- Google LLC v. Navblazer, LLCAll claims unpatentablePTAB · Dec 13, 2021 · IPR2021-00504 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 2, 5–12, 14–17, and 19 are unpatentable as obvious over Schreder alone or in combinations with the other cited references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention “would have been a person having at least a Bachelor’s Degree in an Engineering discipline such as Electrical or Computer Engineering, or a Bachelor’s Degree in Computer Science or equivalent degree, and at least two years of relevant experience in the research, design, development and/or testing of navigation systems, embedded systems or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 35–36). Patent Owner does not dispute Petitioner’s description. At institution, we adopted Petitioner’s characterization of the level of skill in the art, which we found to be generally consistent with the disclosures of the ’782 patent and cited references. See Decision 6. As neither party has contested that choice, we maintain it. Neither party argues” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Though there may be a dispute about the meaning of the claims in the District Court, neither party has sought or attempted to justify any claim construction in this proceeding, and our review of the record does not reveal any terms that require an express construction. We conclude that we need not engage in the formal construction of any claim terms to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner argues that the skilled artisan “would recognize the usefulness of leveraging [Hanchett’s] existing traffic radio infrastructure . . . with Schreder’s ‘radio data system 28’ and ‘RF processor 78’ that provides users with information regarding, for example, ‘traffic flow information’ and ‘road blockages,’ to also provide users with video traffic information, including video previews of a particular route.” Pet. 29 (citing Ex. 1003 ¶ 72). Petitioner also argues that “[a]s Hanchett recognized, a system that provided video traffic information would allow drivers to view ‘current and accurate information concerning traffic conditions’ via video and ‘evaluate the information in light of his or her particular situation,’” and that “previewing videos of particular roadways would allow a user ‘to make route choices.’” Id. (citing Ex. 1008, 2:34–57, 2:15–22). We agree that the combination of Schreder and Hanchett includes the elements of claim 5, and that one of skill in the art would have been motivated to make the combination. We conclude that Petitioner has shown, by a preponderance of the evidence, that claim 5 would have been obvious in view of Schreder and Hanchett.” slip op. at 20
Patent outcomesUS 9,885,782 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,885,782 - Unified Patents v. Navblazer, LLCAll claims unpatentablePTAB · Dec 13, 2021 · IPR2020-00983 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–5, 7, 8, 10–19, 21–23, and 25 are unpatentable as obvious, principally over Obradovich alone or with Lappenbusch and Morimoto.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention “would have had a Bachelor’s of Science in electrical engineering or a related subject and two or more years of experience working with navigation and communication systems.” Pet. 9 (citing Ex. 1004 ¶¶ 23–24). Patent Owner does not dispute Petitioner’s description. At institution, we adopted Petitioner’s characterization of the level of skill in the art, which we found to be generally consistent with the disclosures of the ’782 patent and cited references. See Decision 11–12. As neither party has contested that choice, we maintain it. Neither party argues that the formulation of the level of ordinary skill in the art affects the patentability analysis. B.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner asserts that the challenged claims “do not require express construction, or alternatively, only require construction to the extent necessary to determine whether the prior art teaches the claims.” Pet. 9. Patent Owner has not sought any express claim constructions. We conclude that we need not engage in the formal construction of any claim terms to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 15
- BurdenUnpatentable
“viii. Conclusion Regarding Claim 1 For the reasons detailed above, we agree with Petitioner’s analysis regarding Obradovich. We thus conclude that Petitioner has shown claim to be 1 unpatentable as obvious in view of Obradovich.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“a. Independent Claim 15 As explained above, we find that Obradovich discloses the limitations of claim 15, including the camera. See Section II.C.1.b. We also conclude that, even if Obradovich did not disclose a camera for obtaining an image of a roadway, it would have been obvious to add that feature in view of Lappenbusch’s teachings regarding the use of “an interactive roadmap” that allows a user to select segments and then provides images from video cameras located along the route to see images or short video clips of the traffic along the selected route.” Pet. 37–40; see Ex. 1009, 2:45–64. We find that Petitioner has provided a sufficient motivation to combine these complementary disclosures. See Pet. 38–40. Patent Owner does not argue that Obradovich and Lappenbusch do not disclose the subject matter of claim 15, and we conclude that Petitioner has shown, by a preponderance of the evidence, that claim 15 would have been obvious in view of these references.” slip op. at 26
Patent outcomesUS 9,885,782 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,885,782 - Apogee Lighting Holdings, LLC v. Autronic Plastics, Inc. D/B/A Clear-Vu LightingAll claims unpatentablePTAB · Nov 29, 2021 · IPR2020-01024 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–6, 9, 10, 14, and 21–25 are unpatentable as obvious over the asserted combinations of Roberge, Realmuto, Smith, AAPA, and, for certain grounds, Conley.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“55. Ex. 1010, 6:55–60, 16:6–12, 20:33–34, 21:1–2, 21:18–21, 63:4–9, 64:10–21, Fig. 55. Further, the high voltage DC power source of Realmuto is not limited to solar panels, and also includes wind power and a fuel cell. Ex. 1009 4:7–10, Fig. 1. Similarly, Roberge discloses using wind power and a fuel cell. Ex. 1010, 21:1, 21:18–21. Both references also teach using a standard AC power source. Ex. 1009, 1:36–39, 2:28–30; Ex. 1010, 20:33– 34. We find that the similarity of the AC and DC power sources used to provide power to the LEDs in both references, including solar power, wind power, and fuel cells, suggests to a person of ordinary skill in the art the compatibility of using the high voltage DC power sources taught by Realmuto to provide power to the LEDs in the LED lighting fixture of Roberge. See In re Hyon, 679 F.3d 1363, 1366 (Fed. Cir. 2012) (affirming an obviousness determination where two “references both teach processes directed to making the same class of products” and minor differences between the disclosures did not “negate the motivation to combine”). Conclusion” slip op. at 59
Patent outcomesUS 10,190,760 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,190,760 - Apogee Lighting Holdings, LLC v. Autronic Plastics, Inc. D/B/A Clear-Vu LightingAll claims unpatentablePTAB · Nov 29, 2021 · IPR2020-01023 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 7–10, 13, 17–19, and 22–24 are unpatentable as obvious over the asserted combinations of prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“We agree with the Petition and supporting evidence that combining the teachings of Conley with those of Smith, Realmuto, and the AAPA would have provided the benefit of providing tests necessary to satisfy safety codes for an emergency lighting system used in a public transportation facility, where switching to an alternate power source when the main power source fails allows the lighting system to provide light so that people can safely exit the public transportation facility. Ex. 1003 ¶¶ 82, 243; Ex. 1005, 32, 182; Ex. 1009, 4:22–26, 5:14–20, Fig. 4; Ex. 1011, 1:13–28; Ex. 1012, 6:43–66. Petitioner’s analysis for claims 9, 10, 13, 17–19, and 22–24, supported by the testimony of Dr. Bretschneider, which we credit, is persuasive that claims 9, 10, 13, 17–19, and 22–24 would have been obvious over Smith, Realmuto, AAPA, and Conley.” slip op. at 82
Patent outcomesUS 9,909,748 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,909,748 - Cradlepoint, Inc. / Dell Inc. et al. v. Sisvel International S.A.Institution deniedPTAB · Oct 15, 2021 · IPR2021-00815 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 and 5–8 were obvious over any of the three asserted reference combinations.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“and Patent Owner’s arguments in response highlight a question that hinges on claim language analysis. The issue is whether the recited “attach request is configured to trigger a create communication connection default procedure” may encompass a normal attach request. We hold that, based on the claim language, the ’070 patent specification, and binding legal authority, it may not.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provides that an inter partes review may not be instituted unless the information presented in the Petition and the 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’070 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“is no indication in Josse or in the Petition that Josse’s attach request, i.e., a GPRS attach, is in any way configured to perform the new signaling or the updating that Petitioner identifies as possibly being “a create communication connection default procedure.” Although Petitioner states that “Josse triggers a PDP context activation procedure,” (Pet. 34), there is no disclosure in Josse that (1) the attach request is configured to trigger a PDP context activation procedure; or (2) that a PDP context activation procedure actually occurs during the attach request procedure. Josse belies Petitioner’s contentions for two reasons. The first reason is that any update of the ISD, which Petitioner seems to focus on as somehow being related to PDP context activation, is exchanged based on the conventional method of location update during a normal attach request. Ex. 1003, 2:4458 (referring to the attach procedure described in GSM standard, 03.60 v. 2.0, for the GPRS service description, Phase 2, dated, May 1997). Josse’s attach request does not convey that anything other than the conventional attach procedure be performed. Josse adds additional fields to the HLR so that during a conventional attach procedure, additional information concerning the mobile device’s subscription (ISD) can be exchanged. Thus, the fact that Josse exchanges this ISD information is not evidence that the attach request is anything other than a normal attach request. Second, the field that Josse adds to the HLR is what triggers any further packet-data connectivity that the mobile station may enjoy, if the specified conditions are satisfied. As stated above, Josse’s new field specifies whether the mobile station is allowed to update the gateway with the new SGSN address information for packet-data routing before any PDP context activation is performed. Ex. 1003, 6:2427. Josse explains that the additional signaling between the new SGSN and the gateway occurs as a result of receiving authorization in the new field in the ISD and after verifying that the PDP contexts are not active. Id. at 9:3949. Thus, any update the mobile station may receive in its communication channel for data packet transmission occurs because the new HLR field triggers it, i.e., it is not a function attributable to the attach request itself.” slip op. at 19
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,979,070 - Google LLC v. Express Mobile, Inc.Institution deniedPTAB · Oct 4, 2021 · IPR2021-00711 · APJ Kristi L R Sawert · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 7, and 11 were obvious over Huang and Angelov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing the Declaration of Dr. Chatterjee, Petitioner contends that an ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 7–8 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. at 8 (citing Ex. 1002 ¶¶ 15–16). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’044 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“unpatentable under 35 U.S.C. § 103(a) as obvious over Huang in view of Angelov. Pet. 13–83. In particular, Petitioner contends that the combination of Huang and Angelov teaches or suggests each and every limitation of the challenged claims, and that a person of ordinarily skill in the art would have had a reason to combine the disclosures of the prior art. Id. Patent Owner opposes, relying on the Declaration of Kevin C. Almeroth, Ph.D. (Ex. 2001). Prelim. Resp. 4–13. In particular, Patent Owner argues that the prior art fails to teach or suggest three claim limitations: (1) “the device provides the user provided one or more input values and corresponding input symbolic name to the web service,” id. at 7–11; (2) “the web service utilizes the input symbolic name and the user provided one or more input values,” id. at 12; and (3) “the player receives the output symbolic name,” id. at 12–13. We address each of these limitations below. 1. “the device provides the user provided one or more input values and” slip op. at 13
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,928,044 - Google LLC v. Express Mobile, Inc.Institution deniedPTAB · Oct 4, 2021 · IPR2021-00710 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood that claims 1, 2, 7, and 11 would have been obvious over Huang and Angelov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we do not institute an inter partes review as to the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 8 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. (citing Ex. 1002 ¶¶ 15–16). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’755 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes construction of various claim terms under the plain meaning of the terms and also under the district court constructions. Pet. 10–12. Patent Owner does not propose construing any claim terms. See generally Preliminary Response. Because our determination below is not impacted by Petitioner’s proposed claim constructions, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“unpatentable under 35 U.S.C. § 103(a) as obvious over Huang in view of Angelov. Pet. 13–84. In particular, Petitioner contends that the combination of Huang and Angelov teaches or suggests each and every limitation of the challenged claims, and that a person of ordinarily skill in the art would have had a reason to combine the disclosures of the prior art. Id. Patent Owner opposes, relying on the Declaration of Kevin C. Almeroth, Ph.D. (Ex. 2001). Prelim. Resp. 4–13. In particular, Patent Owner argues that the prior art fails to teach or suggest three claim limitations: (1) “the device provides the user provided one or more input values and corresponding input symbolic name to the web service,” id. at 7–11; (2) “the web service utilizes the input symbolic name and the user provided one or more input values,” id. at 12; and (3) “the player receives limitations below.” slip op. at 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,471,287 - Google LLC v. Express Mobile, Inc.Institution deniedPTAB · Oct 4, 2021 · IPR2021-00709 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 7, and 11 would have been obvious over Huang and Angelov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we do not institute an inter partes review as to the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing the Declaration of Dr. Sandeep Chatterjee, Ph.D., Petitioner contends that an ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 5–6 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. at 6 (citing Ex. 1002 ¶¶ 15–16). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. assessment of the level of ordinary skill in the art as it is consistent with the ’755 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- PTAB / AIA Trials › Discretionary denialNot reached
“IV. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 16–35.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“where said Player is a device-dependent code.” Petitioner contends that, although Huang and Angelov do not explicitly disclose that the Application Designer is configured to produce a player, it would have been obvious to implement such a feature. Pet. 51. According to Petitioner, the designer of Huang is configured to generate a software application executed by a player, and this shows that a person of ordinary skill would have found it predictable to generate the player itself, because the player is also software. Pet. 52. Petitioner contends that, because Huang does not explicitly disclose what produces the player, a person of ordinary skill would have leveraged existing resources disclosed in Huang that already produce other software. Pet. 52. According to Petitioner, producing device-dependent code was well known and advantageous. Pet. 52–54. Patent Owner contends that creating and saving applications as XML definitions in a database as taught by Huang is significantly simpler than generating Java Server Pages (JSP) or JavaScript that produce a player. Prelim. Resp. 15. Patent Owner contends that Huang does not disclose using the Application Designer to generate JSP or JavaScript, nor does Huang disclose how to do so. Prelim. Resp. 15. Patent Owner contends that Petitioner does not explain how any resource in Huang could be leveraged to produce a player. Prelim. Resp. 15. device-dependent code was well-known because such knowledge is already shown by Huang’s disclosure of a player which may be JSP and may include JavaScript. Ex. 1007 ¶ 41. However, the player disclosed by Huang is sent from server 120 to browser 101 (which executes the player and the Application Designer), not produced by the Application Designer. Id.; see Pet 51 (“Huang does not explicitly disclose what produces [the] player.”). Petitioner has not sufficiently shown that a person of ordinary skill who could produce applications using the designer of Huang could also produce a player using the same designer. We agree with Patent Owner that Huang does not disclose how the designer or any other resource of Huang would produce a player, and Petitioner does not sufficiently explain how any resource in Huang could be leveraged to do so. On this record, Petitioner has not sufficiently shown that the combination of Huang and Angelov teaches “an authoring tool configured to . . . produce a Player, where said Player is a device-dependent code.”” slip op. at 12
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,063,755 - Falkbuilt Ltd. v. Dirtt Environmental Solutions, Ltd.Institution deniedPTAB · Sep 24, 2021 · IPR2021-00654 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7, 10–16, and 19–20 were obvious over Scranton and Maciocci.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner has not sufficiently shown that Scranton’s virtual objects are “associated with an independently executable software object that comprises independent variables and functions that are specific to a particular architectural element that is represented by the at least one virtual object,” Petitioner has not shown a likelihood that it will prove independent claim 1 obvious. And, because all of the other challenged claims include corresponding language, Petitioner has not shown a reasonable likelihood that it will prove the other challenged claims obvious either.6 III. CONCLUSION Petitioner has not shown a reasonable likelihood that it would prevail in showing that claims 1–7, 10–16, and 19–20 of the ’814 patent are unpatentable. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 15
- BurdenNot shown unpatentable
“Petitioner fails to establish that Scranton’s “information components” could correspond to the claimed “independently executable software object” for several reasons. First, Petitioner does not show how the information components are “objects,” where, as Petitioner acknowledges, the ’814 patent is using “object” in the object-oriented programming sense. See, e.g., Pet. 27–28; Ex. 1001, 5:28–67. Second, Petitioner fails to explain how or why the components are “associated” with the virtual objects, where the patent contemplates an association akin to that of objects in object-oriented programming. See id. Third, although Petitioner asserts that the components are “executable,” it fails to explain why they would be considered to be “independently” executable. Finally, Petitioner fails to explain how or why the components would “comprise[] independent variables and functions that are specific to a particular architectural element,” where Scranton’s components are software that obtains and processes the 3D information, but do not appear to include the information themselves. See Ex. 1001, 10:27–12:3.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“technologies, including augmented reality technologies, and also three-dimensional design software such as architectural design software,” and that such a person “would have had a Bachelor of Science degree in an academic discipline emphasizing the design and application of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with three-dimensional computer models and virtual or augmented reality devices.” Pet. 3–4 (citing Ex. 1002 ¶¶ 41– 48). “Alternatively,” argues Petitioner, “the person could have also had a Master of Science degree in a relevant academic discipline with approximately one year of related work experience in the same discipline.” Id. at 4. Patent Owner does not address this issue. On this record, we adopt Petitioner’s proposal in part, finding the skilled artisan to be a person with (a) “a Bachelor of Science degree in an academic discipline emphasizing the design and application of electrical, computer, or software technologies,” and (b) “training or at least one to two years of related work experience with three-dimensional computer models and virtual or augmented reality devices.” That description is generally consistent with the disclosures of the ’814 patent and the prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We conclude that we need not engage in any formal claim construction to resolve the issues addressed in this Decision. 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 8
Claim constructioncites Phillips · GrahamPatents in suitUS 10,467,814 - Falkbuilt Ltd. v. Dirtt Environmental Solutions Ltd.Institution deniedPTAB · Sep 24, 2021 · PGR2021-00067 · APJ Stacy B Margolies · PGR · Institution
The Board denied institution because Petitioner did not show that claims 1–5, 8–12, and 15–17 were more likely than not unpatentable as indefinite or obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a) (2020). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). After considering the Petition, the Preliminary Response, Patent Owner’s Certificate of Correction Brief, and Petitioner’s Certificate of Correction Response Brief, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see also id. at 910 (The definiteness requirement “require[s] that a patent’s claims, when viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of invention with reasonable certainty.”). Petitioner has not sufficiently shown that, when viewed in light of the specification and the prosecution history, claims 2 and 3 fail to inform a skilled artisan about the scope of the invention with reasonable certainty. Petitioner fails to address the amendment of claim 2 leading up to the issuance of the patent.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner fails to sufficiently explain how the references are combined to teach this limitation or the reason one of ordinary skill in the art would have made such a combination. For example, Petitioner fails to explain how one would have “[a]ppli[ed] the teachings of Shingu to Scranton.” Id. Such a combination is not readily apparent from the references themselves because Shingu relates to moving a camera so that it can take a repeat photograph and does not describe determining the architectural space surrounding the user. Petitioner also does not provide a reason why one of ordinary skill in the art would have combined the cited teachings of Shingu and Scranton to arrive at the claimed features. See id. at 41–42. Nor does Petitioner’s declarant, Dr. Welch, provide testimony explaining how the teachings would have been combined or a reason to make the combination. See Ex. 1002 ¶¶ 79–81. Indeed, as Patent Owner notes, Dr. Welch does not even reference Scranton in his analysis of this claim limitation. See id.; Prelim. Resp. 19–20. Petitioner therefore fails to sufficiently show that the combination of Shingu and Scranton teaches “the particular physical location and the virtual predetermined position comprising the same relative view position within the architectural design file and an architectural space surrounding the user.”” slip op. at 25
- Expert testimonyPetitioner expert discountedOther
“and Scranton teaches the “receive a communication” limitation. Petitioner relies on Dr. Welch’s testimony to fill in gaps for what is not expressly disclosed in Shingu. As explained above, Shingu discloses an augmented reality system “that helps users take pictures from the same position and camera angle as a previous photo.” Ex. 1003, 272. Shingu discloses “us[ing] an existing method to estimate camera position as implemented in ARToolKit.” Id. at 271 (emphasis added). Shingu—which describes aiming a camera on an object at a certain angle—does not disclose having a user located within a particular physical space. Petitioner therefore relies on Dr. Welch to assert that it was known ARToolKit could provide the claimed functionality—indicating a relative direction that the virtual reality module (the camera in Shingu) is facing, and a location of a user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space. Pet. 34–35 (citing Ex. 1002 ¶¶ 69, 72). Dr. Welch’s testimony, in turn, is based on Wagner (Exhibit 1018), which appears to have been downloaded in February 2021. See Ex. 1002 ¶¶ 69 (citing Ex. 1018), 72; Ex. 1018 (footer). Although Dr. Welch gives a date of 2002 for Wagner (see Ex. 1002 ¶ 69), that date does not appear in Exhibit 1018. See Ex. 1018. Petitioner fails to explain in its Petition what evidence supports its assertion that Wagner shows that ARToolKit had been applied to the creation of a floor of a building “more than a decade before the time of the alleged invention” or that the techniques described in Welch were “well known by the time of the alleged invention.” See Pet. 34–35. Nor does the cited testimony from Dr. Welch identify evidence or otherwise provide support for the 2002 date or that the functionality described in Wagner was “well known.” See Ex. 1002 ¶¶ 69, 72. Thus, Petitioner’s assertions and Dr. Welch’s testimony regarding what was known to a person of ordinary skill in the art about the functionality of ARToolKit goes well beyond the express disclosures of Shingu—using “an existing method to estimate camera position” (Ex. 1003, 271)—and, on the current record, are not sufficiently supported by contemporaneous evidence. Petitioner therefore does not sufficiently show that the combination of Shingu and Scranton teaches “receiv[ing] a communication from the one or more position tracking sensors, wherein the communication comprises an indication of a relative direction that the virtual reality module is facing, and a location of the user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space.”” slip op. at 22
§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,783,284
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.