- Dolby Laboratories, Inc. v. Intertrust Technologies CorporationInstitution deniedPTAB · Dec 8, 2020 · IPR2020-00663 · APJ Kimberly Mcgraw · IPR · Institution
Institution was denied for claims 1 and 2 because Petitioner did not show a reasonable likelihood that either claim would have been obvious over Griswold or England.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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); see 37 C.F.R. § 42.108. Upon consideration of the submitted evidence and argument, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time the ’603 patent was filed (a “POSITA”) would have had a minimum of a bachelor’s degree in computer science, electrical engineering, mathematics, or a related field, and approximately two years of relevant experience or equivalent study in electronic data protection, electronic content protection, or digital rights management. Pet. 16. Petitioner further states that additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. (citing Ex. 1002 ¶¶ 47–48). Patent Owner sets forth a similar definition, stating that a POSITA would have a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields. Prelim. Resp. 19. Patent Owner states that the positions set forth in its Preliminary Response would be the same under either parties’ proposal. Id. The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the prior art and the ’603 patent. We note, however, that our analysis would be the same under either parties’ definition of a POSITA.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“should be construed to mean “conditions or characteristics determined in advance against which to check the structure and/or behavior of one or more software modules.” Pet. 16–18 (citing Ex. 1002 ¶¶ 67–72). To support this proposed construction, Petitioner states that the ’603 patent describes “inspector modules that ‘are operable to check the structure and/or behavior of drivers, software, and/or hardware against predefined criteria.’” Id. at 17 (emphasis omitted) (quoting Ex. 1001, 15:36–62); see also id. (citing Ex. 1001, 16:25–34, 23:63–24:4). Patent Owner contends that the term “predetermined criteria” does not require construction and should be given its plain and ordinary meaning. Prelim. Resp. 21. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute. Id. We agree that no explicit construction of this phrase is necessary for our decision on whether to institute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“With respect to Petitioner’s first argument, Petitioner contends that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software in order for the software to be used together with the content . . . .” Id. at 33 (citing Ex. 1002 ¶ 93), id. at 25 (citing Ex. 1002 ¶ 81). Petitioner, however, does not provide sufficient evidence to support its contention. Although Petitioner cites to the declaration testimony of Dr. Madisetti to support its argument, Dr. Madisetti’s testimony merely repeats verbatim what is stated in the Petition and provides no additional persuasive facts or objective evidence to support his conclusion. See Ex. 1002 ¶ 93; see also id. at ¶¶ 77–82. To satisfy its burden of proving obviousness a petitioner cannot employ mere conclusory statements. In re Magnum Oil Tools Int’l, 829 F.3d at 1380; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). We are also not persuaded by Petitioner’s second argument that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software . . . so that information identifying the software can be transmitted in the license datagram for evaluation at the licensor’s site.” Pet. 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Petitioner does not provide sufficient evidence or argument either that the license datagram provides information about the software (as opposed to the licensed product itself) or a reason why a POSITA would have understood information about the software would be provided in the datagram for evaluation at the licensor’s site. To support this second argument, Petitioner states Griswold’s license check system involves sending a “request datagram” or a “license datagram” to the licensor’s site in order to obtain approval to use the licensed product. Pet. 24–25 (citing Ex. 1006, 3:62–4:5, 5:44–52). Petitioner contends Griswold’s “license datagram 3 describes information related to the use of licensed product 1, including an identification of product 1 (i.e., the software).” Id. at 25 (citing Ex. 1006, 5:44–45, 6:37–51); see also id. at 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Griswold, however, does not state that license datagram 3 identifies the software separately from the product. Rather, Griswold sates that datagram 3 contains a number of fields, including product model number 24 that identifies product 1. Ex. 1006, 6:45–48. Thus, we disagree with Petitioner’s assertion that license datagram 3 identifies the software separately from the product. Petitioner’s contention that a POSITA would have understood that, in the embodiment where the software is separate from the content, the monitor must first identify the software so that information identifying the software can be transmitted in the license datagram for evaluation at the licensors site, is conclusory and unsupported. See Pet. 33 (citing Ex. 1002 ¶ 93). Thus, Petitioner has not sufficiently shown that Griswold teaches the” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,406,603 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-01203 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving intact its decision allowing joined petitioner LGE to oppose CyWee’s revised motion to amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). 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.” Id.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsDecided for petitioner
“In our Rehearing Decision, we determined that “the adversarial system is better served if we allow a Petitioner to raise [statutory, regulatory, or patentability] issues in response to CyWee’s Revised Motion to Amend.” Reh’g Dec. 8. Therefore, we held that LGE may present arguments and evidence, independently from ZTE, in response to CyWee’s Revised Motion to Amend, and that LGE may request an oral hearing limited solely to the issues raised in the Revised Motion to Amend. Id. at 9.” slip op. at 3
NonePatents in suitUS 8,441,438 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-00143 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving in place its decision allowing joined petitioner LGE to oppose the Revised Motion to Amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). 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.” Id.” slip op. at 3
NonePatents in suitUS 8,441,438 - PTAB · Sep 15, 2020 · IPR2020-00282 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a party requests rehearing on a decision on whether to institute inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c) (2019). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and “[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 the record. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree. Nowhere in the cited passages in the Petition does Samsung argue that we should construe the term “row wrap-around connections” according to the explicit construction that Samsung now suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather, Samsung argued that “Petitioners do not believe any term requires explicit construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms in the challenged claims should be construed according to their plain and ordinary meaning. See Reply 1, 4–5. However, apart from arguing that Samsung had proposed construing limitation 1C in the co-pending district court proceeding according to its plain and ordinary meaning,3 Samsung did not propose any specific construction for the phrase “row wrap-around connection,” or point to any evidence as to what the ordinary and customary meaning of that phrase was to a person of ordinary skill in the art. Therefore, we decline to adopt Samsung’s new proposed construction on rehearing.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We determined that Samsung had not provided sufficient evidence of its proposed motivation to combine the two references. See Dec. 16 (“[N]either Samsung nor Dr. Wolfe supports this conclusion with any evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In particular, we found that “Dr. Wolfe does not explain how or why the combination of Barkan and Tagg would minimize RC delay or allow for the use of lengthier columns and rows of electrodes, or cite to any facts, data, or authorities to support that opinion.” Dec. 17. We stated that “there is no evidence in the record suggesting that RC delay was a recognized problem . . . or that a person of ordinary skill in the art would have understood that a connection to both sides of a row of electrodes would be a solution to that problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as to how a person of ordinary skill in the art would have modified Barkan’s leads 160 to incorporate external connections such as those in Tagg.” Id. (citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,821,502 - Apple Inc. v. Seven Networks, LLCInstitution deniedPTAB · Sep 1, 2020 · IPR2020-00507 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–44 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner raises a valid point. Petitioner only alleges “the embedded credential is associated with the user’s account information” (Pet. 27) and fails to explain how merely associating the embedded credential with the user’s account information addresses how the second identifier is sent “in response to the received registration information” as limitation [1.4] requires. See Pet. 27–28 (citing Ex. 1005 ¶ 65; Ex. 1003 ¶ 44). In turn, at the cited paragraph, Dr. Wills testifies that “the redirect message from the identity provider to the service provider, as illustrated above, would automatically include the registration information associated with the particular user so that the service provider will have the necessary account information of the user in performing the requested service.” Ex. 1003 ¶ 44. Although Petitioner cites to this testimony, the Petition does not advance Dr. Wills’ theory that underlies the testimony. See Pet. 27 (citing 1003 ¶ 44). Even if we deem the Petition to properly incorporate Dr. Wills’ theory that “the redirect message from the identity provider . . . would automatically include the registration information,” the record does not support the theory, as Patent Owner argues. See Prelim. Resp. 33–34.5 Dr. Wills’ testimony cites to Yared’s paragraph 87 for support (Ex. 1003 ¶ 44), but that paragraph neither mentions Yared’s redirect procedures nor otherwise suggests that the redirect message includes the registration reliedupon information. See Ex. 1005 ¶ 87. Also, Dr. Wills’ testimony does not explain sufficiently how something that Yared’s identity provider (server) renders “automatically available to service providers” (see id.) means that the identity provider transmits that information in Yared’s redirect message or why this transmission would have been obvious.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner raises a valid point. Petitioner only alleges “the embedded credential is associated with the user’s account information” (Pet. 27) and fails to explain how merely associating the embedded credential with the user’s account information addresses how the second identifier is sent “in response to the received registration information” as limitation [1.4] requires. See Pet. 27–28 (citing Ex. 1005 ¶ 65; Ex. 1003 ¶ 44). In turn, at the cited paragraph, Dr. Wills testifies that “the redirect message from the identity provider to the service provider, as illustrated above, would automatically include the registration information associated with the particular user so that the service provider will have the necessary account information of the user in performing the requested service.” Ex. 1003 ¶ 44. Although Petitioner cites to this testimony, the Petition does not advance Dr. Wills’ theory that underlies the testimony. See Pet. 27 (citing 1003 ¶ 44). Even if we deem the Petition to properly incorporate Dr. Wills’ theory that “the redirect message from the identity provider . . . would automatically include the registration information,” the record does not support the theory, as Patent Owner argues. See Prelim. Resp. 33–34.5 Dr. Wills’ testimony cites to Yared’s paragraph 87 for support (Ex. 1003 ¶ 44), but that paragraph neither mentions Yared’s redirect procedures nor otherwise suggests that the redirect message includes the registration reliedupon information. See Ex. 1005 ¶ 87. Also, Dr. Wills’ testimony does not explain sufficiently how something that Yared’s identity provider (server) renders “automatically available to service providers” (see id.) means that the identity provider transmits that information in Yared’s redirect message or why this transmission would have been obvious.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or the equivalent and 2-3 years of work experience with computer networks, or the equivalent.” Ex. 1003 ¶ 14. Patent Owner does not present a proposed level of ordinary skill. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, which comports with the teachings of the ’962 patent and the asserted prior art. C.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under the same standard applied by district courts, claim terms take their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Based on the current record, no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). D.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,243,962 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · May 29, 2020 · IPR2019-01413 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Rovi Guides’ rehearing request, leaving institution of inter partes review of claims 1–22 in place because the request showed no matters misapprehended or overlooked.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d)” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), did not warrant terminating or staying this case. Dec. 26–27. Specifically, we explained that, according to Arthrex, “no constitutional infirmity [exists] in an institution decision.” Id. at 27 (quoting Arthrex, 941 F.3d at 1340) (alteration in Decision). We also explained that we generally do not stay cases pending an appeal to the Federal Circuit or the Supreme Court. Id.” slip op. at 2
NonePatents in suitUS 9,232,254 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · May 27, 2020 · IPR2019-00224 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–4, 6–11, 13–18, 20–25, 27, and 28 are unpatentable, primarily as anticipated by Alexander and, for dependent claims, as obvious over specified combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). On the complete record now before us, we adopt Petitioner’s definition because it is consistent with the problems and solutions in the prior art of record. Petitioner’s definition also is consistent with the ’585 Patent Specification. For instance, we determine that Petitioner’s definition more appropriately reflects that a person having ordinary skill in the art would have had two or more years of relevant industry or research experience, whereas Patent Owner’s definition omits research experience. Also, Petitioner’s definition appropriately reflects the relevance of experience in digital storage devices, which is more consistent with the evidence of record in this case than Patent Owner’s definition which omits experience in digital storage devices. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art). Neither party identified how the result would differ based on the level of ordinary skill in the art. Also, our conclusions do not turn on which definition is selected.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“storage option” as Patent Owner proposes. Instead, we maintain our determinations in the Decision to Institute. Inst. Dec. 17–18. In particular, we determine that the broadest reasonable construction encompasses the exemplary storage options described in the ’585 Patent Specification, such as “language tracks,” “video formats,” “parental control” on storage, and automatic erasure of viewed programs. Ex. 1001, 15:51–61, Figs. 14, 16. We also determine that the ’585 Patent Specification describes an episode of a program such that the two terms are not synonymous and the term “program” may include more than one episode. We need not make further determinations to resolve a dispute in this proceeding. We, however, note that although we do not limit “storage option” as Patent Owner proposes, for completeness, we consider Patent Owner’s narrower construction of “storage option” when addressing Petitioner’s obviousness challenges below. slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“consideration of those portions identified by Patent Owner, we do not agree it supports limiting “program” in the manner argued by Patent Owner. PO Resp. 13–19 (citing, e.g., Ex. 1001, 4:37–41, 5:29–32, 6:2–3, 7:24–26, 7:62– 66, 8:51–55, 9:3–40, 16:8–17, 16:44–46, 16:59–62, Figs. 5A, 6, 7b, 15, 16); PO Sur-Reply 2–6 (citing, e.g., Ex. 1001, 6:37–42, 6:56–60, 6:44–48, Figs. 5A, 5B, 6, 7A, 7B, 17). For instance, the ’585 Patent Specification’s description of associated program data does not limit the term “program” to a single episode. Ex. 1001, 9:13–21 (describing associated program data as including “the date and time the program was recorded, the channel the program was recorded on, the time duration of the program, the program title and description, cast members, parental control ratings, program categories, episode information, recorded languages and video formats”). Additionally, the ’585 Patent Specification’s description of transmitting video and audio does not limit “program” to a single episode. Ex. 1001, 4:37–41 (describing that “program listings, programming and program data associated with the programming (hereinafter ‘associated program data’) from television distribution facility 16 (FIG. 1) are received by control circuitry 42 of user television equipment 22”), 9:3–10 (describing that “[t]he program and associated program data may even be stored in non-contiguous space on the storage medium”), 16:8–10 (describing that “the programs and associated program data are stored on digital storage device 49 using the program guide”). Furthermore, the ’585 Patent Specification’s description of user interfaces and steps performed by a user also does not limit the term “program” to a single episode, for example, because they illustrate or pertain to daily programming schedules showing what is broadcast during particular timeslots, but do not limit the term “program” or indicate it has the same meaning as “episode.” See, e.g., id. at 7:24–26, 7:62–66, 8:51–55, 9:3–40, 16:8–17, 16:44–46, 16:59–62, Figs. 5a, 5b, 6, 7a, 7b, 15, 16, 17). The intrinsic record is clear. Nevertheless, Patent Owner’s extrinsic evidence including digital television standards describes technical details regarding transmission and does not require limiting “program” to a single episode. See, e.g., Ex. 2016 ¶¶ 61–64; Ex. 2009, 1, 4, 8, 18, 19. We have considered Patent Owner’s arguments and evidence and conclude that although the term “program” encompasses a single episode, based on the disclosure in the ’585 Patent Specification, the broadest reasonable interpretation of “program” is not limited such that “program” cannot include more than one episode and the term “program” is not synonymous with “episode.”” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“After considering the arguments and evidence of both parties, we agree with Petitioner’s contentions, and we credit and give significant weight to the testimony of Mr. Wechselberger (see, e.g., Ex. 1025 ¶¶ 73–75, 78, 80–93) over that of Mr. Tinsman as both Petitioner’s contentions and Mr. Wechselberger’s testimony are consistent with the evidence of record and the broadest reasonable interpretation of “storage option.” For instance, Alexander describes an option for storing a single or multiple episodes of programs. In particular, Alexander’s recording “‘regularly’ option” results in “recording a particular program” regularly. Ex. 1018, 11:10–11 (emphasis added). Alexander describes alternatively that the viewer can select “a record frequency of once, daily or weekly.” Id. at 25:40–41; see also id. at 11:48–49 (describing selection of “Once, Daily, Weekly, or Regularly as a record-scheduling option”). Furthermore, “when the viewer selects the ‘Regularly’ record option, the viewer is also given the option of filtering reruns” (id. at 11:35–37) and, if the viewer has selected the rerun filter option for that program title and the EPG determines “the episode is a rerun, then the EPG will not record the episode” (id. at 11:39–43).” slip op. at 32
Patent outcomesUS 7,827,585 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,827,585 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · May 6, 2020 · IPR2020-00101 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Microsoft did not show a reasonable likelihood that claims 1–15 were obvious over Olkin and Kim, particularly as to the required confirmation step.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony of Dr. Houh, Microsoft argues that a person of ordinary skill in the art “would have a bachelor’s degree in computer science, electrical and/or computer engineering, or equivalent training, and two years of experience in computer networking and information security.” Pet. 9 (citing Ex. 1008 ¶ 43 (Dr. Houh’s testimony to that effect)). For the purpose of its Preliminary Response, Uniloc does not dispute Microsoft’s assertion. See Prelim. Resp. 10–11. We find that Microsoft’s proposed level of ordinary skill is consistent with the teachings of the ’359 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself may provide evidence as to the appropriate level of ordinary skill). Therefore, we adopt Microsoft’s uncontested formulation as the level of ordinary skill for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Microsoft contends that the claims of the ’359 patent “do not require proposed constructions that differ from the claim language in order for the Board to compare the prior art to the claims.” Pet. 9. Likewise, Uniloc “contends that no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Prelim. Resp. 10. In light of the parties’ arguments and evidence, we agree with the parties that it is unnecessary to expressly construe any claim terms for our determination of whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). Nevertheless, our interpretation of the ’359 patent claims is informed by the disclosure and prosecution history, and we will discuss our interpretation of pertinent claim terms in the context of our analysis in the section below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Finally, Microsoft has not sufficiently explained why a person of ordinary skill in the art would have modified Olkin’s system by adding an independent verification step. Olkin uses “conversation keys,” which are associated with a flow of messages “from a single source to one or more destinations.” Ex. 1003, 21:48–50. In Olkin’s system, the originator sends the messages to members of a recipient list, but the intended recipients on that list need not be authenticated before, or even after, the originator sends the message. See Ex. 1003, 9:55–60 (an intended recipient need not be registered with the system when the originator requests the key); id. at 10:3– 7 (alternatively, the security server “need not be concerned with whether the receivers . . are registered”). Microsoft has not adequately explained why, in Olkin’s system, where messages may be broadcast to multiple recipients before those recipients are even registered, a person of ordinary skill in the art would have had reason to independently verify to the recipients that the originator asked for, and was sent, an encryption key. For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,495,359 - Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentablePTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand
On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …
RulingsRemand decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21
Patent outcomesUS 6,901,498 mixed§ 103 obviousnessPatents in suitUS 6,901,498 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00292 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving in place its denial of authorization to seek a stay or termination based on Arthrex.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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.” Id.” slip op. at 2
NonePatents in suitUS 7,937,394
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.