by Koren itself. Similarly, we are unpersuaded by Patent Owner’s hindsight argument because the prior art references themselves, not the ’094 patent, provided one of ordinary skill in the art a rationale and motivation for combining their respective teachings in the manner asserted by Petitioner. We, therefore, find one of ordinary skill would have been motivated” slip op. at 31

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

    “Here, the references themselves provide ample rationale and motivation for the proffered combination. Both Belfiore and EchoSearch (Koren/Sotomayor) are directed to the common objective of text search and website retrieval on the Internet. Koren discloses that it was a “common frustration” in this field that “not every engine will return the same information.” Ex. 1022, 2. To get the best result, Koren explains, “you ha[d] to perform the same search using multiple search engines.” Id. EchoSearch, as Koren explains, solves that problem because it “can search in multiple engines simultaneously.” Id. Accordingly, one of ordinary skill, utilizing the Belfiore enhanced browser, would have recognized the benefits of incorporating the EchoSearch multiple-engine search functionality, as described in Koren and Sotomayor. Moreover, Koren, like Belfiore, expressly teaches the desirability of focusing the number of search results. Koren explains, “[i]f you’ve ever used a search engine on the World Wide Web, you know how frustrating it can be when your search yields numerous hits that don’t have anything to do with the topic or concept you’re searching for . . . EchoSearch 2.0 addresses this problem by limiting the amount of dross you have to wade through.” Ex. 1022, 2 (emphasis added). Thus, Koren teaches the desirability of limiting or focusing search results, not just expanding or diversifying the search area, as Patent Owner argues. Accordingly, we are not persuaded by Patent Owner’s argument (and testimony offered in support of that argument) that Koren teaches away from Belfiore, because the argument is contradicted by Koren itself. Similarly, we are unpersuaded by Patent Owner’s hindsight argument because the prior art references themselves, not the ’094 patent, provided one of ordinary skill in the art a rationale and motivation for combining their respective teachings in the manner asserted by Petitioner. We, therefore, find one of ordinary skill would have been motivated to combine the teachings of Belfiore with those of Koren/Sotomayor. One of ordinary skill in the art, for example, would have been motivated to incorporate Belfiore’s “redirect” feature (i.e., directly retrieve the top search result) into EchoSearch because a user would desire a redirect feature for multiple search engine results. Pet. 27 (citing Ex. 1002 ¶ 48). In addition, one of ordinary skill in the art would have been motivated to incorporate the advanced interface of EchoSearch, which utilized multiple search engines, into Belfiore’s “intelligent searching” invention because a user would want to focus its search results, yet at the same time ensure no loss in redirect functionality. Pet. 27 (citing Ex. 1022; Ex. 1002 ¶ 49).” slip op. at 31

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

    “Here, the references themselves provide ample rationale and motivation for the proffered combination. Both Belfiore and EchoSearch (Koren/Sotomayor) are directed to the common objective of text search and website retrieval on the Internet. Koren discloses that it was a “common frustration” in this field that “not every engine will return the same information.” Ex. 1022, 2. To get the best result, Koren explains, “you ha[d] to perform the same search using multiple search engines.” Id. EchoSearch, as Koren explains, solves that problem because it “can search in multiple engines simultaneously.” Id. Accordingly, one of ordinary skill, utilizing the Belfiore enhanced browser, would have recognized the benefits of incorporating the EchoSearch multiple-engine search functionality, as described in Koren and Sotomayor. Moreover, Koren, like Belfiore, expressly teaches the desirability of focusing the number of search results. Koren explains, “[i]f you’ve ever used a search engine on the World Wide Web, you know how frustrating it can be when your search yields numerous hits that don’t have anything to do with the topic or concept you’re searching for . . . EchoSearch 2.0 addresses this problem by limiting the amount of dross you have to wade through.” Ex. 1022, 2 (emphasis added). Thus, Koren teaches the desirability of limiting or focusing search results, not just expanding or diversifying the search area, as Patent Owner argues. Accordingly, we are not persuaded by Patent Owner’s argument (and testimony offered in support of that argument) that Koren teaches away from Belfiore, because the argument is contradicted by Koren itself. Similarly, we are unpersuaded by Patent Owner’s hindsight argument because the prior art references themselves, not the ’094 patent, provided one of ordinary skill in the art a rationale and motivation for combining their respective teachings in the manner asserted by Petitioner. We, therefore, find one of ordinary skill would have been motivated to combine the teachings of Belfiore with those of Koren/Sotomayor. One of ordinary skill in the art, for example, would have been motivated to incorporate Belfiore’s “redirect” feature (i.e., directly retrieve the top search result) into EchoSearch because a user would desire a redirect feature for multiple search engine results. Pet. 27 (citing Ex. 1002 ¶ 48). In addition, one of ordinary skill in the art would have been motivated to incorporate the advanced interface of EchoSearch, which utilized multiple search engines, into Belfiore’s “intelligent searching” invention because a user would want to focus its search results, yet at the same time ensure no loss in redirect functionality. Pet. 27 (citing Ex. 1022; Ex. 1002 ¶ 49).” slip op. at 31

  Patent outcomesUS 8,661,094 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,661,094
• Microsoft Corporation v. Mira Advanced Technology, Inc.All claims unpatentable
  PTAB · Sep 19, 2018 · IPR2017-01052 · APJ Minn Chung · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Matsumoto, Sony, or Sony combined with Matsumoto.

  RulingsFinal written decision

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

    “Therefore, the plain meaning of the “contact list” limitation, when read in the context of the claims as a whole and in view of the Specification, is “a list saved in a communication device comprising contact list entries.”” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying upon the declaration testimony of Mr. Rysavy, Petitioner contends that a person of ordinary skill in the art as of the date of the invention would have had a Bachelor’s degree in computer science, computer engineering, and/or electrical engineering or at least 4 years of designing and implementing software features for cellular phones or smartphones. Pet. 9 (citing Ex. 1002 ¶ 46). Patent Owner does not oppose Petitioner’s definition of the level of ordinary skill in the art. Based on the complete record, in the context of the ’892 patent and the prior art of record, we agree with and adopt Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 34

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Essentially, Mr. Jawadi states that a feature “resident (stored) in a communication device” is often referred to as a “saved” feature. But Mr. Jawadi does not explain adequately why a “user-interface-enabled” feature is synonymous or equivalent to a “saved” feature. Moreover, Mr. Jawadi does not cite any evidence in support of his testimony. See Ex. 2001 ¶ 75. Mr. Jawadi’s conclusory statement unsupported by evidence does not provide a satisfactory explanation of what a “saved user interface” entails in the context of the ’892 patent. Thus, Mr. Jawadi’s testimony is insufficient to justify Patent Owner’s proposed construction. See Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358–59 (Fed. Cir. 2015) (Prolitec’s expert cannot rewrite the intrinsic record of the patent to narrow the scope of the patent and the disputed claim element.), overruled on other grounds by Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Phillips, 415 F.3d at 1318 (explaining that “a court should discount any expert testimony that is clearly at odds . . . with the written record of the patent”) (internal quotation marks omitted) (citation omitted).” slip op. at 15

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

    “Petitioner’s challenge based on Sony, however, is one of obviousness. Although Petitioner relies on Sony alone in this asserted ground of obviousness, obviousness can be established by considering whether “a single piece of prior art could be modified, to produce the claimed invention.” Comaper Corp v. Antec Inc., 596 F.3d 1343, 1351–52 (Fed. Cir. 2010) (emphasis added). As discussed above, Petitioner asserts that it would have been obvious to modify the teaching of Sony to obtain a single contact list with contact list entries that include data fields for names, phone numbers, and memo data. Pet. 47–49. Therefore, we find that Patent Owner does not adequately refute Petitioner’s challenge based on obviousness. Patent Owner further asserts that “the core claim limitation” is missing from Sony and cannot be “supplied through ‘common sense.’” PO Resp. 48–49 (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016)). We disagree with Patent Owner’s argument. As discussed above, with respect to the purported “core claim limitation” identified by Patent Owner—i.e., “each contact list entry of the contact list including . . . a memo field configured to attach memo data inputted by the user”—Petitioner has established sufficiently that Sony teaches a “contact list” with a “contact list entry” that includes a “memo field.” Pet. 44–47. As Petitioner explained, the difference between Sony and the claimed subject matter is that Sony has two contact lists—one with identification information and names, and another with reminders coupled to the identification information—whereas the claims recite a single contact list with contact list entries having all three data fields, i.e., the fields for a phone number, a name, and memo. Id. at 47–49. Hence, there are no missing limitations in Sony; rather, the elements are arranged differently in Sony from the claims. Furthermore, Petitioner does not rely on common sense to supply any” slip op. at 52

  Patent outcomesUS 8,848,892 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,848,892
• Comcast Cable Communications, LLC v. Veveo, Inc.All claims unpatentable
  PTAB · Sep 19, 2018 · IPR2017-00944 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–36 are unpatentable: claims 1–7, 9–13, 17–25, 27–31, 35, and 36 as obvious over Gross and Robarts; remaining claims over added references.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Decision is issued pursuant to 35 U.S.C. § 318(a). We base our decision on the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the arguments of the parties and the supporting evidence, we find that Petitioner has demonstrated by a preponderance of the evidence that each of the challenged claims is unpatentable.” slip op. at 2

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

    “was previously ‘associated with’ the singular, combined string of descriptor prefix strings matching the string of prefixes received” is flawed in several respects. First, claims 1 and 19 do not recite a “singular, combined string of descriptor prefix strings.” Rather, the claim recites selecting and presenting “the subset of television content items that is associated with the string of prefixes received.” The “string of prefixes received” refers to “receiving incremental text input entered by a user . . . including a first descriptor prefix of a word entered by the user,” and “subsequent to receiving a first descriptor prefix . . . receiving subsequent incremental text input entered by the user . . . including a second descriptor prefix of a word entered by a user.” Patent Owner’s proposed construction ignores the plain meaning of the claim and attempts to read a limitation into the claim that is not recited therein. Second, pursuant to the claim language, an ordering criteria is used to rank and associate subsets of television content items with corresponding strings of one or more descriptor prefix strings, not a “singular, combined string of descriptor prefix strings.” A reasonable construction of this claim would allow for associating subsets of television content items with corresponding strings of one descriptor prefix string, as well as more than one descriptor prefix string. Patent Owner’s proposed construction of a “singular, combined string of descriptor prefix strings” would preclude a method wherein subsets of television content items each are associated with one descriptor prefix string.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “Prosecution history disclaimer is a “demanding standard.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016). “[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325– 26 (Fed. Cir. 2003). “Where the alleged disavowal is ambiguous, or even ‘amenable to multiple reasonable interpretations,’ we have declined to find prosecution disclaimer.” Avid Tech., 812 F.3d at 1045. We are not persuaded that the alleged “disavowal” is unambiguous, but instead it appears to be open to other reasonable interpretations. During prosecution, for example, Patent Owner did not argue that “subset” was limited to a “proper subset,” but instead argued the benefits of “matching,” wherein the claimed “method directly matches the prefix input entered by the user to a subset of content items” to “avoid the computational complexity and burden of transforming the text input into query instructions.” Ex. 1002, 19. For these reasons, we decline to adopt Patent Owner’s proffered construction, and instead interpret the term “subset” according to its ordinary and customary meaning as it would be understood by a person of ordinary skill in the art in the context of the entire patent disclosure as “all, or less than all, of the items of a set.”” slip op. at 14

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

    “Petitioner has articulated clearly a motivation to combine Gross and Robarts in the manner proffered by Petitioner, to modify Gross’ incremental prefix search system of video files to include an EPG database as taught by Robarts. Pet. 26–28. A person of ordinary skill would have had a reason, the knowledge, and the skills to modify Gross’ incremental search system to use an EPG database to search for television content. Ex. 1009 ¶ 83. Thus, Petitioner’s proposed combination appears to be the predictable use of prior art elements, i.e. incremental prefix searching, pre-association with content items, indexing video-file types, and EPG databases, according to their established functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Gross’ incremental prefix searching is retained and is used to locate television content from an EPG database. We are persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Gross and Smith in the manner proffered by Petitioner.” slip op. at 55

  Patent outcomesUS 7,895,218 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,895,218

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.