- PTAB · Dec 29, 2022 · IPR2022-01078 · APJ Scott B Howard · IPR · Institution
The Board instituted review of claims 1–9 and 11–13 on all asserted grounds, finding a reasonable likelihood that claim 1 would be obvious over Pedersen, Visser, and Alves.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Pedersen, Visser, and Alves. See Pet. 14–40 and 49–68. Based on the current record, we are persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 1.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“date, not the scheduled trial date. Interim Fintiv Guidance at 8–9. Because the Final Written Decision will be due approximately 2 months after the expected trial date, this factor weighs slightly in favor of exercising our discretion to deny the Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues “that no express constructions of the claims are necessary” and the terms “should be given their plain and ordinary meaning.” Pet. 13–14. Patent Owner agrees that the claim limitations should be given their “plain and ordinary meaning as understood by a person of ordinary skill in the art at the time of the purported invention of the ʼ701 patent.” Prelim. Resp. 13. Patent Owner also points out that Petitioner advances a different claim construction in the district court proceeding. Id. at 14. For the purposes of this Decision, we need not expressly construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”)7 “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of earphones and associated signal processing. The PHOSITA could have also obtained similar knowledge and experience through other means.” Pet. 13 (citing Ex. 1002 ¶ 17). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 13 (citing Pet. 13). Accordingly, for purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.8” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,057,701 - Meta Platforms, Inc. v. Almondnet, Inc.InstitutedPTAB · Nov 30, 2022 · IPR2022-01064 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 9–12 on all petition grounds, finding a reasonable likelihood that claims 9–12 would be shown obvious over Meyer, Zeff, Edlund, and Fisher.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine there is a reasonable likelihood Petitioner would prevail in showing that claims 9–12 are unpatentable under 35 U.S.C. § 103 over Meyer, Zeff, Edlund, and Fisher. E. Challenge to Claims 9–12 over Meyer, Zeff, Edlund, Fisher, and Tittel” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web). A person could also have qualified with more formal education and less technical experience, or vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not comment on Petitioner’s definition at this time, and does not offer an alternate definition. See Prelim. Resp. For the purpose of this decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. Petitioner asserts that it “does not believe an express claim construction is necessary at this time for this IPR.” Pet. 11. Patent Owner” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purpose of this decision and based on Petitioner’s citations to Meyer, Zeff, and Mr. Schmandt’s testimony (Ex. 1002), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Meyer to include electronically transferring a price cap that the BT company is willing to pay. See Pet. 45–47; KSR, 550 U.S. at 418. Petitioner asserts that Zeff discloses that auctions are a good place to buy and sell excess ad inventory, advertisers can usually get pretty good prices on well-recognized sites, and it is a way to generate revenue on inventory that would otherwise go unsold. See id. at 46 (quoting Ex. 1004, 81; citing Ex. 1002 ¶ 149). Petitioner contends that using an auction and bidding system in Meyer could have resulted in a substantially lower price than the account provider might otherwise have paid. See id. (citing Ex. 1002 ¶ 148). According to Petitioner, [a]n ordinarily skilled artisan would have also appreciated that using an auction would have solved a problem for the service provider in deciding how much to charge for advertising. A known benefit of auctions is their ability to obtain the most appropriate price based on direct purchaser feedback through competitive bidding. Id. at 46–47 (citing Ex. 1002 ¶ 147).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,830,615 - ROKU, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution deniedPTAB · Nov 29, 2022 · IPR2022-00953 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including because Whitehead’s relied-on association used PII.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) “would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements,” and that more experience might compensate for less formal education or vice versa. Pet. 9 (citing Ex. 1003 ¶ 15). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. For purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this juncture, we do not discern a dispute between the parties regarding the meaning of any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., 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 10
- BurdenNot shown unpatentable
“shows how RI mytes from different devices on the same network can be automatically associated—as seen in Blocks 340 and 360—without using PII. See Pet. 42–48; see also id. at 42–43 (“Specifically, as shown in FIG. 5 below, Whitehead describes using IP access session information to associate devices and their RI-mytes.”), 45 (“Using the corresponding IP access session information, the associated usage data and device identifiers are associated to the same user ID (e.g., ‘User1,’ ‘User2,’ and ‘User3’ respectively) representing the corresponding user profile.”). However, Whitehead Figure 5 uses PII in making that association.” slip op. at 17
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 8,566,164 - ROKU, Inc. v. Almondnet, Inc And Intent Iq, LLCInstitution deniedPTAB · Nov 29, 2022 · IPR2022-00959 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“3. Analysis of Independent Claim 1 Based on the current record, Petitioner does not sufficiently show that the combination of Madhavan and Whitehead teaches or suggests “wherein the first online user interface device identifier and the first set-top box identifier are associated without using personally identifiable information pertaining to a user of the set top box that corresponds to the first set-top box identifier,” as recited in claim 1.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“To the extent Petitioner asserts that the combination of an IP address and a timestamp is sufficient to associate two device identifiers without using PII,8 Whitehead’s Figure 5 does not expressly show making an association between RI-mytes based on timestamps without using User IDs. See Ex. 1015, Fig. 5. Rather, as discussed above, RI-mytes are associated in block 340 of Figure 5 with the “User ID” field. See Id. ¶ 114, Fig. 5. Moreover, Petitioner does not specifically explain why one with ordinary skill in the art would modify the embodiment of Whitehead’s Figure 5 to perform an association using a timestamp but without using a User ID. See Pet. 39–44. We also agree with Patent Owner’s following additional arguments: (1) certain other portions of Whitehead cited by Petitioner regarding anonymous techniques that use non-PII are unrelated to the Figure 5 embodiment; and (2) Petitioner fails to explain why one with ordinary skill in the art would modify Figure 5 to make associations between device identifiers without using PII. See Prelim. Resp. 15–19. Petitioner’s general reliance on Whitehead’s various disclosures regarding the use of non-PII information is insufficient to show that the combination of Madhavan and Whitehead teaches the disputed limitation. See Pet. 43–44. In particular, Petitioner relies on Whitehead’s disclosure that “[t]he distinction between” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements.” Pet. 9 (citing Ex. 1003 ¶ 15). According to Petitioner, “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for [a person of ordinary skill in the art].” Id. (citing Ex. 1003 ¶ 15). Patent Owner does not comment on Petitioner’s definition and does not offer an alternate definition. See Prelim. Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’069 Patent Specification and the asserted prior art.” slip op. at 7
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,595,069 - ROKU, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution deniedPTAB · Nov 29, 2022 · IPR2022-00960 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that any challenged claim was unpatentable, principally failing to show the claimed association without PII.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2-3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements,” and that more experience might compensate for less formal education or vice versa. Pet. 8 (citing Ex. 1003 See Prelim. Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’069 Patent Specification and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim term requires express construction,” and so the “Petition analyzes the claims consistent with ordinary and customary meaning as would be understood by POSITA in light of the specification.” Pet. 9. Patent Owner does not address claim construction. See Prelim. Resp. At this juncture, we do not discern a dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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) (2018). For the reasons set forth below, upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’198 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Whitehead’s Figure 5 embodiment showing association of RI mytes from different devices does not support Petitioner’s contention that such an association is performed without using PII. The association of receptiveness information and particular users is central to Whitehead (see, e.g., Ex. 1015, code (57) (“identify[ing] when the user is accessing the . . . services”; “collecting data”; “using the collected data to associate the user with certain marketing content”)), and this is evident in Whitehead’s Figure 5. Whitehead describes Figure 5 as “showing relationships between information to enable associating IP address-keyed receptiveness information to users.” Ex. 1015 ¶ 110 (emphasis added). information available in Block 310 with the information available in Block 330”—which includes the “User ID”—“the service provider 40 can associate each Rl-myte with the user ID using IP address A when the RI myte was generated.” Id. at Fig. 5, ¶ 113. Because of that association, “the service provider 40 can associate RI-mytes A4.8 and A5.2 with user ID Al, RI-mytes B4.1, B5.2 and B5.8 with user ID Bl[,] and RI-myte A5.4 with user ID A2 as represented in Block 340.” Id. ¶ 113. Whitehead further describes how “Block 350 can represent user account information maintained by the service provider 40 in at least one module” and that “[t]he user account information can associate each user with the user’s user ID.” Ex. 1015 ¶ 114. According to Whitehead, “[b]y combining the information available in Block 350 with the information available in Block 340, the service provider 40 can associate each Rl-myte with a specific user and other information associated with that specific user.” Id. Thus, we agree with Patent Owner that Figure 5 of Whitehead teaches association of RI-mytes first with User IDs in block 340, and then with Users in block 360. We are further persuaded by Patent Owner’s argument that both the “User ID” and “User” fields in Figure 5 contain PII. First, in discussing IP access session information, which “can include user identity information” that “either directly or indirectly identifies the user,” Whitehead provides that “direct identification information can include a unique user ID assigned to the user 30 by the service provider 40.” Ex. 1015 ¶ 75. In considering this disclosure along with block 330 in Whitehead’s Figure 5, one of ordinary skill in the art would understand that the “User ID” field in the IP session information of block 330 contains information that can be used to uniquely and directly identify a user—where Whitehead defines a user as information” as recited in claim 1. See Ex. 1001, 7:61–62 (“Personally Identifiable Information (PII)—information that can be used to identify a specific person.”). Second, in describing the association between RI-mytes and Users in block 360 of Figure 5, Whitehead states that “[t]his association with each specific user can include association with each specific user’s name, address, telephone number or any other addressability information associated with the specific user.” Ex. 1015 ¶ 114. The Specification of the ’198 patent defines PII as including “name, . . . street address, . . . phone number (home, work, wireless), . . . or any other information that can assist in identifying a specific person.” Ex. 1001, 7:61–8:3. Accordingly, one of ordinary skill in the art would have understood that Whitehead’s “User” field contains “personally identifiable information” as recited in claim 1.” slip op. at 17
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,321,198 - Google LLC v. Ecofactor Inc.Some claims unpatentablePTAB · Nov 17, 2022 · IPR2021-00982 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–7 and 10–19 are unpatentable: claims 1–7 and 11–19 as obvious over Wedekind and Ehlers, and claim 10 as obvious over Wedekind, Ehlers, and Jenkins; claims 20–30 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the parties agree on the educational background of a person of ordinary skill in the art. And although the parties offer different levels of experience for a person of ordinary skill in the art, there is some overlap, as both parties require experience with HVAC systems. Pet. 15 (requiring experience with “building energy management”); PO Resp. 5–6 (requiring experience with HVAC controls, and acknowledging that “building energy management” includes controlling HVAC systems). Accordingly, we do not consider the difference between the parties’ proposals to be material. Moreover, neither party asserts that its positions or the outcome depends on which definition we apply in this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 11
- Strike new argumentNew argument consideredDecided for petitioner
“Reply ignore the express statement in the Petition characterizing sensors 36 in Wedekind as “a source external to the building.” Sur-reply 2 (quoting Pet. 28), 3. Patent Owner also argues this is a new argument that we should disregard. Sur-Reply 2. We disagree. Although Patent Owner is correct that Petitioner contends Wedekind’s outside air temperature sensors 36 are a source external to the building, that is not the only argument Petitioner presents. In the Petition, Petitioner contends more generally that Wedekind’s outside air temperature sensors 36 “measure the outside air temperature.” Pet. 28. Petitioner also argues that Ehlers provides weather data including outside temperatures, and that the source of the data is a weather service provider that is external to the building. Pet. 32 (citing Ex. 1008, 9:53–54, 35:13–17). Petitioner further argues that it would have been obvious “to replace Wedekind’s outside temperature sensors 36 with receiving outside temperature data from a network connection,” as Ehlers teaches. Pet. 32. In view of this, we agree with, and are persuaded by, Petitioner’s argument that it does not rely only on Wedekind to meet the limitation that “the second data from the network connection is collected from a source external to the building.” Reply 10. Additionally, the presence of these arguments in the Petition undermines Patent Owner’s assertion that Petitioner is attempting to present new arguments in the Reply. Similarly, Petitioner acknowledges in the Petition that Wedekind does not expressly teach the second data is received from a network connection, and, therefore, relies on Ehlers’ disclosure of receiving data from a network connection. Pet. 30; Reply 11. Patent Owner does not dispute that Ehlers discloses receiving weather data from a network connection. See PO Resp. 15–28; Sur-reply 3–8. In view of the foregoing, Petitioner has demonstrated persuasively that the combined disclosures of Wedekind and Ehlers teach or suggest “the one or more processors further configured to receive a second data from a network connection, wherein the second data from the network connection is collected from a source external to the building” claim 1 requires.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s arguments to be persuasive. Petitioner presents undisputed evidence, based on the disclosure of Wedekind and Ehlers, that obtaining outside temperatures either from local sensors or over a network was known in the art. Pet. 28–32; Ex. 1006, 4:45–47; Ex. 1008, 9:50–63. Petitioner also directs us to evidence, including in Ehlers itself, supporting Petitioner’s reasoning that replacing Wedekind’s outside air temperature sensors with a network-based weather data service would have saved the cost and effort of installing multiple sensors. Pet. 32; Ex. 1002 ¶ 103; Ex. 1008, 39:54–57; Reply 13. As Petitioner points out, Patent Owner does not directly challenge Petitioner’s argument and evidence that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers to avoid the cost and effort of installing multiple sensors. Reply 13.5 Indeed, Patent Owner acknowledges that Wedekind “expressly indicates that there must be multiple sensors of outdoor temperature for sufficient accuracy in Wedekind’s complex computational model.” PO Resp. 26; Ex. 1006, 3:62–67. The need for multiple sensors in Wedekind 5 We recognize Patent Owner argues that a person of ordinary skill in the art would not have been motivated to connect Wedekind’s outside air temperature sensors 36 to a network because it would “increase costs.” PO Resp. 23–24. Patent Owner, however, presents this argument before it addresses Petitioner’s proposed combination of Wedekind and Ehlers. See PO Resp. 23–24 (referring to cost increases first, and addressing the proposed combination of Wedekind and Ehlers in the next paragraph). Thus, Patent Owner’s cost argument does not appear to address Petitioner’s assertion regarding cost savings in view of the proposed combination. Nor does Patent Owner present evidence regarding, or explain adequately, what costs it is referring to, or how those costs would increase. PO Resp. 23–24; Ex. 2005 ¶ 61. By way of contrast, Petitioner’s arguments regarding cost savings are supported by the disclosure of Ehlers itself. Ex. 1008, 39:54–57. strengthens Petitioner’s argument that a person of ordinary skill in the art, in view of Ehlers’ teaching regarding avoiding the cost and effort of installing multiple sensors, would have had reason to modify Wedekind in view of Ehlers. Additionally, Patent Owner’s own declarant characterized Ehlers’ discussion of “lowering the cost of installation and ongoing maintenance” as “teach[ing] away from external sensors.” Ex. 1023, 58:7–18. These arguments and evidence undermine Patent Owner’s assertion that Petitioner failed to provide any analysis as to why a person of ordinary skill in the art would have modified Wedekind in view of Ehlers. Sur-reply 3–4; PO Resp. 25–28. Petitioner also argues, and provides evidence in the form of testimony from Dr. Shah demonstrating, that a person of ordinary skill in the art would have been able to modify Wedekind’s system by connecting Wedekind’s processing means to a network connection such as Ehlers’ phone input or communications link, and would have obtained predictable results. Pet. 33; Ex. 1002 ¶ 104. Patent Owner does not dispute this evidence. To the contrary, Patent Owner appears to concede that the proposed combination would work, although not as reliably as Wedekind’s hardwired system. PO Resp. 25–26. As a result, and in the absence of any evidence or argument suggesting otherwise, we credit Dr. Shah’s testimony. Furthermore, Ehlers teaches, in connection with providing data obtained from a weather service provider over a network, that “[t]he data may be provided at regular intervals and be sufficiently localized for acceptable accuracy.” Ex. 1008, 9:58–60. This statement from Ehlers itself undermines Patent Owner’s arguments regarding alleged problems with transmitting data over networks and insufficient accuracy, including Patent Owner’s argument that Wedekind teaches away from the approach used by Ehlers. PO Resp. 25–28. Nevertheless, even if we were to give Patent Owner the full credit of its arguments regarding unreliable transmission of data over networks and data obtained from weather service providers being less useful than data obtained from sensors at a specific structure, obviousness “does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). As discussed above, Petitioner’s evidence and arguments demonstrate that using Ehlers’ network to transmit temperature data was at least a suitable option. For all of the foregoing reasons, we determine Petitioner has demonstrated persuasively that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers, and would have had a reasonable expectation of success in doing so. iii.” slip op. at 25
Patent outcomesUS 10,612,983 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,612,983 - PTAB · Nov 15, 2022 · IPR2022-00983 · APJ Paul J Korniczky · IPR · Institution
The Board instituted inter partes review of claims 1–16 on both obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We do not agree with Patent Owner’s arguments. Based on the present record, Petitioner adequately explains where Ehlers discloses the recited automated setpoint and Ehlers compares the user’s actual setpoint and the automated setpoint. In connection with limitation 1c above, Petitioner, referring to Figures 3D and 3E reproduced above, explains that Ehlers uses stored indoor and outdoor temperatures and other stored data to predict changes in temperature inside the structure in response to at least changes in outside temperatures in connection with certain energy management functions. Pet. 32–33 (citing Ex. 1002 ¶ 94). Petitioner presents three examples of this. See id. at 33–34. For example, in Petitioner’s first example, Petitioner explains that Ehlers’s thermal gain rate is used to calculate a new offset temperature in order to save energy and, in so doing, Ehlers (1) “predicts that the thermal gain rate it computed in the past represents a speed at which temperatures inside the structure will change in response to changes in outside temperatures at the current time or at a future time” and then (2) “uses this prediction to determine what future setpoint would not increase HVAC run time over a future period of time to ‘compute[] [a] required effective setpoint offset.’” Id. at 33 (citing Ex. 1004 ¶ 256; Ex. 1002 ¶ 94) (alterations in original). Patent Owner does not explain why this example or Petitioner’s other two examples do not show that Ehlers calculates the claimed “automated setpoints.”” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“prior art and invalidity issues are presented in the Delaware litigation and this proceeding. However, given the facts of this case, there should not be any overlap by the time of trial because we will issue a Final Written Decision before expected Delaware trial date. Thus, Petitioner will be estopped from presenting any argument which it actually raised or reasonably could have raised during this proceeding. 35 U.S.C. § 315(e)(2). Accordingly, this factor weighs against exercising our discretion to deny the Petition. 5. Identity of Parties Patent Owner asserts this factor weighs against institution because the parties here are the same parties involved in the parallel Delaware litigation. Prelim. Resp. 18. However, due to the statutory estoppel provision of section 315(e)(2), as the Final Written Decision will precede the trial before the district court, this factor weighs against exercising our discretion to deny the Petition.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states a person of ordinary skill in the art would have had “a (1) Bachelor’s degree in engineering, computer science, or a comparable field of study, and (2) at least five years of (i) professional experience in building energy management and controls, or (ii) relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa.” Pet. 21 (citing Ex. 1002 ¶¶ 23–25). Patent Owner does not address Petitioner’s proffered level of skill discussed by Petitioner’s declarant. See Prelim. Resp. We adopt Petitioner’s definition of the level of ordinary skill for the purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the present record and for purposes of this Decision, we determine that no construction of the claims is necessary at this stage. See Nidec, 868 F.3d at1017” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,596,550 - PTAB · Nov 15, 2022 · IPR2022-00969 · APJ Paul J Korniczky · IPR · Institution
The Board instituted IPR of claims 17–23 on both asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“authority to institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a) (2018). After considering the Petition, Preliminary Response, and evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we grant Petitioner’s request to institute an inter partes review of claims 17– 23 of the ’550 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“showing one of the claims is unpatentable, the Board has discretion to deny a petition. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential). Several nonexclusive factors that balance considerations of system efficiency, fairness, and patent quality when a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. “[I]n evaluating the factors, 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; see also Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation (June 21, 2022) (“Director’s Fintiv memo”) (see page 9 stating this Memorandum “applies to all proceedings pending before the Office” and instructing how the Board is to apply Fintiv).5” slip op. at 39
Claim constructionDiscretionary denialPatents in suitUS 8,596,550 - Apple Inc. v. Qualcomm IncorporatedAll claims unpatentablePTAB · Nov 10, 2022 · IPR2018-01315 · APJ Scott B Howard · IPR · Remand
Claims 1, 2, 5–9, 12, 13, and 16–22 are unpatentable as obvious over AAPA and Majcherczak, with Matthews added for claims 7, 16, and 22.
RulingsRemand decision- RemandDecided for petitioner
“d. Our Analysis By statute, inter partes review proceedings can only be requested “on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added); see also Qualcomm, 24 F.4th at 1374. Thus, the issue before us is whether AAPA improperly formed the “basis” of Petitioner’s challenge. See Qualcomm, 24 F.4th at 1376–77 (remanding to determine “whether AAPA improperly formed the ‘basis’ of Apple’s challenge”). The answer to this question is found in the Updated Guidance: “If an IPR petition relies on admissions in combination with reliance on one or more prior art patents or printed publications, those admissions do not form ‘the basis’ of the ground and must be considered by the Board in its patentability analysis.” Updated Guidance 4 (emphasis added). Because Petitioner’s grounds involve a combination of AAPA and prior art patent(s), AAPA does not form the basis of the ground. See Pet. 2 (setting forth the grounds); 1316 Pet. 2 (same). Instead, it is the prior art patents— Majcherczak and, when used, Matthews—that form the basis of the challenge and AAPA is simply being used to provide missing limitations. See MED-EL Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AG, IPR2020-01016, Paper 44 at 4 (PTAB Aug. 22, 2022) (Director Review Decision) (“As discussed above, the Petition relies on AAPA in combination with either Petersen, Zilberman and/or Saaski. Accordingly, AAPA “do[es] not form ‘the basis’ of the ground and must be considered by the Board in its patentability analysis.” (quoting Updated Guidance 4) (modifications in original)).” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the evidence presented, we conclude that, with the exception of the means-plus-function limitations, no express claim construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe those claim limitations ‘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))). With regard to the means-plus-function limitations, we are persuaded by Petitioner’s identification of both the function set forth in the claim and the structure in the written description that is linked to the function, and adopt them as our own. See 1316 Pet. 6–9.” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner constructionDecided for petitioner
“Use of the word means in a claim gives rise to a rebuttable presumption that 35 U.S.C. § 112, sixth paragraph, analysis applies to interpret the claim. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Construing a means-plus-function claim term is a two-step process, wherein we first identify the claimed function and then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1348–51. Our rules specifically require that a petition for inter partes review identify how each challenged claim is to be construed, including identification of the corresponding structure for meansplus-function limitations. See 37 C.F.R. § 42.104(b)(3) (“Where the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. 112[(6)], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”).15 “[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Med. Instrumentation & Diagnostics Corp. v. Elekta 15 37 C.F.R. § 42.104(b)(3) refers to § 112(f). Section 4(c) of the AIA redesignated 35 U.S.C. § 112, sixth paragraph as 35 U.S.C. § 112(f). Because the ’674 patent has a filing date before the effective date of this provision of the AIA, we use the citation § 112, sixth paragraph.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decisions, “we adopt[ed] Dr. Horst’s definition of the level of ordinary skill in the art, with the exception of the language ‘at least.’” Inst. Dec. 13; 1316 Inst. Dec. 13. Patent Owner agrees with our formulation, see PO Resp. 9; 1316 PO Resp. 9, and Petitioner did not address it in its Reply. See generally Pet. Reply; 1316 Pet. Reply. Accordingly, we find on the record as a whole that a person of ordinary skill in the art would have an undergraduate degree in electrical engineering, or a related field, and three years of experience in circuit and system design. Additionally, a person of ordinary skill with less than the amount of experience noted above could have had a correspondingly greater amount of educational training such a graduate degree in a related field.” slip op. at 12
Patent outcomesUS 8,063,674 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,063,674 - Google LLC v. Jenam Tech, LLCAll claims unpatentablePTAB · Nov 1, 2022 · IPR2021-00868 · APJ Daniel J Galligan · IPR · Final written decision
Claims 55–57, 59, 60, 64, 66, and 67 are unpatentable as obvious over Wookey and Berg, or Wookey, Berg, and Tucker.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“At institution, we adopted Petitioner’s proposed formulation of the level of ordinary skill in the art, except that we omitted the qualifier “at least” to eliminate vagueness as to the amount of practical experience. Inst. Dec. 12. In its Response, Patent Owner states that it “adopts and applies the Board’s formulation for a [person of ordinary skill in the art].” PO Resp. 6. Based on the complete trial record, we adopt Petitioner’s formulation, with the exception of the language “at least,” as set forth in the Institution Decision.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In its Sur-reply, Patent Owner states that Petitioner “relies on a person of extraordinary skill, Dr. Lin, who applied an incorrect and unbounded definition of a POSITA in his expert report,” which “renders his opinions unreliable.” PO Sur-reply 2–4. However, having forfeited any such argument by not raising it and developing it in the Response, Patent Owner cannot raise that argument in its Sur-reply. See Paper 13, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed [forfeited].”) (Scheduling Order); In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (arguments not properly raised in the Patent Owner’s Response are forfeited). Regardless, even if we did consider it, we do not agree with Patent Owner’s arguments. We understand Dr. Lin’s testimony to be broad enough to encompass anyone within his stated level of ordinary skill in the art. See Ex. 1002 ¶ 18 (“My analysis of the ’026 patent and my opinions in this declaration are from the perspective of one of ordinary skill in the art, as I have defined it above, at the time of the alleged invention for that patent.”). That would include someone who meets the minimum level of skill set forth in his declaration, which is identical to the level of skill we adopted. Thus, although Dr. Lin’s testimony encompasses those of more than ordinary skill (in terms of experience), it also addresses someone of ordinary skill. Furthermore, we do not understand Petitioner’s and Dr. Lin’s position to be that a person of ordinary skill in the art would have had unlimited experience. Rather, we view the use of the language “at least” as imprecise, which is why we omitted it.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“language “based on,” and we see no reason that this language should be interpreted to exclude setting the KAP to be a one-to-one ratio of the ITP. The Specification of the ’026 patent uses the phrase “based on” in multiple places. For example, one passage cited by Patent Owner (PO Resp. 12–13) states the following: In another aspect, first node 602 may set a keep-alive timeout attribute based on a duration of the first idle time period identified in the first idle information and/or in the metadata provided to second node 604. For example, first node 602 may monitor a time period during which no non-empty packets are sent or received in the TCP connection. A keep-alive option handler and/or keep-alive component (not shown) operating in first node 602 may set a keep-alive timer according to the timeout attribute, with a duration that will result in the keep-alive timer expiring before an idle time period can occur. Ex. 1001, 16:43–53 (emphasis added). In this exemplary disclosure, a keep-alive timer is “based on” an idle time period duration and is set to be less than the idle time period. Patent Owner cites another passage in which a keep-alive timer is set such that a keep-alive packet is sent so as to “prevent detection of an idle time period.” Ex. 1001, 19:11–23, cited in PO Resp. 13. Although these passages from the Specification of the ’026 patent disclose having a keep-alive period that is less than an idle time period, they do not define the phrase “based on,” let alone exclude a one-to-one ratio from the scope of “based on.” The following passage from the ’026 patent Specification provides more insight on the use of the phrase “based on”: A duration of time may be identified based on the idle information received by ITP policy component in first node 602. A timer may be set according to the identified duration. Detecting the first idle time period may include and/or otherwise may be based on detecting the timer expiration. ITP monitor component 556 may set a timer configured to expire in a time duration identified based on the first idle information received by ITP policy component 550. The identified duration may be longer, shorter, or equal to a duration of the idle time period. Ex. 1001, 18:30–39 (emphasis added), cited in Pet. Reply 9. In the above passage, an identified duration is based on idle information, and an idle time period is detected based on detecting the expiration of a timer that is set according to the identified duration. Importantly, “[t]he identified duration may be longer, shorter, or equal to a duration of the idle time period.” Ex. 1001, 18:37–39 (emphasis added). Thus, this passage shows that the ’026 patent uses the phrase “based on” simply to show some relationship, which would include the situation in which one period is set to be one times (equal to) that of another period.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“2. Remaining Terms For purposes of this Decision, we need not construe expressly any other claim terms. 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))).” slip op. at 11
Patent outcomesUS 10,306,026 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,306,026
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.