- Intuit Inc. v. Samesurf, Inc.No claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–16 were not shown unpatentable over Lebrun and Wang or over Prajapat and Wang because the combinations did not teach key invitation and webpage retrieval limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, 7 Patent Owner has not offered objective evidence of non-obviousness. See generally PO Resp.; PO Sur-reply; see also Pet. 21 (indicating Petitioner is not aware of any evidence of secondary considerations). least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 12; see Dec. 10–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 37. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Strike new argumentNew argument disregardedGranted in part
“surfing server as forwarding the session-creation message to the invited web client. PO Sur-reply 12. Although Lebrun describes the group-surfing server as “informing the participants in the group-surfing server session” after receiving the session-creation message and creating the group-surfing session, Lebrun does not describe forwarding or otherwise sending the session-creation message to the participants. Ex. 1005, 32:26–28, 44:12–14. Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“receive webpage content from the website server in particular ways as identified in limitations [1e] and [1g]. Similarly, claim 1 requires the invitee device to retrieve data from the website server in response to receiving “the information related to the shared web browsing interaction from the synchronization server” (limitation [1f.iii]). For the reasons discussed above, Petitioner has not shown by a preponderance of the evidence its combination of Lebrun and Wang does so. For the required website server interaction, in its Petition, Petitioner relies on Lebrun’s description of an alternative embodiment applicable only when no cookies or other identity information are involved (Ex. 1005, 35:17–19). See, e.g., Pet. 30 (citing Ex. 1005, 35:17–19). As Patent Owner indicates, this alternative is not relevant to the subject matter recited in claim 1 which requires identity information. PO Resp. 45. Petitioner does not address this shortcoming in its Reply. See generally Pet. Reply. Rather, in its Reply, for website server interaction, Petitioner relies on Lebrun’s functionality of sending a web page from the web server to the web client as shown in Lebrun’s Figure 1. See, e.g., Pet. Reply 11 (citing Ex. 1005, 32:21–24, 31:27–30, Fig. 1). Specifically, Petitioner contends that Lebrun discloses that (i) a URL for the initial web page is included in session-creation message 151 (Ex. 1005, 32:21–24), (ii) the web site sends a web page directly to the web client (Fig. 1), and (iii) the web site delivers information 132 to web clients or the group-surfing server 140 “in response Pet. Reply 11. Although this shows the web site sending a web page directly to a web client, the prior art of Lebrun does not do so in the manner required by the claims (limitations [1e], [1f.i], [1f.iii], [1g]).” slip op. at 46
Patent outcomesUS 9,483,448 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - PTAB · Feb 22, 2023 · IPR2019-01200 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings concerning claim 20 because the Board had not yet decided the remanded merits.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01199 · APJ Lynne E Pettigrew · IPR · Remand
On remand, the Board terminated the proceedings after settlement because it had not decided the remanded merits concerning claim 20.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01198 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings; it also granted in part their request to protect the settlement agreement.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - ROKU, Inc. v. Universal Electronics, Inc.All claims unpatentablePTAB · Jul 5, 2022 · IPR2021-00261 · APJ Minn Chung · IPR · Final written decision
Claims 3, 5, 6, and 18–20 were held unpatentable; claims 1, 2, and 4 were cancelled, and substitute claims 21–23 were denied for inadequate written-description support.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find that the parties’ proposals are not materially different despite minor differences in wording between them (e.g., “at least two years” of “industry experience, including in consumer electronics, graphical user interfaces, cable or satellite television systems, set-top boxes, multimedia systems, or programmable remote controls” under Petitioner’s proposal, as opposed to “two years” of “work experience relating to communications or consumer electronics” under Patent Owner’s proposed definition). See Pet. 15; MTA 8; RMTA 15. For purposes of this Final Written Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. These proposals are similar for all purposes relevant to this Final Written Decision, and both are consistent with the level of ordinary skill in the art reflected in the disclosure of the ’514 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Nonetheless, for this Final Written Decision, we adopt Patent Owner’s definition of a person of ordinary skill in the art at the time of the claimed invention. Our analysis and conclusions in this Final Written Decision would be the same regardless of whether Petitioner’s or Patent Owner’s definition of the level of ordinary skill in the art is adopted.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that no construction is necessary in this proceeding. Pet. 15. Based on the full record, for purposes of this Final Written Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“contends, citing the testimony of Mr. Tinsman, that a person of ordinary skill in the art would have been motivated to combine Seidel with Caris because Seidel suggests using remote control key presses to initiate the remote control programming process and a person of ordinary skill in the art would have looked to Caris for its explicit description of a remote control with a “dedicated button” used to initiate a remote control set-up process. Pet. 20– 21 (citing Ex. 1003 ¶¶ 119–126; Ex. 1005, 12:30–35, 12:67–13:2, 13:48–64; Ex. 1006, 5:17–24, 5:47–6:3). Petitioner further contends that a person of ordinary skill in the art would have recognized that implementing the dedicated button would have provided the user with a simple and efficient way to initiate the remote control programming process. Id. at 22 (citing Ex. 1003 ¶ 123). According to Petitioner, combining Caris’s dedicated button with Seidel would have furthered “Seidel’s express goals of facilitating the ease of programming and minimizing user frustration” and “enabling the set-top control unit 110 to ‘interact with the user to improve the accuracy, efficiency and/or simplicity of detecting the particular mode code.’” Id. (citing Ex. 1005, 3:54–58, 13:48–50; Ex. 1003 ¶ 123). In addition, Petitioner asserts that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Seidel with Caris because “[b]oth Seidel and Caris use common and similar remote controls to perform similar operations.” Pet. 21 (citing Ex. 1003 ¶¶ 124– 126). Petitioner further argues that it would have been obvious to combine Caris’s remote control having a dedicated button with Seidel because “combining Seidel with Caris would have resulted in merely combining known elements to yield predictable results.” Id. at 22 (citing Ex. 1003 ¶¶ 124–126). Based on the complete record and for the reasons explained by Petitioner, we find that Petitioner has demonstrated sufficiently the combination of Seidel and Caris teaches all recitations of claim 3. We also find that Petitioner articulates sufficient rationale for combining the respective teachings of Seidel and Caris in the manner proposed by Petitioner to arrive at the subject matter recited in claim 3. Having weighed each of the Graham factors, including the scope and content of the prior art and the differences between the prior art and the challenged claim, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 3 is unpatentable under 35 U.S.C. § 103(a) over the combination of Seidel and Caris.” slip op. at 27
- Expert testimonyOther
“Based on the complete record and for the reasons explained by Petitioner, we find that Petitioner has demonstrated sufficiently the combination of Seidel and Caris teaches all recitations of claim 3. We also find that Petitioner articulates sufficient rationale for combining the respective teachings of Seidel and Caris in the manner proposed by Petitioner to arrive at the subject matter recited in claim 3. Having weighed each of the Graham factors, including the scope and content of the prior art and the differences between the prior art and the challenged claim, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 3 is unpatentable under 35 U.S.C. § 103(a) over the combination of Seidel and Caris.” slip op. at 28
Patent outcomesUS 7,969,514 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,969,514 - Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Dodots Licensing Solutions LLCNo claims unpatentablePTAB · Jan 5, 2021 · IPR2019-01279 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 8–13, and 20–24 were not shown unpatentable under any asserted §103 ground because the prior art did not teach a separate NIM template excluding executable code.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a related field and have three or more years of experience” in the field. Pet. 8 (citing Ex. 1003 (“Madisetti Decl.”) ¶ 44). Patent Owner does not provide an alternative description of the proper level of ordinary skill or comment on Petitioner’s proposal. Petitioner’s proposal appears to be consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required where the prior art itself reflects an appropriate level and a need for testimony is not shown). We adopt this proposal for this Final Written Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “outside of and separate from any graphical user interface of any other application” In the Petition, Petitioner requests that we construe one term, found in element 1.F of claim 1: that presentation of the viewer graphical user interface (“GUI”) defined by the networked information monitor template be “outside of and separate from any graphical user interface of any other application.” Pet. 4–8. Petitioner argues that the correct construction should be “so that the viewer [graphical user interface] is distinct from and not presented within the frame of any other GUI generated by another application.” Id. Because our ultimate decision does not rest on the construction of this claim term, we do not construe it. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, 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) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The definition of NIM provided in the Specification describes a frame “through which content is optionally presented.” Ex. 1001, 5:21–24. Claim 1 also describes the subject of the definition in a NIM template alternatively as (a) a NIM (in 1.C), (b) “a viewer graphical user interface having a frame within which time-varying content in a web browser-readable language may be presented on a display associated with the client computing device” (in 1.B), or (c) a “viewer graphical user interface” (in 1.D, 1.F, 1.G). Id. at consistent with the use in the claim. With respect to the word “optionally” in the Specification definition, we note that, in the claims, time-varying content is recited as being presented on the display within a frame (element 1.G and the last element of claim 13). Id.; see also id. at 43:61–44:31. For these reasons, we determine that the correct construction of a NIM is “a fully configurable frame, with one or more controls, through which content is presented to the user,” and this is the interpretation we apply here.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In one embodiment, the NIM definitions are defined using Extensible Markup Language (XML), so that the NIM as a whole–the frame and the content within the viewer––is advantageously as flexible as standard web content. NIMs are extremely flexible, because the definition of the NIM is content, rather than compiled code. The NIM definition defines the structure of the NIM, and everything that is visible in a NIM is based on standard Internet content, such as HTML, dHTML, or GIFs, and is referenced or pointed to by the NIM definition. An “application”–type NIM, such as a web calendar or web mail, may be changed by the user, by the content provider, or by other content, while advantageously avoiding the need to distribute and support a hard-coded compiled application. The definition of a NIM thus includes everything that is needed for the NIM to be rendered and filled with Internet content. Id. at 21:45–60 (emphases added). From this disclosure, we understand that the Specification prohibits the NIM template from using compiled code or an executable application. Our review of the Specification did not identify disclosure of use of compiled code or an executable application by the NIM template.” slip op. at 16
Patent outcomesUS 8,510,407 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,510,407 - Global Tel*link Corporation v. Securus Technologies, Inc.Rehearing grantedPTAB · Jul 12, 2017 · IPR2015-01222 · APJ Kevin F Turner · IPR · Rehearing
The Board granted rehearing insofar as it addressed the request, but denied it otherwise, leaving claims 12 and 16–20 not shown unpatentable over Strubbe and Rae.
RulingsRehearing decision- RehearingRehearing, deniedGranted in part
“Ex. 1003 ¶ 335. Petitioner argues that Dr. Forys’ testimony is uncontroverted (Reh’g Req. 3), and we agree. Nowhere in the Decision do we dispute his testimony, only noting that it “is not supported by any cited evidence.” Dec. 33. We accept his testimony that charging a fee was a standard practice and was widely used. The issue raised in the Final Written Decision, however, resulting in our finding that Petitioner had not shown that claims 12 and 16–20 were unpatentable, was whether that testimony was ever tied to the disclosures of Strubbe or Rae or Petitioner’s proffered combination thereof. We remain persuaded that Petitioner failed to apply Dr. Forys’s general knowledge to the specific combination of Strubbe and Rae. Dec. 34. Petitioner argues that we misapprehended the Petition’s analysis (Reh’g Req. 2–3), but the full analysis is provided above. The analysis discusses what would have been standard practices and what would have been widely used, but such teachings are not taken in concert with the applied prior art references. As such, we are not persuaded that we misapprehended Petitioner’s analysis.” slip op. at 4
NonePatents in suitUS 8,750,486 - Global Tel*link Corporation v. Securus Technologies, Inc.Rehearing grantedPTAB · Jul 12, 2017 · IPR2015-01226 · APJ Kevin F Turner · IPR · Rehearing
The Board denied rehearing in all other respects, leaving in place the denial of the motion to amend proposed claims 29–50 as not shown patentable over the prior art.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). 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 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“reviewer all audio of the call, including background audio,” and “enables reconstruction of the call, including background noise,” respectively. Patent Owner construes these limitations from the perspective of the prior art, taking into account “the significant technical differences between systems” (id. at 7), so that some of the background audio would not encompass all audio of the call. We construe those limitations from the perspective that they do not recite “all background noise,” and a system that records all audio above a certain threshold would record all background noise above that threshold, even if other background audio, at levels below the threshold, would not be captured. Such a system would 4 capture all of the audio, above a threshold, including background audio, and would be commensurate with the specified limitations of claims 29 and 43. More generally, and consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We do not accept the intent of the patent drafter, unless it is clear that the drafter intends for a meaning of a terms or terms to be different from their ordinary meanings by defining the term in the specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the instant case, Patent Owner has indicated that no specific construction is required beyond applying the plain meaning of the terms when read in light of the patent specification. Reh’g Req. 8 (citing Paper 28, 15). Also in the instant case, Patent Owner may have intended to distinguish over systems that intentionally avoiding recording sounds, or are different than how typical prior art systems functioned, but we must examine the claim terms adopted, and construe them according to the broadest reasonable construction consistent with the specification. “All audio of the call” is consistent with all of the audio of a call captured, i.e., above a threshold level, even if portions of the audio below that threshold are not captured.” slip op. at 4
Claim constructionPatents in suitUS 8,135,115 - Securus Technologies, Inc. v. Global Tel*link CorporationRehearing grantedPTAB · Sep 12, 2016 · IPR2016-00267 · APJ Kevin F Turner · IPR · Rehearing
The Board granted rehearing only insofar as it addressed the request, but denied rehearing overall and maintained denial of institution because the petition did not show a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, deniedGranted in part
“public mode,” including specific citations, namely “Ex. 1005 at 16:24-31; 18:2- 8.” See Reh’g Req. 7. Those citations fall short, however, because they were not provided in the Petition. The closest citation provided by Petitioner is “Ex. 1005 at 16:54-17:3,” at page 41 of the Petition. The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. We must make our determination regarding institution based on what the Petition actually presented and not what it could have reasonably contained had it been reformulated. In re 5 Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *10 (Fed. Cir. July 25, 2016) (holding that the Board is not “free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR”). slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. 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)) (discussing the burden of proof in inter partes review).” slip op. at 4
- BurdenDecided for patent owner
“As such, it is not clear how Petitioner could have relied solely on the public mode of Bulriss when neither the public nor the privacy modes are acknowledged in the Petition. If an understanding of the public mode of Bulriss was important in the context of Petitioner’s case against the claims of the ’816 Patent, no such import or discussion of the public mode was provided in the Petition. The Board is tasked with determining whether a petitioner would be reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable in view of the petition filed. 35 U.S.C. § 314(a). It is the Petitioner, in its Petition, that must demonstrate whether there is a reasonable likelihood that at least one claim is unpatentable under the assert ground. See 37 C.F.R. § 42.108(c). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. 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)) (discussing the burden of proof in inter partes review).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“communications” limitation and its proffered motivation to combine Bulriss and Hesse. Reh’g Req. 11–14. We have previously discussed and decided these issues in the Denial of Institution Decision, and we are not persuaded of error in their consideration. Dec. 8–9, 12. As we discussed, the motivation to combine cannot come from the subject patent itself, such that even if “[t]he motivation to combine is therefore explicit in the references” (Reh’g Req. 14), it does not cure the deficiencies of the combination of Bulriss and Hesse provided in the Petition, as discussed in the rest of the Decision. Likewise, the new citations to Bulriss (Reh’g Req. 12), not found in the Petition, cannot be used to show that we misapprehended the arguments supplied in the Petition or that we used unreasonable judgment in determining that one of ordinary skill in the art would not have been motivated to provide scheduling of video visits in the context of Bulriss, in view of Hesse, for the reasons supplied by Petitioner. Dec. 12. For the foregoing reasons, Petitioner has not shown that the Board’s findings are not supported by substantial evidence, nor that the Board abused its discretion 6 in determining that Petitioner failed to demonstrate that at least one of the challenged claims of the ’816 Patent is unpatentable.” slip op. at 6
§ 103 obviousnessPatents in suitUS 7,256,816 - Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentablePTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision
Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43
Patent outcomesUS 8,908,838 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,908,838
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.