- Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2
- Expert testimonyOther
“being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25
Patent outcomesUS 7,436,980 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,436,980 - Google LLC v. Wildseed Mobile, LLCSome claims unpatentablePTAB · Jun 3, 2024 · IPR2023-00247 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–14 and 16–22 are unpatentable as obvious over the asserted combinations; claim 15 was not shown unpatentable because the SMS theory did not establish rendering instructions.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 12. Prior to institution, Patent Owner agreed (Prelim. Resp. 9), and we applied, each term its ordinary and customary meaning in our Institution Decision. Dec. on Inst. 8 (“At this stage, no need exists to construe any claims expressly to resolve the parties’ disputes”). In its post-institution briefing, Patent Owner does not argue for construction of any particular claim term. Although Patent Owner argues that Rothschild does not teach “generate a hot link message,” we determine that the controversy is over the teachings of Rothschild and the assertions presented by Petitioner rather than the construction of that term. See, e.g., Pet. Reply 15 (“by inserting the advertisement into the email and formatting it for transmission, Rothschild’s email server generates the advertisement”); Tr. 8:5–11 (“the advertisement [is] inserted into the email, and then it is formatted into something that the user can interact with. In other words, it becomes a hot link at that point.”); PO Sur-reply 1 (“the Petition expressly relied on creating ads (allegedly ‘hot links’) during message formatting”), 3– 4 (stating that in the ’169 Patent, “[l]inks will be created” using “pre- cited sections, both parties acknowledge that “generat[ing]” a hot link requires pre-created content and some further action, differing only on whether Rothschild teaches any such further action. Consequently, we need not construe that phrase to resolve the parties’ disputes. 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1003 ¶¶ 18–20). Patent Owner applies Petitioner’s assessment of the level of ordinary skill for the purposes of this proceeding. PO Resp. 9. Determining the level of ordinary skill in the art involves various factors, 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). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is consistent with the ’169 patent and the asserted prior art.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
Patent outcomesUS 10,869,169 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,869,169 - Apple Inc. v. Personalized Media Communications LLCSome claims unpatentablePTAB · Sep 8, 2022 · IPR2016-01520 · APJ Kevin F Turner · IPR · Remand
On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable, and the contingent motions to amend remained denied.
RulingsRemand decision- RemandOther
“CONCLUSION After reviewing the record developed during trial anew and taking into account the Federal Circuit’s decision, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 of the ’635 Patent are unpatentable, and that Petitioner has not demonstrated by a preponderance of the evidence that claim 3 of the ’635 Patent is unpatentable.” slip op. at 103
- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“in the art would have understood “encrypted video” recited in claim 4 to exclude teletext and would recognize “video” to be distinct from static text and images. 754-PO Resp. 19. Petitioner counters that “video” is any information that is visually perceivable including the display of static pictures. 754-Pet. Reply 5 (citing IPR2016-00754, Ex. 2028, 10–12; IPR2016-00754, Ex. 1003, 278:21–24, 258:16–19, 13:38–52, 188:17–18, 249:53–56). During oral argument, Petitioner argued that a single image can qualify as video. IPR2016-00754, Paper 40, 14:24–25 (“JUDGE WARD: So one image qualifies as video. MR. SERNEL: I think arguably it would.”). We do not agree with Petitioner’s position that the display of a static image constitutes “video”; otherwise, there would be no difference in an image and video. We determine that video requires moving visuals. In its Preliminary Response, Patent Owner stated that video shows movement and changes within an image. IPR2016-00754, Paper 7, 60 (citing IPR2016- 00754, Ex. 2001 ¶ 122). Petitioner’s Declarant Mr. Wechselberger seems to agree as he describes that “[s]uccessive frames of text and/or graphics presented on the display means 20 constitutes video.” IPR2016-00754, Ex. 1001 ¶ 141. We determine that the construction of the term “video” recited in claim 4 of the ’635 Patent means “visually perceivable non-static imagery.”” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“teletext in accordance with its well-known capabilities as part of a television program. IPR2016-00754, Ex. 1001 ¶ 201. As the Supreme Court instructed in KSR, it is proper to “consider the inferences and creative steps a person of ordinary skill in the art would employ.” 550 U.S. at 401. Based on the foregoing, we determine Petitioner has provided a sufficient rationale for the modification of Guillou. Id. at 418. Accordingly, we determine the record supports Petitioner’s proposed modification of Guillou such that the encrypted materials comprise a portion of a television program, and we adopt Petitioner’s contentions as our own.” slip op. at 57
Patent outcomesUS 8,559,635 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,559,635 - Customplay, LLC v. Clearplay, Inc.Some claims unpatentablePTAB · Jul 21, 2015 · IPR2014-00383 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–22 and 24–29 are unpatentable as obvious over Abecassis and Malkin; claim 23 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“The Specification states that “navigation objects” “define portions of the multimedia content that should be filtered.” Ex. 1001, col. 4, ll. 52–54. The Specification also discloses that each navigation object contains a start position, a stop position, and a filtering action to be performed on the portion of the multimedia content that is defined by the start position and stop position. Id. at col. 4, ll. 54–56. Independent claims 1 and 15 mirror this language, requiring that each navigation object comprise a start indicator associated with a first position, an end indicator associated with a second position, and at least one filtering action. The challenged claims also require the at least one filtering action of the navigation object to include a “skip filtering action.” Accordingly, the broadest reasonable construction of the phrase “navigation object” in light of the Specification of the ’318 patent is information that defines both (1) a portion of multimedia content to filter and (2) at least one filtering action to be taken on a defined portion of multimedia content, the filtering action including, but not limited to, a skip filtering action.” slip op. at 6
- Skill levelSkill level patent owner adoptedDecided for patent owner
“prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). Dr. Kiaei opines that a person having ordinary skill in the art on October 23, 2000 would typically have (i) a M.S. degree in electrical engineering or computer science (or a related field) with at least a 2-3 years of experience working with signal, video, or data processing, or (ii) a B.S. in electrical engineering or computer science (or a related field) with significant practical experience (4 or more years) working with signal, video, or data processing. Ex. 2001¶ 15. The prior art also reflects a skill level in the relevant technology. Okajima, 261 F.3d at 1355. Petitioner does not propose a specific level of ordinary skill. Based on our review of the ’318 patent, the types of problems and solutions described in the ’318 patent and cited prior art, and the testimony of Dr. Kiaei, we agree with Dr. Kiaei and adopt the level of ordinary skill proposed by Dr. Kiaei.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Here, it is clear, based on the reference disclosures, that Abecassis discloses filtering actions taken with respect to the segments defined by start and end indicators (but not included with the indicators in a single “navigation object”). Whether those filtering actions are provided by the end-user, as suggested by Abecassis, or are pre-programmed as part of the video map, as suggested by Malkin, would have been an obvious choice for a person of ordinary skill and creativity. The rationale for the modification comes from the references. First, Abecassis identifies the desirability of incorporating “capabilities and environments that automatically customize the playing of videos to satisfy the particular video requirement” of various viewers, and that deliver “a more enjoyable video experience without requiring the level of active participation inherent in interactive systems.” Ex. 1004, col. 1, ll. 45–52. Abecassis also states the desirability for “automated selective retrieval of non-sequentially stored, parallel, transitional, and overlapping video segments” (id. at col. 2, ll. 1–3); “automated capabilities for efficiently retrieving and playing only a specified class, category, or subject matter included in segments within the selected video” (id. at col. 2, ll. 50–53); and “intermittent content skipping methods” (id. at col. 3, l. 2).” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › NexusDecided for petitioner
“7. Objective Indicia of Non-Obviousness Patent Owner argues, without citation to any supporting evidence, that “secondary considerations [of commercial success] support the validity of the claims.” PO Resp. 61. Objective criteria, such as commercial success, constitute independent evidence of non-obviousness. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2013). The objective indicia, however, must establish a nexus with the claimed subject matter. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). Here, Patent Owner provides argument, but no evidence, of the alleged commercial success.8 See, e.g., PO Resp. 61 (“[s]ince 2001, [Patent Owner] has had gross sales of $21 million”). Patent Owner also fails to provide any evidence of the relevant market share, that the sales were due to the claimed navigation objects as argued, or that the alleged commercial success is due to the patented invention rather than other factors.” slip op. at 32
Patent outcomesUS 7,543,318 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,543,318
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.