- Brycer, LLC / Brycer Management, Inc. v. Tegris, Inc.All claims unpatentablePTAB · Jan 16, 2025 · IPR2023-01196 · APJ Hubert C Lorin · IPR · Final written decision
Claims 8–16 are unpatentable under §103 over Key, Chauhan, Sweeney, and McKinney; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“patentable weight. See II.C.4.b. Accordingly, it is sufficient that Petitioner has shown that Key discloses a management software that meets the claim but for processing information about, for example, pressure vessels rather than fire hydrants. Ex. 1005 ¶ 15. Even if we assume arguendo that “fire hydrant” should be given patentable weight, Petitioner shows that Chauhan discloses software for managing information about assets such as fire hydrants. “Chauhan discloses a ‘UtilityCenterTM [that] is an integrated GIS [geographic information system] suite of applications that manages information across the entire utility.’” Pet. 24 (citing Ex. 1016 ¶¶ 39–42, Fig. 1; Ex. 1003 ¶¶ 84–86, 128–129) (alterations in original). Petitioner contends that Chauhan is intended for “‘fire hydrant inspections’” and that there is a “‘HYDRANT Theme’ that allows an inspector to ‘edit and view inspection fields.’” Id. at 24–25 (citing Ex. 1016 ¶ 207; Ex. 1003 ¶¶ 85, 127). According to Petitioner, “Chauhan discloses that its UtilityCenter has wide applicability and that the ‘same technology’ can be used for various other assets and applications including . . . ‘fire and police departments . . . .’” Id. at 25 (citing Ex. 1016 ¶¶ 42, 218; Ex. 1003 ¶¶ 114–115, 130). According to Petitioner, this renders obvious the use of management software to manage information concerning fire hydrant assets. This discussion sufficiently addresses the “fire hydrant management software” limitation consistent with Petitioner’s (and our) view that the phrase “fire hydrant” relates to the content of the data the software processes. See supra § II.C.4.a. In regards to Chauhan, Patent Owner argues that it “relates to a different technical field.” PO Resp. 49. While Mr. MacInnes notes Chauhan states that the same technology “has been tailored to the specific needs of public agencies, such as fire and police departments” (see EX1003, ¶130), Chauhan nowhere explains the needs of the fire department or how the utility outage management system was modified, or why a fire department would need a power outage management system, as described in Chauhan. Id. at 49–50. We are unpersuaded. Given that Key and Chauhan both teach” slip op. at 54
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“Accordingly, we do not apply a presumption of nexus that the ’966 patent’s claims are linked to the objective indicia of nonobviousness, because Patent Owner has not shown that TegrisFire and Brycer products embody and are coextensive with the claims. Nexus may still be shown if the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention. See Fox Factory, 944 F.3d at 1373–74 (“[T]he patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention.” (emphasis added)). However, for the following reasons, that, too, has not been sufficiently established. 2. Unexpected Results Regarding unexpected results, Patent Owner relies on two case studies, one of Lynwood, WA Fire Department (Ex. 2004) and the other of Richland, WA Fire Department (Ex. 2025). According to Patent Owner a number of benefits were seen from using the TegrisFire product, such as the number of licensed inspectors increased. Ex. 2004 (9 (“147.5%”)); Ex. 2025 (9 (“200%)”). Other improvements were seen in the decreased number of impaired assets and in the increased communication between owners and inspectors. PO Resp. 63–64 (citing Ex. 2004, 9–11; Ex. 2015 ¶ 128; Ex. 2025; Ex. 2015 ¶ 155). But there is insufficient evidence suggesting that any of these” slip op. at 72
- ExcludeMotion to exclude, deniedDenied
“We have not discussed the provisional applications from which the ‘966 patent claims priority and therefore have not relied Mr. MacInnes’s testimony about said priority. For the foregoing reasons, the Motion to Exclude is denied.” slip op. at 85
Patent outcomesUS 11,126,966 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,126,966 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentablePTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision
Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15
Patent outcomesUS 11,373,058 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · GrahamPatents in suitUS 11,373,058 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00069 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 15–30 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Molinet as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . result[ing] in inaccurate fees being charged for advertising services.”). Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the server-based software techniques of Oliver and Molinet at Agrawal’s Advertising System 120” “to obtain the benefits of each system.” Pet. 31 (citing Ex. 1002 ¶ 95). Petitioner’s reasoning does not adequately explain why a person of ordinary skill in the art would make the proposed modifications and instead appears to be based on improper hindsight reasoning. Specifically, Petitioner does not adequately address which benefits of each system a person of skill in the art would be motivated to combine and what the advantages of combining functionalities of the references into a single server would be.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,897 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 25, 2024 · IPR2023-01314 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17
- PTAB / AIA Trials › Discretionary denialNot reached
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’553 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 43–48.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Regarding the preambles of independent claims 1 and 22, as well as the claim term “excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation,” Petitioner asserts that it “applies the claim construction previously adopted by the district court in the co-pending litigation.” Pet. 9–10. Petitioner asserts that “the parties agreed that the preambles of independent claims 1 and 22 are limiting, and the district court adopted this construction in its order.” Id. at 9–10 (citing Ex. 1011, 2 (district court claim construction order)). Petitioner also asserts that “the district court adopted Patent Owner’s preferred construction of [‘excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation’]: ‘excluded volume in space that is common to both the first and second 3D representations where no surface from either of the 3D representations should be present.” Id. at 10 (citing Ex. 1011, 2). Patent Owner does not respond other than to repeat Petitioner’s assertions regarding the district court’s claim constructions. Prelim. Resp. 9. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,064,553 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 22, 2024 · IPR2023-01313 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images.” slip op. at 17
- PTAB / AIA Trials › Discretionary denialNot reached
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,629,551 - Google LLC v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Mar 20, 2024 · IPR2022-01413 · APJ Hubert C Lorin · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Carmel; the Board did not reach the three alternative obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We observe that Patent Owner cites no intrinsic evidence to support its “clarification” to Petitioner’s description of a person of ordinary skill in the art. See PO Resp. 6; Ex. 2002 ¶ 13. Be that as it may, our analysis would not change if we adopted Patent Owner’s “clarification” to Petitioner’s description of a person of ordinary skill in the art. As Petitioner indicates, Patent Owner’s “clarification” would increase the level of ordinary skill. See PO Resp. 6; Ex. 2002 ¶ 13. “[I]t is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). Accordingly, we adopt Petitioner’s proposed definition for the level of skill in the art possessed by a person of ordinary skill in the art because it comports with the technology and claims in the ’636 patent and the asserted references and appears reasonable. C. Claim Construction” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For the foregoing reasons, we are unpersuaded that the intrinsic evidence requires a construction that limits the plain and ordinary meaning of 1[c]–1[c(ii)] as Patent Owner proposes. 4 Referring to Ex. 1001, 8:13–15 (“Once a connection is made to a user’s computer (e.g., user computer 18), server 12 sends the media data to the user computer in the following manner.”) See Ex. 1103, 97:15–17 (referring to 8:15–17 of the ’824 patent). We determine that 1[c]–1[c(ii)] are to be construed broadly, consistent with the plain and ordinary meaning, which covers a request specifying “one” serial identifier of the requested “more” elements, which is in line with Petitioner’s construction. See Pet. Reply 6. They do not require pulling every slice subsequent after the requested starting slice. We will apply that construction in analyzing Petitioner’s challenge under the asserted ground.” slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Conclusion as to Claim 1 For the reasons discussed above, we determine that a preponderance of the evidence supports Petitioner’s position that Carmel renders obvious the subject matter of claim 1 of the ’636 patent. 3. Independent Claims 5 and 9 Claims 5 and 9, drawn to a “server system” and a “computer program product,” respectively, parallel “method” claim 1 discussed above. Petitioner indicates that claim 5 “presents no material differences from claim 1 in terms of the basic functions it recites.” Pet. 49. “Claim 9 is materially the same as claim 1 except it is written as a computer program product instead of a method.” Id. at 53. Patent Owner does not provide any specific arguments as to these claims. See PO Resp. 36–56. For the reasons discussed with respect to claim 1, we determine that a preponderance of the evidence supports Petitioner’s position that Carmel” slip op. at 59
- ExcludeMotion to exclude, deniedDenied
“Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.” Consolidated Trial Practice Guide5 79–80. Petitioner moves to exclude the following exhibits: 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. • Ex. 2003 (Declaration of Dr. Henry Houh filed in IPR2022-01228 (Ex. 1002)); • Ex. 2004 (May 23, 2023 Deposition of Dr. Kevin Jeffay filed in IPR2022-01430 and -01433); • Ex. 2008 (In re Certain Fitness Devices, Streaming Components Thereof, and System Containing Same, Inv. No. 337-TA-1265, Initial Determination (ITC Sept. 9, 2022) (CALJ Clark S. Cheney); and, • Ex. 2009 (In re Certain Fitness Devices, Streaming Components Thereof, and System Containing Same, Inv. No. 337-TA-1265, Evidentiary Hearing - Volume III (ITC March 14, 2022). Mot. Excl. 1–2. Petitioner states, inter alia, that “Exhibits 2003, 2004, and 2009 are a declaration, deposition, and hearing transcript containing testimony of experts not involved in this IPR and from cases not involving [Petitioner].” Id. at 2. Petitioner contends that Mr. Hoarty should not be allowed to rely on any of these exhibits as the bases of his expert testimony. Id. at 2. “Exhibit 2008 is an Initial Determination from the ITC, which should be excluded under FRE 401 as irrelevant.” Id. at 3. We have not relied on any of these exhibits in reaching our decision. Accordingly, we need not determine whether to exclude the challenged material. Therefore, the Motion to Exclude is dismissed as moot. slip op. at 63
Patent outcomesUS 9,762,636 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,762,636 - Google LLC v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Mar 20, 2024 · IPR2022-01412 · APJ Hubert C Lorin · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Carmel alone; the Board did not reach the alternative Carmel–Ravi and Carmel–Narayan grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“However, a plain reading of 1[e] yields another possibility; that is, a request specifying “one” serial identifier of the requested “more” elements.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We have reviewed the record and find Petitioner has the stronger position. The claim does not recite “push” or “pull,” even though the parties agree that 1[e] reflects a “pull” technique (PO Resp. 1; Pet. Reply 1). What the claim recites is “receiving requests at the server system” (i[e]) and “responsive to the requests, sending, by the server system, the one or more media data elements . . . to the requesting user systems corresponding to the requests via one or more data connections over the Internet, for one or more of the media data elements” (1[f]). Petitioner must show that Carmel teaches this claimed technique, not necessarily a “pull” technique as Patent Owner characterizes it. In that regard, Petitioner shows, inter alia, that Carmel teaches that “[r]esponsive to a user input, client 30 selects an appropriate starting slice and begins to download and decode (decompress) files 42, 44, 46, etc.” Ex. 1003, 10:44–47; Pet. 24 (also quoting Ex. 1003, 11:5–7 (“Responsive to the [user] selection, server 36 begins to transmit data slices [to the client 30]”)). This disclosure satisfies the technique that is claimed; that is, “sending, by the server system, the one or more media data elements” “responsive to receiving requests at the server system.”” slip op. at 40
- ExcludeMotion to exclude, deniedDenied
“Generally, the Board waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude. In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and the motion to exclude is moot.” Consolidated Trial Practice Guide5 79–80. slip op. at 61
Patent outcomesUS 9,742,824 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,742,824 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2023-00813 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds and dismissed the motion to exclude as moot.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“We decline to read in a requirement that the “program” of the preambles must be an “entire program.” In particular, we do not agree with Patent Owner that the limitation directed to “additional requests . . . during playing” or the mention in the specification of “additional data requests for the duration of playing” necessarily requires that the “playing” refers to an entire program. For example, the recited requests could relate to playing a portion of a program, a premise with which both declarants agree. Ex. 1103, 22:22–24:9; Ex. 1111 ¶¶ 13–16. Thus, we reject Patent Owner’s “entire program” interpretation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2022-01411 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We decline to construe limitations 1b(i)–1b(ii) other than to agree with both parties (PO Resp. 11, 28–29; Pet. Reply 5) that the recited “data rate” refers to the capability of the data connection. See, e.g., Ex. 1001, 4:40–43 (“The bandwidth requirement of audio or video media refers to the data rate in bits per second that must be transmitted and received in order to listen to or view the material uninterrupted.”); Ex. 1002 ¶ 126; Ex. 1103, 26:19–29:7; Ex. 1111 ¶ 24. This is sufficient to dispose of the instant case. See Realtime Data, 912 F.3d at 1375.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594
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.