- Configit A/S v. Versata Development Group, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13
Patent outcomesUS 6,836,766 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,836,766 - 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 · GrahamPatents in suitUS 8,670,961 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · 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 denialPatents in suitUS 10,257,319 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · 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 denialPatents in suitUS 10,484,510 - Darfon Electronics Corp. v. Michael ShipmanInstitution deniedPTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution
The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (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 slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines 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(a)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2
Discretionary denialPatents in suitUS 10,942,581 - Forescout Technologies, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Nov 15, 2022 · IPR2021-00914 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–13, 15–18, and 20 are unpatentable as obvious over Patrick alone, Patrick and Roese, or Patrick and Gilde.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner contends “a person of ordinary skill in the art . . . at the time of the ’314 patent’s effective filing date would typically be a person with a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity, or a person with a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Pet. 4 (citing Cole Decl. ¶¶ 26–28). For our Institution Decision, we adopted this definition. Institution Dec. 7. Patent Owner states that it “does not object” to Petitoner’s definition of the person of ordinary skill. PO Resp. 22. Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We therefore continue to apply Petitioner’s formulation for this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Notwithstanding the parties’ initial position that claim construction is not required, for our Institution Decision we followed the guidance provided by the ’314 patent specification on the meaning of certain terms appearing in the patent. Institution Dec. 8–9. Thus, we construed the following terms: 1. Administrator/Network Administrator – “Administrators delegate workload to Sponsors, view reports and audit trails.” Ex. 1001, 2:2–4. “A Network Administrator has the responsibility of delegating the network management workload.” Id. at 2:11–12. 2. Sponsors – “Sponsors administer control over endpoints requiring network resources.” Id. at 2:4–5. 3. Profiles – “Profiles define the scope and limitations of a Sponsor's” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s argument and find that Petitioner demonstrates a motivation to combine the teachings of Patrick and Roese. Petitioner provides detailed testimony by Dr. Cole supporting the conclusion that a person of ordinary skill would have been motivated to combine Patrick and Roese. Pet. Reply 20–22 (citing Cole Decl. ¶¶ 216–224). Dr. Cole testifies that “Patrick teaches that its system provides ‘flexible policies’ and ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 216 (quoting Ex. 1003 ¶ 41) (alteration in original). He testifies that “Roese describes an exemplary network security system” that is “able to enforce certain restrictions, on an initial and continual basis, based on locations of devices.” Id. ¶ 217 (citing Ex. 1004 ¶ 33) (internal quotation marks omitted). He concludes that “Roese is . . . an example of a ‘suitable entity which can be interacted with programmatically’ as identified in Patrick.” Id. ¶ 218 (citing Ex. 1003 ¶ 41) (internal quotation marks omitted). We agree with Dr. Cole that “Patrick provides a specific motivation to combine, by emphasizing its use of ‘flexible policies’ and explaining its invention ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 222 (quoting Ex. 1003 ¶ 41). Dr. Cole testifies that a person of ordinary skill “would recognize that Roese’s system is one such third party security product, as suggested by Patrick, and also provides additional benefits relating to managing devices, as described in Roese.” Id. ¶ 223. Dr. Cole’s testimony also persuades us of the existence of a reasonable expectation of success in making the combination. Id. ¶ 218 (“A [person of ordinary skill] would therefore understand, consistent with Patrick’s express suggestion, that Patrick’s policy definitions and delegations of authority could be used together with Roese’s network security system to allow for policies specifically focused on managing devices.”). Patent Owner contends that “Petitioner . . . fails to demonstrate with respect to each of the disparate features of Roese relied upon, what the predictable results would be and how it would ‘provide a means to delegate and enforce policies relating to devices’ as alleged by Petitioner.” PO Resp. 42. We do not agree that Petitioner’s showing of motivation to combine, summarized supra, is insufficient. KSR instructs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR Int’l Co., 550 U.S. at 421, see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find, for the reasons given, that Petitioner’s showing meets this standard and is sufficient. Petitioner, therefore, has demonstrated a motivation to combine Patrick with Roese with a reasonable expectation of success.” slip op. at 28
- BurdenDecided for petitioner
“We disagree with Patent Owner’s argument that the Petition is insufficiently particular as to this or any other limitation. See PO Resp. 34– 35. For example, as discussed supra, Dr. Cole’s testimony supports Petitioner’s position that Patrick discloses transferring responsibility with specific references to Patrick. Cole Decl. ¶¶ 110–116. Dr. Cole explains how Patrick teaches delegating authorization from one subject to another. Id. ¶ 111. He relies on Figure 11 of Patrick to further illustrate his opinion. Id. ¶ 112. We do not agree that this testimony is insufficiently specific to show how Patrick meets this limitation or that Petitioner has failed to carry its burden. Moreover, other examples from Dr. Cole’s testimony are presented in the Petition at pages 20–21. There is no improper incorporation by reference to Dr. Cole’s testimony, as suggested by Patent Owner. PO Resp. 35. We therefore do not agree with Patent Owner (see id.) that “the Board should reject all grounds” due to lack of specificity in Petitioner’s case.” slip op. at 23
Patent outcomesUS 8,458,314 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,458,314 - PTAB · Nov 2, 2022 · IPR2022-00735 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR of claims 1–16 on all petitioned grounds, finding a reasonable likelihood that the challenged claims are unpatentable over the asserted obviousness combinations.
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
“not yet set a date for the claim construction hearing, and the scheduling order indicates that it will not set a trial date until 14 days after its claim construction ruling.” Pet. 51 (citing Ex. 1013). Patent Owner does not dispute this. Prelim. Resp. 40. Therefore, the district court trial will likely occur after our final written decision in this proceeding, and factor 2 (timing of trial) weighs against exercising discretion to deny institution. The litigation also is in a relatively early stage because, the parties appear to have just completed exchanging infringement and invalidity contentions and no claim construction hearing has occurred. Pet. 52–53; Prelim. Resp. 40–41. Therefore, factor 3 (investment in the district court litigation) also weighs against exercising discretion to deny institution. Additionally, because this case is in a relatively early phase, the district court will have the ability to determine whether to stay the District Court Litigation in favor of this IPR (factor 1). Pet. 51–52. Further, because our final written decision will likely occur before trial in the District Court Litigation, the overlap in parties (factor 5) and any overlap in issues (factor 4) does not weigh in favor of exercising discretion to deny institution.. Finally, we determine that the sixth Fintiv factor (other circumstances) is neutral. Accordingly, after considering all the factors, we decline to exercise our discretion to deny institution.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“in this proceeding. Pet. 5. Patent Owner also does not include a section addressing claim construction. See Prelim. Resp. However, in the course of its argument, Patent Owner points to Dr. Forsyth’s statement that “[t]he ’518 patent describes that the oblique images ‘match the perspectives’ from which they ‘were captured,’” and that “[m]atching the perspectives ‘means that image pixels are not aligned on a rectangular grid [on the ground] but are aligned to the perspective that matches the perspective the camera has captured.’” Id. at 19 (citing Ex. 1003 ¶ 15) (emphasis omitted). At this stage, Patent Owner does not appear to dispute Dr. Forsyth’s statement. Id. at 19–22. For purposes of this decision, we adopt the understanding set forth by Dr. Forsyth, and interpret the language requiring that oblique images “match the perspectives from which” they “were captured” to mean that “image pixels are not aligned on a rectangular grid on the ground but are aligned to the perspective that matches the perspective the camera has captured.” Ex. 1003 ¶ 15 (brackets omitted). We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention would have had “at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 5 (citing Ex. 1003 ¶ 16). Petitioner further asserts that “[s]uperior education could compensate for a deficiency in work experience and vice-versa.” Id. Patent Owner does not address the level of ordinary skill at this stage of the proceeding. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,593,518 - PTAB · Nov 1, 2022 · IPR2022-00734 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“occur after our final written decision in this proceeding, and factor 2 (timing of trial) weighs against exercising discretion to deny institution. The litigation also is in a relatively early stage because, the parties appear to have just completed exchanging infringement and invalidity contentions and no claim construction hearing has occurred. Pet. 71–72; Prelim. Resp. 23–24. Therefore, factor 3 (investment in the district court litigation) also weighs against exercising discretion to deny institution. Additionally, because this case is in a relatively early phase, the district court will have the ability to determine whether to stay the District Court Litigation in favor of this IPR (factor 1). Pet. 69–70. Further, because our final written decision will likely occur before trial in the District Court Litigation, the overlap in parties (factor 5) and any overlap in issues (factor 4) do not weigh in favor of exercising discretion to deny institution. Finally, we determine that the sixth Fintiv factor (other circumstances) is neutral. Accordingly, we decline to exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“considerations conclusion in a previous case. In IPR2016-00592, the petitioner failed to rebut a presumption of nexus that arose because Patent Owner’s products were found by the panel to be coextensive with the challenged claims based on the evidence and arguments presented there. Ex. 1010, 27–34. Here, even if Patent Owner is correct that none of the information establishing nexus has changed, Petitioner should be afforded an opportunity to present its own evidence and argument to rebut that presumption at trial. In addition, the Board weighs secondary considerations against the scope and content of the asserted prior art and any differences between the asserted art and the challenged claims. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016) (explaining that “the strength of each of the Graham factors must be weighed in every case and must be weighted en route to the final determination of obviousness or non-obviousness”). In IPR2016-00592, after considering the asserted prior art, the Board noted that it found “certain aspects of” the petitioner’s “obviousness allegations to be at best a close call.” Ex. 1010, 34. Although the panel concluded that there, secondary considerations were “decisive,” it did so only as after weighing petitioner’s obviousness challenge in that case. Id. at 34–35. Here, Petitioner challenges the ’737 patent based on references and supporting evidence that are different from the references and supporting evidence in the previous case. Compare Pet. 2, with Ex. 1010, 5. Because this case involves different patentability challenges than those in IPR2016-00592, we decline to deny the Petition based on the Board’s secondary-considerations analysis in that case.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, Petitioner provides a detailed analysis corresponding each challenged claim element to relevant disclosures in Heller and Quam. See id. at 19–55. Patent Owner does not challenge Petitioner’s substantive analysis in its Preliminary Response. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates that the challenged claims would have been obvious over the asserted prior art. IV. CONCLUSION For the foregoing reasons, we have determined that there is a reasonable likelihood that the Petitioner would prevail with respect to at least one of the claims challenged in the Petition. We therefore institute trial as to all challenged claims on all grounds stated in the Petition. We decline also to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“and Quam, to the ’737 patent’s claimed computer-implemented, roof-estimation system. See Pet. 19–50. Petitioner describes its proposed combination as “Heller’s ‘RADIUS Testbed System’ (RTS) . . . implemented using the advantageous implementation details and other information about the ‘RADIUS Common Development Environment (RCDE)’ described by Quam, providing a beneficial implementation environment for the site modeling operations described in Heller.” Id. at 16. According to Petitioner, a skilled artisan “would have been motivated and found it obvious to implement Heller’s ‘RADIUS Testbed System (RTS)’ using the implementation details and other information about the ‘RADIUS Common Development Environment (RCDE)’ described by Quam,” because “Heller and Quam both describe portions of the ‘RADIUS’ site modeling platform.” Id. at 17. Further, Patent Owner explains, Quam provides “practical implementation details of the [RADIUS] system” that are not specified in Heller. Id. Petitioner’s second asserted grounds mirror its first, except that Petitioner adds Deaton for its explicit teaching of producing a roof estimate report. See id. at 50–51. According to Petitioner, one skilled in the art would have been motivated to combine Deaton with the Heller-Quam system because “including the production of such a report . . . would advantageously enable the site models described in Heller and Quam to be utilized to plan and execute maintenance, repair, and new construction projects, thereby increasing the utility of the combined system.” Id. at 51. In sum, Petitioner provides a detailed analysis corresponding each challenged claim element to relevant disclosures in Heller and Quam. See id. at 19–55. Patent Owner does not challenge Petitioner’s substantive analysis in its Preliminary Response. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates that the challenged claims would have been obvious over the asserted prior art.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,135,737 - Meta Platforms, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution deniedPTAB · Oct 26, 2022 · IPR2022-00929 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Amjadi teaches or suggests the claimed first Internet site, as required by every challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314; 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 and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We recognize that the claim recites an “Internet site,” and not a “Web site.” Although the ’586 patent sometimes describes an “Internet site,” see Ex. 1001, 4:48–49, 5:22, 16:7, 17:2, 17:11, the patent more frequently describes an “Internet web site” or “web site,” suggesting the inventors understood “Internet site” and “web site” to be synonymous. See, e.g., id. at 2:6, 2:17, 2:20, 2:32, 2:39, 2:65, 3:31, 3:34, 3:35, 3:36, 3:38. In addition, the specification describes the saturation problem addressed by the ’586 patent as one experienced by Web sites. Id. at 6:4–8 (“A media may reach this saturation level due to pragmatic considerations such as limited physical size or space. In addition, saturation may occur due to a requirement to limit the cost of a producing a Web site, magazine, newspaper or other media application.”) One technical dictionary defines “Web site” as “[a] group of related HTML documents and associated files, scripts, and databases that is served up by an HTTP server on the World Wide Web.” Microsoft Computer Dictionary 564 (2002). Ex. 3001. Another states: “In more common usage [Web site] refers to individual sets of Web pages that can be visited with Web Browsers.” Newton’s Telecom Dictionary 913 (2004). Ex. 3002. Merriam-Webster defines Web site as “a group of World Wide Web pages usually containing hyperlinks to each other and made available online by an individual, company, educational institution, government, or organization.” See https://www.merriam-webster.com/dictionary/web%20site (last accessed Oct. 14, 2022). From these definitions, and consistent with the ’586 patent specification, we determine that an Internet site is a collection of HTML Web pages that can be accessed by users with Web browsers.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site. As discussed, only two functions of the Incentive Host Server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 16–18.4 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,244,586 - Meta Platforms, Inc. v. Almondnet, Inc., And Intent Iq, LLCInstitution deniedPTAB · Oct 26, 2022 · IPR2022-00928 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 24, 28, 29, 31–33, 40, or 44 unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For this decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as consistent with the prior art before us in this proceeding. C. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“the claims themselves and then to the specification. Although the claims of the ’639 patent recite “Internet site,” from the context of the ’639 patent, we find that this refers to a site on the World Wide Web, i.e., a Web site. See Ex. 1001, 9:13–38 (discussing Web site saturation problems). In the absence of any further guidance from the claims or specification, we turn to dictionaries for further information on the meaning this term.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site under our construction. As discussed, only two functions of the incentive host server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 15–17.10 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,822,639
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.