• Realtek Semiconductor Corp. v. Future Link Systems, LLCInstitution denied
  PTAB · Dec 19, 2022 · IPR2022-01071 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Patent Owner disclaimed all challenged claims, 1–19.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDenied

    “II. ANALYSIS The Board will not institute an inter partes review when a Patent Owner has disclaimed all claims challenged in the Petition. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Electric Co. v. United Techs. Co. et al., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential); see also 35 U.S.C. § 253(a) (providing that a patentee may disclaim); 37 CFR § 1.321(a) (requirements for disclaimer). Our review of the record shows that Patent Owner has now filed a disclaimer meeting the requirements of § 1.321(a) and that all of the challenged claims have therefore been disclaimed. For that reason, the Petition is denied and we do not institute an inter partes review.” slip op. at 2

  None
  Patents in suitUS 8,099,614
• Nearmap US, Inc. v. Eagle View Technologies, Inc.Instituted
  PTAB · Dec 14, 2022 · IPR2022-01009 · APJ Russell E Cass · IPR · Institution

  The Board instituted review of claims 1, 2, 7, 8, 21, 22, 24, 25, 27, and 29 on all petition grounds, finding a reasonable likelihood of success on the Littleworth-Linder-Middlebrook obviousness challenge.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “when there is an early trial date in related litigation as part of assessing all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). The Board evaluates six factors when making this assessment. See Fintiv Order, at 5–6. Further, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8

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

    “standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Petitioner proposes constructions for two terms, “pitch” and “oblique perspective view.” 1. “Pitch” Petitioner argues that the term “pitch” should be construed to mean either “pitch” or “slope.” Pet. 8. Petitioner asserts that, during prosecution, the applicant stated that “prior versions of the claims ‘use[d] the word “pitch” while other places use the word “slope” and that ‘[t]hese words have the same meaning in the context of these claims, however to avoid confusion, the term “slope” [was] removed and replaced with the word “pitch” throughout to maintain consistency.’” Pet. 8 (citing Ex. 1002, 76– 77). Petitioner further argues that its construction is “supported by the ’961 patent itself which treats the terms interchangeably.” Id. (citing Ex. 1001, 1:52–67, 3:11–19, 4:19–30, 6:5–17, claims 1, 10, 16, 21–22, 24). Patent Owner does not dispute Petitioner’s proposed construction of “pitch” in its Preliminary Response. See Prelim. Resp. Based on the present record, we agree with Petitioner that “pitch” should be construed to encompass “pitch” and “slope.”” slip op. at 9

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

    “At the institution stage, the relevant issue is whether the record includes “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, Paper 29 at 13. As Hulu explains, the reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. Hulu additionally observes that, after institution, certain limited opportunities are available for a petitioner to present new evidence in support of its position, including in a motion to file supplemental information under 37 C.F.R. § 42.123. Hulu at 14–16. Based on the present record, we find that there is a reasonable likelihood that Littleworth was publicly accessible before the critical date of the ’961 patent. Petitioner introduces the testimony of Ms. Munford that “I have reviewed Exhibit NEARMAP-1005, “Three-Dimensional Mapping and As-Built Computer Modelling by Analytical Photogrammetry” by R.M Littleworth, D.M. Stirling and J.H. Chandler as published in International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5.” Ex. 1019 ¶ 6. This statement suggests that Ms. Munford reviewed information indicating that Exhibit NEARMAP-1005 was published in the International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5, and is sufficient for purposes of institution. As for Patent Owner’s argument that the 008 field does not show the date when Littleworth was cataloged by the Rochester Institute of Technology library, Petitioner introduces testimony from Ms. Munford that “the 008 field of the MARC record is reserved for denoting the date of creation of the library record itself.” Ex. 1019 ¶ 4. Ms. Munford further testifies that because the date of creation “typically occurs during the process of preparing materials for public access, it is my experience that an item’s MARC record indicates the date of an item’s public availability.” Id. Additionally, Ms. Munford states that because the 008 field “is the only date reflecting the inclusion of said materials within the library’s collection, it is my experience that an item’s 008 field accurately indicates the date of an item’s public availability.” Id. ¶ 5. Patent Owner does not introduce any expert testimony to the contrary, but rather relies on attorney argument about the nature of the 008 and 040 fields of a MARC record. Prelim. Resp. 38– 42. Based on the present record, we determine that the testimony of Ms. Munford provides sufficient evidence for purposes of institution that the 008 field of the MARC record for Littleworth indicates the date that Littleworth was cataloged and made publicly available.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,670,961
• Google LLC v. Parus Holdings, Inc.Institution denied
  PTAB · Dec 13, 2022 · IPR2022-01020 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, upon considering the present record, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 8. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Petitioner bases these contentions on declaration testimony from Mr. Lipoff. Id. (referencing Ex. 1002 ¶¶ 40, 85).” slip op. at 19

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

    “We agree with Patent Owner that the three independent claims include language that indicates that each claim encompasses a set-up stage and a retrieval stage. When construing a claim, we start with the language of the claims themselves. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). Claim 1 expressly recites that steps (a) through (h) are completed before step (i) and subsequent steps. Ex. 1001, 14:12–15; see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.” (citation omitted)). For claim 16, its preamble recites “[a] method for allowing a phone user to set up and subsequently retrieve information in an audio format from a pre-defined portion of a pre-selected web [site].” Id. at 16:13–15; accord id. at 16:17–62 (affirmatively reciting “pre-defined portion of said pre-selected web site” in multiple steps in the body of the claim); see also Pet. 13 (“Furthermore, a [person having ordinary skill in the art] would have understood that Claim 16’s preamble is similar to element 1(i) of Claim 1.”); Prelim. Resp. 22–23; cf. Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013) (concluding that a claim that recites “processing” an “electronic advertisement” necessarily indicates that “the creation of the ad must happen before the processing begins”).” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “2. Other claim terms Except as provided above, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. See 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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,516,190
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution denied
  PTAB · Dec 12, 2022 · IPR2022-01109 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied joinder and denied institution on all challenged claims and grounds because the petition was time-barred under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “Practice Guide instructs us that a party seeking to maintain multiple challenges to the same patent claims carries a heavy burden of establishing that multiple petitions are necessary. Petitioner contends that Patent Owner has not carried that burden. Joinder Opp. 1. We agree. Petitioner has not explained why the 1492 IPR is an insufficient challenge. It is true that the 135 IPR involves Plamondon, another reference. But Petitioner has not explained how Plamondon differs from Crowds, Border, or MorphMix, or why granting joinder with the 135 IPR would be in the interest of justice, given Petitioner’s involvement managing the1492 IPR challenging substantially the same claims. In the words of our Trial Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” TPG 60. We see no evidence in the record suggesting that The Data Company is unqualified to manage the 135 IPR, or that Petitioner would add anything significant to that proceeding in its understudy role.” slip op. at 12

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

    “III. DENIAL OF INTER PARTES REVIEW It is undisputed that Petitioner was served with a complaint alleging infringement of the ’319 patent more than one year prior to filing the Petition in this proceeding. See Joinder Mot. 2; Joinder Opp. 1. Accordingly, in view of the denial of the requested relief of joinder with the 135 IPR, institution of inter partes review as requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). IV. CONCLUSION For the foregoing reasons, we deny Petitioner’s Motion for Joinder. Because Petitioner is barred under 35 U.S.C. § 315(b) from seeking inter partes review of the ’319 patent, we deny the Petition and do not institute review as to any of the challenged claims.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Not reached

    “For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3

  Discretionary denial
  Patents in suitUS 10,257,319
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution denied
  PTAB · Dec 9, 2022 · IPR2022-01110 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on all challenged claims and grounds under § 314(a), and denied joinder because Petitioner could challenge the patent in the 1493 IPR.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “seeking to maintain multiple challenges to the same patent claims carries a burden of establishing that multiple petitions are necessary. Petitioner’s main argument for inter partes review institution and joinder is that, “it will represent Petitioner’s first and only IPR directed to the ’510 patent that will have been instituted.” Mot. Reply 2. Although we recognize that at the time of Petitioner’s statement it was true, since the filing of the Petition, we have granted the petition in the 862 IPR, and joined Petitioner to the 1493 IPR, where Code 200 is now the sole petitioner and controls the proceedings. Petitioner, Code200, has not explained why Plamondon is more material to the validity of the ’510 patent than Crowds, Morphmix, or Border presented in the 1493 IPR, nor explained why Petitioner needs more than one instituted proceeding. See TPG 59 (explaining why more than one petition on different grounds could be required). In short, no explanation has been provided as to why the 1493 IPR is not a sufficient challenge.” slip op. at 10

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

    “In considering a balanced assessment of all relevant circumstances in this proceedings, we are not persuaded that institution of this case serves to promote the efficient administration of the inter partes review process. See TPG 56. Accordingly, in consideration of the circumstances of this case, we exercise our discretion under § 314(a) to deny institution of review of inter partes review.” slip op. at 11

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 3 (PTAB Apr. 24, 2013); TPG 76. Our Trial Practice Guide states that “when an otherwise time-barred petitioner requests same party and/or issue joinder, the Board may exercise its discretion to permit joinder, but will do so only where fairness requires it and to avoid undue prejudice to a party.” TPG. at 75–76 (citing Proppant Express Invs. v. Oren Techs., IPR2018-00914, Paper 38 at 3–4 (PTAB Mar. 13, 2019) (precedential)). Here, considering that Petitioner has the control and opportunity to challenge the ’510 patent in the 1493 IPR, as discussed above, we determine that there is no undue prejudice to Petitioner. Accordingly, we deny Petitioner’s Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that the Motion for Joinder is denied; and FURTHER ORDERED that the Petition is denied as to all challenged” slip op. at 12

  Discretionary denial
  Patents in suitUS 10,484,510
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Dec 6, 2022 · IPR2022-00950 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command.” Pet. 10. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We also note that, although the specific language of Petitioner’s proposal differs somewhat from the expressions of the level of ordinary skill that we adopted in the related proceedings to determine whether to institute review, they are substantially equivalent. See Microsoft, IPR2022-00137, Paper 9 at 9–10; Google, IPR2022-00279, Paper 7 at 10–11.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction,” nor does Patent Owner propose any express construction of any claim term. See Pet. 10. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “2. Combination of Brown and Shuster Patent Owner disputes Petitioner’s reasoning for combining Brown and Shuster (together with Myers) as “based solely on hindsight.” Prelim. Resp. 64 (citing ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998)). We agree with this assessment because, as Patent Owner observes, “Brown discloses a web-based [interactive voice response] system with no inherent search capability and [that is] used to navigate Internet sites,” while Shuster “discloses a system for searching a wide area network and then displaying optimized search results such that users can find information easily and quickly.” Id. at 61 (emphases omitted). This difference, between navigation and searching, is meaningful, as Patent Owner illustrates with what it calls “a more realistic scenario.” See id. at 62.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,721,705
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Dec 2, 2022 · IPR2022-00949 · APJ Thu A Dang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable over the asserted Brown and Neal combinations, including the Shuster ground.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, 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 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. See Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). POSITA “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command or equivalent field,” wherein “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10

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

    “search for a product that is offered by multiple suppliers, a hierarchy of cascading searchable data sets in a database system is searched until a match is found. Pet. 32; see also Ex. 1008, Abstract, 5:58–60, 7:9–12. And, as Patent Owner points out, Neal’s system manager configures the predetermined hierarchy of data sets in the database system in which to search. Prelim. Resp. 33; see Ex. 1008, 5:58–64. We are persuaded by Patent Owner’s contention that a POSITA would not have been motivated to combine Brown’s system in which the list of choices of full title descriptions is refined for user selection until the user converges on one choice (see Ex. 1007, 6:41–50), with “a database system such as Neal in which the realm of possible results is already predefined by a system manager.” Prelim. Resp. 34–35. As Patent Owner points out, “[Petitioner]’s basis for the Neal combination hinges on the Brown exception condition where multiple hyperlink URLs are retrieved due to an ambiguous speech command.” Id. at 35–36. But “[w]ith no knowledge of ‘desired information,’ Neal’s sequential search methodology is meaningless when applied to Brown’s set of ambiguous hyperlink URLs.” Id. at 36. Petitioner’s contention that a POSITA would have been motivated to modify the system of Brown with the teachings of Neal does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, Petitioner’s obviousness position does not sufficiently explain why a person which the list of choices of full title descriptions is refined for user selection until there is no ambiguity (see Ex. 1007, 6:41–50), using Neal’s search of a favored supplier in a hierarchy of cascading searchable data sets. See Ex. 1008, Abstract, 5:58–60, 7:9–12. Indeed, Petitioner does not direct us to persuasive evidence that applying Brown’s IVR system using Neal’s sequential searching technique (Pet. 36–37) would have been expected to provide any advantage, outside the teachings of the ’402 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Yarowsky’s declaration testimony to support its contention that one of ordinary skill in the art would have combined the teachings of Brown and Neal such that “[i]f the data supplier (e.g., a website in Brown) does not have the desired information, then the search continues to the second preferred supplier of information, and so on until a match is found or all the websites have been visited.” Pet. 36–37. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See In re Magnum Oil Tools, 829 F.3d at 1380. Instead, we conclude that Petitioner uses improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 24

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,185,402
• ROKU, Inc. v. Universal Electronics, Inc.Instituted
  PTAB · Nov 30, 2022 · IPR2022-00943 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1–16: claims 1–11 and 13–16 on obviousness over Hart-787, Fu, and Rosenberg, and claim 12 with Hart-286 added.

  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 the challenged claims of the ’267 patent on all grounds of unpatentability presented.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 16 (citing Ex. 2001 (declaration of Dr. Michael S. Scordilis) ¶¶ 21–28). Dr. Scordilis asserts that Petitioner’s definition “imports a number of specific and nuanced work-experience requirements that are not necessary to understand the invention of the ’276 patent,” but also notes that he performed his analysis from the point of view of a person of skill as defined by each party and “the differences between [the different levels of skill] did not affect my overall conclusions.” Ex. 2001 ¶¶ 25, 28. Based on the present record including the disclosure in the ’267 patent, for the purposes of institution, we preliminarily adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill as reflected in the prior art. We find that this definition is consistent with the level of skill in the art as reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our decision here would not be different if we applied Patent Owner’s proposed definition, in which we would substitute “approximately” for “at least” to avoid ambiguity.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner, while arguing that no construction is necessary, asserts that the proper interpretation of “one or more commands” in claim 1 would include “conventional remote control commands.” Pet. 18–19. Patent dispute this assertion. Prelim. Resp. 16–17. We need not construe this claim term at this point in the proceeding for the purpose of institution. Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “On the present record and for the purpose of institution, we determine that Petitioner has adequately showed a proper combination of the prior art references. With respect to arguments regarding field of endeavor, we note that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In re Bigio in an inter partes context). Each of the prior art references is an “audio monitoring method[]” (Prelim. Resp. 28) in which information received by audio-receiving microphones is used to attenuate what is played by a device. Ex. 1004, code (57); Ex. 1005, code (57); Ex. 1006, code (57). are in the same field of endeavor. See Pet. 61 (citing Ex. 1003 ¶ 159). Additionally, based on the current record, we find Petitioner’s motivation to combine argument sufficient for institution. In particular, the distinction Patent Owner seeks to draw between the references does not undermine Petitioner’s argument and evidence that one of ordinary skill in the art would have, in order to effectuate Hart-787’s teaching of attenuating the audio output of a linked device if a user has indicated a command is to be issued, looked to Fu’s teaching of volume adjustment based on a predetermined threshold and Rosenberg’s teaching of a noise level threshold based on a measurement of environmental noise. Pet. 26–30. We additionally agree that Petitioner has, preliminarily and on this record, shown sufficiently that one of ordinary skill in the art would have been motivated to make the combination and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. Id. at 28– 31 (Ex. 1003 ¶¶ 89, 91, 93). Notably, we find particularly compelling Hart- 787’s express disclosure regarding the goal of improving SNR for spoken commands. Ex. 1004, 1:64–2:37 (cited at Pet. 28), 9:21–25 (describing attenuating the audio more if the ratio between the user’s utterance and the volume of the audio) (cited at Pet. 22, 27).” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,930,276
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Nov 28, 2022 · IPR2022-00948 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–26 were unpatentable over Danner or Danner and Woods.

  RulingsInstitution decision

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

    “Because Petitioner does not sufficiently show that this aspect of the claim would have been obvious over Danner, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Danner.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to voice commands, or equivalent field.” Pet. 13. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision.4 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, all terms of the Challenged Claims should be given their plain and ordinary meaning,” and Patent Owner does not propose any express construction of any claim term. See Pet. 14. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “We agree with Patent Owner that Petitioner insufficiently supports its contention that Danner’s application document database is “associated” with the components Petitioner identifies as corresponding to the recited “media server.” At best, Petitioner appears implicitly to apply a broad understanding of the term “associated,” but has not proffered any explicit construction of the term that we might evaluate in the context of the ’314 patent. In this respect, we note that Danner’s proxy browser 62 (and other components Petitioner identifies as part of the recited “media server”) is separated from application server 66 and web server 64 by components that Petitioner identifies as corresponding to the “internet.” See Pet. 34 (Petitioner’s annotated version of Danner’s Figure 2 identifying the “internet” in green). Neither Petitioner nor Dr. Yarowsky provides sufficient explanation how a database can be “associated” with a “media server” in the context of the ’314 patent with such a separation. See Ex. 1003 ¶ 91. We recognize that Petitioner advances an obviousness challenge, not an anticipation challenge. But Petitioner has described no clear modification to Danner that would result in Danner’s application document database 96 being “associated” with proxy browser 62 and related components. We decline to speculate how such a modification might be accomplished to meet the required association. Such association is not achieved merely because proxy browser 62 sends an instruction “to cause the application server to perform instructions stored in its database.” See Pet. 46 (emphasis added).” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,314
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Equo IP LLCAll claims unpatentable
  PTAB · Nov 28, 2022 · IPR2021-00943 · APJ Jason M Repko · IPR · Final written decision

  Claims 1, 5–9, 11, 12, 16–20, and 22 are unpatentable as obvious over the 300 reference, the 321 reference, and Ericsson.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Generally, Patent Owner’s arguments and Dr. Cooklev’s corresponding testimony do not give sufficient weight to the 300 reference. See id. at 49–52. Rather, they are heavily focused on what the 321 reference alone expressly teaches or suggests. See id.; Cooklev Decl. ¶¶ 140–148, 180–181. Because Petitioner relies on the 300 reference together with the 321 reference in its obviousness rationale, we disagree with these arguments (PO Resp. 49–52), and we give little weight to Dr. Cooklev’s corresponding testimony on this issue (Cooklev Decl. ¶¶ 140–148, 180– 181). c) Experts versus a POSITA Patent Owner notes that “both parties agree that the members of the 3GPP Working Groups were experts in the field—with more expertise and understanding than a POSITA.” PO Resp. 49 (emphasis added). Dr. Cooklev testified, “I disagree that a POSITA—who under all accounts would have less expertise than the members of the 3GPP Working Groups—would recognize a problem and believe that the solution was obvious when the Working Group members themselves struggled with the same issue.” Cooklev Decl. ¶ 194, cited in PO Resp. 49. Patent Owner argues that Petitioner’s obviousness analysis relies on the skill level of an expert, not a POSITA. PO Resp. 56. Patent Owner, though, provides insufficient evidence to support the assertion that the Working Group members struggled with this issue. See id. at 49. To the contrary, the background knowledge, reflected in the 300 reference, demonstrates that, in the RAP, the UE must receive a RAR before it transmits Message 3. See, Pet. 33–34 (citing Min Decl. ¶ 102; Ex. 1002, as “correction” (category F), instead of an “addition of feature” (category B) or a “functional modification of feature” (category C). Ex. 1011, 1. The “reason for change” in Qualcomm’s change request also lacks any indication of a struggle: According to the original intention, it is clarified that the transmission of the RACH Msg3 performed only in response to an uplink grant in the Random Access Response. The current specification also allows transmission of Msg3 in response to UL grant on PDCCH.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “PO Resp. 44–45. Patent Owner claims that its definition is better than Petitioner’s because (1) it is not “based on a rigid formula that does not credit significant industry or research experience, which may substitute for formal academic work” and (2) it references additional degrees and coursework. Id. at 45. Patent Owner, though, does not explain how those differences affect the obviousness analysis in this case. See id. Instead, Patent Owner argues that, “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness” because the members of the 3GGP working groups were experts, not persons having ordinary skill. PO Resp. 56. That is, Patent Owner’s argument does not depend on the specific differences between the proposed definitions. See id. Rather, Patent Owner argues that Petitioner implicitly applies a level of skill that exceeds the ones proposed by either party. See id. We disagree with Patent Owner’s argument for the reasons discussed in Section II.C of this Decision. We see no differences between the parties’ proposed definitions that would affect our analysis. Considering the full record developed during trial, including our review of the ’120 patent and the types of problems and solutions described there and in the cited prior art, we apply Petitioner’s definition in this Decision. Pet. 12. But our conclusion would be the same under Patent Owner’s.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Petitioner asserts, The Board should construe these two related terms [in claims 1 and 12] such that this “transmitting” feature requires transmitting the Msg3 data only when the three claimed conditions are met: (1) the UL Grant is received on the specific message, (2) the specific message is the random access response message, and (3) there is data stored in a Msg3 buffer of the user equipment. Pet. 12–13 (citing Ex. 1016 ¶¶ 56–57). In Petitioner’s view, the plain language supports the “only when” construction because “the only time after the UL Grant is received on the specific message that the user equipment transmits Msg3 buffer data is only when the specific message is the random access response message and there is data stored in a Msg3 buffer of the user equipment.” Id. at 13. Patent Owner argues for a broader construction. PO Resp. 40; Sur- reply 1–7. In Patent Owner’s view, narrowing the claim by adding the word in other IPRs involving a related patent (U.S. Patent No. 7,881,236),7 the word “only” clarified when the system transmits Message 3 data, but this is not needed here because the claim recites four transmitting limitations that cover all possible scenarios. PO Resp. 40. Patent Owner argues that Petitioner’s narrow construction is “an effort to introduce a potential non-infringement position” in this IPR. Sur-reply 5. In Patent Owner’s view, “No word or phrase from the challenged claims requires construction for resolution of this IPR.” PO Resp. 36; Sur-reply 4. During the oral hearing, both parties agreed that we need not construe the claims to reach the unpatentability issues. See Tr. 43:14–17 (Patent Owner’s counsel); 64:18–22 (Petitioner’s counsel). We need not resolve the dispute because Petitioner has shown that the” slip op. at 10

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

    “properly considers the 300 reference together with the 321 reference because the 300 reference describes a process not clearly documented by the 321 reference. Pet. 6. In particular, the 321 reference, individually, does not clearly describe whether a UE transmits Message 3 when it receives an uplink grant on a message other than an RAR. See id. But together the references show that (1) the Message 3 transmission occurs only if the RAP is ongoing and the Message 3 buffer has a MAC PDU and (2) Message 3 transmission requires a prior UL Grant received in an RAR. See id. at 34–35; Min. Decl. ¶ 104. Specifically, the 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003 § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an UL Grant in an RAR and calls the C-RNTI grant the UL Grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. Dr. Min testifies that, in the 321 reference, the UE chooses either the UL Grant received in an RAR or the UL Grant received in a PDCCH. Min Decl. ¶ 95. But, according to Dr. Min, the 321 reference clearly indicates that UL Grant received in the RAR is the correct one to use during the RAP. Id. ¶ 96. Dr. Min explains that the 321 reference teaches that the UE processes the received UL Grant value after successfully receiving RARs, but the 321 reference is silent about looking for a grant in a PDCCH during the RAP. Id. (citing Ex. 1003 § 5.1.4; Ex. 1045, TS 36.213 v8.3.0, § 6.1). Dr. Min testifies that a UL Grant received in a PDCCH during a RAP “would be highly unreliable” and should be discarded. Id. ¶¶ 96–97. So the 321 reference alone provides strong evidence supporting Petitioner’s assertion that it would have been obvious to transmit Message 3 only when (1) Message 3 data was available to transmit and (2) the UE had received an UL Grant in an RAR. See Pet. 35. To the extent that the language of the 321 reference is ambiguous on” slip op. at 15

  Patent outcomesUS 10,517,120 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,517,120

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.