- PTAB · Dec 19, 2023 · IPR2023-01062 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted review of claims 27–33 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’095 patent. Thus, we institute an inter partes review of all challenged claims of the ’095 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that a “person of ordinary skill in the art of the ’095 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of 7 At this stage of the proceeding, Patent Owner has not offered any evidence of secondary considerations. See generally Prelim. Resp. testing of twisted-pair data cables.” Pet. 11 (citing Ex. 1007 ¶ 13). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1–2 years).” Id. (citing Ex. 1007 ¶ 13). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes express constructions for “data communications cable,” “dielectric pair separator,” “substantially flat,” “configurable,” and grooves.” Pet. 12–18. Patent Owner proposes an express construction of “twisted pairs” of insulated conductors. Prelim. Resp. 10–17. As explained below, on the present record, we provide a preliminary construction of the “dielectric pair separator,” “substantially flat,” configurable,” “grooves,” and “twisted pairs” and determine that we need not expressly construe any other claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) ) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy). 1. Preamble The preambles of claims 27 and 31 recite a “data communications cable comprising.” Petitioner asserts that the preambles merely states an intended purpose and are not limiting. Pet. 12. We determine that no construction of this term is required at this stage of the proceedings to resolve any issues in dispute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “dielectric pair separator” Petitioner asserts that the ordinary and customary meaning of a “dielectric pair separator” in view of the intrinsic record is a separator that serves as a dielectric medium and that the term does not require that the separator consist entirely of dielectric material. Pet. 12 (citing Ex. 1007 ¶ 74; Ex. 1001, claim 24 (requiring that the dielectric pair separator have Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely that a dielectric pair separator is “a separator that serves as a dielectric medium” and there is no requirement that the separator consist entirely of dielectric material. 3. “substantially flat” Claim 27 recites “the configurable dielectric pair separator being substantially flat.” Claim 31 requires that the “configurable dielectric pair separator include[e] a substantially flat dielectric tape.” Petitioner asserts that the ordinary and customary meaning of a substantially flat separator is a separator that is a substantially flat member prior to being formed into the cable assembly and that the term does not require that the separator be substantially flat in the finished cable. Pet. 13 (citing Ex. 1007 ¶ 76; Ex. 1001, 6:12–25). Petitioner asserts that this construction is consistent with the specification and the construction adopted by the Patent Office during reexamination of the related Patent No. 6,998,537 (“the ’537 patent”) and by the district court. Pet. 13–15 (citing Ex. 1001, 6:12–2, Figs. 5–11, 13; Ex. 1006, 10–11; Ex. 1007 ¶¶ 77–80; Ex. 1052, 3–4). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely, a separator that is a substantially flat member prior to being formed into the cable assembly, and that the term does not require that the separator be substantially flat in the finished cable. 4. “configurable” Independent claims 27 and 31 both recite a “configurable dielectric pair separator.” Petitioner asserts that the ordinary and customary meaning of a “configurable” separator in view of the intrinsic record is “flexible (citing Ex. 1007 ¶ 81). Petitioner further asserts that this construction is consistent with the construction adopted by the district court. Id. (citing Ex. 1052, 1–2 Ex. 1007 ¶¶ 81– 84). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that “configurable” means “flexible enough to be formed or shaped in the course of making the cable.” 5. “grooves” Petitioner states that, for the purposes of this proceeding, Petitioner adopts the definition provided by the district court in prior litigation: “Regions within a cable that are substantially physically separated from other regions with[in] the cable by a pair separator; i.e., they are formed by, but need not be part of, the separator.” Pet. 18 (citing Ex. 1052, 3). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that grooves are regions within a cable that are substantially physically separated from other regions within the cable by a pair separator.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,570,095 - PTAB · Dec 19, 2023 · IPR2023-01061 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on claims 19, 20, and 22 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’537 patent. Thus, we institute an inter partes review of all challenged claims of the ’537 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner argues that a “person of ordinary skill in the art of the ’537 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables.” Pet. 14 (citing Ex. 1007 ¶ 12). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g.,1–2 years).” Id. (citing Ex. 1007 ¶ 12). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “unshielded communications cable” The preamble of claim 19 recites “[a]n unshielded communications cable comprising.” Petitioner asserts that the preamble merely states an intended purpose and is not limiting. Pet. 15–17. Petitioner further asserts that although the term “unshielded” was added through amendment, “the same response amended the body of claim 19 to add the substantive limitation, specifying that separator ‘consists of non-conductive, dielectrical materials” in order to distinguish art having a separator of shielding tape formed of meatal and plastic laminate. Pet. 16 (citing Ex. 1043, 8). We determine that no construction of this term is required at this stage of the proceedings to resolve any issues in dispute.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that the ordinary and customary meaning of a “substantially flat’” separator in view of the intrinsic record is a separator that is a substantially flat member prior to being formed into the cable assembly and that the term does not require that the separator be substantially flat (i.e., free of any bends or folds) in the finished cable. Pet. 17 (citing Ex. 1007 ¶ 65). Petitioner asserts that this construction is consistent with the specification and the construction adopted by the Patent Office during reexamination and by the district court. Pet. 17–20. Patent the purposes of this Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely, a separator that is a substantially flat member prior to being formed into the cable assembly; and further preliminarily determine that the term does not require that the separator be substantially flat (i.e., free of any bends or folds) in the finished cable. 3. “configurable dielectric separator” Claim 19 recites a “configurable dielectric separator.” Petitioner asserts that the ordinary and customary meaning of a “configurable” separator in view of the intrinsic record is “flexible enough to be formed or shaped in the course of making the cable.” Pet. 20 (citing Ex. 1007 ¶ 70). Petitioner further asserts that this construction is consistent with construction adopted by the district court. Id. (citing Ex. 1052; Ex. 1007 ¶¶ 70–74). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that “configurable” means “flexible enough to be formed or shaped in the course of making the cable.”” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,998,537 - Apple Inc. v. Dodots Licensing Solutions LLCInstitution deniedPTAB · Dec 15, 2023 · IPR2023-00937 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution on claims 1–21 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9. III. CONCLUSION Petitioner’s invalidity contentions rely, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 9. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 18
- BurdenDenied
“We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) and insufficient indication on the record that the appendices have been incorporated into the ’695 patent, and that as a result, the relied-upon appendices do not qualify as prior art under 35 U.S.C. § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are neither part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 21 (citing 65 Fed. Reg. 57,024; 35 U.S.C. § 122(b)(1)). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’545 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:13–15. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 17
§ 102 anticipationPatents in suitUS 9,369,545 - PTAB · Dec 15, 2023 · IPR2023-01056 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review on all challenged claims and all asserted grounds after finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’030 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“partes review). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). The parties do not argue for any express claim construction. Petitioner argues that it “presently believes the plain meaning is enough to resolve this petition.” Pet. 14. Patent Owner’s Preliminary Response has no separate section addressing claim construction. See Prelim. Resp., passim. The parties, however, dispute the meaning of the term “lateral edge” of the two layers of the dielectric material, as recited by the independent claims. See Pet. 36–37; Prelim. Resp. 19–26. We discuss “lateral edge” below in the context of the parties’ arguments regarding patentability. Infra § II.E.4. The parties may propose and support constructions of the term “lateral edge” during trial. On the present record, we determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of ordinary skill in the art, does not include the front or back edges, but rather refers to the edges of the claimed barrier tape “running along the sides of the tape parallel to (or in) the longitudinal direction.” Prelim. Resp. 19– 20, 26. Patent Owner argues that this construction is supported by the Specification (citing Ex. 1001, 7:64–8:25, 8:38–46; Figures 3B–3E, Ex. 2001 ¶¶ 58–61) and the art cited by Petitioner (citing Ex. 1010, 23:58– 67; Ex. 1009, 2:20–24, 2:42–46, 4:27–33, 4:34–40, 5:65–75, Figs. 2, 3, 10; Ex. 2001 ¶¶ 62–65). Id. at 19–24. On the present record, and for the purposes of preliminarily discussing the term “lateral edge” in the context of the parties’ Ground 3 arguments, we understand “lateral edge” as referring to the edges of the claimed barrier tape “running along the sides of the tape parallel to (or in) the longitudinal direction,” and as not including the front or back edges. Prelim. Resp. 26. Patent Owner provides reasonable support for this interpretation in the ’030 patent Specification and other references. Id. at 19–24. We note again that in Ground 3, Petitioner argues that lateral edges may include the “front” and “back” edges of the dielectric material, “in that they extend laterally (as compared to extending along the longitudinal axis)” as shown in Petitioner’s annotated Figure 13C of Glew (Pet. 36–37), but argues in Grounds 1 and 4 that the lateral edges may be along the sides of the dielectric material, as shown in Petitioner’s annotated Figures 8D and 11 of Cook (Ground 1) and annotated Figure 13C of Glew (Ground 4). Pet. 20–21, 49. Petitioner’s inconsistent position on the interpretation of the “lateral edge” term among its Grounds 1, 3, and 4 arguments undermines its position as to the interpretation of the term, and undermines its position that Glew discloses this limitation under an anticipation standard. Accordingly, we are unpersuaded that Petitioner has met its burden of demonstrating a reasonable likelihood of prevailing on its Glew-based anticipation arguments.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “a person of ordinary skill in the art (POSITA) would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Patent Owner’s declarant asserts that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry,” and does not agree industry experience specifically with respect to twisted-pair data cables would be necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner states, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,991,030 - Amazon.Com, Inc. v. Lexos Media IP, LLCInstitutedPTAB · Dec 12, 2023 · IPR2023-01001 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1, 38, and 53 on all asserted grounds, finding a reasonable likelihood of unpatentability over Malamud and Malamud with Nakagawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1, 38, and 53 of the ’449 patent on all grounds of unpatentability presented.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Fintiv Memorandum states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)); see id. at 7–9. The Fintiv Memorandum explains that such a stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner provides a Sotera stipulation. Pet. 63. Specifically, Petitioner stipulates that if we institute review, “Petitioner will not pursue the grounds raised, or that reasonably could have been raised, in this IPR.” Id. (referencing Sotera).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We apply a two-part test when evaluating whether to exercise discretion under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential) (“Advanced Bionics”). Specifically, we consider: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the claimed priority date would have had experience in the fields of human factors engineering or human computer interaction. The POSITA would have at least a bachelor’s degree in computer science, computer engineering, human factors engineering, or a related field and would have had at least two years of relevant work experience in the fields of UI design, or equivalent experience. Pet. 7 (citing Ex. 1003 ¶¶ 31–35). At this time, Patent Owner does not contest Petitioner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 28; see Ex. 2001 ¶ 29. For the purposes of this Decision, we adopt Petitioner’s formulation for the level of skill of one of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’449 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art)” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,118,449 - Amazon.Com, Inc. v. Lexos Media IP, LLCInstitutedPTAB · Dec 12, 2023 · IPR2023-01000 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claim 72 on all three obviousness grounds: Malamud; Malamud with Nakagawa; and Nielsen with Malamud.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Fintiv Memorandum states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)); see id. at 7–9. The Fintiv Memorandum explains that such a stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“However, as Petitioner correctly asserts, the arguments made in the 1749 IPR were markedly different from the arguments presented in this proceeding with respect to whether and how Malamud teaches “specified content information.”. Pet. 55–56. The 1749 IPR petitioner relied on information in Malamud’s transmitted message that “tells the operating system what type of cursor to display and sets forth the contents and type of information to be displayed in the cursor” (Ex. 1004, 5:49–52) for teaching the “specified content information includ[ing] information that is to be displayed on said display of said user’s terminal” (limitation c.i.2) in claim 72. 1749 IPR, Paper 21 (1744 IPR final written decision), 17. This led to a deficiency in the petition’s showing for the recitation (limitation c.ii of claim 72) that the cursor image is modified “responsive to movement of said cursor image over a display of said at least a portion of said information to be displayed on said display of said user’s terminal.” Id. at 17–19, 24–26. It was this argument in the 1749 IPR that was found to be fatal to arguments of unpatentability regarding claim 72 of the ’102 patent and an additional claim at issue in that proceeding. Id. at 25–26 (“Petitioner has not adequately demonstrated how Malamud . . . teaches or suggests this limitation because it has failed to explain how Malamud’s cursor image could exhibit movement over itself.”). Here, however, Petitioner does not rely on Malamud’s transmitted message as including the “specified content information” of limitation c.i.2 as the petition in the 1749 IPR did; rather, Petitioner here relies on the application program in Malamud as including this information. Pet. 34, 37; see infra at § II.E.2. We consider, therefore, with respect to Becton, Dickinson factor (d), this is a significant area in which there is no overlap between the arguments previously made, which were dispositive in the 1749 IPR, and the manner in which Petitioner in this proceeding relies on Malamud. Even though Malamud was before the Board in the 1749 IPR, the arguments presented in the Petition here were not previously considered by the Office.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claim of the ’102 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the claimed priority date would have had experience in the fields of human factors engineering or human computer interaction. The POSITA would have at least a bachelor’s degree in computer science, computer engineering, human factors engineering, or a related field and would have had at least two years of relevant work experience in the fields of UI design, or equivalent experience. 3 The present record contains no evidence or argument relating to secondary considerations. Pet. 7–8 (citing Ex. 1003 ¶¶ 31–35). At this time, Patent Owner does not contest Petitioner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 28; see Ex. 2001 ¶ 29. For the purposes of this Decision, we adopt Petitioner’s formulation for the level of skill of one of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’102 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 5,995,102 - Commscope Technologies LLC v. Belden Inc.Institution deniedPTAB · Nov 30, 2023 · IPR2023-01058 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because Patent Owner effectively disclaimed all challenged claims 1–8 and 48–50.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“A conference call was held with the parties on October 24, 2023, pursuant to Petitioner’s request for permission to file a motion requesting that the Board construe Patent Owner’s disclaimer of all challenged claims as a request for adverse judgment. Patent Owner opposed this request. During the call, Petitioner argued that it intended to rely on Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018) to argue that Patent Owner’s disclaimer should be construed to be a request for adverse judgment, which Petitioner argued was appropriate under the circumstances of this case. Patent Owner opposed, citing the Board’s precedential General Electric decision as governing in the present circumstances. General Electric, Paper 9 (relying on 37 C.F.R. § 42.107(e), denying institution when Patent Owner had submitted a pre-institution disclaimer of all challenged claims). During the call, we denied Petitioner’s request for authorization to file the motion. Although Arthrex permits the Board to grant adverse judgment when a patent owner cancels all claims at issue prior to institution (see Arthrex, Inc., 880 F.3d at 1350 (“37 C.F.R. 42.73(b) permits the Board to enter an adverse judgment when a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision” (emphasis added)), Petitioner failed to identify any persuasive reason why the Board should do so in present circumstances. See also Cisco Systems, Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13 (PTAB Mar. 14, 2021) (determining that denial of institution without granting adverse judgment was sufficient when Patent Owner had submitted a pre-institution disclaimer of all challenged claims); General Electric, Paper 9.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e).” slip op. at 8
NonePatents in suitUS 10,832,833 - ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentablePTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25
Patent outcomesUS 10,930,276 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,930,276 - PTAB · Oct 23, 2023 · IPR2023-00701 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–24 over all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Because, “[i]n the absence of specific evidence, we will not attempt to predict” whether a district court would stay “based on a variety of circumstances and facts beyond our control and to which the Board is not privy,” we find this factor to be neutral. See Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). 2.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (whether the same or substantially the same art or arguments previously were presented to the Office), and Becton, Dickinson factors (c), (e), and (f) relate to the second part of that framework (previous Office error). Advanced Bionics, 9– 11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’407 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner states: In the Lenovo ’407 IPR, the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Prelim. Resp. 10 (citing Ex. 1012,5 8). Patent Owner agrees with this standard and argues that it is the same as the standard Petitioner proposes. Id. We agree that there appear to be no significant differences. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same preliminary determinations under Petitioner’s formulation of the level of skill.” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,510,407 - Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27
- Strike new argumentNew argument consideredDecided for petitioner
“addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12
Patent outcomesUS 8,378,875 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,378,875
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.