• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jul 9, 2024 · IPR2024-00244 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR on claims 1–5, 7–14, and 16–25 on all asserted grounds, finding a reasonable likelihood of prevailing on the Sarantos-based obviousness challenges.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “based on the Delaware Litigation. Prelim. Resp. 17–34; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).8 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware 7 US 8,446,275 B2, issued May 21, 2013 (Ex. 1006, “Utter”). 8 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Litigation], the same grounds as in the IPR2024-00244 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv. Patent Owner argues that Petitioner’s stipulation “does not carry the benefits underlying the Director’s Guidance” because it was filed “only after the parties and the court conducted extensive and costly fact and expert discovery, and fully briefed and argued dispositive motions.” Prelim. Sur-reply, 2. This argument is not persuasive because the Director’s Guidance does not afford discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo, 7 (explaining, without qualification, that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition”); see also NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Vidal Sept. 7, 2022) (precedential) (explaining that the only appropriate time for a petitioner to offer a stipulation related to Fintiv factor 4 is prior to the Board’s decision on institution). Accordingly, we decline to deny institution based on the Delaware” slip op. at 10

  • Parallel petitionsDecided for petitioner

    “First, we agree with Petitioner that the two petitions are not redundant and contain material differences that, in this case, support Petitioner’s argument that two petitions challenging the ’159 patent are warranted. The -243 IPR presents three grounds, all built on a combination of Iwamiya and Sarantos. -243 IPR, Paper 2, 1. In that case, Petitioner relies on Iwamiya as the primary reference that discloses a number of limitations, including the light shaping aspect of claim 1. See id. at 13–27. In this case, Petitioner relies on Sarantos alone for all of the limitations in claim 1, including the light shaping limitation, or a combination of Sarantos and Shie, with Shie allegedly disclosing the light shaping limitation. See Pet. 1, 7–14, 35–38. Petitioner also seeks to add the dark colored coating of Sarantos to Iwamiya in the -243 IPR, but relies on Sarantos alone for that limitation in this case. See Notice 2. In addition, because the combinations are different, they are supported by different motivations to combine and different underlying expert testimony. See, e.g., Pet. 30–35, 44–46; -243 IPR, Paper 2, 7–13. The material differences between the challenges presented in the two cases are readily apparent, and are underscored by Patent Owner’s arguments in its Preliminary Responses. For example, in the -243 IPR, Patent Owner does not contest Petitioner’s assertion that Iwamiya discloses the light shaping functionality (upon which Petitioner relies on Sarantos, here), but argues (for claim 1) that the combination fails to disclose the “opening” and “pass through the surface” limitations, and argues against the motivation to combine Iwamiya and Sarantos. See -243 IPR, Paper 6, 34– 48. Patent Owner raises none of those arguments in this case, and instead focuses on the alleged failure of Petitioner to establish that Sarantos alone, or Sarantos and Shie, disclose the claimed light shaping functionality, and that Petitioner fails to establish an adequate reason to combine Sarantos and Shie. See Prelim. Resp. 34–50. The arguments made by Patent Owner highlight the differences in the challenges in a manner that suggests the outcome of each case will turn on independent issues related to the application of the different prior art to different claim limitations, as presented in each case. We disagree with Patent Owner’s argument that the two petitions “are redundant” merely because Petitioner relies on Sarantos for some of the same limitations in both cases—here, despite some overlap in assertions regarding Sarantos, we determine that these petitions are not redundant of another, for the reasons discussed above. See Notice Response 2. Under these circumstances, we find the second petition at issue here to be non-redundant and materially different than that in the -243 IPR, which weighs in favor of considering the second petition here. Second, we are persuaded by Petitioner’s contention that it could not fit its arguments into a single petition due to word count restraints, and that the number and nature of claims challenged (25 claims in the -243 IPR and 23 claims here) supports the need for two petitions. See Notice 5; Pet. 88 (certifying word count of 13,991 words, just under 14,000 word limit); -243, Paper 2, 91 (certifying word count of 13,970 words). Patent Owner does not dispute Petitioner’s contention, but argues instead that Petitioner need not have challenged so many claims in its IPRs, when only five claims were asserted against it in the Delaware Litigation. Notice Response 5. We do not agree with that argument because petitioners are not required to challenge only those claims that are currently asserted against it in co-pending litigation. Third, we disagree with Patent Owner’s argument that consideration of the 23 challenged claims here is unnecessary given that Petitioner challenged all 25 claims of the ’159 patent in the -243 IPR. Id. at 5. That argument puts form over substance. Petitioner could have split up its two petitions differently such that a first petition could have addressed one subset of claims, e.g., claims 1–13, and the second petition could have addressed a different subset of claims, e.g., claims 14–25, with all prior art challenges directed to each set of claims appearing in both petitions. The end result would be the same as presented here, i.e., the number of claims challenged and the challenges raised against them would remain the same, even though it would more closely align with Patent Owner’s logic that a second petition must challenge claims not challenged in a first petition. We do not view the manner in which Petitioner divided its argument across these two petitions as a sound basis to deny institution of the second petition here. Fourth, we agree with Petitioner that the additional burden to the Board and Patent Owner, necessary to address the issues raised in this second proceeding, are minimized by the overlap with the -243 IPR and other proceedings. See Notice 3–4. For example, Sarantos, the primary reference in this proceeding, is used as a secondary reference (to teach the light shaping functionality of the claims) in the -243 IPR and has been at issue in several other IPRs. See id.; -243 IPR, Paper 2, 1. As such, the Board and Patent Owner are familiar already with Sarantos and its contents, mitigating against the burden of considering it here.” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 22

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “Based on the current record, we agree with Patent Owner that this claim limitation in claims 1 and 19 refers to different shapes rather than merely different sizes of the same shape. See Prelim. Resp. 14–16. At this stage of the proceeding, we determine that the language of the claim and the plain and ordinary meaning of “shape” seems to compel this result. As Patent Owner notes, two circles of different size still have the same circular shape. See id. at 14. We disagree, however, with Patent Owner’s argument that we should deny institution because Petitioner failed to apply this construction to the claims or intentionally withheld the parties’ district court agreement on this issue. Prelim. Resp. 12–13. Patent Owner does not point to any portion of the Petition that contends that different sizes amount to different shapes. See id. Patent Owner also seems to assume that Petitioner must have applied a construction that encompasses different sizes rather than different shapes when alleging that the prior art discloses the limitation, but Petitioner makes no such allegation in the Petition. See id. at 13, 16–17; Pet. 9–10. Patent Owner may ultimately prevail on this limitation. But, on the present record, we see no support for the argument that Petitioner implicitly used an incorrect construction and that the failure to expressly disclose the proper construction warrants denial of institution.” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,722,159
• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jul 9, 2024 · IPR2024-00243 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR on claims 1–25 on all asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “based on the Delaware Litigation. Prelim. Resp. 16–33; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum, issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).6 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00243 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10

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

    “At this point in the proceeding, we do not find it necessary, to expressly construe the term “opening” in order to reach a decision on institution and, under the circumstances, we do not find a basis for denying institution in Petitioner’s application of the claim language requiring an “opening.” But see infra Section F.3.b (identifying a potential issue that may benefit from record development on claim construction). Neither party offers an express construction of the term “opening” to the prior art. Pet. 5; Prelim. Resp. 12–15 (arguing inconsistency but declining to offer an express claim construction). On the present record, we are persuaded that the plain and ordinary meaning of “opening” encompasses Iwamiya’s optical filter 17 as mounted within light shielding frame 18. See Pet. 23–24; see infra at Section F.3.b. This is consistent with Patent Owner’s position, in the Delaware Litigation, that a solid material can provide an opening, and with the finding of the panel in the Final Written Decision in IPR2022-01291. Ex. 2035, 26 (Final Written Decision in IPR2022-01291); Ex. 2037 ¶¶ 463–465 (report by Petitioner’s expert, Dr. Sarrafzadeh in the Delaware Litigation, regarding non-infringement, reproducing an image that Petitioner represents is from Patent Owner’s expert, Dr. Madisetti, in which Dr. Madisetti labeled transparent material an “Opening in Dark-Colored Coating,” and in which Dr. Sarrafzadeh asserts that “every space that Dr. Madisetti . . . identified is” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “prosecution history of a parent application, this language should be construed to exclude “arrangements of two or three detectors.” Prelim. Resp. 15 (citing Ex. 2057, 322 (prosecution history of U.S. Patent Application No. 15/195,199 (“the ’199 Application”))). Patent Owner notes that the panel in IPR2022-01291 adopted this construction for “a nearly identical limitation in Claim 15 of the related ’745 Patent.” Id. at 15–16 (citing Ex. 2035, 109–112). On this preliminary record, we agree with Patent Owner that, due to statements made during prosecution of a parent application, this claim language should be construed to exclude arrangements of two or three detectors. During prosecution of the ’199 Application, application claim 1 was amended to recite: a “tissue measurement site . . . having an at least partially circular shape bounded by a light block”; the light block comprising “an annular ring having a circular shape”; and a “plurality of detectors . . . arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site.” Ex. 2057, 311. Patent Owner argued to the Examiner that the “array” limitation had support in the ’199 Application specification because: The ordinary meaning of the claim term “correspond” means to “have a close similarity; match or agree almost exactly” or “be analogous or equivalent in character, form, or function” or “represent.” New Oxford American Dictionary, 390 (3rd Edition 2010). Consistent with this exemplary definition and the originally-filed application, the phrase “arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site” . . . would be understood by a person having ordinary skill in the art as requiring a sufficient number of detectors such that, when arranged together in an array, can “match,” “have a close similarity,” or “represent” the “at least partially circular shape” of the irradiated portion of the tissue measurement site. . . . In order for the claimed “plurality of detectors” to “match” or “represent” an “at least partially circular shape” or an “annular shape,” the “plurality of detectors” must include sufficient detectors to represent such shapes. For example, six or more detectors could be arranged in an annular shape and meet the recited limitation. However, two detectors, for example, can only be arranged in a spatial configuration representing a line and three detectors, for example, can only be arranged in a spatial configuration representing a line or a triangle. Thus, when read in view of the originally-filed application, the recited “plurality of detectors” would be understood by a person having ordinary skill in the art as including a sufficient number of detectors to represent the desired geometric shape.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining “the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,722,159
• Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentable
  PTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand

  On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.

  RulingsRemand decision

  • RemandOther

    “with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Microsoft Corporation v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Jul 28, 2023 · IPR2020-00023 · APJ Scott Raevsky · IPR · Remand

  Claims 1–4, 6–14, and 16–21 are unpatentable as obvious, including over Apfel, Lillich, and Todd; claims 9 and 19 are also obvious over that combination with Pedrizetti.

  RulingsRemand decision

  • RemandOther

    “the Board misconstrued the claims to require . . . two separate acts in a certain order.” Id. at 5–6. Instead, the court found that “the claim cannot require that the steps be performed in the order written, but rather allows for the determining and comparing steps to be part of a single process.” Id. at 7. This is because “[a]ny construction that would narrow the determining and comparing steps to a certain order is not supported by either the claim language or the specification.” Id. Thus, the court reversed the Board’s “apparent construction.” Id. slip op. at 17

  • Skill levelOther

    “We apply the following assessment of the level of ordinary skill in the art: a person of ordinary skill in the art (“POSITA”) “would have had a Bachelor’s Degree in Electrical Engineering, Computer Science, or a related subject, and one or more years of experience working with configuring hardware and software components in electronic devices,” and “[l]ess work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa.” Final Dec. 7–8.” slip op. at 8

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

    “There are no claim construction issues on remand. We apply the Federal Circuit’s instruction that we must avoid “narrow[ing] the determining and comparing steps to a certain order.” Microsoft, slip. op. at 7.” slip op. at 9

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

    “We find Petitioner’s detailed rationale to combine, summarized above, persuasive and supported by the record evidence. In contrast, the Patent Owner Response sets forth a conclusory attorney argument against the combination. Namely, Patent Owner argues that the Petition fails to sufficiently articulate a motivation to combine for the following reason:” slip op. at 32

  Patent outcomesUS 6,467,088 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,467,088
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Instituted
  PTAB · May 25, 2023 · IPR2023-00384 · APJ Kristen L Droesch · IPR · Institution

  The Board instituted IPR on claims 9–12 on all petitioned grounds and granted Amazon’s motion to join the Meta IPR.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “delegation of authority . . . ) determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise [her] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. 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 and any preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Meta IPR met the “reasonable likelihood” standard of § 314(a). IPR2022-01064, Paper 7, 33. The Petition here presents the same patentability challenges as those for which a trial was instituted in the Meta IPR. See Mot. 1 (“[The] Petition is essentially a copy of the petition filed in the [Meta IPR].”); compare Pet. 5–73, with IPR2022- 01064, Paper 2, 7–73. According to Petitioner, the “Petition relies on the same grounds of unpatentability of claims 9, 10, 11, and 12 of the ’615 Patent that were instituted in the Meta IPR.” Mot. 3 (citing IPR2022-01064, Paper 7). In the present proceeding, Patent Owner did not file a preliminary response to dispute the merits of Petitioner’s patentability challenges. For the reasons set forth in the Meta IPR, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’615 Patent. See IPR2022-01064, Paper 7, 7–33. We accordingly determine that the Petition warrants institution under § 314, and turn to Petitioner’s request for joinder.” slip op. at 8

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “institution of the Meta IPR. See 37 C.F.R. § 42.122(b). Petitioner asserts that the Motion should be granted because the joinder would have little, if any impact on the Meta IPR. See Mot. 3–4. Petitioner also agrees to take an “understudy” role in the Meta IPR. See Mot. 4–5. Specifically, Petitioner agrees that, as long as petitioner Meta Platforms, Inc. [“Meta”] remains a party to the Meta IPR, Petitioner will not (1) “make any substantive filings and shall be bound by the filings of Meta, unless a filing concerns termination and settlement, or issues solely involving Petitioner”; (2) “present any argument or make any presentation at oral hearing unless an issue solely involves Petitioner, or when addressing Board approved motions that do not affect Meta”; (3) “seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving Petitioner, within the time permitted by Meta alone and with Meta’s agreement”; (4) “seek discovery from Patent Owner, unless issues arise that are unique to, and only applicable to, Petitioner”; and (5) “rely on expert testimony beyond that submitted by Meta unless and until Meta is terminated as party to the proceedings, prior to any necessary depositions.” Id. As mentioned before, Patent Owner did not file an opposition to the Motion. Because Petitioner will take an understudy role that will not impact the Meta IPR which was instituted on identical grounds, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Meta IPR.” slip op. at 9

  None
  Patents in suitUS 9,830,615
• Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution denied
  PTAB · Apr 13, 2023 · IPR2022-01506 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that de Heer, alone or with Cameron and Fuehren, rendered claims 1, 3, 4, 16, and 22 obvious.

  RulingsInstitution decision

  • 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 (2018); see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the 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 ’164 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We are persuaded Petitioner has not shown that de Heer teaches the recited association. Patent Owner is correct that the claim language requires the association of identifiers: the first set-top box identifier and the first online access identifier are associated. Ex. 1001, 24:65–66. Petitioner relies on the theory that de Heer’s IP address assignment teaches the claim limitation. But de Heer’s IP address, as noted by Patent Owner, corresponds to either a single IP address or to a range assigned to a particular household. See Prelim. Resp. 11–12. Having a common IP address or an IP address in an assigned range, however, does not itself teach the recited association of identifiers. De Heer does not describe the “common IP address” as a way to associate two identifiers. Indeed, as Patent Owner points out, de Heer determines that the client corresponds to a particular household without describing any associations being used by the database to locate the interaction data or the advertisement. See id. And Petitioner’s assertion that the advertising service associates the two devices merely because of a “common IP address” is insufficient by itself for de Heer to teach the claim limitation. See Pet. 26–27 (stating “that determining that STB and computer have a common IP address as “seen” by online advertising service 110, the online advertising service 110 associates the two devices”).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with Internet or similar network-related processes and/or systems including, for example, online content delivery, such as targeted advertisements, or a related field,” but that “[m]ore education can supplement practical experience and vice versa.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. At this stage of the proceeding, and given the lack of dispute concerning the proposed level of ordinary skill in the art, we adopt Petitioner’s assessment, which at this juncture appears reasonable given the specification of the ’164 patent and asserted prior art of record. B. slip op. at 8

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

    “Patent Owner agrees that claim construction is not necessary to resolve any issue for institution and that the plain and ordinary meaning of the claim language should be applied.” Prelim. Resp. 7. At this stage of the proceeding, there is no dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. 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))). C. slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,566,164
• Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Mar 13, 2023 · IPR2022-01324 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 9–12 unpatentable over Beyda alone or in combination with Narin and Detering.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, we determine based on the record before us that there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

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

    “We need not provide an explicit construction for “BT company,” nor an explicit construction for “third party computer system.” The parties agree that the claimed “BT company” and the claimed “third party” are distinct entities, in other words, the BT computer system is controlled by a distinct entity from the entity that operates the third party computer system controlling advertising space. See Pet. 22 (“‘BT company’ . . . means ‘an entity that targets ads for placement in advertising space controlled by another party . . . .’” (italics added), Ex. 1001, 14:13–15 (“a third party computer system controlling advertising space.” (italics added)); Pet. 33 (citing Ex. 1015, 44). The prosecution history and ’615 Patent Specification support the distinction between the BT company and third party. See Ex. 1001, 8:56–63, 9:23–46, 9:66–10:19; Ex. 1004, 102 (cited by Pet. 19).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’615 Patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user profile management and/or web-based targeted content delivery, or a related field. A person could have qualified with more formal education and less technical experience, or vice versa. Pet. 20 (citing Ex. 1002 ¶¶ 8–13). “Patent Owner does not challenge that definition.” Prelim. Resp. 4. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “Based on the record before us, Petitioner does not set forth sufficient argument and evidence to demonstrate that Beyda discloses “[a] computer system controlled by a behavioral targeting company (BT company),” as recited in the preamble, and “a third party computer system controlling advertising space,” as recited in the first limitation of claim 9. See Pet. 22–23, 27–39. As explained above in Section II.A., both parties agree that the BT company and third party are distinct entities. As highlighted above in Section II.A., Petitioner asserts that a “BT company” means “an entity that targets ads for placement in advertising space controlled by another party.” Pet. 22–23 (emphasis added). Petitioner does not direct us to where Beyda discloses a computer system controlled by a first entity that is distinct from the third party (i.e., another party) operating the computer system controlling advertising space. See Pet. 27–39; Prelim. Resp. 10. We agree with Patent Owner that the Petition’s assertion of a distinction between Beyda’s data warehouse and Beyda’s targeting engine, external content computer components performing the operations of the targeting engine and the data warehouse. See Pet. 33–34; Prelim. Resp. 9–10. Therefore, the Petition does not establish that Beyda’s data warehouse is controlled by a first entity that is distinct from the entity (i.e., another party, third party) operating Beyda’s targeting engine, external content servers, and web servers controlling advertising space. To the extent that the Petition asserts that Beyda inherently discloses “[a] computer system controlled by a behavioral targeting company (BT company)” and “a third party computer system controlling advertising space,” we do not agree. The Petition’s assertion that “[t]o a [person of ordinary skill in the art], the description of this functionality [(extractor program, targeting engine program, data warehouse)] existing on multiple servers teaches that one or more parties could operate portions of what Beyda describes as system 10” is insufficient because inherency cannot be established by possibilities and probabilities. Pet. 29 (bolding and underlining added); see Therasense, 593 F.3d at 1332. For these same reasons, we also find insufficient the Petition’s assertion that a person of ordinary skill in the art “would have further understood Beyda to teach that Beyda’s system embodiments could be controlled by a behavioral targeting company.” Pet. 32 (bolding and underlining added).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,830,615
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01209 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–4, 6, and 9–25 are unpatentable; claims 5, 7, and 8 are not shown unpatentable, based on anticipation by Kim and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “C. Claim Construction In inter partes reviews, we interpret claims under the same standard” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner fails to establish that Kim discloses “determining that the individual is a driver of the vehicle based at least in part on acceleration, forces, velocity, the at least one location point, and time.”” slip op. at 46

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “nexus and therefore fails to establish that any alleged evidence of objective indicia supports a finding of non-obviousness. Accordingly, we give Patent Owner’s reliance on objective indicia of non-obviousness no weight in our obviousness analysis.” slip op. at 65

  Patent outcomesUS 9,152,609 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,152,609
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01118 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–5, 7, 8, 10–16, and 18 are unpatentable; claims 6, 9, and 17 were not shown unpatentable, because the asserted prior art did not establish all limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “2. Discussion Petitioner argues that Kim discloses every limitation of claim 1, and” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “2. Discussion We begin our analysis by addressing Patent Owner’s asserted objective indicia of non-obviousness, and then turn to the merits of Petitioner’s specific obviousness challenges before us.” slip op. at 52

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “the combination of Kim and Baker discloses “comparing the at least one current geographic location to the first geographic location; setting the location of the individual to the individual is in an outside of the vehicle location, when a distance between the at least one current and the first geographic locations exceeds a predetermined threshold.” Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 6 would have been obvious based on Kim and Baker.” slip op. at 90

  Patent outcomesUS 8,527,140 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,140
• Meta Platforms, Inc. v. Almondnet, Inc.Instituted
  PTAB · Nov 30, 2022 · IPR2022-01064 · APJ Kristen L Droesch · IPR · Institution

  The Board instituted IPR on claims 9–12 on all petition grounds, finding a reasonable likelihood that claims 9–12 would be shown obvious over Meyer, Zeff, Edlund, and Fisher.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine there is a reasonable likelihood Petitioner would prevail in showing that claims 9–12 are unpatentable under 35 U.S.C. § 103 over Meyer, Zeff, Edlund, and Fisher. E. Challenge to Claims 9–12 over Meyer, Zeff, Edlund, Fisher, and Tittel” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web). A person could also have qualified with more formal education and less technical experience, or vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not comment on Petitioner’s definition at this time, and does not offer an alternate definition. See Prelim. Resp. For the purpose of this decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 8

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

    “claim construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. Petitioner asserts that it “does not believe an express claim construction is necessary at this time for this IPR.” Pet. 11. Patent Owner” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “For the purpose of this decision and based on Petitioner’s citations to Meyer, Zeff, and Mr. Schmandt’s testimony (Ex. 1002), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Meyer to include electronically transferring a price cap that the BT company is willing to pay. See Pet. 45–47; KSR, 550 U.S. at 418. Petitioner asserts that Zeff discloses that auctions are a good place to buy and sell excess ad inventory, advertisers can usually get pretty good prices on well-recognized sites, and it is a way to generate revenue on inventory that would otherwise go unsold. See id. at 46 (quoting Ex. 1004, 81; citing Ex. 1002 ¶ 149). Petitioner contends that using an auction and bidding system in Meyer could have resulted in a substantially lower price than the account provider might otherwise have paid. See id. (citing Ex. 1002 ¶ 148). According to Petitioner, [a]n ordinarily skilled artisan would have also appreciated that using an auction would have solved a problem for the service provider in deciding how much to charge for advertising. A known benefit of auctions is their ability to obtain the most appropriate price based on direct purchaser feedback through competitive bidding. Id. at 46–47 (citing Ex. 1002 ¶ 147).” slip op. at 24

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,830,615

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.