- Microsoft Corporation v. Litl, LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-01011 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 1–36, and the Board’s rules bar institution on disclaimed claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“November 22, 2021, after Petitioner filed its Petition, Patent Owner filed a statutory disclaimer, disclaiming claims 1–36 of the ’957 patent. Ex. 2008. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (explaining how Rule 42.107(e) operates in the case of a pre-institution disclaimer of all claims) (precedential). Because we cannot institute trial on disclaimed claims and Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review of claims 1–36. III. ORDER Accordingly, it is: ORDERED that the Petition is denied as to the challenged claims of the ʼ957 patent; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 2
Discretionary denialPatents in suitUS 8,577,957 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Nov 4, 2021 · IPR2021-00821 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As discussed below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“reasonable likelihood of showing any of challenged claims 1–9, 15–22, and 24–27 would have been obvious over the asserted prior art. Independent claims 1, 26 and 27 recite “wherein the graphical user interface comprises at least a plurality of views of digital media content.” Ex. 1001, 47:58–59, 50:66–67, 51:41–52:1. The independent claims further require transitioning “between the plurality of views.” Id. at 47:60, 51:1, 52:4–5. For all of its asserted grounds, Petitioner asserts that the prior art teaches a plurality of views because “[t]he Shimura-Tsuji Computer can orient the displayed content in either a normal view in the laptop mode or an inverted view in the easel mode based on the outputs of the rotation angle and gravity sensors.” Pet. 50; see id. at 82, 84. Petitioner further asserts that in its proffered combination, “image files . . . would be displayed in either a normal view in the laptop mode or an inverted view in the easel mode, thereby disclosing ‘the graphical user interface comprising at least a plurality of views of digital media content.’” Id. at 50–51; see id. at 82, 84. Similarly, Petitioner explains that its asserted prior-art combination teaches transitioning between views because “[w]hen a user configures the Shimura-Tsuji-Aldrich Computing System between the laptop and easel modes, the displayed content . . . would ‘transition between the plurality of views [normal and inverted views] in response.” Id. at 51. In short, Petitioner relies only on different orientations of the same displayed content to meet the claimed plurality of views. Thus, on the current record, Petitioner has not made a sufficient showing that the asserted combination of Shimura, Tsuji and Aldrich teach or suggest the claimed plurality of views of digital media content and transitioning between those views, as required in all independent challenged claims.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“As Patent Owner explains, the ’888 patent discusses views extensively. See Prelim. Resp. 38–39 (providing numerous citations to the ’888 patent). In particular, the ’888 patent describes many examples of views that each organize content in a different way. See, e.g., Ex. 1001, Figs. 5 (album view), 7A (single album view), 8 (time view), 16 (a view including cards); see also id. at 21:35–23:58 (describing the ’888 patent’s figures). We agree with Patent Owner that, when discussing views, the ’888 patent consistently refers to different ways of organizing content. See Prelim. Resp. 35–44; see also, e.g., Ex. 1001, 21:14–15 (explaining that “[e]ach view may offer the user particular interaction options, features and benefits”), 21:16–19 (time view organizing content chronologically), 21:19-22 (album view organizing content by album), 22:59-64 (single album view showing previews of photographs). But, as Patent Owner notes, “[t]he specification never describes two orientations of the same organization of displayed content as different ‘views.’” Prelim. Resp. 37. Instead, the ’888 patent separately addresses the display’s “orientation,” which, according to the specification, is achieved simply by rotating the display. Ex. 1001, 10:27–30 (“the plurality of orientations comprises a first orientation relative to the longitudinal axis and a second orientation relative to the longitudinal axis,”), 10:46–49 “(the second orientation is 90 degrees relative to the first orientation, and . . . the third orientation is 180 degrees relative to the first orientation”), 10:57–11:8 (characterizing the display’s “orientation” as a “degree of rotation”). The ’888 patent also expressly distinguishes between displayed content and its orientation in describing that “display content and/or display orientation of the portable computer may vary when the portable computer is configured from the laptop mode into the easel mode.” Id. at 37:6–9. The ’888 patent, however, does not refer to merely changing the visual display’s orientation as changing views. “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Philips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). Consistent with the ’888 patent’s specification, for purposes of this Decision, we construe “a plurality of views of digital media content” as referring to a plurality of ways of organizing visual representations of computer content. The recitation is distinct from merely changing the display’s orientation.” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,612,888 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Nov 2, 2021 · IPR2021-00800 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution on all grounds because the Petition’s deficient, unclear arguments did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
- BurdenDenied
“Although it might be possible for us to guess at the support Petitioner intended to cite and to wade through the Petition to separate the teachings of the references, the Ward testimony, Petitioner’s characterizations of the evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner is required to “specify where each element of the claim is found in the prior art patents or printed publications relied upon” and to both “identify[] specific portions of the evidence that support the challenge” and explain “the relevance of [that] evidence to the challenge raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). Petitioner has not complied with our rules. To hold otherwise would require us to “play archaeologist with the record,” which we decline to do. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). Based on all these deficiencies, the Petition fails to specify sufficiently where the limitations of the challenged claims of the ’154 patent are taught or suggested by any of the asserted references. It also fails to provide a sufficiently detailed explanation of the significance of the citations to the asserted references and the Ward Declaration. These failures violate the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” under 35 U.S.C. § 314(a), we determine that Petitioner has not made such a showing.” slip op. at 18
NonePatents in suitUS 10,289,154 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Oct 21, 2021 · IPR2021-00822 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Petitioner did not show that Shimura and the other references taught or suggested the required frame mode in claims 1–16 and 18–22.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As discussed below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Petitioner proposes a claim construction for “content mode,” as well as several related terms, i.e., “first content mode,” “second content mode,” and “mode(s) of content.” Pet. 16–18. We determine we need not explicitly construe those terms to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Figure 26 and the accompanying text characterize frame mode as having the keyboard face down on a surface with the screen face up, and the base and display components forming a non-zero angle 134, similar to easel mode’s inverted “V.” See id. at 16:6–13.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“reasonable likelihood of showing the asserted prior art would have rendered obvious the subject matter of challenged claims 1–16 and 18–22. Independent claims 1, 10, and 18 require a “frame mode in which the main display component is oriented towards the operator, the base contacts a substantially horizontal surface, and the keyboard faces the substantially horizontal surface.” Ex. 1001, 17:47–51, 18:66–19:2, 20:27–30, Certificate of Correction. For all of its asserted grounds, Petitioner relies on Shimura’s Figure 4 for teaching the claimed “frame mode.” Pet. 57, 87, 102. We agree with Patent Owner that Shimura’s Figure 4 does not disclose or suggest a frame mode. See Prelim. Resp. 27–32.” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,624,844 - Lenovo (United States) Inc. v. Litl LLCInstitution deniedPTAB · Oct 21, 2021 · IPR2021-00786 · APJ Brian D Range · IPR · Institution
The Board denied institution because Lenovo did not show a reasonable likelihood that claims 1–20 would be unpatentable over the asserted combinations of Shimura, Tsuji, and Pogue.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As discussed below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“above. As we explain in the summary of the ’715 patent provided in Section II.B, supra, the purpose of the ’715 patent is to better organize “more and more features” provided by “feature packing,” so that the typical computer user can better take advantage of features offered. Id. at 1:40–2:44. The ’715 patent explains that “different views [that] present different organizations of the interface elements and in some example[s] display only certain ones of the modes of content in order to reduce the number of options a user must navigate to accomplish an objective.” Id. at 2:45–58. As Patent Owner explains, the ’715 patent discusses views extensively. See, e.g., Prelim. Resp. 29–33 (providing numerous citations to the ’715 patent. In particular, the ’715 patent describes many examples of views that each organize content in a different way. See, e.g., id. at Figs. 2 (home view), 3A (web page view), 5 (quick access view), 6 (bookmark view), 20A (channel page view), 21 (channel full view), 23 (channel view); see also id. at 12:48–15:15 (summarizing the ’715 patent’s figures). We agree with Patent Owner that, when discussing views, the ’715 patent consistently refers to different ways of organizing content. Prelim. Resp. 29– 33.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As Patent Owner argues, the Petition relies only on different orientations (such as a “normal view” and an “inverted view”) of a single organization of displayed content, to meet claim 1’s views recitation. Id. at 24–25. For example, Patent Owner points out that the Petition considers Shimura’s display of the word “PATENT” right-side-up (normal view) and upside-down (inverted) as meeting the recited “plurality of views.” Id. at 26– 27 (citing Pet. 49–50, 54–55). As we explain above in our claim construction, however, inverting or re-orienting a single way of organizing displayed content does not create a “plurality of views of a plurality of visual representations of computer content” as claimed and described in the ’715 patent. As such, Petitioner’s implicit “construction of ‘plurality of views’ as reading on different orientations of the same organization of displayed content is wrong because it is inconsistent with every embodiment of a ‘plurality of views’ described in the specification.” Id. at 25, 38–41. Indeed, Patent Owner correctly explains that the ’715 patent addresses reorientation of a display but reorientation does not result in the views recitation. Patent Owner makes this distinction by arguing: [in] the claims and the specification of the ’715 Patent—a “view” is a way of organizing displayed content. Ex. 1001, Abstract, 2:54–58 (“[t]he different views present different organizations of the interface elements”); 3:26–28 (“the plurality of views are configured to organize modes of content into different views”); 7:25–27, 9:55–57 (a “plurality of views” of computer content as recited in claims 1, 17 and 20, is a plurality of ways of organizing displayed content). . . . the specification also describes re-orientating the same display organization about the computer’s longitudinal axis to ensure it is right-side-up, but uses different terminology to describe that re-orientation and never refers to two different orientations of the same organization of displayed content as different views. . . . The specification makes clear “views” are particular ways of organizing displayed content—not different orientations of a single organization of displayed content. Prelim. Resp. 27–28; see id. at 29–37, 42–44. We find that Patent Owner’s explanation of this distinction is best supported by the text of the ’715 patent. Thus, on the current record, Petitioner has not made a sufficient” slip op. at 25
Claim construction§ 103 obviousnessPatents in suitUS 9,880,715 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.All claims unpatentablePTAB · Oct 19, 2021 · IPR2020-00846 · APJ David C Mckone · IPR · Final written decision
Claims 1, 2, 4–7, 9, 10, 13, and 14 are unpatentable as obvious over the stated prior-art combinations.
RulingsFinal written decision- BurdenNew argument disregardedDecided for petitioner
“According to our rules, “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). For example, the Board has explained that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 35–36 (November 2019) (“TPG”)3 (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–48). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology 7 The complete record does not include allegations or evidence of objective indicia of nonobviousness. described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“proposed combination with Kovatch. PO Resp. 37. According to the Federal Circuit, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333–34 (Fed. Cir. 2012) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)) (alteration in original). However, “the ‘mere disclosure of alternative designs does not teach away.’” Id. at 1334 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Indeed, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” Id. (citing Gurley, 27 F.3d at 553). Specifically, Patent Owner (PO Resp. 37), points to disclosure in Neal describing disadvantages of a keyword search strategy (e.g., “users must be familiar with the appropriate key word terms that are likely to yield the desired data records”) and disadvantages of a classification search strategy (e.g., “users may not always anticipate the proper classification of certain records, and may search the wrong categories for their desired database record”). Ex. 1007, 2:16–65. Neal then describes a “preferred embodiment” in which “the system manager will expand the scope of the search strategies from ‘exact’ string matches, along a continuum of search methodologies, including perhaps fuzzy logic strategies.” Id. at 7:14–17. According to Neal, “[t]he purpose of expanding the search strategies is to avoid the situation wherein the search fails to identify the desired item from any data set, and thereby drops into logical block 222 a negative search result is reported to the user.” Id. at 7:28–32. Patent Owner argues that “Neal advocates for employing a sequence of search algorithms from the narrowest to the most broad.” PO Resp. 38 (citing Ex. 1007, 7:56–58; Ex. 2059 ¶ 124). Patent Owner contends that Neal teaches away from a combination “that employs a single keyword matching search strategy.” Id. Patent Owner argues that Petitioner’s combination of Kovatch and Neal results in a system that only sequentially searches datasets using a single keyword matching search strategy, and not the cascading sequence of search methodologies described by Neal. Id. at 37–39. We do not agree with Patent Owner that Neal teaches away from a system that employs a single keyword matching search strategy. Indeed, Neal’s preferred embodiment expressly contemplates such a system. For example, Neal describes employing a first “exact string search” methodology to search a first data set (Figure 2, block 206). Ex. 1007, 6:34– 46. This appears to be what Patent Owner considers a “single keyword matching search strategy.” PO Resp. 37–38. Neal describes that if this search of the first data set does not yield a match, the system searches a second data set using a second search methodology (Figure 2, block 210). Ex. 1007, 6:47–52. However, in the preferred embodiment there is no requirement that the second search methodology in 210 must be different from the first search methodology in 206. For example, if the first preferred supplier did not yield an exact string match to the input search term, the same search methodology could be applied to a second preferred supplier’s catalog. Id. at 6:59–65. Thus, Neal expressly teaches using a single keyword search strategy on a first dataset and the same keyword search strategy on a second dataset, without necessarily employing a cascading sequence of different search methodologies. See Reply 19.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“advertisements while waiting for information to be retrieved; rather, it first retrieves the requested information and then generates an audio stream with both the commercials and retrieved information. Reply 22–23 (citing Ex. 1005, 14:1–8, 18:1–15; Ex. 1057 ¶ 18). Petitioner’s characterization of Kovatch is correct (and Patent Owner’s incorrect). Kovatch’s system first navigates to a destination and retrieves requested information (step 6), then generates commercials (step 8), then intermixes the commercials and information (step 9), and finally returns speech to the user (step 10). Ex. 1005, 14:1–8. We find unavailing Patent Owner’s argument that, when combined, Neal’s teachings would have an adverse impact on Kovatch’s generation and presentation of advertisements.” slip op. at 45
Patent outcomesUS 7,076,431 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 7,076,431 - PTAB · Oct 19, 2021 · IPR2020-00847 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1, 2, 4–7, 10, and 14 are unpatentable as obvious over Kurganov-262 and Chakrabarti; the Board did not reach the alternative grounds.
RulingsFinal written decision- BurdenDecided for petitioner
“Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. Because Patent Owner focused its arguments solely on the issue of whether Kurganov-262 is prior art, Petitioner’s assertions regarding the substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted on the complete record. PO Resp. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. We have reviewed the disclosures of Kurganov-262 and Chakrabarti relied on by Petitioner, as well as the explanations provided by Mr. Lipoff, and are persuaded that the limitations of claim 1 are disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the skilled artisan would have been motivated to apply Chakrabarti’s techniques for web crawling to Kurganov-262’s system, and would have had a reasonable expectation of successfully doing so, thus arriving at the subject matter of claim 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ʼ084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person having ordinary skill in the art as having “a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA would understand that” polling or pinging “describes a process where by existing and new devices and/or websites are discovered,” and that “‘polling’ includes asking for information from a website, including a listing of URLs or asking a website of a search engine to provide new website information.” Id. at 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. PO Resp. 33–34. These declaration paragraphs provide little detail beyond what is argued in the Patent Owner Response. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ʼ996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine that Kurganov-262 is available as prior art against the challenged claims. On the complete record, Patent Owner fails to direct us to specific disclosure within the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device configured to periodically search the network(s) to identify new web sites and add such new web sites to the plurality of web sites that are accessed. See PO Resp. 31–34.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,451,084 - PTAB · Sep 24, 2021 · IPR2021-00646 · APJ Michelle N Ankenbrand · IPR · Institution
The Board instituted IPR on claim 20 based on a reasonable likelihood that Ter-Hovhannisyan anticipates or renders it obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). 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 Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect claim 20. Accordingly, we institute an inter partes review.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“After the Petition was filed, Patent Owner disclaimed claims 1–19 of the ’816 patent. See Prelim. Resp. 3; Ex. 2001. Thus, this decision addresses only claim 20 of the challenged patent. 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) . . . disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’816 patent would have [had] at least a bachelor’s degree in an engineering discipline and approximately three years of experience working on LED lighting technology and designs, including experience with thermal design and heat dissipation.” Pet. 7 (citing Ex. 1003 ¶ 53). Petitioner further asserts that “[r]elevant work experience could substitute for formal education and post-graduate education could substitute for work experience.” Id. (citing Ex. 1003 ¶ 53).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ter-Hovhannisyan discloses the annulus limitation, we consider claim 20’s remaining limitations. Petitioner asserts that Ter-Hovhannisyan discloses or would have rendered obvious claim 20’s remaining limitations. Pet. 43–44, 46 (citing Pet. 12, 20–28, 40–42 (Petitioner’s analysis for similar claim limitations recited in claim 1)). At this stage of the proceeding, Patent Owner does not separately address these limitations. We have reviewed Petitioner’s arguments (in the context of claim 20) and Dr. Bretschneider’s testimony and find that Petitioner shows sufficiently that Ter-Hovhannisyan anticipates or would have rendered obvious claim 20. Thus, Petitioner demonstrates a reasonable likelihood of prevailing in its challenge.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,985,816 - Apple Inc. v. Parus Holdings, Inc.No claims unpatentablePTAB · Sep 9, 2021 · IPR2020-00687 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–7, 10, and 14 were not shown unpatentable because Petitioner did not establish that Ladd’s speech-recognition device recognizes speech without predefined voice patterns.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The parties agree that this term at least requires a “speech recognition device that recognizes spoken words without . . . using predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute regarding whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’084 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“least a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies. Pet. 7 (citing Ex. 1003 ¶ 28). On the complete record, we adopt Petitioner’s definition of one of ordinary skill in the art for essentially three reasons. First, Patent Owner does not contest Petitioner’s assertion. See generally PO Resp. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Asserted Obviousness of Claims 1–7, 10, and 14 (Grounds 1–3)” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“speech-recognition device” discussed supra, this limitation requires a “speech recognition device that recognizes spoken words without using predefined voice patterns.” A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner must demonstrate obviousness by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; Patent Trial and Appeal Board Consolidated Trial Practice Guide 79 (November 2019) (“TPG”) (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the proper scope of reply or sur-reply, it may request authorization to file a motion to strike.” Id. at 80. Patent Owner did not file a motion to strike. Patent Owner’s Motion to Exclude does not address the admissibility of Dr. Terveen’s testimony. Rather, it argues that the testimony exceeds the proper scope of reply evidence, either because it does not respond to the Patent Owner Response or because Petitioner did not follow our rules in seeking to submit supplemental information. See generally Mot. Excl. Thus, we agree with Petitioner that Patent Owner’s Motion to Exclude does not state a proper basis for excluding evidence and, therefore, we deny the motion for that reason.” slip op. at 34
Patent outcomesUS 9,451,084 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,451,084 - Apple Inc. v. Parus Holdings, Inc.No claims unpatentablePTAB · Sep 9, 2021 · IPR2020-00686 · APJ David C Mckone · IPR · Final written decision
Claims 1–7, 9, 10, 13, 14, 18–21, and 25–30 were not shown unpatentable because the asserted combinations did not establish the claimed speaker-independent speech recognition device.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“predefined voice patterns,” but disagree as to whether it should require a device that recognizes spoken words “without adapting to individual speakers.” PO Resp. 21 (“The proper construction of ‘speaker-independent speech recognition device’ is consistent with the construction issued by the Western District of Texas, though it does not include all of that court’s construction, and requires at least ‘speech recognition device that recognizes spoken words without using predefined voice patterns.’”); Reply 2 (“For purposes of this IPR, Apple submits the Court’s construction should be applied.”). The dispute as to whether the term should preclude adapting to individual speakers does not impact any issue in this proceeding, and Petitioner has agreed to Patent Owner’s construction in this proceeding, so long as we do not resolve the dispute over adapting to individual speakers. Tr. 12:24–13:4 (“JUDGE McKONE: So you’d be happy if we essentially adopted Parus’s construction with a footnote or some kind of note that we’re not resolving the issue of adapting to individual speakers? MS. BAILEY: That would be fine for purposes of this IPR, Your Honor.”). We adopt the parties’ agreed approach. For purposes of this proceeding, “speaker-independent speech recognition device” means “speech recognition device that recognizes spoken words without using predefined voice patterns.” This is consistent with the ’431 patent’s statement (relied on by both parties) that “[t]he voice browsing system recognizes naturally spoken voice commands and is speaker-independent; it does not have to be trained to recognize the voice patterns of each individual user. Such speech recognition systems use phonemes to recognize spoken words and not predefined voice patterns.” Ex. 1001, 4:38–43; see also PO Resp. 21–22 (citing Ex. 1001, 4:34–43);” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Skill in the Art Petitioner, relying on the testimony of Dr. Terveen, contends that a person of ordinary skill in the art “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies, such as web-based information retrieval systems.” Pet. 6 (citing Ex. 1003 ¶ 28). Patent Owner does not contest Petitioner’s proposal or offer an alternative. Also, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt Petitioner’s proposed level of skill.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude should be directed to the admissibility of evidence. See 37 C.F.R. § 42.64; TPG 79 (“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). According to the Trial Practice Guide, a motion to exclude is not a vehicle to “address arguments or evidence that a party believes exceeds the proper scope of reply or sur-reply.” TPG 79. Rather, “[i]f a party believes that a brief filed by the opposing party raises new issues, is accompanied by belatedly presented evidence, or otherwise exceeds the” slip op. at 41
- Strike new argumentNew argument disregardedDecided for patent owner
“corresponding to an unclaimed second step not part of speech recognition would be an impermissible new argument presented for the first time in the Reply. As explained in the Board’s Trial Practice Guide, Petitioner’s change in direction exceeds the proper scope of a reply: Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief. 37 C.F.R. § 42.23, except as noted above. “Respond,” in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered. The Board is not required to attempt to sort proper from improper portions of the reply or sur-reply. Patent Trial and Appeal Board Consolidated Trial Practice Guide 74 (November 2019) (“TPG”).7 If Petitioner is arguing that Ladd’s description of voice patterns and speech patterns is not describing speaker-independent speech recognition, then Petitioner’s Reply does not simply respond to the Patent Owner Response or attempt to crystalize the issues in dispute. Rather, the Petition expressly relied on certain disclosure in Ladd to show the functionality claimed in limitation 1[c], while the Reply attempts to re-cast that same disclosure as describing functionality separate from that of limitation 1[c]. This would be a new theory.” slip op. at 29
Patent outcomesUS 7,076,431 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,076,431
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.