- Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand
Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28
- ExcludeMotion to exclude, deniedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29
Patent outcomesUS 7,069,560 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.
RulingsRemand decision- RemandDecided for petitioner
“Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30
Patent outcomesUS 6,851,115 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Remand
Claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 are unpatentable under § 103 over the three stated combinations of prior art.
RulingsRemand decision- RemandOther
“Following an oral hearing in the related cases, we issued an Adverse Judgment Order on December 13, 2022. Paper 14. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 15, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;5 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. We apply this level of skill in the present case.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“We adopt the claim constructions determinations in IPR2019-01568 provided in the table below for the reasons discussed there. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“(Sidekick-I or Sidekick-II), and Brittan, to implement a mobile device in Heikes with connection to a LAN or WAN as disclosed in Jonker in accordance with the Heikes’ system. Pet. 16–20; Ex. 1003 ¶¶ 157–170; Ex. 1007 ¶¶ 2, 38, 45–47; Ex. 1005 ¶¶ 39–45, Fig. 1. Petitioner argues that both Hiekes and Jonker teach wireless communication and that it was “well known and common knowledge for wireless LANs to operate and be implemented in: (1) ad-hoc mode or (2) an ‘infrastructure mode.’” Pet. 17– 18; Ex. 1003 ¶¶ 161–162. Petitioner further asserts that an ordinarily skilled artisan would have utilized the Sidekick features of an integrated display and keyboard in the mobile device of Heikes which does not expressly teach how data is entered or displayed, finding it obvious to implement a well-known PDA device with IM capabilities to navigate and perform data entry. Pet. 20–22; Ex. 1003 ¶¶ 171–181. Petitioner argues that “[b]ased on Brittan, a POSITA would have found it obvious to modify the Heikes- Jonker-Sidekick device to enable a key/button on the device to be used to select/add a smiley into the IM conversation from a menu of smilies (as already disclosed and shown in Heikes . . . )” (Pet. 24–25) as it was well known to use buttons or related menus to select emoticon smilies (id. at 25). Petitioner further contends that configuring Heikes-Sidekick-Jonker’s device to implement Brittan’s teachings would have amounted to the use of a known technique to improve similar devices in the same way, and combining prior art elements according to known methods to yield predictable results—a device that enables pressing one or more buttons to select a smiley from a menu of smilies and providing the selected smiley for display in graphical form in the IM conversation. Pet. 26 (citing Ex. 1003 ¶¶ 195–196). In view of the full unrebutted record, Petitioner provides persuasive rationales by a preponderance of the evidence to combine the teachings of Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-II), and Brittan.” slip op. at 17
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01126 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claims 22, 23, and 31–40 unpatentable as obvious under § 103 over the four instituted prior-art combinations.
RulingsRemand decision- RemandOther
“Judgment Order on December 13, 2022. Paper 13. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 14, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 9 n.3; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01567 Final Written Decision. Pet. 6–7. We adopt the claim constructions determinations in IPR2019-01567 provided in the table below for the reasons discussed there. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“skill in the art would have had reasons to combine VD, Sinivaara, Chiu, McCarty to implement Van Dok’s device as set forth in IPR2019-01567. Pet. 9 (citing Google IPR at 16–17). Thus, Petitioner reasserts the arguments presented in the Google IPR supporting the motivation to combination VD, Sinivaara, Chiu, and McCarty. Pet. 9–14; Ex. 1003 ¶¶ 522–522; Ex. 1049 ¶¶ 119–128. We agree and find that Petitioner provides persuasive argument and evidence supporting the combination of Van Dok’s instant messaging device with features from the Sidekick as asserted in the Google IPR (Pet. 29–35; Ex. 1003 ¶¶ 532–545) and in the alternative with Sidekick and Rucinski (Pet. 38–39; Ex. 1003 ¶¶ 546–560). In view of the final record here, Petitioner provides persuasive rationales by a preponderance of the evidence to combine the teachings of Van Dok, Sinivaara, Chiu, McCarthy, and (Sidekick I or Sidekick II); and Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick II), and Rucinski.” slip op. at 16
Patent outcomesUS 7,292,870 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01125 · APJ Trevor M Jefferson · IPR · Remand
Claims 2–4, 11–14, 22, 23, and 31–33 are unpatentable under § 103 based on the combinations of Heikes, Jonker, Sidekick, Brittan, and additional references.
RulingsRemand decision- RemandOther
“Following an oral hearing in the related cases, we issued an Adverse Judgment Order on December 13, 2022. Paper 14. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 15, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level board ownDecided for petitioner
“Decision in IPR2019-01567, Google IPR at 8. See Pet. 4 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time 3 Patent Owner did not provide any evidence or argument contesting Petitioner’s unpatentability arguments. Thus, Patent Owner presents no secondary considerations evidence. communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“We adopt the claim constructions determinations in IPR2019-01567 provided in the table below in this Final Written Decision for the reasons discussed there.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“person of ordinary skill in the art would have been motivated to combine Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-II), and Brittan, to implement a mobile device in Heikes with connection to a LAN or WAN as disclosed in Jonker in accordance with the Heikes’ system. Pet. 14–17; Ex. 1003 ¶¶ 152–160; Ex. 1007 ¶¶ 2, 38, 45–47; Ex. 1005 ¶¶ 39–45, Fig. 1. Apple argues that both Heikes and Jonker teach wireless communication and that it was “well known and common knowledge for wireless LANs (as described in Heikes) to operate and be implemented in either an ad-hoc mode or an infrastructure mode, in which a device connects to an access point associated with the LAN.” Pet. 17; see id. 17–18; Ex. 1003 ¶¶ 161– 166. Apple further asserts that an ordinarily skilled artisan would have utilized the Sidekick features of an integrated display and keyboard in the mobile device of Heikes which does not expressly teach how data is entered or displayed, finding it obvious to implement a well-known PDA device with IM capabilities and form to navigate and perform data entry. Pet. 18– 20; Ex. 1003 ¶¶ 167–177. Apple also argues that “based on Brittan, a POSITA would have found it obvious to modify the Heikes- Jonker- Sidekick device to enable a key/button on the device to be used to select/add a smiley into the IM conversation from a menu of smilies (as already disclosed and shown in Heikes . . . )” (Pet. 23), as it was well known to use buttons or related menus to select emoticon smilies (id. at 27). Petitioner argues that configuring Heikes-Sidekick-Jonker’s device to implement Brittan’s teachings would have amounted to the use of a known technique to improve similar devices in the same way, and combining prior art elements according to known methods to yield predictable results—a device that enables pressing one or more buttons to select a smiley from a menu of smilies and providing the selected smiley for display in graphical form in the IM conversation. Pet. 25 (citing Ex. 1003 ¶¶ 191–192). Finally, Apple argues that it would have been motivated to implement Sidekick’s teachings of displaying chat history and when the network connection is lost and re-connecting to the network after such a connection is lost. Pet. 25–28; Ex. 1003 ¶¶ 195–207. By a preponderance of the evidence, Apple provide persuasive rationales to combine the teachings of Heikes, Sidekick, Jonker, and Brittan as adding Sidekick’s well-known teachings amounted to using known techniques to improve similar devices in the same way, yielding predictable results for handheld IM devices that that lose connectivity. Pet. 27–28.” slip op. at 18
Patent outcomesUS 7,292,870 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01124 · APJ Trevor M Jefferson · IPR · Remand
Claims 1, 5–10, 17–19, and 36–40 are unpatentable as obvious over the stated combinations of Heikes, Jonker, Sidekick, Brittan, and, for claims 17–19 and 36–40, Capps.
RulingsRemand decision- RemandOther
“Following an oral hearing in the related cases, we issued an Adverse Judgment Order on December 13, 2022. Paper 13. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 14, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 7 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Finally, Petitioner argues that it would have been motivated to implement Sidekick’s teachings of displaying chat history and when the network connection is lost and re-connecting to the network after such a connection is lost. Pet. 28–32; Ex. 1003 ¶¶ 195–207. In view of the record here, Petitioner provides persuasive rationales by a preponderance of the evidence to combine the teachings of Heikes, Sidekick, Jonker, and Brittan, and adding Sidekick’s well-known teachings amounted to using known techniques to improve similar devices in the same way, yielding predictable results for handheld IM devices that lose connectivity. Pet. 30–32.” slip op. at 19
Patent outcomesUS 7,292,870 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,292,870 - Intel Corporation v. Qualcomm IncorporatedAll claims unpatentablePTAB · Mar 21, 2023 · IPR2018-01334 · APJ Daniel J Galligan · IPR · Remand
On remand, the Board held claims 1–9, 12, 16, and 17 unpatentable as obvious over the instituted prior-art combinations.
RulingsRemand decision- RemandOther
“I. INTRODUCTION This case is on remand from the Court of Appeals for the Federal Circuit to address the patentability of claims 1–9, 12, 16, and 17 of U.S. Patent No. 8,838,949 B2 (“the ’949 patent,” Ex. 1001). See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 814 (Fed. Cir. 2021). For the reasons discussed below, we determine that Petitioner has proven by a preponderance of the evidence that claims 1–9, 12, 16, and 17 are unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“B. Claim Interpretation In this proceeding, we give the claims the broadest reasonable” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
Patent outcomesUS 8,838,949 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,838,949 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01131 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 13 and 17–19 are unpatentable under § 103 over the specified combinations of Van Dok, Sinivaara, Werndorfer, and the additional references.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Traynor obtained his undergraduate degree 1 year before the critical date he lacks the requisite 2 years of industry experience as of the critical date. Mot. 3–4. Our Consolidated Trial Practice Guide provides that “[a]n expert training, or education to testify in the form of an opinion.” Consolidated Trial Practice Guide 74 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated 34 (citing Fed. R. Evid. 702). Further, the Trial Practice Guide also provides that “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Id. (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F. 3d 1356, 1363–1364 (Fed. Cir. 2008)). We find that Dr. Traynor is qualified in the pertinent art. Dr. Traynor received his Bachelor’s degree in Computer Science in May 2002, his Masters’ degree in Computer Science in May 2004, and his Ph.D. in Computer Science in 2008. Ex. 1003 ¶ 2; Ex. 1004, 5. He has served as a professor since 2008 and is currently a Professor in the Department of Computer and Information Science and Engineering at the University of Florida. Id. at ¶ 3. He has over 8 years of industry experience and has published 90 articles in the areas of information security, mobility, and networking. Ex. 1003 ¶¶ 6–7, 9–11, Ex. 1004 12–24, 31. We note that Patent Owner did not depose Dr. Traynor or ask him about his post undergraduate experience before the critical date.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“1003 and Exhibit 1103, asserting that they are inadmissible based on FRE 702, 703, and 704, and improperly contain hearsay based on FRE 802, 803, 804, 805, 806, and 807. Mot. 2–3. Patent Owner’s contentions regarding admissibility of Dr. Traynor’s declarations and hearsay contained in the declarations all stem from Dr. Traynor’s alleged lack of industry experience sufficient to establish ordinary skill in the art as of the critical date of the ’837 patent. See Mot. 3–8; Opp. Reply 2–5. Petitioner opposes, arguing that (1) Dr. Traynor need not be a person of ordinary skill in the art as of the critical date (December 24, 2003); (2) Dr. Traynor is highly qualified in the pertinent art; and (3) Patent Owner’s objections to the declarations were not timely filed and lacked particularity. Opp. 1–2. We are not persuaded by Patent Owner’s arguments that because” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet. 5 n.2; Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the prosecution history.” Id. at 5 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11 We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 7,894,837 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless and determined claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 unpatentable after the Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentFwd all claims unpatentableGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner addressed the present case and stated on the record that they are not contesting a final written decision or adverse judgment in the related cases in which Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that” slip op. at 2
NonePatents in suitUS 7,894,837
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.