- Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Dec 4, 2017 · IPR2017-00788 · APJ Jameson Lee · IPR · Rehearing
The Board denied Mastercard’s rehearing request, leaving in place the denial of institution on claims 1–26 because the Petition did not adequately explain how the prior art met the electronic identification reference limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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, an opposition, or a reply.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision to institute trial on any claim. Thus, Petitioner’s Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board concluded that the Petitioner’s evidence showed steps 1–5 and subpart (a) of step 6. (Decision pp. 32– 33). However, the Board determined that Petition did not show that the prior art taught subpart (b) of step 6, specifically “branding metadata of the encrypted digital media by writing . . . (b) the electronic identification reference into the metadata.”” slip op. at 3
- BurdenDecided for patent owner
“Petitioner in the Petition regarding subpart (b) of step 6 of independent claims 1 and 15, including the state of the art at the time of the claimed invention. Rather, as we indicated in the Decision, Petitioner has not adequately explained why that which Petitioner regards as the electronic identification reference written into the metadata, as recited in subpart (b) of step 6, is or comes from the login information supplied by the user, i.e., the user’s email address, that the iTunes® system had requested and received according to the prior steps of claims 1 and 15. Dec. 32–33. That is what claims 1 and 15 require, and sufficient explanation is lacking in the Petition.” slip op. at 3
NonePatents in suitUS 8,402,555 - Keeper Security, Inc. v. Cumberland Systems LLCInstitution deniedPTAB · Nov 20, 2017 · CBM2017-00057 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution on claims 1–19 because Petitioner did not show that the patent qualified as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We agree with Patent Owner that Petitioner has failed to show adequately that the ’647 patent “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service,” to qualify as a covered business method patent. As we explained above, Secure Axcess requires a challenged patent to “have a claim that contains . . . a financial activity element.” Secure Axcess, 848 F.3d at 1381 (emphasis added). Petitioner fails to point to any element of claims of the ’647 patent that it contends meets the “financial activity element” required by Secure Axcess. Instead, it merely points to statements in the specification regarding potential applications for the claimed cryptographic algorithm. At best, Petitioner argues that the claimed encryption method can be for financial matters, such as securing e-commerce transactions, but this is not sufficient after the Federal Circuit’s guidance in both Unwired Planet and Secure Axcess. See id. Petitioner has simply failed to identify anything in the claims that are financial in nature.” slip op. at 9
Discretionary denialPatents in suitUS 8,023,647 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW 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 specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Department Of Justice v. Discovery Patents, LLCSome claims unpatentablePTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision
Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11
Patent outcomesUS 7,323,980 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,323,980 - PTAB · Nov 7, 2017 · DER2016-00003 · APJ Jameson Lee · DER · Institution
The Board denied institution because the petition lacked substantial evidence of derivation for any challenged claim, including sufficient proof of conception, communication, and the required claim comparisons.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support the assertion of derivation.4 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). A petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974). The showing of communication must be corroborated. 37 C.F.R. § 42.405(c). Assuming that corroborated conception and communication both are established, a petitioner would be able to regard as a derived invention those” slip op. at 3
- BurdenDenied
“B. The Alleged Invention – Conception and Communication First, Petitioner has not sufficiently specifically identified the features of an invention that he allegedly conceived. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “Petitioner Sindoni conceived of a major advance in the pickup truck equipment field”; and (2) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application.” Pet. 3, 16. We do not understand the position of Petitioner to be that Mr. Sindoni conceived of the very first ramp system for a pickup truck. An Information Disclosure Statement submitted by Petitioner during prosecution of the ’548 Application identifies three prior art references disclosing a ramp system for a pickup truck, i.e., U.S. Patent Nos. 3,976,209; 4,624,619; and 7,445,268. Ex. 3002. Also, Petitioner’s ’548 Application generally refers to preexisting ramps for pickup trucks and characterizes them as unsatisfactory. Ex. 1002 ¶ 5. Yet, neither the Petition nor the Declaration of Mr. Sindoni sets forth any particular feature of the “ramp system for a pickup truck” that Petitioner allegedly conceived, much less the entirety of what Petitioner has conceived. This deficiency alone dooms the Petition, because we do not know what was conceived by Petitioner. Second, Petitioner has not sufficiently identified the features of any invention that he allegedly communicated to Respondent. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application”; and “Petitioner disclosed the invention to Respondent to this end, and Respondent acknowledged receipt of the disclosure.” Pet. 3, 16. The Petition does not, however, point to corroborating evidence of communication or evidence of how Respondent has acknowledged receipt of Petitioner’s conceived “invention” at any time. The Declaration of Mr. Sindoni, the Petitioner, is no better. Mr. Sindoni testifies: “Details of the invention were communicated to FCA US LLC by me more than a year before FCA US LLC filed the Chrysler application and more than two years before the Sindoni application was filed.” Ex. 1003 ¶ 7 (emphasis added). However, Mr. Sindoni in his Declaration nowhere identifies or explains the referenced “[d]etails of the invention.” Submitted by Petitioner as Exhibit 1006 is a document that appears to be signed by Mr. Sindoni and a representative of an entity named “U.S. Patent Commission,” that pertains to disclosure by Mr. Sindoni of an invention to U.S. Patent Commission at some time. But that document has not been addressed in the declaration testimony of Mr. Sindoni. Nor is there a declaration from Angela Stevens, the individual who signed on behalf of U.S. Patent Commission, addressing the document. Thus, it has not been authenticated. Also, although the Petition generally refers to Exhibit 1006 as “Petitioner’s Invention Disclosure,” (Pet. 9–14), we do not know specifically what subject matter the Petitioner possibly had conceived because the Petitioner makes no averment in that regard. Furthermore, the content of Exhibit 1006 has not been explained either in the Petition or in the Declaration of Mr. Sindoni. Pages 4 and 5 of Exhibit 1006 appear to contain technical illustrations but are substantially illegible. On May 3, 2017, we issued an Order (Paper 7) stating: “[I]f Petitioner can provide a more legible copy of the last two pages of Exhibit 1006, then another full copy of Exhibit 1006, including the more legible last two pages, shall be filed within two weeks of the date of this communication.” Paper 7, 3. Petitioner filed no replacement copy of Exhibit 1006. We note also that the signature of Angela Stevens, on behalf of U.S. Patent Commission, on page 1 of Exhibit 1006, is undated, and Petitioner submitted no declaration of Angela Stevens to substantiate and explain her signature, e.g., when she received the document. In any event, Petitioner makes no explanation as to the relationship, if any, between U.S. Patent Commission and Respondent. We decline to assume that they are the same entity. Thus, we will not assume communication with U.S. Patent Commission is the same as communication with Respondent. For the foregoing reasons, the Petition is fatally deficient with regard to the” slip op. at 5
NonePatents in suitUS 9,067,525 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00793 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claim 1, finding that the Petition did not clearly map the claimed authorization object to Muller and the Request showed no overlooked error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3
NonePatents in suitUS 8,887,308 - EMC Corporation / EMC International US. Holdings, Inc. et al. v. Clouding Corp.All claims unpatentablePTAB · Oct 17, 2017 · IPR2014-01309 · APJ Rama G Elluru · IPR · Remand
Claims 6, 8, and 14 are unpatentable because Barnett alone, or Barnett combined with Allen ’664, teaches or suggests saving a state of the computer system.
RulingsRemand decision- RemandOther
“On May 1, 2017, the Federal Circuit issued a decision, vacating and remanding our Final Decision. EMC, 686 F. Appx. 858. The Federal Circuit determined we erred, and in particular determined that Petitioner properly argued, and Patent Owner did not dispute, that the combination of Barnett and Allen ’664 teaches the condition “when a likely solution [to a problem in the computer system] cannot be determined.” Id. at 860–62. 1 U.S. Patent 5,664,093 (Ex. 1005). 2 U.S. Patent 5,581,664 (Ex. 1006). The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“determine that Petitioner has shown by a preponderance of the evidence that the combination of Allen ’664 teaches and Barnett teaches the limitation at issue. Patent Owner’s argument is not persuasive because it is based improperly on what Allen ’664 teaches individually, and not on the teachings of the combined references. As the Federal Circuit has explained, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the combined system of Barnett and Allen ’664 proposed by Petitioner, a case template would be created, “when there is a fault in the computer system, to search for a case whose symptoms (i.e., the state of the computer system) match the fault.” Pet. Reply 12 (citing Ex.1024 ¶¶ 22–23, 25; Ex. 1006, 8:31–40). As Petitioner reasons, Allen ’664 teaches “saving of the case template of a problem,” and thus, the case template would comprise facts about the state of the faulty computer system. Id. at 12–13 (citation omitted) (emphasis added); see id. at 13 (Petitioner argues that a skilled artisan would understand that “the case retrieval step in the standard case-based reasoning cycle entails comparing a digital model of the presenting situation with the digital model of each of a collection of cases, and determining if there is a match.”). Petitioner avers, “[t]o match a problem to the cases in the case base [in the combined Barnett and Allen ’664 system], the case template may be constructed for the problem with attribute-value pairs which correspond to notable parameters of the problem.” Pet. Reply 13 (citing Ex. 1006, 5:2–6). Allen ’664 discloses that “[e]ach case 105 may comprise a set of attributes 301, each of which has a value 302. Attributes 301 and values 302 are typically manipulated as an attribute-value pair 303.” Ex. 1006, 4:32–36. Dr. Sacerdoti states that a skilled artisan “would understand that the attributes whose values describe a case template are the same attributes that describe a case that is stored in the case database.” Ex. 1024 ¶ 27. Allen ’664 further discloses that “[t]o match a problem 311 to the cases 105 in the case base 104, a case template 312 may be constructed for the problem 311 with attribute-value pairs 303[,] which correspond to notable parameters of the problem 311.” Ex. 1006, 5:2–6. Thus, we agree with Petitioner that when applying the teachings of Allen ’664 to Barnett, which teaches a fault management for any computer system, the case template includes the “information about the state of the faulty computer system.” See id. at 12; Ex. 1024 ¶¶ 22–26. Furthermore, Allen ’664 teaches saving the “case template” of a problem, as a “new case,” for which it cannot find a solution. Specifically, Allen ’664 teaches that: [T]he inference engine 111 may determine that there is no case 105 which is a good match for the case template 312. The inference engine 111 may create a new case 105 which partly or fully copies the case template 312 and may ask the user 119 (by means of the user interface 118) what the prescribed action 309 for the case 105 should be. The inference engine 111 may add the new case 105 to the case base 104 and proceed to another problem 311 with an augmented case base 104. Ex. 1006, 8:22–30. Thus, we further agree that in the combined Barnett and Allen ’664 system, when Allen ’664’s case template is saved as a “new case,” the “state of the computer system” would also be saved. See Pet. Reply 13–14. Accordingly, we further find that the combination of Barnett and Allen ’664 teaches or suggests “saving a state of the computer system.”” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1005, 6:66–7:6. According to Dr. Sacerdoti, “it would be clear to a person of ordinary skill in the art that in order for the programmer or user to understand how and when [] additional rules should be added, a state of the computer system should be saved when the AI engine fails to determine a likely solution, so that the programmer or user can later determine the context in which the failure took place.” Ex. 1007 ¶ 75. Dr. Sacerdoti further states that “[because] actions such as this are implemented via rules in a rule-based system, it would be natural and obvious to a skilled artisan to add a rule to the rule base that states that when a likely solution cannot be found, such a state of the computer system should be saved.” Id. With regard to saving a state of the computer system, Dr. Sacerdoti, also opines as follows: It is known in the art that an effective means of enabling the debugging and improvement of virtually any software program is to save the state of the computer system at the point when a failure occurs. If an embodiment of the Barnett patent were not to have such a capability, it would be obvious to a skilled artisan to include this capability when implementing the invention disclosed in Barnett. Id. ¶ 74. We are persuaded by Dr. Sacerdoti’s testimony and determine that Petitioner has demonstrated that it was known that an effective means of enabling the debugging and improvement of almost any software program was to save the state of the computer system when a fault (i.e., failure) occurred, and a skilled artisan would have applied this teaching to Barnett’s fault management system. Accordingly, we find that Barnett alone teaches or suggests “saving a state of the computer system.”” slip op. at 9
Patent outcomesUS 5,944,839 unpatentable§ 103 obviousnessPatents in suitUS 5,944,839 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00990 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood that claims 7–22 and 74 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1201, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480. Notably, nothing in the specification of the ’281 patent contradicts the definition of the term SST identified above or suggests another meaning for this term. For instance, the specification discloses that “SST layouts are logically specified in terms of rows of [Variable, Type, Legal Values, Default Value]. The actual instances of a SST would also include a Current Value field in every row.” Ex. 1201, 14:37–40. The specification also discloses the following: [an SST] logically consists of rows of: Variable, Type, Legal Values, Default Value, Current Value[.] Although entries of the [SST] in UPnP consist of these five items, the state table alternatively can contain fewer or additional items. Generally, each entry will minimally consist of a Variable name or identifier, and its current value. Id. at 16:12–18. According to the specification, representing Services in this way “ensures that the state of a Service is easily available in a common way to multiple User Control Points.” Id. at 16:44–46. In summary, we determine for purposes of this Decision that the broadest reasonable interpretation of the claim term “state table” is “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device,” which is consistent with the explicit definition of the term SST and other descriptions of a state table in the specification of the ’281 patent. We further clarify that, based on the plain language of independent claims 7, 11, 17, 18, and 20, the claimed “state table” includes content that “represent[s] an operational state of the controlled computing device.”” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“accounts for “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. Accordingly, Comcast has not demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of this independent claim would have been obvious over the teachings of Ludtke ’241. 4. Claim 74 By virtue of its dependency, claim 74 includes the same limitations as independent claim 20. Therefore, for the same reason discussed above with respect to independent claim 20, Comcast has not demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of dependent claim 74 would have been obvious over the teachings of Ludtke ’241.” slip op. at 21
- BurdenNot shown unpatentable
“Comcast relies on for the recited “a state table . . . representing an operational state of the controlled computing device,” we agree with Rovi that Ludtke ’241 does not “expressly show[]” any of the data structures “in the form of a ‘table,’” as Comcast contends. See Prelim. Resp. 22 (citing Pet. 29). As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Under the proper construction, none of the data structures in Ludtke ’241 cited by Comcast (i.e., those in Figures 5, 7A, 7B, and 8), either individually or collectively, meet the claim limitation because they are not in the form of a logical table consisting of rows of at least a variable identifier and a current value. On the current record, we also agree with Rovi that Comcast’s other arguments are conclusory and do not establish that Ludtke ’241 renders obvious “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. Prelim. Resp. 22–23 (citing Pet. 29–30). Comcast’s contention that the format of state data “is a matter of design choice to organize the status information for ease of use” does not support an obviousness conclusion because it fails to explain why a person of ordinary skill in the art would have replaced any or all of Ludtke ’241’s hierarchical data structures with a state table containing rows and columns. See Cutsforth, Inc. v. Motive Power, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (non-precedential) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. [Petitioner] must offer a reason for why a person of ordinary skill in the art would have made the specific design choice.”). Comcast’s argument that using a state table to represent an operational state of the controlled device is a matter of “design choice” is further undermined by explicit statements in Ludtke ’241 that its system eliminates the need for state tables. See Ex. 1202, 5:32–36 (“All issues such as state transitions and inter-control dependencies are handled automatically. . . by the target device independently of the intelligent controller responsibility. The present invention removes all requirements for items such as state transition tables and their execution environment. . . .”); 10:19–20 (“All concerns regarding the state transition. . . are handled inside of the target device.”); 17:30–31 (“In operation, the intelligent controller is not burdened with keeping state tables . . . .”). Notably, neither Comcast nor its declarant, Dr. Lippman, addresses these statements in Ludtke ’241. See Pet. 27–30; Ex. 1212 ¶¶ 66– 69.” slip op. at 19
Claim constructioncites KSR · GrahamPatents in suitUS 6,725,281 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00994 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood of proving claims 7–22 and 74 obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Rovi’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Comcast would prevail in challenging claims 7–22 and 74 of the ’281 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ludtke ’069 teaches or suggests “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. First, we agree with Rovi that Comcast fails to establish that the “self-describing information” in Ludtke ’069 teaches a “state table.” See Prelim. Resp. 18. As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Therefore, even if we accept Comcast’s unsupported premise that entries of the VCR’s operational status in the self-describing information are in the form of a data structure in Ludtke ’069, Comcast fails to show that such a data structure is a “state table” as recited in independent claim 20 (i.e., a logical table consisting of rows of at least a variable identifier and a current value).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1601, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;2 and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,725,281 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00992 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood that claims 7–22 and 74 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Rovi’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Comcast would prevail in challenging claims 7–22 and 74 of the ’281 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1401, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480. Notably, nothing in the specification of the ’281 patent contradicts the definition of the term SST identified above or suggests another meaning for this term. For instance, the specification discloses that “SST layouts are logically specified in terms of rows of [Variable, Type, Legal Values, Default Value]. The actual instances of a SST would also include a Current Value field in every row.” Ex. 1401, 14:37–40. The specification also discloses the following: [an SST] logically consists of rows of: Variable, Type, Legal Values, Default Value, Current Value[.] Although entries of the [SST] in UPnP consist of these five items, the state table alternatively can contain fewer or additional items. Generally, each entry will minimally consist of a Variable name or identifier, and its current value.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Comcast relies on for teaching “a state table . . . representing an operational state of the controlled computing device,” we agree with Rovi that Comcast has not pointed to any disclosure in Dara-Abrams of a data structure in the form of a table. See Prelim. Resp. 20 (citing Pet. 27–28). As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Under the proper construction, none of the data structures in Dara-Abrams identified by Comcast, either individually or collectively, meet the claim limitation because they are not in the form of a logical table consisting of rows of at least a variable identifier and a current value.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art;2 and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,725,281
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.