- Apple Inc. v. Maxell, Ltd.Rehearing deniedPTAB · Dec 15, 2020 · IPR2020-00204 · APJ John A Hudalla · IPR · Rehearing
The Board denied Maxell’s rehearing request, leaving institution in place because it reasonably weighed the Fintiv factors and did not abuse its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Factor 4 must be constrained to the facts as they existed when the Petition was filed. In the Board’s informative Sand Revolution decision, the panel considered and gave weight to a petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Just as in Sand Revolution, we focused on the effects of Petitioner’s proposal to withdraw Van der Salm here: alleviating concerns of duplicative efforts between the district court and the Board and minimizing the potential for conflicting decisions. Dec. 16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12. Thus, we do not agree with Patent Owner that it was unreasonable for us to consider Petitioner’s post-filing proposal to withdraw Van der Salm.” slip op. at 4
Discretionary denialPatents in suitUS 6,928,306 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationInstitution deniedPTAB · Dec 8, 2020 · IPR2020-00663 · APJ Kimberly Mcgraw · IPR · Institution
Institution was denied for claims 1 and 2 because Petitioner did not show a reasonable likelihood that either claim would have been obvious over Griswold or England.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the submitted evidence and argument, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time the ’603 patent was filed (a “POSITA”) would have had a minimum of a bachelor’s degree in computer science, electrical engineering, mathematics, or a related field, and approximately two years of relevant experience or equivalent study in electronic data protection, electronic content protection, or digital rights management. Pet. 16. Petitioner further states that additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. (citing Ex. 1002 ¶¶ 47–48). Patent Owner sets forth a similar definition, stating that a POSITA would have a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields. Prelim. Resp. 19. Patent Owner states that the positions set forth in its Preliminary Response would be the same under either parties’ proposal. Id. The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the prior art and the ’603 patent. We note, however, that our analysis would be the same under either parties’ definition of a POSITA.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“should be construed to mean “conditions or characteristics determined in advance against which to check the structure and/or behavior of one or more software modules.” Pet. 16–18 (citing Ex. 1002 ¶¶ 67–72). To support this proposed construction, Petitioner states that the ’603 patent describes “inspector modules that ‘are operable to check the structure and/or behavior of drivers, software, and/or hardware against predefined criteria.’” Id. at 17 (emphasis omitted) (quoting Ex. 1001, 15:36–62); see also id. (citing Ex. 1001, 16:25–34, 23:63–24:4). Patent Owner contends that the term “predetermined criteria” does not require construction and should be given its plain and ordinary meaning. Prelim. Resp. 21. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute. Id. We agree that no explicit construction of this phrase is necessary for our decision on whether to institute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“With respect to Petitioner’s first argument, Petitioner contends that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software in order for the software to be used together with the content . . . .” Id. at 33 (citing Ex. 1002 ¶ 93), id. at 25 (citing Ex. 1002 ¶ 81). Petitioner, however, does not provide sufficient evidence to support its contention. Although Petitioner cites to the declaration testimony of Dr. Madisetti to support its argument, Dr. Madisetti’s testimony merely repeats verbatim what is stated in the Petition and provides no additional persuasive facts or objective evidence to support his conclusion. See Ex. 1002 ¶ 93; see also id. at ¶¶ 77–82. To satisfy its burden of proving obviousness a petitioner cannot employ mere conclusory statements. In re Magnum Oil Tools Int’l, 829 F.3d at 1380; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). We are also not persuaded by Petitioner’s second argument that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software . . . so that information identifying the software can be transmitted in the license datagram for evaluation at the licensor’s site.” Pet. 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Petitioner does not provide sufficient evidence or argument either that the license datagram provides information about the software (as opposed to the licensed product itself) or a reason why a POSITA would have understood information about the software would be provided in the datagram for evaluation at the licensor’s site. To support this second argument, Petitioner states Griswold’s license check system involves sending a “request datagram” or a “license datagram” to the licensor’s site in order to obtain approval to use the licensed product. Pet. 24–25 (citing Ex. 1006, 3:62–4:5, 5:44–52). Petitioner contends Griswold’s “license datagram 3 describes information related to the use of licensed product 1, including an identification of product 1 (i.e., the software).” Id. at 25 (citing Ex. 1006, 5:44–45, 6:37–51); see also id. at 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Griswold, however, does not state that license datagram 3 identifies the software separately from the product. Rather, Griswold sates that datagram 3 contains a number of fields, including product model number 24 that identifies product 1. Ex. 1006, 6:45–48. Thus, we disagree with Petitioner’s assertion that license datagram 3 identifies the software separately from the product. Petitioner’s contention that a POSITA would have understood that, in the embodiment where the software is separate from the content, the monitor must first identify the software so that information identifying the software can be transmitted in the license datagram for evaluation at the licensors site, is conclusory and unsupported. See Pet. 33 (citing Ex. 1002 ¶ 93). Thus, Petitioner has not sufficiently shown that Griswold teaches the” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,406,603 - Tripadvisor, LLC v. Mimzi, LLCAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01080 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1–4 and 7–18 are unpatentable over Roth and Ng; claims 1, 2, and 4, 7–18 are unpatentable over Roth and Fortescue; claim 3 and claims 1, 10, and 16 are not shown unpatentable on …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention, “would have (i) had a bachelor’s degree in Computer Science, Electrical Engineering, Computer Engineering, or a closely related field, and about 1–2 years of practical experience in that field; or (ii) had a master’s degree in Computer Science, Electrical Engineering, Computer Engineering or a closely related field.” Pet. 12 (citing Ex. 1004 ¶ 55). Patent Owner argues “POSITA must have some familiarity with social network databases (the technology at issue) in addition to Petitioner’s proposed general experience in Computer Science, Electrical Engineering, or Computer Engineering.” PO Resp. 15. On this record, we agree with Petitioner’s proposed definition of person of ordinary skill in the art, and adopt it for purposes of this Decision. Although the claims of the ʼ981 Patent recite searching a social network database, we find the fields of Computer Science, Electrical Engineering, and Computer Engineering would provide knowledge related to social networks and database search at a level commensurate with the disclosure of the ʼ981 Patent, and, thus, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art. We note, however, that our analysis below” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Having considered the parties’ arguments and the fully developed trial record, we do not agree with Patent Owner’s proposed construction. The ʼ981 Patent describes metadata as data that includes “date data, time data, name data or location data.” Ex. 1001, 2:31–32. Figures 1 and 2 of the ʼ981 Patent list several examples of metadata, including, “Date of call, dictation or message,” “Start time,” “End Time,” Duration,” “Phone #,” “Phone # other party,” “Name,” “Name of other party,” “Date of Synopsis,” “Start time of Synopsis,” “End time of Synopsis,” “Duration of Synopsis,” “Location start,” “Location time 1,” “Location at end,” “Loc. Start synopsis,” and “Loc. End synopsis.” As can be seen, the ʼ981 Patent describes metadata broadly as encompassing a variety of data associated with various uses of the mobile device, such as calls, texts, dictation, photos, and the like. Patent Owner does not provide sufficient evidence that the word “associated” means “attached” in the context of the claim. The ʼ981 Patent does not use the term “attached” anywhere to describe the metadata associated with the spoken request, nor has Patent Owner identified the use of the term anywhere in the intrinsic evidence. Patent Owner cites Figures 1 and 2 of the ʼ981 Patent as supporting its construction but Figures 1 and 2 show that a time offset and location may be added to the transcript for each the time and location information. The claim, however, recites that metadata be associated with the spoken request, not that it be added to the transcript. Ultimately, we fail to see how these embodiments show that time and location are attached to the spoken request. In light of the parties’ arguments regarding unpatentability, we determine that we need not further construe the term “metadata associated with the spoken request.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the parties’ arguments and evidence and the fully developed trial record, we do not agree with Patent Owner’s construction. The ʼ981 Patent states that it discloses “[a] system and method for providing social-network (Centralized Community Search database)—provided outputs to a mobile-electronic-device user in response to the user’s spoken request.” Ex. 1001, Abstract. The ʼ981 Patent explains that a user may wish to transmit their “text messages, photos, videos, call and voice annotations or synopsis (with speech-recognized text and location data), to a Centralized Community Search database” and that the user may designate this content to be public and “be shared with anyone via the Internet.” Ex. 1001, 14:64– 15:6. The ʼ981 Patent calls the public sharing of information as “Location Blogging.” See Ex. 1001, 15:1–6. The ʼ981 Patent explains that the publicly shared content contributed to the Centralized Community Search database may include information such as “a review of a restaurant or business.” Ex. 1001, 15:7–15. The Centralized Community Search database “may be searched or mined based on social network or type of information, restaurant location.” Ex. 1001, 15:22–26. Although the ʼ981 Patent describes information being stored in a centralized community search database, it does not restrict the community in any way nor does it describe the database as storing interpersonal relationships between community members. We find insufficient support in the ʼ981 Patent for such a limitation. Moreover, we find no support for Patent Owner’s argument that a social network database has a specific structure with relational tables and links between tables and between individuals, nor any support for the database being dynamic and two-way. We therefore decline to import such limitations into the claim. For purposes of this Decision, we do not consider whether the term “social network” should be given patentable weight. As explained below, even if we give the term patentable weight, when properly construed, the relied upon references teach a social network database. The ʼ981 Patent describes a centralized database that stores information, such as text messages, photos, videos, road warnings and restaurant reviews, accessible by anyone on the Internet, without disclosing or requiring the storage of interpersonal relationships. In light of the parties’ arguments regarding unpatentability, we need not further construe the term “social network database.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner has demonstrated that one of ordinary skill in the art would have been motivated to combine Roth with Fortescue. Both references relate to performing internet searches and both discuss searching for restaurants. On this record, we are persuaded by Petitioner that a person of ordinary skill would have considered adding Fortescue’s social network elements and the ability to rank based on various factors to benefit Roth’s that a skilled artisan would have been motivated to modify Fortescue to add Roth’s speech to text feature for additional convenience for the user.” slip op. at 29
Patent outcomesUS 9,128,981 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,128,981 - Clearone, Inc. v. Shure Acquisition Holdings, Inc.Rehearing deniedPTAB · Nov 3, 2020 · IPR2019-00683 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied ClearOne’s rehearing request, declining to reconsider the patentability of proposed substitute claims 57–67 based on newly raised Levit and Gulbrandsen.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard for Reconsideration The party challenging a Board decision has the burden of showing the decision should be modified, and the 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 its papers. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“New evidence is not permitted in a request for rehearing without a showing of good cause. See Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, IPR2018-00816, Paper 19 (PTAB January 8, 2019) (precedential). In this case, Petitioner appears to attempt to show good cause, though not expressly stating so, through the allegation that Patent Owner violated its duty of disclosure. Req. Reh’g 1–2. In the Order (Paper 95), the Board found Petitioner’s allegation insufficient, and did not permit briefing on a motion for sanctions for violating the duty of disclosure. Because Petitioner presents no other basis for good cause, the Board declines to admit the new evidence of Levit and Gulbrandsen into this proceeding.” slip op. at 6
NonePatents in suitUS 9,565,493 - Google LLC v. Uniloc 2017, LLCRehearing deniedPTAB · Oct 16, 2020 · IPR2019-01584 · APJ Kevin F Turner · IPR · Rehearing
The Board denied Google’s rehearing request, finding no abuse of discretion in denying institution of review of claims 1–3, 5, 6, 8, 39, and 41 under its General Plastic analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“petitions are only relevant if Petitioner was a party to the prior proceedings, or had a relationship with the prior petitioners. Reh’g Req. 7. But a review of the cited precedential decision does not reflect Petitioner’s suggestion. See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account.”). General Plastic does not proscribe panels of the Board from considering whether a subsequent petitioner knew of the prior art cited in the subsequent petition at the time of filing of the first petition, per the second factor. Similarly, we are not barred, under General Plastic, from considering the length of time that elapsed between when a petitioner learned of the art and when the petition, based on that art, was filed, or whether petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions, per the fourth and fifth factors. Additionally, we are not persuaded that the factors enumerated in General Plastic, as viewed through the lens of Valve Corp., must all be limited by any possible relationship between the multiple petitioners. Although the discussion of the first factor in Valve Corp. makes clear that “any relationship between those petitioners when weighing the General Plastic factors” must be considered, the remaining factors take into account the knowledge of the second petitioner irrespective of a specific relationship. See Valve Corp., Paper 11 at 9−15. As such, the relationship between the different petitioners certainly has some bearing on what the second petitioner knew, when they knew it, and when they acted upon it, but the consideration of the second through seventh factors does not require a showing of a specific relationship between the petitioners to consider those factors.” slip op. at 5
Discretionary denialPatents in suitUS 6,519,005 - Ericsson Inc. v. Uniloc 2017, LLCRehearing deniedPTAB · Sep 9, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Rehearing
The Board denied Ericsson’s rehearing request and left in place the discretionary denial of institution for claims 1–5, 7, and 17 under General Plastic.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“considered whether Petitioner knew of prior art which disclosed the same material as what the allegedly recently discovered references disclose. Decision 10–11. The additional consideration was prompted by the Petition’s characterization of Alamouti as merely disclosing an “implementation detail” omitted by the Merakos and Kay. Pet. 28–29. Petitioner argues that the additional consideration of the criticality of the disclosure contained in the allegedly recently discovered prior art applies a new standard that is inconsistent with General Plastic. Reh’g Req. 11. We disagree. First, there is no inconsistency because General Plastic does not prohibit the consideration. Second, the consideration is not a new standard, because, in our view, it already is implicit in General Plastic. Typically, there is nothing to trigger it and an assumption is usually made that absence of the recently discovered reference is what kept Petitioner from filing the petition earlier. Here, the circumstance is different, because Alamouti, and Ling evidently as well, are used by Petitioner only to provide relatively less significant implementation details compared to what Merakos and Kay disclose. Third, Petitioner does not point to anything in General Plastic which approves a hypothetical petitioner’s possibly substituting a reference it has known for a long time with a recently obtained reference that discloses the same, to justify a delay in filing a petition. Thus, it is not” slip op. at 6
- BurdenDecided for patent owner
“every single document in the related litigation. It was incumbent upon Petitioner to submit and identify material to support its assertions. Although we were willing to inspect the Complaint and any Amended Complaint, we were not willing to go further. It matters not whether a plaintiff asserting patent infringement is required to identify all asserted claims in the its assertion, and we need not even have looked in the Complaint.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s accounting must begin from when it first learned that Patent Owner had filed suit accusing products designed and manufactured by Petitioner of infringing claims of the ’079 patent.” Decision 12. Rather than accounting for the entire 10 month period from March 26, 2019 to January 17, 2020, the Petition only addressed 4 months. Pet. 73. Now, in the Request for Rehearing, Petitioner provides for consideration an explanation that purportedly covers the entire 10 month period. Reh’g Req. 7–10. The discussion and change of focus from 4 months to 10 months arguments after the original arguments are rejected. Accordingly, we decline to consider the new explanation that purportedly accounts for the full 10 month period. C. slip op. at 5
Discretionary denialPatents in suitUS 6,868,079 - Facebook, Inc. / Instagram, LLC et al. v. Blackberry LimitedAll claims unpatentablePTAB · Sep 1, 2020 · IPR2019-00706 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–3, 5, 7–11, 13–15, 17, 19–22, and 24 are unpatentable as obvious over the instituted combinations of Dallas, Brown, and Kent, with Bott, Mann, or LeBlanc as applicable.
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 possessed at least a bachelor’s degree in software engineering, computer science, or computer engineering, or electrical engineering with at least two years of experience in software application development, including development of applications for messaging (or equivalent degree/experience).” Pet. 5 (citing Ex. 1002 ¶¶ 12–15). Because Patent Owner “does not dispute the level of ordinary skill proposed by Petitioner” (PO Resp. 10), and because we find it generally consistent with the disclosures of the asserted prior art and the ’120 patent, we adopt Petitioner’s formulation. B.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The fundamental problem with the disputed language is that it causes the meaning of “notification” to turn on the interests, personality, perceptions, or actions of a user, rather than on the operation of the underlying program. As explained above, however, the notification described in the ’120 patent is simply a mechanism in the software that provides some sort of indication that a new message has been received. Unless it is silenced, that mechanism is triggered when a new message appears in the inbox, regardless of what the user of the software may or may not be doing at that time. 7. Conclusion We find no support for inclusion of the disputed language in the claims themselves, elsewhere in the ’120 patent, or in prosecution history; we find no extrinsic support, as Patent Owner’s expert offers only conclusory testimony; and we find that the disputed language would unnecessarily and improperly interject ambiguity into the claim. We thus do not adopt the disputed language and, instead, construe “notification” in the ’120 patent to mean “some form of visual, auditory, or physical cue to draw attention to an incoming message at the time of its receipt.” C.” slip op. at 23
- Expert testimonyPatent owner expert discountedDecided for petitioner
“4. Extrinsic Evidence Patent Owner also offers testimony of its expert in support of its claim construction. See Ex. 2003 ¶¶ 49–64. Although Dr. Smith contends that font color, bold text, and italics cannot be “notifications” because “[a person of skill in the art] would not have understood any of these display characteristics as a claimed ‘notification,’” he cites no evidence to support that bare conclusion and does not explain why font color and the like could not be notifications. See id. ¶ 52. We thus give this testimony little weight. Dr. Smith also reiterates Patent Owner’s arguments about “alerts,” the “manner of display,” and “bothering,” which we find unpersuasive for the reasons explained above. See id. ¶¶ 56–60. Dr. Smith further argues that Dallas’ flags, icons, and colors cannot be “notifications” because the user must be looking at their inbox in order to notice them. See id. at ¶¶ 53–55, 61–64. We find the question of whether Dallas’ flags, icons, and colors are “notifications” to be a matter of fact to be resolved in the patentability analysis, not a claim construction issue.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“c. Conclusion on the Independent Claims We find that Petitioner has shown how the combination of Dallas, Kent, and/or LeBlanc teaches all the limitations of independent claims 1, 13, and 24, that the combination is supported with sufficient motivations to combine, and that Patent Owner’s arguments to the contrary are not persuasive. We conclude, therefore, that Petitioner has shown by a preponderance of the evidence that the subject matter of these claims would have been obvious.” slip op. at 34
Patent outcomesUS 9,349,120 unpatentableClaim construction§ 103 obviousnesscites KSR · Graham · NautilusPatents in suitUS 9,349,120 - Clearone, Inc. v. Shure Acquisition Holdings, Inc.Some claims unpatentablePTAB · Aug 14, 2020 · IPR2019-00683 · APJ Christa P Zado · IPR · Final written decision
Claims 1–5, 7–33, and 35–40 are unpatentable; claims 6 and 34 were not shown unpatentable. The motion to amend was granted for substitute claims 57–67.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, Petitioner’s Motion is dismissed as moot, and Patent Owner’s Motion is denied-in-part and dismissed-in-part.” slip op. at 10
- Skill levelOther
“C. Level of Ordinary Skill in the Art To establish the level of ordinary skill in the art, we look to various” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“For the foregoing reasons, we determine the term “rotationally offset” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“date it becomes publicly accessible. In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id.” slip op. at 24
Patent outcomesUS 9,565,493 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 9,565,493 - Square, Inc. v. 4361423 Canada Inc.Rehearing deniedPTAB · Jul 17, 2020 · IPR2019-01651 · APJ Jameson Lee · IPR · Rehearing
The Board denied Square’s rehearing request; all claims remain in trial on all asserted grounds, including obviousness of claims 1 and 4 over Bear and Vrotsos.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At this stage of the proceeding, whether our statement was correct is of no moment, because we instituted review of all challenged claims on all asserted grounds of unpatentability. Dec. 38. As explained in the Decision,” slip op. at 2
NonePatents in suitUS 9,443,239 - Google LLC v. Uniloc 2017, LLCRehearing deniedPTAB · Jul 7, 2020 · IPR2019-01541 · APJ Jameson Lee · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution for claims 1, 2, 4, and 9 because Google did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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 judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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.” Id.” slip op. at 2
NonePatents in suitUS 7,016,676
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.