- DISH Network L.L.C. v. Multimedia Content Management LLCInstitution deniedPTAB · Nov 13, 2019 · IPR2019-01015 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and any preliminary 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.” Having considered the Petition, Preliminary Response, Reply, and Sur-reply, as well as the parties’ supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent. We, therefore, do not institute an inter partes review of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“implemented within the bidirectional communication paradigm, but Petitioner has not sufficiently explained why an ordinarily skilled artisan would have been motivated to use both the prior art access control using bidirectional communication and the improved access control using unidirectional communication at the same time. Hoang ’980 teaches “the present invention teaches methods and systems for communicating a client’s DOD account status to a client using uni-directional communications.” Ex. 1008 ¶ 49. Thus, unidirectional communications are used to send a client’s on-demand account status from a server to a client. Hoang ’980’s teaching that “all aspects of the present invention can be implemented within the bi-directional communication paradigm” indicates that a server within a system with bidirectional communication capabilities could transmit a client’s on-demand status to a client. However, Petitioner’s inference that this system would then also utilize account control using the resource-intensive bidirectional communications is speculative and not sufficiently supported by the evidence of record. Moreover, Petitioner’s proposed combination would use both unidirectional access control and bidirectional access control for the same data request. Petitioner argues the benefits of on-demand video would have motivated an ordinarily skilled artisan to implement access control using both unidirectional and bidirectional communications (Pet. 18‒20). Mr. Wechselberger’s testimony that user-initiated video-on-demand programming was a beneficial feature that cannot be used in a unidirectional system explains why an ordinarily skilled artisan may have been motivated to use bidirectional communications to control access to on-demand video content. Ex. 1006 ¶¶ 109‒110. But Petitioner has failed to establish why an ordinarily skilled artisan would have used both access control paradigms for the same data request. More specifically, with respect to the proposed combination, Petitioner does not explain persuasively why an ordinarily skilled artisan would have continued to use unidirectional communications to provide access control for a data request when using bidirectional communications already provides access control for the same data request. For these reasons, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 7. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 7. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art, which Patent Owner asserted in a prior petition. Prelim. Resp. 2. Patent Owner asserts that for the purposes of determining whether to institute the Petition, the differences between its previously-proposed definition and Petitioner’s proposed definition are not dispositive. Id. at 2‒3. We are satisfied that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’468 patent and the prior art of record. Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the following terms: “to generate[ing . . .] controller instructions” (Pet. 8‒9); “a controller node” (Pet. 9‒10); “a service provider network” (Pet. 10‒12); “selectively transmit[ting, by the plurality of gateway units,] the content requests to the service provider network in accordance with the controller instructions” (Pet. 13); and “gateway units” (Pet. 13‒14). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒5. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., 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§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,799,468 - DISH Network L.L.C. v. Multimedia Content Management LLCInstitution deniedPTAB · Nov 13, 2019 · IPR2019-01014 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Independent Claim 1 A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter 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.” See 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 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the priority date of the ’925 patent is before the effective date of the applicable AIA amendments, the pre-AIA versions of 35 U.S.C. §§ 102 and 103 apply. 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) where in evidence, so-called secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze Petitioner’s obviousness grounds with the principles identified above in mind.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“motivated to combine the prior art method of controlling access to programming using bidirectional communications with the improved method of controlling access to programming using only unidirectional communications because Hoang ’980 teaches “those skilled in the art will recognize that all aspects of the present invention can be implemented within the bi-directional communication paradigm, the only difference being that even more features can be provided to the digital broadcast and DOD user when a bi-directional communication link is available.” Ex. 1008 ¶ 49.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 8. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 8. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art,” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“transmit[ting, by the plurality of network elements, the] content requests to the service provider network in accordance with the controller instructions” (Pet. 17); “network elements” (Pet. 18); and “pay-per-view advertising” (Pet. 18‒19). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒6. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., 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§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,465,925 - Infinera Corp. v. Core Optical Technologies, LLCRehearing deniedPTAB · Jul 11, 2019 · IPR2018-01259 · APJ Ken B Barrett · IPR · Rehearing
The Board denied Infinera’s rehearing request, leaving in place the denial of institution because the Petition inadequately addressed claim construction, prior-art combinations, and reasons to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“This is not the first time that the ’211 patent has been before a tribunal. It cannot be said that Petitioner is unaware of the important claim construction matters that go to the heart of dispositive patentability issues. Petitioner, on the facts of this case,[] has failed to identify adequately its proposed construction applicable to its patentability challenges. Further, Petitioner cannot avoid its duty to comply with Rule 104(b)(3)[1] by merely inviting us to apply a means-plus-function interpretation rather than affirmatively advocating (in this forum) the application thereof. Petitioner has neither taken a definitive position nor provided complete briefing, and we decline to assume Petitioner’s task of fully analyzing the claim construction for XPIC. Petitioner’s failure in this regard is reason enough to deny the petition. Dec. 13–14 (footnote omitted). We further denied institution because Petitioner’s articulation of a single ground implicated the application of multiple potential constructions. See Dec. 16–17 (explaining—in the context of Petitioner’s challenge to claim 15 over Cusani 1992, Cusani 1997, and Kavehrad—“[t]he number of possible asserted combinations is further multiplied by the overlay of the multiple potential claim constructions discussed above.”).” slip op. at 3
- BurdenDecided for patent owner
“Petitioner’s analysis in many places is little more than an assertion that each particular element of a larger limitation was individually known in the prior art. Petitioner does not describe adequately a specific proposed combination of references. Because of this and in light of, at least, the massive number of possible proposed combinations, Petitioner has failed to identify adequately how each challenged claim is to be construed and how the construed claim is unpatentable. 37 C.F.R. § 42.104(b)(3), (4). Dec. 18. Petitioner does not identify any portion of the Petition where a specific proposed combination of references is adequately described. See Req. Reh’g 13. Rather, Petitioner impliedly argues that it need not do so. Id. (quoting, but not explaining the relevance to this case, a bodily-incorporation proposition from In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)). Petitioner makes the conclusory argument that “[i]n providing demonstrative illustrations of a combined system, coupled with a thorough analysis of the teachings of the prior art, Petitioner’s obviousness arguments directly addressed that question” of “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. (citing In re Mouttett, 686 F.3d at 1333). Petitioner’s argument is, in effect, merely an assertion of disagreement with our determination that the Petition was not persuasive. Petitioner has not identified anything we misunderstood or overlooked.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“combined the references’ teachings to arrive at the claimed subject matter” and that “Petitioner’s reasoning is an oversimplification and too conclusory to constitute the necessary articulated reasoning with rational underpinning.” Dec. 20, 21 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That oversimplification was a reference to Petitioner’s arguments pertaining to the alleged similarity of signal transmission systems, whereas “the key issues involve the specific techniques used to cancel specific types of interference of received signals in optical systems versus radio frequency systems.” Id. at 23. In this regard, we stated: “Demonstrating obviousness in this case requires more than a showing that optical and RF [radio frequency] systems both utilize general techniques related to orthogonally polarized signals and had known interference problems.” Id.” slip op. at 10
§ 103 obviousnessPatents in suitUS 6,782,211 - Unified Patents Inc. v. Multimedia Content Management LLCRehearing deniedPTAB · Feb 25, 2019 · IPR2017-01934 · APJ Matthew J Mcneill · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show Freund taught or suggested a service provider network under the proper construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“claims 1‒5, 9, 12, 19, 23‒27, and 33 as obvious over Freund. Req. Reh’g 1‒2. On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision. Thus, Petitioner’s Request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“the specification of the ’468 patent. However, the ’468 patent teaches “the Internet is composed of several components including, for example, content providers for generating content; service providers for delivering content; subscriber terminals for receiving, displaying and playing content; and various network elements between service providers and subscribers for aiding in the distribution of content.” Ex. 1001, 1:29‒35. “Service providers include, for example, telephone line carriers, enterprise data centers, and cable television providers.” Id. at 1:35‒37. The ’468 patent distinguishes between service providers and subscribers, noting that “[s]ubscriber terminals are located at subscriber premises and include, for example, personal computers [and] televisions configured with modems.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“any arguments or evidence in the Petition, or that our determinations based on the preliminary record were an abuse of discretion. First, Petitioner did not fully develop the argument it now makes, instead relying on conclusory statements and identifying portions or figures of the prior art without sufficient explanation. In particular, Petitioner cited three embodiments: the embodiment shown in Freund Figure 3A (see, e.g., Pet. 20‒22 (claim 1[b])), the embodiment shown in Freund Figure 3B (see, e.g., Pet. 39‒40 (claim 1[f])), and a hypothetical embodiment employing a widely dispersed network (see, e.g., Pet. 31 (claim 1[c])). For certain limitations, Petitioner cites only the embodiment shown in Figure 3A. See, e.g., claim 1[a], Pet. 20‒22. But Petitioner cites all three embodiments, including the hypothetical embodiment, in support of other limitations without explaining how these embodiments would be combined, if at all. See, e.g., claim 1[c], Pet. 27‒31. Petitioner did not sufficiently explain how to combine these three embodiments in a way that teaches or suggests all of the limitations of claim 1.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provider network” for each of the limitations discussed above. See Pet. 18‒ 46. Even if Petitioner had explained how the three identified embodiments were being combined, Petitioner has failed to show a reasonable likelihood of establishing that Freund teaches or suggests a “service provider network” under the broadest reasonable construction of that term. For these reasons, Petitioner has not persuaded us that we abused our discretion in our denial of the Petition.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,799,468 - HTC Corporation / HTC America, Inc. v. Joe Andrew SalazarRehearing deniedPTAB · Feb 25, 2019 · IPR2018-00273 · APJ Matthew J Mcneill · IPR · Rehearing
The Board denied HTC’s rehearing request, leaving institution denied on the Goldstein and Keenan ground for claims 1–7, 27–30, and 34 because the Petition did not explain how the references taught the reprogrammable limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We did not misapprehend or overlook any evidence or argument presented by Petitioner in the Petition. It is Petitioner’s burden to explain how challenged claims are to be construed and how the claims read on the prior art. 37 C.F.R. § 42.104(b)(3)‒(5). Petitioner did not propose construing the term “reprogrammable” to include “that which can be programmed anew or differently” in the Petition. See Paper 1. Nor did Petitioner seek leave to file a reply to the construction for “reprogrammable” proposed by Patent Owner in its Preliminary Response. Instead, these arguments have been raised in the Request for Rehearing for the first time. We could not have misapprehended or overlooked evidence that was not presented by Petitioner in the context of the limitation at issue. Moreover, as explained in the Decision, Petitioner failed to present any analysis or testimony in the Petition that Goldstein and Keenan teach “reprogrammable” IR codes under Patent Owner’s proposed construction, Petitioner’s newly-proposed construction, or any other interpretation of the term “reprogrammable.” Dec. 12‒16. Indeed, Petitioner failed to provide any explicit analysis for the “reprogrammable” limitation in the Petition. See id. As explained in the Decision, Petitioner’s mere citation to Goldstein’s teaching that its universal remote control device is bidirectional and can receive data for programming the device without any explanation as to how this teaching satisfies the “reprogrammable communication protocols” limitation is not sufficient to render obvious claim 1. Id. The Petition is deficient in this manner regardless of the construction of the “reprogrammable” limitation. Accordingly, we are not persuaded that we misapprehended or overlooked any evidence or argument presented by Petitioner in the Petition.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Moreover, as explained in the Decision, Petitioner failed to present any analysis or testimony in the Petition that Goldstein and Keenan teach “reprogrammable” IR codes under Patent Owner’s proposed construction, Petitioner’s newly-proposed construction, or any other interpretation of the term “reprogrammable.” Dec. 12‒16. Indeed, Petitioner failed to provide any explicit analysis for the “reprogrammable” limitation in the Petition. See id. As explained in the Decision, Petitioner’s mere citation to Goldstein’s teaching that its universal remote control device is bidirectional and can receive data for programming the device without any explanation as to how this teaching satisfies the “reprogrammable communication protocols” limitation is not sufficient to render obvious claim 1. Id. The Petition is deficient in this manner regardless of the construction of the “reprogrammable” limitation. Accordingly, we are not persuaded that we misapprehended or overlooked any evidence or argument presented by Petitioner in the Petition.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Claim 1 recites, in relevant part, “said microprocessor creating a plurality of reprogrammable communication protocols for transmission to said external devices” (emphasis added). In our Decision, we noted Petitioner had not proposed an explicit definition of the term “reprogrammable,” but had maintained the term within a proposed construction for a larger claim phrase, which is consistent with construing the term according to its plain and ordinary meaning. Dec. 9. We adopted Patent Owner’s proposed construction, “a program that can be replaced by another” as the plain and ordinary meaning of “reprogrammable.” Id. at 9‒ 10. Petitioner contends the Board’s interpretation of the plain and ordinary meaning of the term “reprogrammable” is incomplete and should include “to program anew or differently.” Req. for Reh’g 6. Petitioner argues this additional language is required for the construction to be consistent with Patent Owner’s Infringement Contentions in related litigation (id. at 6‒9), the ordinary meaning of the term (id. at 9‒11), and the teachings of the ’467 patent (id. at 11‒12).” slip op. at 3
- BurdenDecided for patent owner
“presented by Petitioner in the Petition. It is Petitioner’s burden to explain how challenged claims are to be construed and how the claims read on the prior art. 37 C.F.R. § 42.104(b)(3)‒(5). Petitioner did not propose construing the term “reprogrammable” to include “that which can be programmed anew or differently” in the Petition. See Paper 1. Nor did Petitioner seek leave to file a reply to the construction for “reprogrammable” proposed by Patent Owner in its Preliminary Response. Instead, these arguments have been raised in the Request for Rehearing for the first time. We could not have misapprehended or overlooked evidence that was not presented by Petitioner in the context of the limitation at issue. Moreover, as explained in the Decision, Petitioner failed to present any analysis or testimony in the Petition that Goldstein and Keenan teach “reprogrammable” IR codes under Patent Owner’s proposed construction, Petitioner’s newly-proposed construction, or any other interpretation of the term “reprogrammable.” Dec. 12‒16. Indeed, Petitioner failed to provide any explicit analysis for the “reprogrammable” limitation in the Petition. See id. As explained in the Decision, Petitioner’s mere citation to Goldstein’s teaching that its universal remote control device is bidirectional and can receive data for programming the device without any explanation as to how this teaching satisfies the “reprogrammable communication protocols” limitation is not sufficient to render obvious claim 1. Id. The Petition is deficient in this manner regardless of the construction of the “reprogrammable” limitation. Accordingly, we are not persuaded that we misapprehended or overlooked any evidence or argument presented by Petitioner in the Petition.” slip op. at 3
Claim constructionPatents in suitUS 5,802,467
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.