• Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing denied
  PTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,155,012
• Apple Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Nov 18, 2019 · IPR2018-00884 · APJ Sean P O’Hanlon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left intact the unpatentability of claims 1–17 and 23–25 under § 103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2

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

    “suggested by the Examiner to express more clearly the applicants’ intention to convey that the network entity is not the intended end recipient device. Final Dec. 11–12. As we explained, our interpretation that “a network entity intercepting a signaling message associated with a call between a sender device of the message and an intended recipient device of the message” means that the network entity receives the message and the network entity is not the intended end recipient device is supported by the prosecution history: [T]his interpretation is consistent with the prosecution history of the application resulting in the ’552 patent, which reveals that the patent examiner suggested using the word intercepting in the claims to further clarify the applicants’ intention to convey that “the independent claims involve a network entity receiving and filtering messages that are sent between two end users.” Ex. 1002, 364–65 (first emphasis added); see also id. at 367–68 (distinguishing an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message). Id. Thus, rather than ignoring the amendment “as if it had never happened” (Req. Reh’g 3), we explained our interpretation that the Examiner suggested using “intercepting” to more clearly convey that the recited network entity is not one of the intended end user devices between which the signaling message is sent. Although Patent Owner argues that the Decision “d[oes] not appear to apply the presumption that the applicant’s decision to narrow claim 1 by amendment gave rise to a general disclaimer of the territory between the original claim and the amended claim” (Req. Reh’g 4 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740, (2002)), Patent Owner does not identify the alleged “disclaimer of the territory,” and thus fails to specifically identify how we allegedly erred. See 37 C.F.R. § 42.71(d). Nor are we apprised that we misapprehended or overlooked any matter by Patent Owner’s assertions regarding the applicants’ comments about the amendment. See Req. Reh’g 4. Patent Owner characterizes the comments as “distinguish[ing] ‘intercepting’ in this context from the disclosure in a cited reference2 directed to merely receiving a message at a network entity.” Id. This characterization is incomplete, as the reference describes a “service request [that] is sent from the service-used apparatus directly to the service-provider apparatus, not to some other apparatus.” Ex. 1002, 368 (emphasis added). As we explained in the Decision, the applicants “distinguish[ed] an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message.” Final Dec. 12 (citing Ex. 1002, 367–68).” slip op. at 4

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner’s declarant is entitled to little weight: Dr. Easttom’s declaration testimony interpreting “receiving” fails to consider the full disclosure and prosecution history of the ’552 patent, as explained above, and, thus is not entitled to substantial weight. See, e.g. Ex. 2001 ¶¶ 8–9; see also PO Resp. 6 (citing same). Additionally, Patent Owner hindered or prevented Petitioner from cross-examining Dr. Easttom, further undermining the weight given to Dr. Easttom’s testimony. See, e.g., Pet. Reply 2–6; Exs. 1011–24. Final Dec. 12 n.9.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for petitioner

    “[t]he intercepting of call control server 112 at least includes seizing a message, which is not sent directly . . . from a client 104 to the server 112, 2 US 2003/0177363 (“Yokota”). and obstructing the message from progress while authentication processes are performed.” Req. Reh’g 5 (citing Paper 14, 4–5 (PO Sur-Reply)). Although Patent Owner cites to its Sur-Reply, we see no argument there regarding “seizing” and “obstruction.” As this was not an argument on which Patent Owner previously relied, it was not an argument that we could have misapprehended or overlooked. slip op. at 5

  Claim construction
  Patents in suitUS 8,539,552
• Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution denied
  PTAB · Oct 25, 2019 · IPR2019-00953 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because claim ambiguity prevented a reasonable likelihood determination on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any one of claims 1, 6, 7, 8, 11, 13, 14, 17, and 20 on any ground. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2

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

    “2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1176, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1101, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1176, 24.” slip op. at 13

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

    “As noted above, we agree with the district court that the term “juxtaposition” means “interleaving.” The ’256 patent, however, does not define “interleave” or “interleaving.” We consult a technical dictionary, which defines “interleave” as follows: interleave (1) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of things or events and so that each sequence retains its identity; for example, to alternately perform the steps of two different tasks in order to achieve concurrent operation of the tasks. (C/C) [20], [85] (2) (software) To alternate the elements of one sequence with the elements of one or more other sequences so that each sequence retains its identity; for example, to alternatively perform the steps of two different tasks in order to achieve concurrent operation of tasks. (C) 610.12-1990. (3) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of the same nature such that each sequence retains its identity; [f]or example, to assign successive addresses to physically separated storage locations in such a way to reduce access time. (C) 610.10-1994w. IEEE 100: The Authoritative Dictionary of IEEE Standards Terms 577 (7th ed. 2000) (“IEEE Dictionary”) (Ex. 3002). The juxtaposition of two antenna arrays as shown in Figure 1 of the ’256 patent, i.e., columns 1a and 1b, which results in the positions of the elements in the multiband array shown in column 1c, however, is not consistent with the above-reproduced definition of “interleave.” In that regard, we again reproduce Figure 1 of the ’256 patent below:” slip op. at 14

  • BurdenDenied

    “C.F.R. § 42.104(b)(3), the Petition must identify how to construe each challenged claim. In this case, the Petition does not address the issues discussed above sufficiently to eliminate uncertainty and speculation as to whether the claims read on the prior art.” slip op. at 21

  Claim constructioncites Phillips · Graham
  Patents in suitUS 8,228,256
• Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution denied
  PTAB · Oct 25, 2019 · IPR2019-00952 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because ambiguous claim language left it unable to assess the asserted grounds without speculation.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Because the claim language is ambiguous in numerous respects as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds of unpatentability. If the scope of the claims cannot be determined without undue speculation, as it is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013- 00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d at 862–63 and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63.” slip op. at 21

  • Prior constructionPrior construction adoptedDecided for patent owner

    “2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1076, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1001, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1076, 24.” slip op. at 13

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we only need to address construction of the recited juxtaposition of antenna arrays and the term “juxtaposition” itself.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2 Petitioner asserts that the level of ordinary skill in the art corresponds to that of one who had (1) “an accredited Master’s degree in electrical engineering, applied physics, or any similar course of study, and a few years of experience related to the design and/or application of antennas,” or (2) “a doctorate in electrical engineering, applied physics, or any similar course of study, with knowledge of electromagnetic theory as applied to design and/or application of antennas.” Pet. 29. Patent Owner adopts for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). The Petition here was filed on April 9, 2019. Paper 3. So we apply the claim construction standard from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“the Phillips standard”). Claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–1317. Usually, the specification is dispositive, and it is the single best guide to the meaning of a disputed term. Id. at 1315. The specification may reveal a special definition given to a claim term by the patentee, or the specification may reveal an intentional disclaimer or disavowal of claim scope by the inventor. Id. at 1316. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 14. On this record, we have no basis to question Petitioner’s articulation. Thus, we adopt the level of ordinary skill as articulated by Petitioner.” slip op. at 8

  Claim constructionDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,228,256
• Samsung Electronics Co., Ltd. v. M & K Holdings Inc.All claims unpatentable
  PTAB · Sep 11, 2019 · IPR2018-00697 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Budagavi, WD3-v1, and Sole; the motion to amend is granted, adding substitute claims 8–14.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “A. Principles of Law It is a petitioner’s burden to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said 2 Budagavi et al., U.S. Pub. No. 2011/0170594 A1 (July 14, 2011, filed Dec. 30, 2010) (Ex. 1005). 3 Sole et al., Unified Scans for the Significance Map and Coefficient level Coding in High Coding Efficiency, JCTVC-E335 (version 3) (uploaded Mar. 19, 2011) (Ex. 1006). 4 Thomas Wiegand et al., WD3: Working Draft 3 of High-Efficiency Video Coding, JCTVC-E603 (version 1) (uploaded March 30, 2011) (Ex. 1007). subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on the following underlying factual determinations: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations.5 Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “1, which teaches using a single scan depending on a prediction mode, with teachings related to Figure 2, which teaches scanning subsets in a different direction than scanning coefficients within a subset (without teaching the two scans depend on the intra prediction mode). See Ex. 1006, 1–2, Figs. 1 and 2; Opp. 8–9 (citing Pet. 43–49; Ex. 1002 ¶¶ 134–135). In so doing, Petitioner improperly combines two teachings from separate embodiments without an adequate reason. As the main reason for the combination, Petitioner contends that Sole combines the teachings from the two embodiments. See Pet. 45 (arguing “Sole also discloses using a backward zigzag scan for scanning the quantized coefficients of each subset and the plurality of subsets, which is a modified version of the scan technique shown in Figure 2” (emphasis added)), 45–51 (relying on what Sole allegedly teaches and explaining why an artisan of ordinary skill would have looked to Sole). Dr. Kalva credibly testifies that Sole does not teach combining the teachings. See, e.g., Ex. 2025 ¶ 91 (“Sole repeatedly asserts that its aim is to apply the same scan pattern used for the significance map to the coefficient level coding (e.g., the quantized coefficients.)”), ¶ 94 (The conclusion that Sole does not teach or suggest scanning subsets using a scan pattern determined by the intra prediction mode is confirmed by Davies and Sole II.”), ¶ 95 (“[T]he subsets are not scanned, let alone scanned using a scan pattern determined by the intra prediction”).” slip op. at 103

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “algorithm implements a single scan direction without suggesting retaining the sub-block concept and without suggesting scanning sub-blocks according to an intra prediction mode. Therefore, Sole does not teach scanning a plurality of subsets according to an intra prediction mode as claim 8 requires. Accordingly, Petitioner fails to meet the burden of showing that a person of ordinary skill would have considered the combined teachings of Budagavi and Sole to meet the last limitation of proposed substitute claim 8. After reviewing the entire record, we determine Petitioner has not shown that the subject matter of proposed substitute claim 8 would have been obvious over Budagavi and Sole. We therefore grant Patent Owner’s Motion to Amend as to proposed substitute claim 8. 2. Patentability of Claims 9–14 Because the parties do present not separate arguments for proposed substitute claims 9–14, which depend from proposed substitute claim 8, they stand with claim 8. Accordingly, we further grant Patent Owner’s Motion to Amend as to these proposed substitute dependent claims. IV.” slip op. at 107

  • ExcludeMotion to exclude, deniedDenied

    “For the foregoing reasons, Patent Owner does not meet the burden on its Motion. In addition, even if we disregard statements by Mr. Bross in paragraphs 11 and 12 that we hold here fall under a hearsay exception or constitute non-hearsay, it would not alter the outcome, given other evidence, including (but not requiring) the evidence of a verbal act discussed above, and including other Exhibits discussed above collectively showing that interested artisans exercising reasonable diligence should have been able to visit the website and would have known it archived HEVC standards, lending a reason to visit it.” slip op. at 115

  Patent outcomesUS 9,191,673 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,191,673
• Samsung Electronics Co., Ltd. v. M & K Holdings Inc.All claims unpatentable
  PTAB · Sep 4, 2019 · IPR2018-00696 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 2, 5, and 6 are unpatentable as anticipated by WD4-v3; claims 3 and 4 are unpatentable as obvious over WD4-v3, Park, and Zhou.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art We adopt Petitioner’s proposed level of ordinary skill in the art, which” slip op. at 11

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

    “Petitioner shows by a preponderance of evidence that WD4-v3 anticipates claims 1, 2, 5 and 6 of the ’163 patent under 35 U.S.C. § 102(a); and, the combination of WD4-v3, Park, and Zhou renders claims 3 and 4 obvious under 35 U.S.C. § 103(a).” slip op. at 100

  • ExcludeMotion to exclude, deniedDenied

    “For the foregoing reasons, Patent Owner does not meet the burden on its Motion. In addition, even if we disregard statements by Mr. Bross in paragraphs 11 and 12 that we hold here fall under a hearsay exception or constitute non-hearsay, it would not alter the outcome, given other evidence, including (but not requiring) the evidence of a verbal act discussed above, and including other Exhibits discussed above collectively showing that interested artisans exercising reasonable diligence should have been able to visit the website and would have known it archived HEVC standards, lending a reason to visit it.” slip op. at 100

  Patent outcomesUS 9,113,163 unpatentable
  § 103 obviousness
  Patents in suitUS 9,113,163
• Amazon.Com, Inc. v. M2m Solutions LLCRehearing denied
  PTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3

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

    “As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9

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

    “In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15

  Claim construction§ 103 obviousness
  Patents in suitUS 8,577,359
• Amazon.Com, Inc. v. M2m Solutions LLCRehearing denied
  PTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3

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

    “In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8

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

    “Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16

  Claim construction§ 103 obviousness
  Patents in suitUS 8,577,358
• Amazon.Com, Inc. v. M2m Solutions LLCRehearing denied
  PTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3

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

    “In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7

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

    “In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 8,504,007
• Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentable
  PTAB · May 14, 2019 · IPR2018-00132 · APJ Thu A Dang · IPR · Final written decision

  Claims 1, 3, 7, 12, 18, 22–27, 36, 41–46, 55, and 58–63 are unpatentable as obvious over the stated combinations of Aldred and RFC 1692 with Ulrich or Denzer.

  RulingsFinal written decision

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

    “On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.13” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have to be an individual with “at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years of experience related to networked interactive applications,” or a person with “at least a bachelor’s degree in computer science, computer engineering, or physics” who has “approximately four years’ experience in network[ing] interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the 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); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 24

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

    “7. Prior Art Printed Publication Status of RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) was available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 qualifies as prior art printed publications.” slip op. at 32

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

    “Nevertheless, as to Patent Owner’s contention that Petitioner has failed to consider “the effect of larger packets on the packet order of the CSP of Aldred if the TMux protocol is included” (PO Resp. 23), we are persuaded by Petitioner’s argument that “RFC 1692 discusses adding segments to a multiplexed message in the order they are received.” Pet. Reply 4 (citing 1010 ¶¶ 6–7). In particular, Petitioner argues that “RFC 1692 expressly discloses that large TCP segments can be added to the end of any pending multiplexed packet, such that all segments would be sent in the order received.” Pet. Reply 3. According to Petitioner, “RFC 1692 explains that when a segment that would not normally be multiplexed – such as a large segment – is received and a multiplexed message is under construction, ‘the extra segment can be added to the TMux message under construction, and this complete message should be sent immediately . . . .’” Id. (citing Ex. 1010, 8–9). That is, RFC 1692 discloses that “large and small TCP segments can be sent in-order by the multiplexing process.” Id. at 4 (citing Ex. 1053 ¶¶ 19–23). In its Sur-Reply, Patent Owner does not dispute Petitioner’s point and its declarant’s, Dr. White’s, testimony that the logical channels in Aldred guarantee order. See generally Sur-Reply; Reply 5; Ex.1053 ¶ 25. Rather, Patent Owner summarizes its position by, again, relying on its large packet argument. Sur-Reply 3 (arguing “smaller items would be removed from the serialization queue and added to the TMux buffer, and larger segments would be transmitted immediately”); see also id. at 3–4 (similar large packet arguments). However, in Aldred, after demultiplexing, to the extent TMux does not maintain packet order, the higher level channel logical channel layer maintains packet order. See Ex. 1009, 6 (defining a channel “by the sending application” and “with application specified transmission characteristics,” and stating “a receiving port . . . receives data packets from the channel in the order in which they were sent”). Furthermore, as Petitioner points out, by contending that combining” slip op. at 37

  Patent outcomesUS 6,226,686 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,226,686

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.