- PTAB · Oct 19, 2021 · IPR2020-00847 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1, 2, 4–7, 10, and 14 are unpatentable as obvious over Kurganov-262 and Chakrabarti; the Board did not reach the alternative grounds.
RulingsFinal written decision- BurdenDecided for petitioner
“Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. Because Patent Owner focused its arguments solely on the issue of whether Kurganov-262 is prior art, Petitioner’s assertions regarding the substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted on the complete record. PO Resp. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. We have reviewed the disclosures of Kurganov-262 and Chakrabarti relied on by Petitioner, as well as the explanations provided by Mr. Lipoff, and are persuaded that the limitations of claim 1 are disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the skilled artisan would have been motivated to apply Chakrabarti’s techniques for web crawling to Kurganov-262’s system, and would have had a reasonable expectation of successfully doing so, thus arriving at the subject matter of claim 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ʼ084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person having ordinary skill in the art as having “a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA would understand that” polling or pinging “describes a process where by existing and new devices and/or websites are discovered,” and that “‘polling’ includes asking for information from a website, including a listing of URLs or asking a website of a search engine to provide new website information.” Id. at 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. PO Resp. 33–34. These declaration paragraphs provide little detail beyond what is argued in the Patent Owner Response. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ʼ996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine that Kurganov-262 is available as prior art against the challenged claims. On the complete record, Patent Owner fails to direct us to specific disclosure within the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device configured to periodically search the network(s) to identify new web sites and add such new web sites to the plurality of web sites that are accessed. See PO Resp. 31–34.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,451,084 - PTAB · Aug 11, 2014 · IPR2014-00760 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review. Each of the captioned inter partes reviews is in its preliminary stage. A decision on the respective Petitions6 has not yet been rendered. The parties have identified the following USPTO proceedings that are pending.” slip op. at 2
NonePatents in suitUS 8,048,032 - PTAB · Aug 11, 2014 · IPR2014-00763 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties under the settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“ORDER It is, therefore, ORDERED that the joint motions to terminate these proceedings are GRANTED and the proceedings are hereby terminated as to all parties including, Petitioners and Patent Owner; and FURTHER ORDERED that the parties’ joint requests that the settlement agreement, as filed in each case, be treated as business confidential information and kept separate from the file of the involved patent under the provisions of to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED.” slip op. at 4
NonePatents in suitUS 8,292,850 - PTAB · Aug 11, 2014 · IPR2014-00762 · APJ Glenn J Perry · IPR · Order
The Board granted the joint motions and terminated the proceedings as to all parties after settlement, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review.” slip op. at 2
NonePatents in suitUS 8,292,850 - PTAB · Aug 11, 2014 · IPR2014-00759 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties after settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review. Each of the captioned inter partes reviews is in its preliminary stage. A decision on the respective Petitions6 has not yet been rendered. The parties have identified the following USPTO proceedings that are pending.” slip op. at 2
NonePatents in suitUS 8,142,413 - PTAB · Aug 11, 2014 · IPR2014-00761 · APJ Glenn J Perry · IPR · Order
The Board granted the joint motions and terminated the proceedings as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review.” slip op. at 2
NonePatents in suitUS 8,048,032 - PTAB · Jun 16, 2014 · IPR2014-00130 · APJ Barbara A Parvis · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00130 as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” FLIR Systems is the sole petitioner in this review. The Board has discretion to terminate this review with respect to e- Watch as Patent Owner.” slip op. at 2
NonePatents in suitUS 6,970,183 - PTAB · Mar 28, 2014 · IPR2013-00412 · APJ Jameson Lee · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00412 as to Toyota and AVS without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“ORDER Termination of Proceeding 37 C.F.R. § 42.72 On March 26, 2014, the parties filed a joint motion to terminate this inter partes review with respect to both Petitioner (“Toyota”) and Patent Owner (“AVS”). Paper 35. Also on March 26, 2014, the parties filed a copy of their written settlement agreement covering Patent 6,738,697 involved in this inter partes review (Ex. 2001), and a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 36). The parties represent that there are no collateral agreements referred to in their settlement agreement. Paper 35, 1.” slip op. at 1
- PTAB / AIA Trials › §315(e) estoppelOther
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Toyota is the sole petitioner in this review. The Board has discretion to terminate this review with respect to AVS as Patent Owner.” slip op. at 2
NonePatents in suitUS 6,738,697 - PTAB · Mar 28, 2014 · IPR2013-00413 · APJ Barbara A Parvis · IPR · Order
The Board granted the joint motion and terminated IPR2013-00413 as to Toyota and AVS without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Toyota is the sole petitioner in this review. The Board has discretion to terminate this review with respect to AVS as Patent Owner.” slip op. at 2
NonePatents in suitUS 6,738,697 - PTAB · Mar 26, 2014 · IPR2014-00226 · APJ Howard B Blankenship · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On March 14, 2014, the parties filed a joint motion to terminate the instant proceeding pursuant to a settlement agreement. Paper 7. The parties also filed a true copy of their written settlement agreement, made in connection with the termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 1025. Additionally, the parties submitted a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 8.” slip op. at 2
NonePatents in suitUS 7,897,919
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.