- PTAB · Oct 2, 2025 · IPR2025-00673 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that Amazon would show at least one claim unpatentable over Shin and Aoyama.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“shown that there is a reasonable likelihood that it would prevail in demonstrating at least one of claims 1–7 of the ’675 patent is unpatentable. We begin our analysis with the principles of law that generally apply to an asserted ground based on obviousness, we then assess the level of skill in the art, next we provide brief overviews of Shin and Aoyama, and then we address the parties’ contentions with respect to independent claims 1, 6, and 7.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person having ordinary skill in the art” is a hypothetical construct, from whose vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Env’t Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or 4 At this stage in the proceeding, SoundClear does not present arguments or evidence of secondary considerations. See Prelim. Resp. more of these or other factors may predominate in a particular case.” Id. at 696–97. Relying on the testimony of Dr. Stern, Amazon argues the following: [a] person of ordinary skill in the art . . . would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately two years of industry or academic experience in a field related to controlling the audio output of electronic devices. Work experience could substitute for formal education and additional formal education could substitute for work experience. Pet. 7 (citing Ex. 1002 ¶¶ 28–32). In the Preliminary Response, SoundClear does not address Amazon’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt Amazon’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’675 patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Stern.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“arguments and evidence for purposes of institution that would support determining that a person of ordinary skill in the would have been motivated to combine the teachings of Shin and Aoyama. As one example, Amazon contends that the proposed combination is merely the addition of one known element (i.e., “Aoyama’s natural language processing and information retrieval”) to another known element (i.e., “Shin’s voice processing and response device”) to obtain predictable results (i.e., “identifying a user’s intent and providing information responsive to such intent”). Pet. 19–20 (citing KSR, 550 U.S. at 417; Ex. 1002 ¶ 83). As another example, Amazon contends the proposed combination also represents the addition of one known element (i.e., “Aoyama’s word replacement” feature) to another known element (i.e., “Shin’s distance-based content abbreviation/simplification”) to obtain predictable results (i.e., “using word replacement to simply content for distant users”). Id. at 25–26 (citing KSR, 550 U.S. at 417; Ex. 1002 ¶ 100). Amazon also presents sufficient arguments and evidence for purposes of institution that would support determining there is a reasonable expectation of success in making the proposed combination. Id. at 20 (citing Ex. 1002 ¶ 84), 27–28 (citing Ex. 1002 ¶ 102; Ex. 1011 ¶¶ 97, 98 Fig. 7). To the extent SoundClear argues that Amazon is required to identify a problem a person of ordinary skill in the art would have sought to solve when combining the teachings of Shin and Aoyama, we do not agree. See Prelim. Resp. 31–32. This line of argument runs contrary to the principles of law articulated in KSR. In KSR, the Supreme Court emphasized “an expansive and flexible approach” to an obviousness evaluation. KSR, 550 U.S. at 415; see also Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1363 (Fed. Cir. 2018) (“KSR did not impose a rigid requirement to identify . . . a problem to be solved in the art . . . .”). The Supreme Court stated that, “[o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents,” amongst other things, “to determine whether there was apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Moreover, the Supreme Court explained that, “[u]nder the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420.” slip op. at 26
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the preliminary record, we discern no deficiency in Amazon’s characterizations of Shin, Aoyama, or the general background knowledge in the art. In addition, for purposes of institution, we are persuaded by Dr. Stern’s testimony concerning the relevant disclosures in Shin and Aoyama. At this stage of the proceeding, SoundClear argues that Shin does not teach limitations 1[b]—“a voice classifying unit configured 1[b][i] to calculate a distance between the user and the output-content control device by a proximity sensor 1[b][ii] to classify the voice into either a first voice or a second voice based on the calculated distance.” See Prelim. Resp. 19–22. a. Limitations 1[b]—“a voice classifying unit configured to 1[b][i] calculate a distance between the user and the output-content control device by a proximity sensor to 1[b][ii] classify the voice into either a first voice or a second voice based on the calculated distance” In the Preliminary Response, SoundClear contends that Shin fails to teach voice classification because “Shin is incapable of distinguishing [between] multiple voices.” Prelim. Resp. 21. More specifically, SoundClear argues that Shin cannot teach classifying a voice into a first voice or second voice because “Shin never refers to a ‘first user’ or ‘second user’ or ‘multiple users.’” Id. (citing Ex. 1003 generally); see also id. at 26– 27 (arguing that Amazon misstates the record because Shin never discloses a “first voice” nor a “second voice”). Instead, SoundClear asserts that Shin only contemplates a single user (i.e., user 10) when calculating the distance between the user and an electronic device (e.g., Shin’s electronic device 100). Id. at 21–22 (citing Ex. 1003 ¶¶ 37, 38). Based on the preliminary record, Amazon presents sufficient evidence that would support a finding that Shin teaches “a voice classifying unit configured to calculate a distance between the user and the output-content control device by a proximity sensor to classify the voice into either a first voice or a second voice based on the calculated distance.” Pet. 10–14. Shin discloses that “processor 120 may determine an output scheme of corresponding content based on a distance between a user and the electronic device 101.” Ex. 1003 ¶ 53. Shin’s processor 120 accomplishes this distance calculation by using distance detection module 180, which may include various sensors, such as a proximity sensor. Id. ¶ 66; see also id. ¶ 153 (disclosing an embodiment where electronic device 901 includes sensor module 940, which, in turn, includes proximity sensor 940G). Shin’s Table 3 illustrates how the distance between the user and electronic device 101 determines the output scheme. Id. ¶ 86, Table 3. For instance, Shin’s Table 3 illustrates classifying the user’s voice input as a “first voice” when the distance between the user and electronic device 101 is between 1 to 2 meters, and classifying the user’s voice input as a “second voice” when the distance between the user and electronic device 101 is less than 1 meter. Id. ¶¶ 86, 87, Table 3.” slip op. at 23
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,244,675 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00783 · APJ Thu A Dang · IPR · Institution
Instituted review of claims 1–20 on five obviousness grounds: Dua and Giobbi ’157; that combination with Kotola; Buer; Buer with Giobbi ’157; and Buer with Nishikawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’289 patent to determine whether:” slip op. at 46
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 26– 27; see also Prelim. Resp. 28. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 27. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 28. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition],” this portion of the Specification merely shows an exemplary embodiment and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Prelim. Resp. 28 (citing Ex. 1001, 3:43–50) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local secured information,” nothing in the Specification limits “local, secured information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.7 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The plain language of “hybrid device” does not suggest a requirement that the “hybrid device” comprises an integrated PDK. Further, nothing in the Specification clearly limits or redefines “hybrid device” to a device comprising an integrated PDK, as Patent Owner proposes. Prelim. Resp. 3– 4. Although Patent Owner contends that the District Court construed “hybrid device” as “comprising an integrated personal digital key (PDK)” (id. (citing Ex. 2001, 3)), as Patent Owner points out, the District Court’s construction was predicated on the use of “PDK” in the “hybrid device” recited in the independent claims of a family member of the ’289 patent. Prelim. Resp. 3–4. In view of the plain language of the claims and the Specification, we determine that the term “hybrid device” recited in claims 1–16 and 19 is not limited to “comprising an integrated personal digital key (PDK).” We determine no further explicit construction of this term is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 14. As Petitioner points out, “none of the claims of the ’289 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although, as Patent Owner argues, this presumption is rebuttable and can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure” (Prelim. Sur-reply 1 (citing Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021))), we are unpersuaded that Patent Owner has demonstrated that “PDK,” “RDC,” “enabling signal,” and “local secured information” fail to recite sufficiently definite structure. Prelim. Resp. 14–17. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. We agree with Petitioner that the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00775 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that claims 1, 2, 4–9, 11, 12, and 14–17 are obvious over Burger and claims 3, 10, and 13 over Burger and Robinson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In IPR2024-00232, we made clear that “exclud[ing] any active participant in a transaction” from the construction of third-party trusted authority would exclude preferred embodiments of the ’730 patent and, therefore, is presumptively incorrect. IPR2024-00232, Paper 10 at 11–12 (citing Ex. 1001, 5:42–46, 6:32–64, 7:10–22, Figs. 3–5, 7; Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023)). We also explained that “active participation alone does not make an entity a party to the transaction.” Id. at 22–23. Instead, we evaluate a party’s relationship to the transaction to determine whether it is a principal party to the transaction or a third-party. Id. at 11 (“The ‘witness’ role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in.”), 22 (“We agree with Petitioner that, in this example, the TPCH is separate from, and thus a third party to, the principal parties to the transaction (the user and the vendor) and also a third party to the financial institution that pays the vendor.”). To be clear, below, we evaluate Petitioner’s showing as to obviousness over Burger based on the ordinary meaning of third-party trusted authority, namely, “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Remaining claim terms (including “access message”) Patent Owner acknowledges that “the plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” enabling or announcing access,” allegedly consistent with a district court construction. Prelim. Resp. 2–7. As Petitioner has shown a reasonable likelihood of success under the arguably narrower ordinary meaning of “access message,” it is not necessary, at this stage of the proceeding, to further construe this term. Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,352,730 - PTAB · Aug 29, 2024 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1, 32, 38, 39, 47, 52, and 54 on all asserted grounds after finding a reasonable likelihood of prevailing on the Richardson–Zhao challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 22 (citing Ex. 1003 ¶¶ 39– 42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” Prelim. Resp. 20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner responds that “denial of institution [does] not require addressing the construction of claim terms.” Prelim. Resp. 19. However, Patent Owner also notes that “during the related ITC investigation[, Petitioner] proposed a specific construction for ‘USB input circuit’ that excludes USB input circuits having bidirectional capabilities . . . [and is] contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit.” Prelim. Resp. 19–20 (citing Ex. 2009, 25– 33; Pet. 65). Patent Owner contends that the proposed construction in the ITC investigation is “contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit, and is therefore clearly germane to this proceeding.” Id. at 25 (citing Pet. 65). Patent Owner’s argument regarding purported inconsistent positions by Petitioner may have some merit. But, on this record, Patent Owner’s argument is not fully developed. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). 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 [one] of the claims challenged in the petition.”” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,447,023 - PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00407 · APJ Thu A Dang · IPR · Institution
Instituted IPR on claims 1–20 of the ’289 patent over four § 103 grounds: Giobbi ’157/Giobbi ’139; with Dua; Broadcom; and Broadcom with Giobbi ’157.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- BurdenOther
“We find Patent Owner’s arguments unavailing. In particular Patent Owner is relying on a claim construction of “enabling” requiring “providing an access key in exchange for information held locally in the PDK’s service blocks” (Prelim. Resp. 32–35) that is not required by our construction discussed above. As discussed above, we determine that the term “enabl[ing] an application, a function or a service” is not limited to “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, a RDC requesting profile data stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,” i.e., “enables one or more of an application, a function, and service.” See Pet. 35. a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, wireless communication interface . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 33
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28– 29, 67–68; Prelim. Resp. 27−29. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 27. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 28. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition],” and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification proves that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Prelim. Resp. 28 (citing Ex. 1001, 3:43–50) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local secure information,” nothing in the Specification limits “local, secure information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” as claimed 6 We are unpersuaded by Patent Owner’s contention that “the permissive language ‘in this example’ does not expand the definition ‘local secure information’” because “it applies to the sensors.” Prelim. Resp. 28. The Specification is clear that, in this example, “the” same service access keys 118 contained by the sensor allow the sensor to unlock information “used as local secured information.” See Ex. 1001, 3:43–50. wherein the information is secured,,and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In view of the plain language of the claims and the Specification, we determine that the term “hybrid device” recited in claims 1–16, and 19 is not limited to “comprising an integrated personal digital key (PDK).” We determine no further explicit construction is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803. 2. “receiver-decoder circuit (RDC)” Patent Owner proposes construing “receiver-decoder circuit” appearing in claims 1, 3, 7, 14, and 16 as “a component or collection of components, capable of wirelessly receiving data in an encrypted format and decoding the encrypted data for processing” as “construed” by the district court in the Samsung case. Prelim. Resp. 7–8 (citing Ex. 2001, 4; Ex. 2004, 4). Petitioner contends that, “[f]or purposes of this proceeding, Petitioner adopts this construction [adopted in the district court].” Pet. 5. We determine no explicit construction of “receiver-decoder circuit” is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - PTAB · May 10, 2024 · IPR2024-00209 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“focuses on a high-level comparison of the references. See Prelim. Resp. 14– 19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. Instead, Patent Owner must demonstrate that the references relied on in the Petition are substantially the same in all material respects to the prior art the Examiner actually relied on. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”).” slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“We disagree with Patent Owner’s statutory interpretation. Ho is a printed publication, having been published in January 2008, as Patent Owner acknowledges. See Ex. 1004, code (43) (publication date of January 17, 2008); see also Prelim. Resp. 45 (acknowledging publication date). On this record, we are persuaded by Petitioner’s contentions that Ho is prior art under 35 U.S.C. § 102(e), having been filed “by another . . . in the United States before the invention by the applicant for patent.”11 See Pet. 7 (“For purposes of this Petition, Petitioner uses a June 26, 2007 priority date” for the ’662 patent); see also Ex. 1004, code (22) (filing date of July 12, 2006). Thus, Petitioner asserts a permissible ground of unpatentability” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“claim 115 and that a person having ordinary skill in the art would combine the relevant teachings of Ho and Aoki. See Pet. 17–26, 30. With the exception of “hot spot” and “hot spot information,” which we discussed above in Section II.G.3(a), at the present time Patent Owner does not dispute that Ho teaches those limitations. See Prelim. Resp. 26–35. After reviewing Petitioner’s arguments and information regarding the limitations identified above, including the Zagal Declaration, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that Ho teaches limitations 1(pre), 1(a), (1)(b)(1), 1(d), and 1(e) and that a person having” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - PTAB · Apr 30, 2024 · IPR2024-00132 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’202 patent. Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is instituted as to claims 1–9 of the ’202 patent on all of the grounds set forth in the Petition; and” slip op. at 34
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Petitioner. The prior Board decision observed that Willis discloses sending advertising content based on physical geographic location but does not teach “checking what updated video-game content to send based on one of the factors including a type of the mobile 3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1 Patent Owner contends that Dr. Zagal’s Declaration “simply parrots the Petition” and, thus, should not be entitled to any weight. Prelim. Resp. 28– 33. The testimony quoted by Patent Owner (Prelim. Resp. 30–32) includes citations to the prior art to support the opinions set forth and, thus, “disclose[s] the underlying facts or data on which the opinion is based” (37 C.F.R. § 42.65(a)). See Ex. 1003 ¶¶ 95, 103, 118, 165–166 (citing Ex. 1005 ¶¶ 25, 51; Ex. 1008 ¶¶ 5, 6, 123, 127). We decline, at this stage of the proceeding, to discount Dr. Zagal’s testimony in its entirety and will give that testimony the appropriate weight on the points for which it is offered.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,731,202 - Netflix, Inc. v. VL Collective IP LLCInstitutedPTAB · Jan 12, 2024 · IPR2023-00891 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–22 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with streaming multimedia.” Pet. 12. Petitioner adds that “[a] lack of experience could be remedied with additional education (e.g., a master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years).” Id. (citing Ex. 1003 ¶ 30). Patent Owner does not propose a different level. Prelim. Resp. 13–14 (asserting that “[f]or present purposes, this Preliminary Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill.”). Petitioner’s proposal is consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Bederson, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“C. Claim Construction The Board uses “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. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner applies the plain and ordinary meaning of all claim terms and contends that no claim terms require specific construction to resolve the unpatentability issues presented herein.” Pet. 21. Patent Owner proposes certain constructions, but at this juncture, it is not necessary to construe any term explicitly for purposes of this Decision. See Prelim. Resp. 13–27; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“With respect to the claim term “content-related . . . data segments,” the specification states that “the term “content-related” is understood to mean that first and second data segments have a syntactical meaning . . ., such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Ex. 1001, 4:9–22 (emphasis added).7 We agree with Patent Owner that the emphasized sentence defines the term “content-related.” Prelim. Resp. 14– 15.8 However, for reasons similar to those discussed in the final written decision in IPR2022-01086, Paper 37 at 15–19, we determine that the “content-related” data segments do not support Patent Owner’s proposal, 7 The ellipses represents omission of the phrase “within the respective data file” because, as discussed above, we need not decide if the preamble (which introduces the data files) is limiting with respect to requiring data files. As discussed below, Petitioner’s showing includes relying on separate data files in Comps. 8 We also recognize that whether two segments have “syntactical meaning” between them may be somewhat subjective as discussed in the analysis of Petitioner’s challenges below. namely “data segments ordered in a file such that they will present the file’s contents in their intended presentation order when rendered sequentially.” See Prelim. Resp. 14; IPR2022-01086, Paper 37 at 15–18. Contrary to Patent Owner’s arguments, the “syntactical meaning” as disclosed in the specification does not require “a sequential, chronological nature” specified by the content relationship, because claims 1 and 9 separately recite that feature by requiring “outputting . . . the content-related first data segments and the content-related second data segments according to their chronological sequence.” See Prelim. Resp. 17 (agreeing that “[i]ndependent claims 1 and 9 require outputting the data segments “sequentially” and “according to their chronological sequence.”). Claim 22 recites a similar feature, namely, “sequentially outputting, by a device for synchronizing content-related data, in a chronological sequence, each of the assigned content-related first data segments and the assigned content-related second data segments.”” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - PTAB · Dec 6, 2023 · IPR2023-00923 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–28 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VII. ANALYSIS A. Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (2019) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Furthermore, Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“To resolve this controversy, we turn to the decision in Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019). In Hulu, the Board issued a decision denying institution of an inter parties review because the Board found that a petitioner failed to sufficiently show that a reference qualified as a printed publication. Id. at 2. The Board’s Precedential Opinion Panel (POP) ordered a review on rehearing to address the issue of what is required for a petitioner to establish that an asserted reference qualifies as a “printed publication” at the institution stage. Id. The POP determined that the statutory “reasonable likelihood” standard for institution applies to the issue of whether a reference is a printed publication. Id. at 13. The POP “explained that it is a higher standard than mere notice pleading, but, . . . it is lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. In Hulu, Patent Owner argued that “the reasonable likelihood standard is satisfied only when a petitioner presents its ‘case in chief’ in the petition, including all evidence that will be used in any instituted review, with a few limited exceptions.” Id. at 11. The POP, however, determined that “[w]hile the petitioner must submit evidence sufficient to meet the reasonable likelihood standard, some limited opportunities exist for the petitioner to present new evidence later, including: (1) in a reply to a patent owner preliminary response; (2) in a reply to the patent owner response; and (3) in a motion to file supplemental information.” Id. at 14. The POP explained that, for example, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Id. at 15. The POP also explained that, if a patent owner does not challenge the reference’s status as a printed publication, the petitioner may move to submit the declaration through the supplemental information process. Id.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner contends that Basturk teaches away from providing authentication as an application protocol on an application layer because Basturk discloses that the presence of application level security features does not necessarily imply the security of delivery, which shows the need for security at the transport layer. Prelim. Resp. 43–53. However, Basturk discloses that application level security features are provided by application level security. Ex. 1006, 3. For example, Basturk discloses guaranteeing integrity by signing the data before passing it to the transport level. Id. at 3– 4. Basturk further discloses “a method to transform any transport protocol into a ‘secure’ version, equipped not only with the new security features discussed above, but providing, at least as options, the standard application level security features.” Id. at 5. At this stage, we are sufficiently persuaded that Basturk teaches providing standard application level security features such as authentication. Patent Owner contends that on-the-fly processing as taught by Basturk is not enabled by the use of a trailer. Prelim. Resp. 52–55. Basturk discloses computing signatures as data transmission proceeds, to achieve the goals of avoiding slowing down the regular flow of data, and allowing the possible off-load of signature computations. Ex. 1006, 7, 12. Basturk discloses that the signature of an outgoing packet is computed after data encryption, which complies with the requirement that the signature is computed “on-the-fly.” Id. at 14. Dr. Houh testifies that computing the signature “on-the-fly,” as data is being transmitted, provides the benefits of faster data transmission, reduced jitter, and reductions in computing power. Ex. 1003 ¶ 64. Dr. Houh testifies that calculating the signature of Handley’s RTP packet “on-the-fly” and placing the signature at the end of the packet as taught by Basturk yields the benefit of transmitting data while computing the signature, which minimizes latency as taught by Basturk. Id. ¶ 85. At this stage, we are sufficiently persuaded that a person of ordinary skill would have placed the authentication information of Handley’s RTP packet at the end of the packet as taught by Basturk to yield the benefits of faster data transmission, reduced jitter, and reductions in computing power. Accordingly, for purposes of this Decision, we are persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Handley and Basturk.” slip op. at 20
- Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner
“Dr. Houh further testifies that, given the remaining choices of placing the authentication data at the beginning or the end of the payload data, a person of ordinary skill would have recognized that placing the authentication data at the end of the payload data would reduce latency because this allows the packet to be transmitted while the authentication data is calculated. Ex. 1003 ¶ 178. To support this testimony, Dr. Houh relies on other protocols that use integrity checks, such as the Frame Check Sequence located at the end of an Ethernet Frame. Id. (citing Ex. 1014). We are sufficiently persuaded at this stage, based on Dr. Houh’s testimony and supporting evidence, that a person of ordinary skill would have placed the authentication data at the end of the whole RTP packet payload as claimed. Further, on this record, given the choice between placing authentication data at the beginning, middle, or end of the packet, we are sufficiently persuaded that it would have been obvious to place the authentication data at the end. See KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”); Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1340 (Fed. Cir. 2020) (Reversing the Board’s determination of lack of motivation, stating that “because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art, and were the only two identified, predictable solutions for transmitting a map and” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,266,682
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.