- PTAB · Dec 23, 2024 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds and granted DIRECTV’s motion to join the DISH IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to institute review under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we institute an inter partes review of claims 1 and 3 of the ’518 patent and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013).” slip op. at 4
NonePatents in suitUS 7,594,249 - PTAB · Dec 23, 2024 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all petition grounds and joined DIRECTV to the DISH IPR, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth in the 393 Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’518 patent. Thus, we institute an inter partes review on all grounds and all challenged claims of the ’518 patent set forth in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon review of Petitioner’s arguments, which were not opposed by Patent Owner, we agree that joinder of this proceeding with the DISH IPR is appropriate. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 5
NonePatents in suitUS 7,295,518 - PTAB · Dec 16, 2024 · IPR2024-00891 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 23–46 on all grounds, finding a reasonable likelihood that Shin anticipates at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“Under the circumstances presented here, we find that discretionary denial is not warranted for the Petition in this case due to the parallel petition in IPR2024-00890. Given the large number of claims asserted by Patent Owner against Petitioner in the district court litigation, we do not consider two petitions asserting two single-reference grounds against forty claims including five independent claims to be excessive. The CTPG provides that assertion of a large number of claims in litigation is one circumstance under which more than one petition may be necessary. CTPG at 59. Furthermore, the two petitions challenge different claims of the ’031 patent. Claim length and subject matter complexity also justify the additional briefing presented by two petitions for which Patent Owner has been afforded the same amount” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(see 37 C.F.R. § 42.4(a)) that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims on the merits, so we grant institution of the petitioned inter partes review. See 35 U.S.C. § 314(a). We decline to exercise our discretion to deny institution because of the parallel petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that A person of ordinary skill in the art (“POSA”) as of the asserted priority date would have had a bachelor’s degree in biomedical engineering, chemical engineering, chemistry, or a related or equivalent field, and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, including some experience with algorithms for calibrating such devices, or equivalent experience. Such experience could include either formal coursework in signal processing, computer science, or electrical engineering, or it could also be obtained during on-the-job experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. A POSA may have been part of an interdisciplinary team with others having the relevant experience set forth above and/or with clinicians. The prior art also evidences the level of skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since Petitioner does not propose any alternative construction for “drift profile” or construction of any other term in this proceeding, there is no dispute over claim terms that we need to decide to resolve. Accordingly, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra. Id. (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). We note in passing, however, that Patent Owner’s stated definition of “drift profile” in its Preliminary Response seems to comport both with Petitioner’s proposal in the district court litigation4 as well as how the ’031 patent’s specification uses the terms “drift” and “profile” in the context of “sensitivity.” See Ex. 1001, 21:36–48 (discussing “drift”), 210:39–60 (discussing “profile”).” slip op. at 15
Claim construction§ 102 anticipationDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 16, 2024 · IPR2024-00890 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR for claims 1–2, 4, 6–15, and 20–22 because the petition showed a reasonable likelihood of prevailing on anticipation by Shin.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“In IPR2024-00891, Petitioner filed on the same date a parallel petition to challenge claims 23–26 of the ’031 patent on grounds similar to those asserted in this proceeding. In its “Explanation of Parallel Petitions” (Paper 3), Petitioner provides the following table to explain the claims challenged and grounds of unpatentability asserted in each petition: Paper 3, 2. Petitioner ranked the Petition filed in this proceeding as first. Id. at 3. Accordingly, we need not reach the issue of parallel petitions in this proceeding, and instead address the issue in our institution decision in IPR2024-00891.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood that each limitation of claim 1 is disclosed by Shin notwithstanding Patent Owner’s arguments. Accordingly, Petitioner has shown a reasonable likelihood to prevail in demonstrating unpatentability of claim 1 of the ’031 patent as anticipated by Shin.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art “because the Petition fails to demonstrate unpatentability even under that definition.” Prelim. Resp. 18. Petitioner’s proposed level of skill in the art is consistent with the ’031 patent and the asserted prior art except that we set the level to “at least two . . . years of experience.” Otherwise, on this record, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not present any dispute over the meaning of any claim term, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentablePTAB · Dec 10, 2024 · IPR2023-00847 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–5 were not shown unpatentable on any asserted obviousness ground because the evidence did not establish the claimed data-path delay circuit.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“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). For purposes of this Decision and with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, we adopt the assessment offered by Petitioner as it is consistent with the ’608 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1[e], together with limitation 1[f], and note that we are not performing claim construction of a specific claim term or phrase per se. Claim 1 of the ’608 patent recites that “each respective buffer circuit including a data path corresponding to each data signal line in the respective set of data/strobe signal lines” [limitation 1[e]] and “wherein the data path corresponding to the each data signal line includes” . . . “a delay circuit configured to delay a signal through the data path by an amount . . . ” [limitation 1[f]]. Ex. 1001, 19:36–55 (emphasis added). The operative issue is the identification of the “data path” that is claimed in claim 1. The claim differentiates between data signal lines and strobe signal lines. Limitation 1[e] identifies that “a data path” corresponds to the data signal line in the set of data/strobe signal lines; that is, it is a data path that is in the data signal line. The data path claimed, therefore, is not in a strobe signal line of the set of data/strobe signal lines. Limitation 1[f] confirms this understanding, reciting “the data path,” (with the antecedent of “a data path” of limitation 1[e]), that corresponds to each data signal line, and which includes a delay circuit that delays a signal through the data path. Patent Owner refers to Figures 3, 4A, and 4B of the ’608 patent, which confirms this understanding of the language of claim 1 in that it provides written description support for the reading of the explicit language of claim 1. See PO Sur-reply 1–2. These figures, as well as their associated descriptions, support that there are different transmission lines (data paths) with a separate signal transmission line for transmitting/receiving data signals and a separate strobe line for transmitting/transmitting strobe signals. See Ex. 1001, 10:31–11:8, 11:20– 45, Figs. 3, 4A–4B, see also id. code (57) (identifying that the “data path” corresponds with the data signal line in the set of data/strobe signal lines).” slip op. at 16
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google LLC, 54 F.4th at 1381 (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994) (emphasis added)). The issues in this proceeding and those at issue in the -00236 IPR are not identical. The claims of the ’035 patent and the instant ’608 patent are different. Claim 1 of the ’035 patent recites “each respective buffer circuit including data paths for transmitting respective data and strobe signals associated with the first memory operation and logic configured to respond to the module control signals by enabling the data paths,” “wherein the logic is further configured to obtain timing information based on one or more signals . . . to control timing of the respective data and strobe signals on the data paths.” Ex. 1031, 19:35– 45. Claim 1 of the ’035 patent explicitly recites that the data paths have data and strobe signals transmitted on them. That is unlike claim 1 of the ’608 patent at issue here—claim 1 of the ’035 patent does not recite that the “data path” is “corresponding to each data signal line in the respective set of data/strobe signal lines,” as claim 1 of the ’608 patent does.” slip op. at 20
- Strike new argumentNew argument consideredGranted in part
“response, but may not raise “in reply, ‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) (quoting Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017)).” slip op. at 45
Patent outcomesUS 10,268,608 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,268,608 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Dec 10, 2024 · IPR2023-01040 · APJ Jason W Melvin · IPR · Final written decision
Claims 48–87 are unpatentable: Alden anticipates most challenged claims, while claims 49 and 51 are obvious over Alden and Beam, and claims 52, 60, 68, 76, and 84 over Alden and Kobayashi.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. PO Resp. 6. We adopt the undisputed level of ordinary skill in the art and refer to people with it as skilled artisans.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“enablement for Alden’s system detecting road curves. Pet. Reply 21. As Petitioner points out, Alden uses both intensity and a detected object’s location (including distance) to inform its response. Ex. 1005 ¶¶ 27–28. Petitioner’s expert testifies that the same physical system used to accommodate oncoming vehicles could be used to detect roadside reflectors and direct light into road curves. Ex. 2041, 78:16–80:24. Further, Petitioner’s expert testifies that skilled artisans would adjust the intensity and distance thresholds to distinguish roadside reflectors from oncoming vehicles. IPR2023-01039, Ex. 1003 ¶ 150. Based on Alden’s disclosures, we credit Petitioner’s expert’s testimony that Alden’s system would detect and accommodate road curvatures as claimed by the ’551 patent. Ex. 1003 ¶¶ 132–134. Although Patent Owner argues that Alden’s system could not do so while also accommodating oncoming vehicles, that position is based on the argument that “the system can’t tell the difference between signs and headlights.” PO Surreply 21–23. Patent Owner contends that “detected intensity is a function of both distance and emission intensity” so a threshold couldn’t distinguish headlights from signs. Id. at 24–25. That position ignores that Alden uses triangulation to calculate each object’s distance, as discussed, which would allow it to distinguish different types of objects using an intensity threshold. We agree with Petitioner’s expert that Alden’s system can distinguish the two, as discussed.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“sufficiently clear to impart a requirement on “classifying” such that a system must choose from multiple classes or types of objects. The parties do not appear to dispute that “classifying the object” includes arranging or grouping the object according to some system or principle. Thus, there is no need to further construe the claims for purposes of this decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Alden’s system does not simply dim its headlights where it detects spots of light. Rather, it performs a multistep process in which those spots are detected, analyzed with triangulation to determine distance, and then used to determine dimming zones. Ex. 1005 ¶¶ 27–28. Alden discloses that its sensor “detects the two headlights” of an oncoming vehicle when “[e]lectrons corresponding to the position and intensity of light are categorized by a logic and CPU 71 and stored in a memory 72.” Id. ¶ 27. Petitioner’s expert noted that Alden’s description “move[s] from lights – thresholding lights to objects, and then calculate[s] distance of each thresholding object using triangulation.” Ex. 2041, 109:23–110:2. That testimony supports our view that Alden first detects lights, uses those detected lights to identify and classify an oncoming car, then dims the headlight output to prevent glare. Alden’s dimming decision particularly indicates that it classifies pairs of detected headlights as oncoming vehicles. The CPU makes “assumptions about the space that may potentially be occupied by the driver of the sensed vehicle” and identifies an area of the segmented headlight to dim that is “significantly larger than the headlight dots that were initially received.” Ex. 1005 ¶ 27. Patent Owner agrees that Alden dims “selected surrounding sectors” around detected light (PO Resp. 30), and the way Alden selects those sectors indicates that it identifies vehicles. It does not simply expand an area around each detected light; it dims an area to encompass the driver of the identified vehicle. Ex. 1005 ¶ 27, Fig. 3. By treating a pair of corresponding detected lights collectively for dimming, Alden indicates that it classifies pairs of detected lights as vehicles.” slip op. at 23
Patent outcomesUS 9,955,551 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,955,551 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Dec 9, 2024 · IPR2023-01039 · APJ Jason W Melvin · IPR · Final written decision
Claims 8, 10–18, and 24–47 are unpatentable: Alden anticipates claims 24–27, 29–35, 37–43, and 45–47; the remaining claims are obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/70538 A2, published Sept. 27, 2001 (Ex. 1008). similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. PO Resp. 6. We adopt the undisputed level of ordinary skill in the art and refer to people with it as skilled artisans.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The problem with Patent Owner’s claim-construction position is that neither the dictionary definition nor the ’551 patent’s specification establish any degree of proof, verification, or confirmation that an object has been correctly identified. The specification discloses that “techniques known in the art” may be used “to classify, identify or locate the contents” visible to a camera sensor. Ex. 1001, 44:67–45:9. That does not establish any certainty obtained by the preexisting techniques. The specification states that the system can “illuminate distant overhead and roadside signs” and can use “[i]mage recognition via a camera” so that the illumination beam may “follow the retroreflective sign as the vehicle moves.” Id. at 51:59–67. That disclosure does not speak to any degree of confirmation or certainty. The specification’s other disclosures are no different. Id. at 52:19–27 (disclosing automated control over lighting and referencing “automatic dimming of high beam due to detection of oncoming vehicles”), 52:66–53:4 (“Using color and pattern recognition techniques it is possible to determine what is a sign.”), 63:9–12 (“Using real time image processing methodologies with image and scene recognition technology known in the art, room or outdoor area elements, objects and people are identified.”), 64:46–49 (“Using machine vision technology known in the art such as neural networks training and other pattern recognition techniques the vision system has sensor, algorithmic and computation means for identifying devices or objects.”), 69:54–57 (“In a preferred embodiment of the invention the logical controller 454 receiving image input from the camera 453 and running pattern recognition software will identify what is the visual task a person is trying to perform.”), 75:48–62 (“Using programmed scene recognition algorithms, the luminaire’s computer vision system comprised of the camera sensor 496 and logical controller 494 identifies the food on the plate, looks-up in storage the recommended CCT and powers each of the different colored LED chips aimed thereon at the correct power level in order to provide the optimal color illumination.”), 76:33–39 (“[A] camera vision system has algorithmic means to identify and track the position of people and objects and the logical controller has motion control means for re-aiming the light sources towards targeted elements and changing the power level to the LED chips.”). None of those disclosures addresses a requirement for confirming or verifying an identification that the system makes; nor does any address a particular accuracy requirement in identifying an object. Based on the specification using “identify” without any requirement that identifying an object requires confirmation or verification of the object’s true identify, we do not adopt Patent Owner’s proposed construction. Although the construction itself similarly does not expressly require the confirmation or verification that Patent Owner seeks to impose, we understand that to be Patent Owner’s intent, and accordingly do not adopt the proposed construction. The parties dispute no other aspect of “identify,” and we therefore need not expressly construe the term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Because Alden describes its segmented headlights as implementing a process using two-dimensional signals for two-dimensional dimming functionality, we find that Figure 5 depicts a section of an embodiment that contains more than a single row of lighting elements. Stated otherwise, Alden’s disclosures are consistent with each other and are directed to a two-dimensional approach to sensing, control, and illumination. Further, we agree with Petitioner that Patent Owner has not addressed the legal standard for lack of enablement. Pet. Reply 2. In particular, to overcome the presumption that prior-art disclosures are enabled, Patent Owner must show ordinarily skilled artisans would require undue experimentation to practice the disclosed invention. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F. 3d 1313, 1354–55 (Fed. Cir. 2003); In re Antor Media Corp., 689 F. 3d 1282, 1287– 88 (Fed. Cir. 2012). We do not agree with Patent Owner that Alden lacks a presumption of enablement (see PO Surreply 7–8), because we determine that Petitioner’s contentions rely on Alden’s disclosures regarding its invention as a whole. Other than arguing that Figure 5 discloses a single-row embodiment that is unusable with Alden’s other disclosures, Patent Owner has made no attempt to show Alden lacks enablement. Patent Owner has not addressed what experimentation skilled artisans would require to practice an invention using Alden’s Figure 5 segmented headlight with the remainder of Alden’s system as disclosed in Figures 2, 3, and 4, and Alden’s corresponding textual description. We therefore determine that Patent Owner has not shown Alden to lack enablement for its disclosed invention.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that skilled artisans would have had reason to incorporate Kobayashi’s teachings that its controller receives “road map information” from a “road profile calculating means” and uses it to adjust the headlamp’s illumination. Pet. 63–64. Petitioner reasons that it would be obvious to “apply these teachings to Alden to use map data to identify road curvature when adapting the LEDs of Alden to ‘direct light into the corner.’” Id. at 64 (citing Ex. 1003 ¶ 122). And Petitioner asserts that skilled artisans had reason to do so because it would “maximize successful detection in different environments” such as where the road lack reflectors. Id. at 65 (citing Ex. 1003 ¶ 123). Other than as discussed above regarding Alden’s disclosures, Patent Owner does not contest Petitioner’s showing for claims 28, 36, and 44. We have considered the full record, including evidence and arguments presented by Petitioner and Patent Owner on whether the combination of Alden and Kobayashi discloses each limitation of claims 28, 36, and 44, and whether skilled artisans would have had reason to combine the references’ teachings as asserted. Based on the full record, we conclude that Petitioner has proven that claims 28, 36, and 44 would have been obvious over Alden and Kobayashi. Pet. 62–65.” slip op. at 34
Patent outcomesUS 9,955,551 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,955,551 - DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCSome claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00976 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–16, 18, and 19 are unpatentable over Casagrande and Russ and Dow; claim 17 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Jeffay, Petitioner proposes that a” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “a first period of time” Patent Owner contends that the term “first period of time,” recited in limitation 1[d][i], would be understood “to start after transmission of the entire ‘video program’ to the DVR.” PO Resp. 5 (citing Ex. 2006 ¶ 47). Patent Owner refers to claim 1 and its recital that the video program is provided “in its entirety.” Id. (citing limitation 1[d][ii]). Patent Owner argues that “[i]n order to ‘provide said video program in its entirety’ from ‘said memory device,’ the entire ‘video program’ must be stored in the ‘memory device,’ which is only possible after transmission of the entire ‘video program’ to the DVR.” Id. (citing Ex. 2006 ¶ 47). Patent Owner contends that in light of dependent claims 6 and 14, the “first period of time” must start after the transmission of the entire video program. Id. at 5–6 (quoting claim 6 (“wherein said first period of time is a period of time that is less than one week from said transmission of said video program”); claim 14 been transmitted.”)). Additionally, Patent Owner refers to the prosecution history of the ’710 patent: a digital video recorder (“DVR”) that stores a video program and plays at least a portion of the video program back at a later time (e.g., a time more convenient to the user of the DVR, etc.) . . . In a first state, the DVR is configured to play the program as it was originally recorded (e.g., with both the program and auxiliary data). In a second state, the DVR is configured to play the program data without the auxiliary data (or a portion thereof) . . . To this end, the claimed invention provides that if the video program is being watched within a first period of time (e.g., within a day or two of the video program being transmitted to the DVR, etc.), then the video program will be played back in its entirety (e.g., including both program and auxiliary data). PO Resp. 6 (quoting Ex. 1003, 108–109). Based on this passage, Patent Owner asserts that the “first period of time” must start after transmission of the entire video program. Id. (citing Ex. 2006 ¶ 49). Patent Owner argues that the referenced statement in the prosecution history is “clear and unambiguous.” PO Sur-reply 3. Petitioner contends that Patent Owner’s interpretation of the term” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“specific reasoning to combine Casagrande and Russ to be persuasive. See PO Resp. 23–24. Dr. Jeffay testifies that “Casagrande acknowledges that one concern expressed by content providers is the decreasing value of interstitial content over time, particularly because commercials may become less relevant to the user or may expire.” Ex. 1002 ¶ 117 (citing Ex. 1006, 10:5–13 (“[T]he supplemental content 602 may also be selected to replace a commercial with a timelier commercial from the same advertiser. For example, a department store may have originally advertised a sale during the original broadcast of the show, but that particular sale may have since ended.”)). Accordingly, the evidence supports that Casagrande identifies that the earlier playback of commercials has value, which provides support” slip op. at 31
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“ix. Conclusion Patent Owner presents no evidence of objective indicia of” slip op. at 39
Patent outcomesUS 8,929,710 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,929,710 - DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCAll claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00977 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Casagrande, Russ, and Miller; the Board did not reach the Dow grounds.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill We consider the asserted grounds of unpatentability in view of the” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“25), and the doctrine of claim differentiation, support Petitioner’s arguments (Reply 3–4) regarding the “first period of time.” Accordingly, we do not adopt Patent Owner’s proposed construction. We use the plain and ordinary meaning of the term here.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“agree, Russ discloses that trick play functionality is restricted for only a specified period of time. See Ex. 1008 ¶¶ 34–35. Accordingly, we find support for Dr. Jeffay’s testimony that, in the view of one of ordinary skill in the art, Casagrande in combination with Russ teaches that after the expiry of the first period of time there is a second period of time in which commercials may be skipped. Ex. 1002 ¶¶ 148–151; see also Pet. 32. Additionally, we agree that Petitioner has demonstrated a rationale to combine Casagrande and Russ with a reasonable expectation of success of the combination, as discussed above in the discussion of limitation 1[a][i].” slip op. at 63
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 9,538,122 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,538,122 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344
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.