• Google LLC v. Touchstream Technologies, Inc.No claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1, 2, and 6–8 were not shown unpatentable because the prior art combinations did not establish the claimed messaging through the server system.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Tr. 78:6–10. Patent Owner responded “I don’t think it makes any difference for this panel’s determination.” Tr. 78:13–14. We agree and determine that the differences in the level of skill offered by the parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” See Inst. Dec. 10. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. media player Patent Owner contends that, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’289 patent refers to application software and does not encompass hardware devices.” PO Resp. 14 (citing Ex. 2022 ¶¶ 92–93). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player.’” Pet. Reply 1. Rather, Petitioner states the media players relied upon in the Petition are all application software. Pet. Reply 1–2. Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 24–27)—are application software. The third ‘media player’ is likewise not a hardware device.” Pet. Reply 2 (alteration in original). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Muthukumarasamy “controls delivery of selected media content and selects and controls the media devices that deliver the selected media content according to a media type of the selected media content.” Because Muthukumarasamy teaches that the media device displays media content from various disparate sources depending on the media type and media source, a [person of ordinary skill in the art] would have understood the media device loads an appropriate media player depending on the media type and source. Pet. 23–24 (citing Ex. 1008 ¶ 47; Ex. 1005 ¶¶ 66–67). Petitioner, however, proffers insufficient evidence or argument that the content choices described in paragraph 47 of Muthukumarasamy would have led an ordinarily skilled artisan to understand a media player is obtained and loaded in the content presentation device. Rather, Dr. Bederson makes conclusory statements without providing evidence to support the assertions (Ex. 1005 ¶¶ 66–67).” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Muthukumarasamy discussed above. In particular, Petitioner has not explained how Hayward teaches receiving the one or more messages in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing content from the file,” and “identify a location of the particular media player.” Pet. 41–45. More specifically, Petitioner contends that a person of ordinary skill in the art “would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate control of internet content presented at the content presentation device using any number of media players through embedded media player pages, as described in Hayward.” Pet. 65. However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the content presentation device” (Pet. Reply 22), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required messages being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above. Accordingly, Petitioner has not shown that the combination of Muthukumarasamy and Hayward teaches “receiving, in a server system, one or more messages from a personal computing device . . . wherein the one or more messages, . . . identify a particular media player for playing content from the file wherein the media player is a computer application operable to present content and control presentation of the content,” as recited in claim 1 and commensurately recited in independent claim 6. Additionally, because claim 2 depends from claim 1 and claims 7 and 8 depend from claim 6, we conclude that Petitioner has not established by a preponderance of evidence that the subject matter of claims 2, 7, and 8 would have been obvious over the combination of Muthukumarasamy and Hayward.” slip op. at 37

  Patent outcomesUS 8,904,289 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,904,289
• Google LLC v. Touchstream Technologies, Inc.No claims unpatentable
  PTAB · Sep 27, 2023 · IPR2022-00795 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1, 2, and 5–9 were not shown unpatentable over Muthukumarasamy alone or with Hayward because the claimed signals identifying a media player were not shown to pass through the asserted server system.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “1. Media player Patent Owner contends, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’251 Patent refers to application software and does not encompass hardware devices” (PO Resp. 13 (citing Ex. 2022 ¶¶ 81–92, 95)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 23–26)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (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)))).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We determine that Hayward does not cure the deficiencies of Muthukumarasamy discussed supra. In particular, Petitioner has not explained how Hayward teaches receiving the one or more signals in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing the video content” (Pet. 38–41). More specifically, Petitioner contends “a [person of ordinary skill in the art] would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device using any number of media players through embedded media player pages, as described in Hayward” (Pet. 15, 40 (citing Ex. 1005 ¶¶ 60, 102)). However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device . . .” (Pet. Reply 22 (emphasis omitted)), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required signals being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above.” slip op. at 39

  Patent outcomesUS 8,356,251 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,356,251
• Google LLC v. Touchstream Technologies, Inc.No claims unpatentable
  PTAB · Sep 27, 2023 · IPR2022-00793 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–5, 8, 11, 12, 14, 15, 27, and 28 were not shown unpatentable as obvious over Muthukumarasamy alone or with Hayward.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “‘media player’ in the ’528 patent refers to application software and does not encompass hardware devices” (PO Resp. 16 (citing Ex. 2022 ¶¶ 83–91, 94)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all application software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 21–24)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (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)))).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded. Even if the zHub and the zNode would be used to control the volume on the TV on which the streamed content is displayed, this device cooperation does not show the particular messaging recited in the claim. More specifically, even under Petitioner’s scenario that the “Volume Up” command flows from the IED (“personal computing device”) through the zHub/zNode (“server system”) to the TV (“content presentation device”), this command does not “identify a particular media player for playing content from the file.” Petitioner has not shown any messages in Muthukumarasamy that “identify a particular media player for playing content from the file” and flow from the IED through the zHub/zNode to the content presentation device. Thus, Petitioner’s assertions about devices working together fall short of proving by preponderant evidence that Muthukumarasamy discloses the particular messaging contents and path recited in claim 1.” slip op. at 30

  Patent outcomesUS 8,782,528 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,782,528
• Platinum Optics Technology Inc. v. Viavi Solutions Inc.No claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00631 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, 14, 16–21, and 23 were not shown unpatentable because the asserted combinations did not establish the claimed hydrogenated silicon properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Supported by Mr. Willey’s testimony, Petitioner proposes that a person of ordinary skill in the art would have had “a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with at least 5 years of experience in optical coating design and the manufacturing of optical filters, including various deposition techniques.” Pet. 13 (citing Ex. 1002 ¶¶ 66–68). According to Petitioner, “[a]dditional education (e.g., a Master’s degree with exposure to coating design and manufacturing) may substitute for some industrial experience in optical thin film design, and more industrial experience can substitute for a different educational background. Id. (citing Ex. 1002 ¶ 66). Patent Owner neither directly addresses Petitioner’s proposal nor provides its own proposal. See Tr. 35:15–18 (Patent Owner confirming for the record that it has not proposed a different level of ordinary skill than Petitioner’s proposal). Petitioner’s proposal is reasonable and consistent with the prior art presented. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We accordingly adopt Petitioner’s proposal.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the statements Dr. Clemens made under oath in his Declaration, we find that he qualifies as a person having at least ordinary skill in the art according to our adopted definition. The questions Petitioner raises about Dr. Clemens’s qualifications were insufficiently explored on cross-examination to impeach that testimony. With respect to Petitioner’s further complaint that Dr. Clemens “did not review all the evidence in rendering his opinions, did not select the materials he reviewed, and did no independent research on the question of enablement,” we agree with Patent Owner that Petitioner cites no authority for the propositions that expert witnesses must review all exhibits or perform independent research. Sur-reply 27. Indeed, we do not find it particularly unusual for an expert witness to focus his analysis and opinions on specific issues identified by counsel, and Dr. Clemens properly discloses the underlying facts and data upon which his opinions are based. See 37 C.F.R. § 42.65(a). We thus accord due weight to Dr. Clemens’s testimony.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that “the claims do not need an express construction to resolve the issues presented in this proceeding” but nevertheless “provides its proposed interpretations of two terms [namely, ‘center wavelength’ and ‘passband’] to clarify how Petitioner is applying the prior art to the claims.” Pet. 13. Patent Owner does not directly address Petitioner’s proposed constructions for these terms, and appears generally to treat the terms in a manner consistent with Petitioner’s proposals. We conclude that no express claim construction is necessary for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “One difficulty with Petitioner’s position is that it treats the refractive index and extinction coefficient as independent variables in its argument. But the prior art is clear that the adjusting the hydrogen content of Si:H to achieve a desired extinction coefficient necessarily affects the refractive index—and, as we discuss above, that such adjustments do so in a direction counterproductive to the combination of parameters the inventors sought. And we agree with Patent Owner that the refractive index and extinction coefficient “are not parameters subject to simple adjustment, but properties resulting from the parameters of the fabrication process.” PO Resp. 52 (citing Ex. 2001 ¶¶ 121–122; Ex. 1016, Figs. 2–3). At the Oral Hearing, Petitioner conceded that Patent Owner’s characterization is accurate when considering the hydrogenated silicon material. See Tr. 65:7– 12. When Petitioner refers to the refractive index and extinction coefficient as result-effective variables, Petitioner means that those parameters are variables that can affect the properties of the claimed optical filter. See id. at 64:6–65:12. As we note above, Petitioner’s argument thus presumes that the refractive index and extinction coefficient can be independently adjusted to achieve desired filter properties—but the asserted prior art teaches against such independence because the known method of adjusting the hydrogen content of Si:H not only affects both the refractive index and extinction coefficient, but does so in a manner counterproductive to the inventors’ objective.” slip op. at 35

  Patent outcomesUS 9,354,369 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,354,369
• DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentable
  PTAB · Feb 8, 2022 · IPR2020-01276 · APJ John A Hudalla · IPR · Final written decision

  The Board held claims 1–3, 5–7, 13–15, 18, 20, 21, 24, 25, 27, and 29 not unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “After institution, neither party put forth arguments related to the level of ordinary skill. We discern no reason to change the level of ordinary skill in the art applied in this Final Written Decision. Thus, a person of ordinary skill in the art would have had either (1) a Bachelor of Science in Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing protocols and/or equipment for streaming multimedia data; or (2) a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing protocols and/or equipment for streaming multimedia data. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’796 patent and the asserted prior art.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “independent claims 1, 15, 20, and 27 are limiting. Dec. on Inst. 10–11. Petitioner does not take an express position on whether the preambles of the challenged claims are limiting. See Pet. 21 (stating that Geagan teaches the preamble “to the extent it is limiting”). Patent Owner supports our preliminary determination that the preambles are limiting. PO Resp. 37–41. Given this posture, we discern no reason to change our initial determination that the preambles are limiting. Thus, even though the disposition of this case does not turn on any particular limitation in the preamble, we maintain our determination that the preambles of claims 1, 15, 20, and 27 are limiting to the extent they color our analysis of Petitioner’s rationale for combining various prior art references.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that no terms require explicit construction.2 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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Petitioner attempts to decouple these central control aspects from the functionality of sliding windows. In particular, Petitioner argues that “[t]he majority of the functionality for implementing the sliding window buffers is found in Vishlitzky’s stream servers themselves” and that Patent Owner has not established “that the controller servers of Vishlitzky exercise control over the playout history, the buffers, or sliding window functionality of Vishlitzky’s stream servers.” Pet. Reply 8–9. Yet Petitioner expressly relies on Vishlitzky’s admission control program, which runs on controller servers 28, 29, to teach the “determining” step of claim 1. Pet. 35–36, 40–41; Pet. Reply 21–22. Petitioner has not explained how the admission control program’s centralized function of choosing an appropriate stream server to service a request (see Ex. 1010, 7:62–8:3) would be implemented in the stream servers themselves. In addition, Petitioner’s analogy between Vishlitzky’s controller servers and the memory controllers used with Geagan’s proxy (Pet. 63; Pet. Reply 9) does not detail how and whether Petitioner proposes to modify Vishlitzky’s centralized controller functions such that they might be compatible with “the distributed nature of Geagan’s proxy approach,” as Petitioner characterizes it. Pet. Reply 10. At the oral hearing, Petitioner also suggested that a controller within a single proxy from Geagan could allocate incoming requests to multiple of Vishlitzky’s stream servers within that same proxy. Tr. 55:1–57:21; see also PO Sur-reply 23–24 (discussing this potential argument). In other words, Petitioner seemed to suggest that multiple stream servers from Vishlitzky’s stream server architecture in Figure 16, along with controller servers from Figure 2, could be replicated in each of Geagan’s proxies. Yet Petitioner disavows such a mapping in its Reply: “[T]he Petition does not propose that a POSITA would have bodily incorporated the entirety of Vishlitzky’s hardware control structure when implementing Geagan’s system using Vishlitzky’s ‘sliding window’ to store cached streaming content.” Pet. Reply 6. Nor was this the combination described in the Petition. Instead, Petitioner proposed “to implement the buffer of Geagan as a ‘pre-configured playout history (PH) buffer’ . . . because Vishlitzky teaches that it is advantageous to pre-configure a playout buffer.” Pet. 34; see also id. at 62–63 (“[A] POSITA would have had a reasonable expectation of success in implementing details of the ATM-based stream server of Vishlitzky in Geagan’s proxy . . . .”). Petitioner further characterizes this as “[t]he buffer of Geagan’s proxy, as implemented as a pre-configured PH buffer per Vishlitzky.” Pet. 39. And, importantly, Petitioner cites the creation of another proxy device in Geagan for teaching the recited “non pre-configured PH buffer”: “Geagan in view of Vishlitzky discloses ‘servicing the first request from a non pre-configured PH buffer,’ such as by live-streaming content using a buffer at the proxy device that is created at the time of the request for an unpopular live stream.” Pet. 42 (emphasis added). Finally, even if Petitioner’s papers had proposed a combination where Vishlitzky’s entire stream server and controller architecture is incorporated in each of Geagan’s proxies, Petitioner has failed to articulate reasons with some rational underpinning why an ordinarily skilled artisan would have made this combination. Thus, we are not persuaded by Petitioner’s arguments. At the very least, Petitioner has not explained where Vishlitzky’s controller servers would be disposed in the combined system and how they” slip op. at 28

  Patent outcomesUS 6,757,796 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,757,796
• DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01041 · APJ Debra K Stephens · IPR · Final written decision

  DISH failed to prove claim 13 unpatentable as obvious over either Durand and Bennett or Goyal and Bennett.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us (see Okajima 261 F.3d 1355). Based on the present record, including the disclosure in the ’456 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine Petitioner’s asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’456 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)). As we determine the four instances of “at least” in Petitioner’s formulation introduce ambiguity, we remove these terms from our definition. Accordingly, we determine an ordinarily skilled artisan would have a Bachelor of Science in one of Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing resource reservations for UNIX-based computing systems, or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing resource reservations for UNIX-based computing systems.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that it is not necessary to provide an express interpretation of any terms of claim 13 (Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review)).” slip op. at 9

  • BurdenNot shown unpatentable

    “However, Petitioner has not set forth with specificity where Bennett teaches the request uses the one or more object references. Indeed, Petitioner has not explained how these two teachings of Bennett disclose the recited limitations with sufficient specificity or how one of ordinary skill in the art would modify Durand with these teachings of Bennett to achieve the recited limitations. Accordingly, Petitioner has not established that the combination of Durand and Bennet teaches the subject matter of claim 13. Therefore, based on the entire trial record, we determine Petitioner has not established by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Durand and Bennet under 35 U.S.C. § 103.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In its Reply, as noted by Patent Owner (PO Sur-reply 11), Petitioner offers a new theory, pointing to a different system call of Goyal (Pet. Reply 19–20 (citing Ex. 1090 ¶ 144 (citing Ex. 1002 ¶ 352–354))). Petitioner contends this new argument is to address Patent Owner’s alleged contention that “‘quality of service’ must already be ‘provided’ at the same time when the correspondence to the ‘reference to an object’ is created (Pet. Reply 19 (citing Ex. 1090 ¶ 141)). Thus, in Dr. Negus’ Reply Declaration, Dr. Negus asserts Goyal teaches the recited “quality of service guarantees that correspond to a reference to an object” relying on the “int hsfq_move (int from, int to, .....)” which “is used to move a thread from one leaf node to another”1 (Ex. 1090 ¶ 144). Petitioner’s alleged reliance on the hsfq_move (int from, int to, …….) system call instead of the int hsfq_mknod (char *name, int parent, int weight, int flag, scheduler_id side) system call represents a change in Petitioner’s unpatentability contentions that is presented for the first time in Petitioner’s Reply (see Pet. Reply 19–20). We acknowledge that the Petition mentions a “move” function: “Additionally, system calls are used to remove, move, and administer nodes in the scheduling structure. Goyal also discloses several additional functions to manage the scheduling structure, including removing, moving, and administering nodes.” (Pet. 61 (citing Ex. 1002 ¶¶ 350–352 (citing Ex. 1007 § 4))). But the cited portion of Dr. Negus’ Declaration simply states that there are other system calls, including “int hsfq_parse(char *name, int hint),” “int hsfq_rmnod(int id, int 1 We note Dr. Negus refers to the system call as “int hsfq_move” (see e.g., Ex. 1002 ¶¶ 144, 352) although Goyal discloses the system call as “hsfq_move” (Ex. 1007 § 4). We consider Dr. Negus’ naming to refer to the same system call as disclosed in Goyal. mode),” and “int hsfq_admin(int node, int cmd, void *args)” and the system call “‘int hsfq_move(int from, int to, .....)’ which ‘is used to move a thread from one leaf node to another’” (Ex. 1002 ¶ 352; see also id. ¶ 144 (repeating the same information as paragraph 352)). Additionally, these teachings of Goyal are discussed in conjunction with the limitation “utilizing an application programming interface . . . to establish one or more quality of service guarantees” (id. ¶¶ 356, 359). Thus, Dr. Negus’ initial Declaration does not elaborate on the move function, and the Petition does not rely on the “hsfq_move” system call to teach the limitations of claim 13. Petitioner asserts that this argument in reply is to address “Patent Owner’s new claim construction position” (Pet. Reply 19). We disagree. As outlined above, the Petition does not identify where an object reference is “used in the request,” as specifically recited in claim 13. Petitioner’s new reply argument, therefore, attempts to fill in a gap in Petitioner’s unpatentability contentions from the Petition that was pointed out by Patent Owner. Under the circumstances here, we do not consider this a permissible reply argument (see Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”)). Thus, we do not consider Petitioner’s newly presented contentions.” slip op. at 26

  Patent outcomesUS 6,725,456 not shown unpatentable
  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 6,725,456
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision

  Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyDecided for patent owner

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableReasonable expectation not foundNot shown unpatentable

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  Patent outcomesUS 10,225,479 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 10,225,479
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision

  Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20

  Patent outcomesUS 10,225,479 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,225,479
• Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision

  The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5

  Patent outcomesUS 8,823,732 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,823,732
• Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision

  Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.

  RulingsFinal written decision

  • ExcludeMixed

    “Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21

  • BurdenDecided for patent owner

    “involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29

  Patent outcomesUS 8,542,880 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,542,880

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.