• Foursquare Labs, Inc. v. Mimzi, LLCRehearing denied
  PTAB · May 19, 2020 · IPR2019-01287 · APJ J John Lee · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–19 in place because the challenged prior-art and priority arguments did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. The Board applies an abuse of discretion standard when reviewing a decision on a petition for rehearing. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportOther

    “governing statute was 35 U.S.C. § 102(a)(2) (2013), as amended by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Inst. Dec. 13–19. On the record available at the time, we agreed with Petitioner that the ’981 Patent included claims with an effective filing date on or after March 16, 2013, the effective date of the AIA amendment to § 102. See id.; Reply 1–2; AIA § 3(n)(1). Specifically, we determined (preliminarily) that the challenged claims are not adequately supported by the written description of U.S. Patent Application No. 12/181,956 (“the ’956 Application”), and, thus, could not claim priority to the ’956 Application, the only application in the priority chain that was filed before the AIA’s relevant effective date. Inst. Dec. 17–19. Under post-AIA § 102(a)(2), a published patent application of another inventor (like Yoo) is prior art if it “was effectively filed before the effective filing date of the claimed invention.” Yoo was filed on May 6, 2008. Ex. 1003, code (22). Consequently, under post-AIA § 102(a)(2), Yoo would qualify as prior art because its filing date is before the effective filing date of the claimed invention.2 Ex. 1001, code (60). 2 We note that Yoo’s effective filing date precedes all of the possible effective filing dates listed on the face of the ’981 Patent, including the July 29, 2008 filing date of the ’956 Application. See Ex. 1001, code (60). As noted above and discussed further below, however, whether the claims are supported by the ’956 Application relates to the threshold issue of whether post-AIA § 102(a)(2) applies to Yoo.” slip op. at 3

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,981
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

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

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

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

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 11, 2020 · IPR2018-01498 · APJ J John Lee · IPR · Final written decision

  Claims 4, 7–9, 12, 14, 16, 18, and 19 are unpatentable as obvious over the Bergen/Reimer and Armstrong grounds, with Abecassis for specified claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 9 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does 2 U.S. Patent Application Publication No. 2007/0250901 A1, published Oct. 25, 2007 (Ex. 1004, “McIntire”). 3 U.S. Patent No. 6,965,890 B1, issued Nov. 15, 2005 (Ex. 1023, “Dey”). 4 U.S. Patent No. 6,038,367, issued Mar. 14, 2000 (Ex. 1024, “Abecassis”). 5 U.S. Patent No. 6,956,573 B1, issued Oct. 18, 2005 (Ex. 1028, “Bergen”). 6 U.S. Patent No. 5,696,905, issued Dec. 9, 1997 (Ex. 1005, “Reimer”). 7 U.S. Patent Application Publication No. 2007/0003223 A1, published Jan. 4, 2007 (Ex. 1021, “Armstrong”). not dispute Petitioner’s formulation of the level of skill in the art. Based on the information and testimony presented with the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 10. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’282 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 7–8. We determine that no claim terms of the challenged claims in the ’282 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). To the extent any interpretation of claim language is necessary, we address those issues in the context of our unpatentability analysis below. C.” slip op. at 7

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

    “playing in response to the request for information.” Petitioner argues that a person of ordinary skill would have recognized that presenting results of a request/query could interfere with viewing the video, and, thus, pausing the video would have been obvious given that it would have been “trivial” for the artisan to implement such a “ubiquitous” feature. Pet. 51–52 (citing Ex. 1002 ¶ 148). Additionally, the Petition cites Reimer as teaching this limitation. Id. at 52. Specifically, Petitioner notes that Reimer teaches using the “Pause” button of a remote control to initiate a query. Id. (citing Ex. 1005, 16:7–14). According to Petitioner, a skilled artisan would have been motivated to combine this feature of Reimer with Bergen because the two references are directed to similar systems, and doing so would constitute the use of a known technique (pausing) to improve Bergen’s system in the same way it improves Reimer’s system. Id. (citing Ex. 1002 ¶¶ 151–152; KSR, 550 U.S. at 417). We agree with Petitioner’s analysis and find that the combination of Bergen and Reimer teaches each limitation of claim 12. Also, we find that Petitioner has articulated a sufficient rationale that would have motivated a person of ordinary skill to combine those teachings. Thus, Petitioner has established by a preponderance of the evidence that claim 12 is unpatentable as obvious over Bergen and Reimer.” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “(id.)—in other words, the user sees the depicted item in Frame A but, due to reaction time, does not transmit the request for supplemental content about the item until Frame B, which is later in time and which may not depict that item any longer. See id. ¶ 272. In McIntire’s system, the supplemental content would be mapped to both Frame A and Frame B so that when the system receives the request at Frame B, it nonetheless retrieves the supplemental content for the item depicted in Frame A because it was also mapped to Frame B. See id. ¶ 140. This enables the system to identify “one or more articles appearing in the media stream at or around the point in time at which” the user request was received, because the articles are mapped to identifiers representing multiple frames at or around the time the articles appeared. See id. ¶ 310 (emphasis added). But though Frame A and Frame B may be different segments with different segment identifiers, they are both mapped to the same supplemental content. See id. Thus, displaying that content may be considered displaying information associated with both identifiers, but it is the same information, whereas the challenged claims require the information to be different. Petitioner argues that McIntire teaches displaying different information by virtue of the fact that the two segment identifiers it relies on represent two different segments. Pet. Reply 5–6. As discussed above, however, McIntire describes mapping the identifiers to the same content, even when they represent different segments/frames. Next, Petitioner notes that the items depicted in the video change from segment to segment, which creates the user delay problem. Id. at 6. According to Petitioner, “the purpose of identifying additional frame identifiers ‘around’ the current location and retrieving supplemental content for multiple [identifiers] is to display different information associated with previously depicted items that are not depicted in later locations.” Id. Petitioner is correct that McIntire discloses displaying information associated with previously depicted items, which may be different than information associated with items depicted in the current segment (because the items are different). Still, Petitioner has not addressed how McIntire teaches also displaying the information associated with items depicted in the current segment contemporaneously. McIntire’s discussion of the user delay problem teaches that the user is requesting information regarding the previously depicted items, not both the previous items and the current items contemporaneously, due to reaction time. See Ex. 1004 ¶ 272. That is why McIntire describes mapping both the previous and current segment identifiers to the information about the previously depicted items, not the currently depicted items. See id. ¶ 140. Petitioner also contends that a person of ordinary skill in the art would have known about the user delay problem, and that artisans “were motivated to solve it by providing different supplemental content associated with video frames before the request location,” which was within an ordinary artisan’s skill. Pet. Reply 6–7. Essentially, Petitioner’s argument amounts to a contention that the background knowledge of a person of ordinary skill would have supplied this limitation even if it was not taught by McIntire. Such a theory is untimely and will not be considered because it was not advanced in the Petition. See Pet. 28–29; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).” slip op. at 44

  Patent outcomesUS 9,380,282 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,380,282
• Amazon.Com, Inc. v. Customplay, LLC.All claims unpatentable
  PTAB · Mar 5, 2020 · IPR2018-01497 · APJ John R Kenny · IPR · Final written decision

  Claims 2, 4, 6, 14, 16, and 19 are unpatentable on at least one §103 ground; claim 4 was not shown unpatentable over Rakib and Livesey.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Computer Engineering, or Computer Science, and at least three years of experience in the design of digital video systems. Pet. 11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “constructions for the terms “retrieve” and “item” for its showing of the asserted obviousness of claims 14 and 19. Inst. Dec. 11–12; see also Pet. 17, 26. Therefore, we construed “retrieve” and “item” as they are defined in the Specification. Specifically, we construed “retrieve” as comprising “obtain, acquire, procure, download, transfer, extract, and to come into possession by any means or methodology.” Inst. Dec. 12; see also 2 The Petition in this proceeding was filed on August 1, 2018. Ex. 1001, 15:4–8. And we construed “item” as “(i) items, products, objects, properties, acts, or information, whether or not they offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; (iii) product placements; and (iv) items, products, objects, properties, acts, or information, that offer informational or entertainment opportunities.” Inst. Dec. 12; see also Ex. 1001, 4:48–55. For our construction for “item,” we included the Specification’s definition of “product placement,” which is “(i) items, products, objects, properties, acts, or information that offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; and (iii) product placements.” Inst. Dec. 13; see also Ex. 1001, 4:55–61. Neither party objected to our preliminary constructions of these terms. PO Resp. 6; Pet. Reply, generally. We maintain these constructions and determine that we do not need to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “trial, we agree with Patent Owner and do not find that Rakib and Livesey teach or suggest the above limitation. Petitioner’s obviousness theory for this limitation rests on its arguments about what an ordinarily skilled artisan could have done. According to Petitioner, an ordinarily skilled artisan would have understood that a partial overlay could be used to display information. Then Petitioner argues what an ordinarily skilled artisan would have been motivated to do if the artisan decided to use a partial overlay. But Petitioner provides no persuasive evidence that an ordinarily skilled artisan would have been motivated to choose the partial overlay— the predicate act in Petitioner’s analysis. And obviousness cannot be established by merely proving what an ordinarily skilled artisan could have done. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, Petitioner’s argument and Dr. Bovik’s testimony that the above limitation simply arranges old elements (requests for information and pausing control instructions), with each performing the same function it had been known to perform, and yields no more than predictable results, are conclusory. Pet. 80–81; Ex. 1002 ¶¶ 202–203. For that reason, we are not persuaded by that argument or that testimony.” slip op. at 69

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

    “Third, an ordinarily skilled artisan would have been motivated to modify Rangan’s apparatus to permit requests for additional information as taught by Rakib for the following reasons: (i) Rangan discloses providing a unique customized experience for numerous users, and an ordinarily skilled artisan would recognize this goal would be best accomplished by providing a portion of the related information and then allowing each user to decide what additional information should be disclosed; (ii) disclosing all information that users may be interested in would be onerous; (iii) Rangan suggests that the user would be able to branch to additional information after selecting the hotspot; and (iv) this modification would be a simple substitution of one known element for another known element to obtain predictable results. Ex. 1002 ¶¶ 71–80. We also find that an ordinarily skilled artisan would have a reasonable expectation of making such a modification. Id. ¶ 80. Fourth, we do not agree with Patent Owner that this modification would impermissibly change Rangan’s principle of operation. PO Resp. 24. The proposed combination would not require that any change in the basic operation of Rangan’s system because Rangan’s system already requests information. See supra Section III.A.2.f.; Ex. 1102 ¶¶ 39–40. The modification would simply involve making another request. Ex. 1102 ¶ 40. We also credit Dr. Bovik’s testimony that Rangan and Rakib do not have incompatible operating structures. Id.” slip op. at 35

  Patent outcomesUS 9,124,950 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,124,950
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01496 · APJ J John Lee · IPR · Final written decision

  Claims 4–6 and 10–20 are unpatentable as obvious under the stated § 103(a) grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 10–11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 11. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’346 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 16. We determine that no claim terms of the challenged claims in the ’346 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). C.” slip op. at 6

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

    “retrieving supplemental content, including “an image of the actress” (visual depiction of the performer), based on a mapping (reference) that associated that content to the segment depicting that actress. See Ex. 1004 ¶ 278; Pet. 28–29. Petitioner asserts inter alia that a skilled artisan would have been motivated to combine these teachings with the system in Thomas because displaying an actor’s image, as taught in McIntire, would have been a well-known technique applied in a conventional fashion to the similar device taught in Thomas to yield predictable results. See Pet. 29–30 (citing Ex. 1002 ¶ 68; KSR, 550 U.S. at 417). In addition, the Petition notes that Thomas teaches displaying “actor information” such as “biographical information” and “[a]ny other suitable information relating to . . . the actor,” which would have suggested to a skilled artisan to include images of the actor. Id. at 30 (quoting Ex. 1003 ¶ 106); Ex. 1002 ¶ 68. This analysis is persuasive, and its supporting evidence is credible and convincing.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “such metadata from a service. Ex. 1006, 6:44–50. The Petition sets forth several reasons why a person of ordinary skill would have been motivated to combine these teachings, including that it constitutes a simple substitution of one known technique (Reimer’s request for actor information) for another similar technique (Clarke’s request for metadata) to obtain predictable results. Pet. 73–75 (citing KSR, 550 U.S. at 417). Although Patent Owner argues Clarke “teaches away” from the claimed user request and that the combination of Clarke and Reimer is based on impermissible hindsight, its positions are unpersuasive because they are conclusory and unsupported. PO Resp. 54–55. In particular, with regard to teaching away, Patent Owner fails to identify evidence indicating that a skilled artisan would have understood Clarke to “criticize, discredit, or otherwise discourage the solution claimed” in the ’346 Patent. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the complete record, we find that this limitation is taught by the combination of Clarke and Reimer, and that an ordinary artisan would have been motivated to combine their teachings.” slip op. at 50

  Patent outcomesUS 8,494,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,346
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCInstitution denied
  PTAB · Jan 15, 2020 · IPR2019-01574 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Patent Owner statutorily disclaimed challenged claims 16 and 19.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDenied

    “the ’949 patent. Ex. 2001. Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original” slip op. at 2

  Discretionary denial
  Patents in suitUS 7,339,949
• Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing denied
  PTAB · Sep 17, 2019 · IPR2018-01626 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied Avigilon’s rehearing request and maintained denial of institution because § 315(a)(1) barred review after Avigilon’s earlier declaratory judgment action, despite its dismissal without prejudice.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2

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

    “designated as precedential the decision denying institution of inter partes review in Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511, Paper 11 (PTAB Jan. 31, 2019) (precedential). In that decision, the Board addressed the § 315(a)(1) bar in light of the Federal Circuit’s discussion of the § 315(b) time bar in Click-to-Call. See Cisco, Paper 11 at 5 n.1. The Board held in Cisco that § 315(a)(1) barred institution of an inter partes review even though an earlier civil action challenging the validity of a claim of the patent at issue had been voluntarily dismissed without prejudice. Id. at 8. Cisco is binding precedent in the present case, which involves the same issue of statutory interpretation applied to similar facts. See Patent Trial and Appeal Board Standard Operating Procedure 2 (rev. 10) § III.D. Thus, pursuant to the ruling in Cisco, § 315(a)(1) bars institution of an inter partes review of the ’864 patent based on the Petition in this case. Petitioner, therefore, has not shown that our Decision should be modified, and accordingly we deny Petitioner’s Request for Rehearing.” slip op. at 3

  Discretionary denial
  Patents in suitUS 7,034,864
• Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing denied
  PTAB · Sep 17, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Rehearing

  The Board denied Avigilon’s rehearing request, holding that § 315(a)(1) barred institution because Avigilon had filed a declaratory judgment action challenging the patent’s validity.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION A request for rehearing must “identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2

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

    “In our Decision, we concluded that 35 U.S.C. § 315(a)(1) barred institution of an inter partes review because Avigilon previously filed a declaratory judgment action challenging the validity of claims in the ’630 patent, notwithstanding Avigilon’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 6–11. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Clickto-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 8–10.” slip op. at 2

  Discretionary denial
  Patents in suitUS 9,191,630
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Feb 21, 2019 · IPR2018-00396 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied Roland Corporation’s rehearing request, leaving in place denial of institution on claims 1–21 because the petition did not sufficiently show anticipation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2

  • BurdenNot reached

    “02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 7

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

    “is proportional to the position of the control shaft relative to the foot pedal control module.” Ex. 1001, 5:32–34, 6:4–6, 6:37–39 (emphasis added). We construed the term “proportional” as “requiring a constant relationship, such as, for example, a linear relationship.” Dec. 16. In so doing, we found that “the claims and Specification of the ’758 patent do not elaborate on [the] nature of the control signal generated by the foot pedal control module beyond describing one embodiment in which the signal is ‘proportional to the plunger 116 position to the drum synthesizer through the cables.’” Id. (citing Ex. 1001, 4:30–33). We further found that “[t]he prosecution history also does not explicitly define the term ‘proportional;’ however, the Examiner relies on the ‘position-proportional signal’ as a reason for allowance of the claims.” Id. (citing Ex. 1005, 6). Recognizing that “[a]lthough extrinsic evidence ‘is generally of less significance than the intrinsic record’ in matters of claim construction,” we turned to “certain extrinsic evidence [to] inform[] our construction in the absence of a more fulsome intrinsic record.” Id. at 16–17 (citing Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)). In particular, we relied upon “a relevant technical dictionary, namely The Authoritative Dictionary of IEEE Standards Terms,” to “show the common understanding that usage of term ‘proportional’ when used to describe an electrical signal indicates the signal maintains a constant relationship, such as, for example, a linear relationship.” Id. at 17 (citing Ex. 3001, 690, 879–80). We also observed that the dictionary.com “definition Patent Owner proffers supports our construction of ‘proportional’ as requiring a constant relationship.” Id. (citing Ex. 2002). slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A Request for Rehearing is not an opportunity to present new arguments and evidence. 37 C.F.R. § 42.71(d) (A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.”). “Because we do not consider an argument made in a request for rehearing unless the request [specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply,” we do not consider Petitioner’s newly presented information here. Commvault Sys., Inc. v. Realtime Data LLC, IPR2017- 02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 6

  Claim constructioncites Phillips
  Patents in suitUS 8,785,758
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing

  The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3

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

    “As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,424,827

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.