• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Dec 15, 2021 · IPR2020-01123 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 9 and 29 are unpatentable as anticipated by Arnold and obvious over Arnold; Petitioner did not show they were obvious over Chang and Stefik.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “do not agree with Petitioner that it would have been obvious to combine Stefik’s tamper resistant barrier with Chang. Petitioner argues that a tamper resistant barrier would enhance security and would further Chang’s goal of allowing only authorized code to be executed on its platform. Pet. 64 (citing Ex. 1005, 8:55–59; Ex. 1006, 27:11–15). We agree with Patent Owner that this reason to combine is too general and conclusory to explain how the specific modification of securing Chang’s public keys behind a tamper resistant barrier would have provided a relevant benefit to the combination beyond Chang’s own secure distribution system that provides security, without placing the public key behind a tamper resistant barrier. We determine that such a generalized and conclusory reason for combining Chang and Stefik is insufficient. Magnum, 829 F.3d at 1380 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory on evidence of record, to support the legal conclusion of obviousness.”). Specifically, Chang discloses that platform producers desire to allow only authorized code to be executed on their platform. Ex. 1005, 8:55–59. This is done by identifying the software that will execute on their platform. Id. at 8:60–62. Chang provides a solution to this problem by using software passports that include digital signatures. Id. at 8:65–9:48. Chang’s solution involves using a public key which is not kept behind a tamper resistant barrier. Id. Thus, Petitioner’s proposed motivation to combine to “enhance security” (Pet. 64) and to allow only authorized code to be executed on a platform does not explain why the public key would have to be kept behind a tamper resistant barrier. In response to the argument that its motivation is too conclusory, Petitioner further explains that its proposed motivation to combine (a platform producer’s desire to allow only authorized code on their platforms) would have motivated a POSITA to secure Chang’s public key behind a tamper resistant barrier to prevent a user from replacing the key. Pet. Reply 19 (citing Ex. 1005, 8:55–59). We agree with Patent Owner that this motivation suffers from hindsight bias as it is the same motivation disclosed in the ʼ721 patent itself for securing public keys behind a tamper resistant barrier. Ex. 1001, 14:23–28 (“In addition, maintaining the ‘public’ key within a tamper resistant environment forecloses the significant threat that the owner of protected processing environment 108 may himself attack the environment.”). Petitioner does not provide evidence that the motivation of preventing the user themselves from replacing the public key was a known problem in the industry or that it stems from either Chang or Stefik. Without such evidence, we conclude that Petitioner’s articulated reason for reconstruction. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47

  • Expert testimonyPetitioner expert creditedOther

    “parties, we are persuaded that Arnold discloses limitation (c) of claim 9. Arnold discloses an adapter card with a secured area. Ex. 1004, 5:49–51 (describing that the microprocessor, memory, and cryptographic functions of Arnold’s cryptographic system are “housed within a secured area or module” of an adapter card); Pet. 49–50. Arnold describes the secured area of its adapter card as an area “where data is protected from disclosure” (Ex. 1004, 5:10) and “which is protected from physical and direct electrical access” (Ex. 1004, 10:47–48). Pet. 49–50. These disclosures indicate that the secured area of Arnold’s adapter card is a “tamper resistant barrier” that prevents the data stored within from read access and, therefore, keeps the data “hidden from the user” as recited in limitation (c). We also credit Dr. Chatterjee’s testimony that, based on Arnold’s description of the secured area of the adapter card, the secured area forms a tamper resistant barrier that keeps data stored within, hidden from the user. Ex. 1002 ¶¶ 141–144 (citing Ex. 1004, 3:56–57, 5:9–12, 5:52–53, 6:13–32, 6:28–30, 6:51–52, 6:55–59). Arnold makes clear that the “secured area of the card . . . contains the public key KPU” (Ex. 1004, 6:51–52) and that “said public key (KPU) is stored within said secured area.” Ex. 1004, 12:25; see also id. at 12:42 (“means for providing a public key (KPU) within said secure areas”); Pet. Reply 9. Dr. Chatterjee’s testimony, which we determine to be credible, also supports Petitioner’s contention that Arnold’s public key is within the secured area of Arnold’s adapter card. Ex. 1002 ¶ 143 (“The public key is secured behind a tamper resistant barrier and therefore hidden from the user.”). in the secure area of Arnold’s adapter card and that (2) the secure area protects data from disclosure and prevents physical and direct electrical access.5 Thus, we agree with Petitioner that Arnold’s public key is “secured behind a tamper resistant barrier and therefore hidden from the user” as recited in claim 9.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s articulation of the level of ordinary skill in the art, 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 POSITA is supported by the testimony of Dr. Chatterjee and is commensurate with the level of ordinary skill as reflected in the prior art and the ’721 patent. We note, however, that our analysis would be the same under either party’s definition of a POSITA.” slip op. at 13

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

    “Petitioner argues the term “load module” recited in claim 9 should be construed as “executable code, such as a computer program or an applet, plus any associated data required for code execution.” Pet. 19. To support this proposed construction, Petitioner cites the Specification’s statements that “[l]oad modules may contain algorithms, data, cryptographic keys, shared secrets, and/or other information that permits a load module to interact with other system components,” and “[f]or a load module to operate and interact as intended, it must execute without unauthorized modification.” Id. (emphasis omitted) (quoting Ex. 1001, 3:28–35); see also id. at 19–20 (citing Ex. 1001, 4:36, 4:51–56, 5:34–39). Petitioner also points to the “Field of the Invention” section of the ’721 patent, which provides that “[t]he present invention relates to . . . techniques for certifying load modules such as executable computer programs or fragments [(called ‘applets’)] thereof as being authorized for use by a protected or secure processing environment.” Id. at 20 (alterations in original) (emphasis omitted) (quoting Ex. 1001, 1:17–28) (citing Ex. 1001, 2:33–37; Ex. 1002 ¶¶ 67–69). According to Patent Owner, Petitioner’s proposed construction is inconsistent with the construction adopted in co-pending litigation of the related matters, in which the term was construed to mean “executable code and any associated data.” PO Resp. 22 (citing Ex. 2007, 44). Nevertheless, Patent Owner contends that the term “load module” does not require construction and should be given its plain and ordinary meaning. Id. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute and that its arguments would apply equally under the construction of the co-pending litigation or under a plain and ordinary meaning of the term. Id. we agree with Patent Owner that no explicit construction of this phrase is necessary to resolve the disputes between the parties. 2. “associated digital signature” Patent Owner points out that “the District Court [for the Eastern District of Texas] adopted a construction of ‘associated digital signature’ as ‘a digital value, verifiable with a public key, that can be used to determine the source and integrity of the load module/executable.’” PO Resp. 21 (citing Ex. 2001, 1). Nevertheless, Patent Owner contends that the term “associated digital signature” does not require construction and that its arguments would apply equally under the District Court’s construction or a plain and ordinary meaning of the term. Id. at 23. Petitioner does not provide its own construction of the term “associated digital signature.” Based on the arguments presented by the parties, we agree with Patent Owner that no explicit construction of this term is necessary to resolve the disputes between the parties.” slip op. at 14

  Patent outcomesUS 6,157,721 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,157,721
• Ericsson Inc. v. Tot Power Control, S.L.Institution denied
  PTAB · Dec 10, 2021 · IPR2021-01092 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 were obvious over Chi and Murata.

  RulingsInstitution decision

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

    “For these reasons, based on the record before us, Petitioner has not shown sufficiently that a person of ordinary skill in the art would have understood that the combination of Chi and Murata teaches or suggests “wherein the desired signal to interference ratio target (SIRtarget) is modified at the start (403) of the outer loop unwinding, to match it to the outer loop power control in normal mode just prior to the start of the outer loop wind[-]up” when the system detects the start of unwinding. Ex. 1001, 8:59–64. For the same limitation in claim 5, Petitioner refers back to its not made a sufficient showing with respect to claim 5. Therefore, we determine the information presented does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claims 1–12 of the ’865 patent are unpatentable under 35 U.S.C. § 103(a) for obviousness over the combination of Chi and Murata. IV. CONCLUSION After considering the parties’ evidence and arguments, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that at least one of claims 1–12 of the ’865 patent is unpatentable based on the only ground asserted in the Petition. V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the alleged invention of the ’865 patent would have been familiar with power control mechanism for cellular systems, and specifically outer loop power control. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in electrical engineering and four years of experience; or by obtaining a Master’s degree in electrical engineering, but having only one to two years of experience; or by having no formal education but experience in cellular communications of at least eight years. Pet. 14 (citing Ex. 1003 ¶ 27). “For the purposes of this preliminary response only, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 10. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review.” slip op. at 8

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

    “C. Claim Construction In an inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–14. contends that no claim terms require express construction for purposes of applying the prior art. Pet. 14. Patent Owner submits that, at this stage of the proceeding, the Board should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 10. For purposes of this decision, we determine that no claim terms 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 need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “On the record before us, we agree with Patent Owner that Petitioner fails to show sufficiently that the combination of Chi and Murata teaches or suggests setting the target SIR at the start of unwinding to its value just prior to wind-up, as required by claim 1 of the ’865 patent. See id. at 36. As discussed above, Petitioner acknowledges that Chi does not explicitly teach this limitation, even if Chi may teach a desire for the target SIR to decrease in Murata on which Petitioner relies for meeting this limitation. Based on the current record, we are not persuaded that Murata teaches or suggests setting the target SIR to the value it had just prior to wind-up upon detecting the start of unwinding. Murata’s third embodiment teaches returning to the “initial state” when the system detects the end of wind-up (i.e., departure from the “shadowing state”). Ex. 1005 ¶¶ 110, 116–118. Murata explains that this initial state of operations includes starting with an “initial value of target SIR [that] is the same for all bearers (all services).” Id. ¶ 19. Murata explicitly describes “setting target quality to an initial value when high quality has been detected continuously” upon detecting departure from a shadowing state (i.e., at the start of unwinding). Id. ¶¶ 61–62 (emphasis added). Thus, it appears that Petitioner has misinterpreted Murata’s disclosure, which explicitly describes setting the target SIR at the start of unwinding to a default “initial value” rather than the value of the target SIR just prior to the start of wind-up.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,532,865
• Momentum Dynamics Corporation v. Witricity CorporationInstitution denied
  PTAB · Dec 10, 2021 · IPR2021-01165 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Stark, alone or with Mecke, rendered them obvious.

  RulingsInstitution decision

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

    “But limitations 1[c] and 1[d] have to be met together, not separately in disparate disclosures of Stark. To meet limitation 1[c], Petitioner relies on the parameters of the working prototype that was constructed by the author of Stark and described in Chapter 7 of Stark. Pet. 33–37. The Q1 = Q2 = 1000 notion is in a separate section for developing an intuition where ω1 ≠ a common resonant frequency among all coils. Id. at 174. Regarding its constructed prototype, Stark specifically states: “At this point, it remains to tune the four coils such that they are all resonating at the same frequency.”4 Id. at 190. Further, in Chapter 8, where Stark specifically discusses measurements from the prototype, Stark reveals that the Qs designed into the prototype are: Q1 = 32, Q2 = 34; Q1 = 23, Q2 = 22; Q1 = 29, Q2 = 26. Id. at 206, 212, 215. The prototype was not designed or implemented with Q1 = Q2 = 1000. Thus, Petitioner has not shown satisfaction of limitations 1[c] and 1[d], by relying on the disclosure of Q1 = Q2 = 1000.” slip op. at 15

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

    “On this record, and for reasons discussed below, the disclosures cited by Petitioner are not consistent with numerous other express disclosures of Stark. Petitioner has over-simplified Stark’s disclosure as well as engaged in selective picking and choosing of Stark’s teachings. “It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one skilled in the art.” Bausch & Lomb, Inc. v. Barnes- Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986) (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)). “The relevant portions of a reference include not only those teachings which would suggest particular teachings which would lead such a person away from the claimed invention.” In re Mercer, 515 F.2d 1161, 1166 (CCPA 1975). Petitioner’s selectively picking and choosing without an adequate explanation amounts to a critical deficiency of the Petition. Petitioner does not identify testimony of Dr. Young which would explain the various contrary disclosures of Stark.” slip op. at 17

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,741,734
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Dec 3, 2021 · IPR2020-00664 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable as obvious over Gammie; claims 1 and 8 are also obvious over Shamoon, which does not render claims 4–7 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals do not differ in any meaningful way with respect 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 asserted prior art and the ’627 patent. We” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Petitioner argues that, “even if the preamble is limiting, it has been met by the art.” Pet. Reply 3. Petitioner argues that the preamble language recites only a generic processor and type of storage medium, both of which would be evident from the body’s recitation of steps performed by an executing application. Thus, according to Petitioner, the preamble adds nothing essential to the claim that the claim body does not already require. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, we need not decide whether the preamble limits claim 1 because Petitioner establishes by a preponderance of the evidence that Gammie and Shamoon each respectively teach the preamble of claim 1, as we explain in the sections further below. See §§ II.C.2.a, II.D.2.a.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “2. “secure control application” Petitioner asserts the term “secure control application” recited in claim 1 should be construed to mean “an application that manages access to protected content.” Pet. 14–16 (citing Ex. 1002 ¶¶ 88–90). To support this proposed construction, Petitioner states that the ’627 patent describes the “secure control application” as “‘a first application’” that “‘act[s] as a supervisory digital rights managements system that controls a second application.’” Id. at 15 (quoting Ex. 1001, 2:46–49, 4:23–33); see also id. at 15–16 (citing Ex. 1001, 4:45–48, 4:49–5:1, 5:23–44, 6:25–31). Patent Owner applies Petitioner’s proposed construction in its Response and contends that construction of this term is not necessary to resolve the parties’ controversy. PO Resp. 24. Based on the arguments presented by the parties, and the fact that Patent Owner does not dispute the construction, we adopt Petitioner’s proposed construction for “secure control application.”” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “be given its plain and ordinary meaning. The term “governed application” is recited in independent claim 1. Dependent claim 4 adds that the governed application “satisfies one or more requirements.” Ex. 1001, 12:43–47. Patent Owner argues that the governed application of claim 1 be subject to certain rules or policies, but fails to explain how these rules and policies differ from the “one or more requirements” of claim 4. See Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (“[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.”). Furthermore, Patent Owner’s proposed construction requires the governed application to be subject to certain rules or policies imposed by the “security module.” The term “security module” appears nowhere in the ʼ627 patent or claims, and its inclusion in the construction of the term would create confusion regarding whether claim 1 includes the additional limitation of a security module separate from its other limitations. Patent Owner’s proposed construction would, therefore, add ambiguity rather than providing clarity to the claim beyond the plain meaning of the term itself.” slip op. at 13

  Patent outcomesUS 9,569,627 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,569,627
• Microsoft Corporation v. D3d Technologies, Inc.Institution denied
  PTAB · Dec 2, 2021 · IPR2021-00877 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution on claims 1–4, 6–9, and 11–21 because the second parallel petition did not show material differences sufficient to justify another review.

  RulingsInstitution decision

  • Parallel petitionsInstitution denied discretionary otherDenied

    “Having reviewed all Petitioner’s challenges, we are unable to discern any material difference between the parallel petitions that would be sufficient to outweigh the inefficiencies and costs to the Board and Patent Owner that would result from instituting on both parallel petitions. The mere fact that Petitioner may have had additional art to assert does not, on these facts, justify the additional burden of a second petition directed to the same claims. In view of the above, Petitioner has not adequately explained why the Petition in this proceeding contains sufficient material differences in its analysis to support instituting an additional inter partes review of the challenged claims. Accordingly, because we institute inter partes review of claims 1–9 and 11–21 of the ’691 patent on the grounds presented in the IPR2021-00878 petition, we exercise our discretion under § 314(a) to deny institution in this proceeding.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution 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). Section 314(a) does not require the Director to institute an inter partes review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an” slip op. at 2

  Discretionary denial
  Patents in suitUS 9,980,691
• Matterport, Inc. v. Appliance Computing III, Inc.Institution denied
  PTAB · Nov 23, 2021 · IPR2021-00939 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “U.S.C. § 314 and 37 C.F.R. § 42.4. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “Discretion Under 35 U.S.C. § 314(a) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp. 8–16 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine that Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition, we need not address Patent Owner’s contentions concerning discretionary denial. Accordingly, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a). B.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’673 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’673 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. D.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “construed in the [parallel district court proceeding]. See Ex._1005. For this IPR, Petitioner has applied those constructions.” Pet. 6. In the parallel district court proceeding, the court determined that the term “panorama” means “a contiguous image of a scene composited from two or more partial images of the scene.” Ex. 1005, 5. This construction was proposed in the parallel district court proceeding by Patent Owner. Id; Prelim. Resp. 22. For the purposes of this decision, we apply Petitioner’s asserted construction, which is the construction from the parallel district court proceeding, i.e., that “panorama” means “a contiguous image of a scene composited from two or more partial images of the scene.”” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,102,673
• Matterport, Inc. v. Appliance Computing III, Inc.Institution denied
  PTAB · Nov 19, 2021 · IPR2021-00938 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 were obvious over Cowtan and Bell436.

  RulingsInstitution decision

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

    “U.S.C. § 314 and 37 C.F.R. § 42.4. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the parties’ contentions and the evidence of record, we conclude Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’973 patent. Accordingly, we do not institute an inter partes review. B.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’973 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’973 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “2. “parcel outline” In the parallel district court proceeding, the parties agreed that the term “parcel outline” means “a representation of the legal boundary of the land (i.e., the property lines).” Ex. 1005, 1. We consider whether we should use that agreed-to construction in the instant proceeding. ordinary and customary meaning of “parcel outline.” The claim language supports that the spatial boundaries both have a relationship to the real property and also define a parcel outline. Ex. 1001, 16:33–34, 18:3–6 (reciting “defining a plurality of spatial boundaries of the plurality of spaces . . . at least one of the plurality of spatial boundaries defining a parcel outline of the real property”). Consistently, the ’973 patent Specification describes that the spatial boundaries define the land, which perhaps is a parcel outline, as one of a few different alternatives. The relevant portion of the ’973 patent Specification is below. In step 502, the system creates or generates the spatial boundaries in a model of the property that define the land (perhaps a parcel outline), structure (e.g., house, apartment, office, etc.), structure internals (e.g., bedrooms, kitchens, hallways, etc.) and/or air-space above the land (e.g., via quadcopter or pole-based data capture of aerial views). Id. at 8:51–56 (emphasis added). As set forth above, spatial boundaries that define a parcel outline are” slip op. at 10

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

    “Petitioner’s contentions pointing to similarities in Cowtan and Bell436 do not suffice as an articulated reason with rational underpinning to combine their respective teachings––more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. The Federal Circuit has concluded that merely asserting that two references were drawn from the same field of art is “simply too conclusory” to show that the skilled artisan would have combined these references in the way of the claimed invention. Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 976 (Fed. Cir. 2017); see Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (determining that “the Board correctly concluded” that a petitioner “did not articulate a sufficient motivation to combine” where the only reason given was “that references were directed to the same art or same techniques”). In the same way, Petitioner’s contentions here that the references are similar, even if true, are insufficient to show why the skilled artisan would have combined Cowtan and Bell436 to arrive at the subject matter recited in the claims. Petitioner also contends that a person of ordinary skill in the art reading Cowtan “naturally would look to” Bell436’s techniques. Pet. 17–18. Petitioner asserts that Cowtan and Bell436 both disclose the use of images to generate 3D scenes for rooms in floorplans. Id. at 17. As discussed above (see § II.E.3), the Petition does not explain with sufficient specificity in what modeling technology or rendering techniques with Cowtan’s teachings to meet all elements of claim 1. Under the circumstances here, Petitioner’s contention that a person of ordinary skill in the art reading Cowtan “naturally would look to” Bell436’s techniques (Pet. 17–18) is conclusory and does not suffice as an articulated reason with a rational underpinning to combine the respective teachings of the references. See KSR, 550 U.S. at 418. Petitioner also provides contentions as to why a person of ordinary skill in the art could have combined the references. Pet. 18 (asserting that Petitioner’s technology “could be used in real estate environments”) (emphasis added), 33 (asserting that a person of ordinary skill in the art would know that Bell436’s disclosures “could be used in real estate virtual tour 3D visualizations as taught by Cowtan”) (emphasis added), 36 (asserting Bell436’s digital representations “could be displayed” using Cowtan’s labels) (emphasis added). Those contentions, however, do not explain sufficiently why one of ordinary skill in the art reading Cowtan would have looked to specifically Bell436 for its particular teachings. Petitioner also does not identify a persuasive reason why a skilled artisan, viewing the teachings of Bell436, would have been motivated to modify Cowtan. That a person of ordinary skill in the art could have done so is not enough. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”); In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it prior art apparatus to arrive at the claimed rowing machine.”). Accordingly, we determine that Petitioner has not provided sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Cowtan and Bell436 in the manner recited in claim 1.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,592,973
• Matterport, Inc. v. Appliance Computing III, Inc.Institution denied
  PTAB · Nov 17, 2021 · IPR2021-00937 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 were unpatentable over Cowtan and Bell, or claim 9 over Cowtan, Bell, and Triggs.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the parties’ contentions and the evidence of record, we conclude Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’111 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that the phrase “at least” in Petitioner's proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’111 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’111 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this decision, we adopt Petitioner’s undisputed assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPrior construction adoptedDecided for petitioner

    “term “parcel outline” means “a representation of the legal boundary of the land (i.e., the property lines).” Ex. 1005, 1. We consider whether we should use that agreed-to construction in the instant proceeding. The intrinsic record supports that the agreed-to construction is the ordinary and customary meaning of “parcel outline.” The claim language recited in claim 1 differentiates between “one or more rooms within the real estate property” and “a parcel outline of the real estate property.” Ex. 1001, 16:20–22, 16:24–26. Claim 1 further recites a first spatial boundary, such as a spatial boundary delineating “one or more rooms” that is “within” a second spatial boundary, which corresponds to the parcel outline of the real property. Id. at 16:20–26. That further recitation in claim 1 supports the district court’s claim construction because rooms are within the legal boundary of the land. The recitation “a parcel outline of the real estate” in claim 1 (id. at 16:24–26) indicates a relationship between the parcel outline” slip op. at 10

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

    “Petitioner’s contentions pointing to similarities in Cowtan and Bell do not suffice as an articulated reason with rational underpinning to combine their respective teachings––more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. The Federal Circuit has concluded that merely asserting that two references were drawn from the same field of art is “simply too conclusory” to show that the skilled artisan would have combined these references in the way of the claimed invention. Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 976 (Fed. Cir. 2017); see Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (determining that “the Board correctly concluded” that a petitioner “did not articulate a sufficient motivation to combine” where the only reason given was “that the references were directed to the same art or same techniques”). In the same way, Petitioner’s contentions here that the references are similar, even if true, are insufficient to show why the skilled artisan would have combined Cowtan and Bell in the manner recited in the claims.” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,510,111
• Matterport, Inc. v. Appliance Computing III, Inc.Institution denied
  PTAB · Nov 17, 2021 · IPR2021-00936 · APJ Barbara A Parvis · IPR · Institution

  Denied institution on claims 1–18 because Petitioner did not show a reasonable likelihood of proving obviousness over Cowtan and Bell.

  RulingsInstitution decision

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

    “that Petitioner has not provided sufficient explanation to show how a person of ordinary skill in the art would have combined the teachings of Cowtan and Bell so as to meet the claimed subject matter. Also, Petitioner has not provided sufficient articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Cowtan and Bell in the manner recited in claim 1. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Cowtan and Bell.” slip op. at 25

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

    “Petitioner’s contentions pointing to similarities in Cowtan and Bell do not suffice as an articulated reason with rational underpinning to combine their respective teachings––more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. The Federal Circuit has same field of art is “simply too conclusory” to show that the skilled artisan would have combined these references in the way of the claimed invention. Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 976 (Fed. Cir. 2017); see Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (determining that “the Board correctly concluded” that a petitioner “did not articulate a sufficient motivation to combine” where the only reason given was “that references were directed to the same art or same techniques”). In the same way, Petitioner’s contentions here that the references are similar, even if true, are insufficient to show why the skilled artisan would have combined Cowtan and Bell to arrive at the subject matter recited in the claims.” slip op. at 22

  • Skill levelSkill level board ownOther

    “We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, 3 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’885 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this decision, and based on the current record, we adopt Petitioner's assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase.” slip op. at 8

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

    “The intrinsic record supports that the agreed-to construction is the ordinary and customary meaning of “parcel outline.” The claim language supports that the spatial boundaries both have a relationship to the real property and also define a parcel outline. Ex. 1001, 16:40–43, 18:3–6 (reciting generate (claim 1) or generating (claim 10) “a plurality of spatial boundaries of the plurality of spaces of the real property, each of the spatial boundaries defining a parcel outline of a corresponding space among the plurality of spaces”) (emphases added)). Consistently, the ’885 patent Specification describes that the spatial boundaries define the land, which perhaps is a parcel outline, as one of a few different alternatives. The relevant portion of the ’885 patent Specification is below. In step 502, the system creates or generates the spatial boundaries in a model of the property that define the land (perhaps a parcel outline), structure (e.g., house, apartment, office, etc.), structure internals (e.g., bedrooms, kitchens, hallways, etc.) and/or air-space above the land (e.g., via quadcopter or pole-based data capture of aerial views). Id. at 8:39–44 (emphasis added). As set forth above, spatial boundaries that define a parcel outline are distinguishable from spatial boundaries that define other aspects of real” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,836,885
• Shenzhen Carku Technology Co., Ltd. v. The Noco CompanySome claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00944 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–10 and 12–23 are unpatentable over the listed grounds; claim 11 was not shown unpatentable because the evidence did not establish the claimed connection sequence.

  RulingsFinal written decision

  • Expert testimonyOther

    “Q. So Richardson contemplates a flow of control where the shunt calibration flag was not set, correct? A. That is reasonable. He shows an option -- an option of a “no” result from Step 406. Ex. 1047, 110:14–18. Dr. Wood also agrees that when the shunt calibration flag is not set and the procedure advances to Step 420, the contact relay in Richardson is still open: Q. Now, if the shunt calibration flag is not set and we go to Step 420, the starter contact relay in Richardson is still open, correct? A. That is my understanding. Id. at 77:10–13. Dr. Wood further agrees that when the shunt calibration flag is not set and the procedure advances to Step 214, where reverse polarity connection is tested, the starter contact relay is still open: Q. Okay. Then if we continue to Step 214 in this example, where the shunt calibration flag was not set, when we’re testing for the condition reverse jumper cable voltage, the starter contact relay is still open, right? A. That appears to be the case.” slip op. at 65

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Referring to FIG. 3, Klang states: “[t[he reverse polarity sensor 48, connected in a like manner across the battery terminals 20, 22, senses negative voltage indicating that the battery leads are connected backwards.” Ex. 1007, 6:20–23. Klang’s reverse polarity sensor provides an output signal (sensed negative voltage) indicating whether the battery has a proper polarity connection. Klang states: “[i]f the start button has not been pressed, at step 144, the OCV [battery open circuit voltage] is compared to a low negative voltage to determine whether the conducting cables 18 are properly connected to the battery 16. If the OCV is less than -0.5V, the method proceeds at step 146 to notify the operator that the leads are reversed.” Ex. 1007, 8:55– 60.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “references. Accordingly, consideration and discussion of the objective evidence of nonobviousness is unnecessary.” slip op. at 92

  • ExcludeMotion to exclude, deniedDenied

    “discussed below, the Motion is denied.” slip op. at 94

  Patent outcomesUS 9,007,015 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,007,015

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.