- PTAB · Nov 22, 2019 · IPR2019-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 20 and 69 because the petition was time-barred under § 315(b), finding Amazon was in privity with at least one petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Worlds Inc. v. Bungie, the context of a real party in interest analysis); see also Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 4−5 (PTAB Jan. 24, 2019) (precedential) (placing “the burden on IPR petitioners to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a privy more than a year before a petition is filed”). “The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner.” Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019) (emphases added). In the Federal Circuit’s view, the language of the statute makes privity and real parties in interest relationships that may arise “before institution relevant to the § 315(b) time-bar analysis.” Id. at 1315 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“More importantly, upon consideration of the parties’ contentions and evidence before us, we similarly determine that Amazon is a privy of several Petitioner Entities under the Taylor framework. See Taylor, 553 U.S. at 894−95. Here, at least the second, third, and fifth categories of Taylor support our determination that these Petitioner Entities are in privity with Amazon, a time-barred party. Second Taylor Category As to the second Taylor category, the record shows a pre-existing substantive legal relationship between Amazon and several Petitioner Entities—namely, PayPal, Strava, Valassis, Upwork Global, and RetailMeNot. The evidence of record shows that the relationship between Amazon and these Petitioner Entities went beyond typical transactions between supplier and buyer because there exists a substantive legal relationship between them that is defined by legal obligations and a sufficient degree of commonality of interest.” slip op. at 20
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Nov 21, 2019 · IPR2019-01093 · APJ Denise M Pothier · IPR · Institution
The Board denied institution for challenged claims 46, 48, 52, and 55 because Amazon was a privy of at least one petitioner and its 2011 service made the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“B. Principles of Law Section 315(b) of Title 35 of the United States Code provides: (b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioner entities “bear[] the ultimate burden of persuasion to show that [their] petitions are not time-barred under § 315(b) based on a complaint served on an alleged [privy of Petitioner entities] more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). “[S]ervice of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 6 (PTAB Aug. 23, 2019) (precedential); id. at 24. This one-year trigger under 35 U.S.C. § 315(b) also applies to Petitioner entities’ privies or real parties in interest. See id. at 14 (“[T]he text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.”) (quoting Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1332 (Fed. Cir. 2018) (en banc in part)).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“We recognize that the mere existence of an indemnity agreement might not be enough to find privity. See, e.g., WesternGeco, 889 F.3d at 1321. However, as is clear from the MDL record (summarized above), Amazon performed pursuant to the indemnity agreement and secured summary judgment related to infringement of the ’544 patent in favor of several of Petitioner entities. See, e.g., Ex. 2012, 3 (including the ’544 patent as part of the infringement action), 9 (listing “Category 3” infringement), 14 (“As to the effect of the indemnification agreement, it is undisputed that: . . . (2) sometime following PersonalWeb’s filing of complaints in the customer cases, Amazon agreed to indemnify its customers”), 16 (“Amazon assumed the indemnification of its customers prior to the consolidation of the MDL, and Amazon has not turned away any customer who has asked for indemnification”), 23 (finding that claim preclusion applied because, inter alia, the 2011 Amazon case involved the same parties or privies as the MDL proceeding), 26 (granting the DJ action “with respect to the Category 3 allegations involving use of . . . S3”). Thus, unlike in WesternGeco, in which the existence of an obligation to indemnify was ambiguous and undefined and, therefore, insufficient, 889 F.3d at 1321, Amazon actually assumed control of the lawsuits involving its customers, defended them, and secured relief on their behalf. We find this to be much stronger evidence of a pre-existing legal relationship than that shown in WesternGeco.” slip op. at 18
Discretionary denialPatents in suitUS 7,945,544 - Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
Patent outcomesUS 9,868,985 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,868,985 - Unified Patents Inc. v. Flectere LLCRehearing deniedPTAB · Aug 22, 2019 · IPR2019-00479 · APJ Stephen E Belisle · IPR · Rehearing
The Board denied Unified Patents’ rehearing request and left in place the denial of institution because it had not overlooked or misapprehended petition arguments or evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews a decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended 2 or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInherency not foundNot shown unpatentable
“disclosure in Tondevold of [such a feature].” Dec. 13–14 (“[W]e do not find in the portions of Tondevold cited by Petitioner a description of host computer 40 disseminating new or updated forms to nodes 42.”). Even in the Request, Petitioner does not state with particularity which specific disclosure in Tondevold explicitly discloses sending a data-entry form with verification logic through a computer network to a remote computer. See Request 12–14. To the extent that Petitioner relies on Tondevold’s disclosure of “allowing forms to be created and sent to and from a number of locations” (Request 13; Ex. 1003, 6:41–44 (emphasis altered)), such reliance is misplaced. Indeed, Petitioner proffers that sentence fragment out of context—in context and in the same paragraph, the “forms” being sent “to and from” locations are not actually data-entry forms with verification logic, but merely files of raw data corresponding to the blank fields in forms. See Ex. 1003, 6:37–61 (“[O]nly the data file of raw data corresponding to the blank fields in a form . . . must be sent between any node 42 and the host computer 40 to pass a form.”). Second, Ground 1 in the Petition relies on anticipation by Tondevold. To serve as an anticipatory reference, “the reference must disclose each and every element of the claimed invention, whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference . . . . Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given 9 set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In the Petition, Petitioner did not argue that Tondevold inherently discloses sending a dataentry form with verification logic through a computer network to a remote computer. See Pet. 36–40. In the Request, Petitioner now argues that in Tondevold “the form and form definitions must be sent to the node in the first place” (Request 14 (emphasis added)), but even here Petitioner stops short of arguing that Tondevold necessarily discloses sending a data-entry form with verification logic through a computer network to a remote computer. Indeed, Tondevold could send data-entry forms with verification logic from the host to remote computers by more than one means, such as, for example, by distributing portable storage devices for manual upload or through a computer network. As stated in the Decision, the Board did not find in the portions of Tondevold cited in the Petition (or Request) an explicit description of how Tondevold’s host computer 40 disseminates new or updated forms to nodes 42 (Dec. 14), and Petitioner has neither argued nor shown such a feature to be inherent in Tondevold.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“paragraphs that the invention of claim 1 would have been obvious because it combined prior art elements according to known methods to yield predictable results. See Request 5–8. We disagree. In the Petition, as the above paragraphs reveal, Petitioner did not argue with particularity, for example, that the alleged combination of familiar elements does no more than yield “predictable results.” We are not persuaded that Petitioner’s generic use of the phrase “strong suggestion” invoked this argument. Petitioner also argues that its expert presented evidence of predictable results. Request 7 (citing Ex. 1002 ¶¶ 163–164). Nevertheless, Petitioner did not make this argument in the Petition and, instead, cited large portions of their expert’s declaration without specificity. Pet. 71 (citing, inter alia, Ex. 1002 ¶¶ 156–166). See also 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Second, Petitioner contends it argued in the above Petition paragraphs that the invention of claim 1 would have been obvious because it applied a known technique (Whitmyer) to a known device ready for improvement (Sheffield) to yield predictable results. See Request 8–10. We disagree. In the Petition, as the above paragraphs reveal, Petitioner did not argue with particularity, for example, that application of the alleged known technique does no more than yield “predictable results.” Petitioner again appears to be arguing that we failed to consider arguments made in the” slip op. at 7
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,415,284 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,577,359 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16
Claim construction§ 103 obviousnessPatents in suitUS 8,577,358 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,504,007 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Jun 5, 2019 · IPR2018-01685 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution because the petition did not persuasively map Barriga-Caceres to the construed federated-environment limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Petitioner’s stated basis for rehearing is that we “misapprehended or overlooked that Barriga-Caceres’s disclosure would” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–2, 4–11, and 15–20 (“the challenged claims”) of U.S. Patent No. 7,631,346 (Ex. 1001, “the ’346 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). On April 11, 2019, we entered a Decision on Institution (Paper 10, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’346 patent on any of the asserted grounds. Dec. 22. Petitioner timely filed this Request for Rehearing of the Decision. Paper 11 (“Request” or “Req. Reh’g.”).” slip op. at 2
- BurdenDecided for patent owner
“(“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). However, as the Supreme Court has counseled, “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’ [35 U.S.C.] § 312(a)(3). From the outset, we see that Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355, 200 L. Ed. 2d 695 (2018). Although we are sympathetic to the timing of the Federal Circuit’s construction, Petitioner does not argue persuasively, or provide authority to the effect, that we should reformulate the Petition to fit this claim construction. The additional explanation Petitioner now offers, as discussed below, concerning how the teachings of Barriga-Caceres are mapped to the “federated computing environment” limitation using the claim construction from the Federal Circuit, was not presented in the Petition, and Petitioner did not attempt to make it available to us before our statutory deadline. That is, we could not have misapprehended or overlooked arguments and evidence not presented in a cohesive manner in the Petition.” slip op. at 6
NonePatents in suitUS 7,631,346 - Microsoft Corporation / Microsoft Mobile Inc. v. Koninklijke Philips N.V.All claims unpatentablePTAB · Apr 10, 2019 · IPR2018-00023 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–12 are unpatentable under §103 over the six Anwar-based grounds using Narutaka and, depending on the claims, Astala, Korhonen, and/or Westerman.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Petitioner also directed us to paragraph 145 of Dr. Terveen’s declaration testimony. Id. (citing Ex. 1004 ¶ 14616). In that paragraph, Dr. Terveen testifies that an ordinarily skilled artisan “would have found it obvious to stop the scrolling in Anwar’s system when the end of the document is reached if that happened before a finger touch,” and that “[t]his would have been expected.” Ex. 1004 ¶ 145. Dr. Terveen further testifies in the same paragraph that “[a] user would have found it strange if Anwar’s system caused the document to loop back to the beginning or scroll through a series of blank pages.” Id. Additionally, Dr. Terveen testifies that adding an end-of-scroll signal would have been “trivial” because “Anwar’s system already allows the document to simply stop moving upon release,” and “a similar flag could be set to detect when the parser/renderer hits the end of file signal in the internal representation file.” Id. We credit Dr. Terveen’s declaration testimony based on the teachings of Westerman, a prior art reference on which Petitioner relies for a different ground asserted in the Petition. In particular, Westerman explicitly teaches using an end-of-scroll signal upon scrolling to the end of a document. Ex. 1007, 72 (“[T]he host computer can send a signal instructing motion continuation mode to be canceled if the cursor reaches the edge of the screen or end of a document.”) (quoted by Pet. 49).” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Because claims 1, 7, and 8 are directed to systems, we construed this claim term as requiring sensing for each of the signals in the recited group and terminating scrolling upon whichever signal is sensed first. Id. at 7–8.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“feature of sensing touch duration would have provided that “additional information” for the system to distinguish between a scrolling command and some other command, such as moving to the next document. Pet. 40; Pet. Reply 6 (“Sensing the duration of a touch would have solved the problem of differentiating between touches intended to scroll and those intended as another command.”); see also Ex. 1006 ¶¶ 18–20 (disclosure in Narutaka of using touch duration to distinguish between a scroll instruction and some other instruction). Accordingly, as discussed above, providing the ability to sense touch duration in order to distinguish between commands supports the legal conclusion of obviousness. It is not necessary for Petitioner to explain further whether an ordinarily skilled artisan would have chosen to combine Anwar and Narutaka over other options for distinguishing between different commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulate reasoning with some rational underpinning to support the legal conclusion of obviousness.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 424 (2007) (“The Court of Appeals considered the issue too narrowly by . . . asking whether a pedal designer writing on a blank slate would have chosen both Asana and a modular sensor similar to the ones used in the Chevrolet truckline . . . . The proper question . . . was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asana with a sensor.”). We note Patent Owner’s contention that Anwar already includes functionality to distinguish between commands, for example, using a different number of clicks, a different style of touch gesture, and a different initial touch location, and that “Anwar provides no suggestion that additional functionality beyond that already present in Anwar’s interface is required to recognize a known command.” PO Resp. 36, 41. Although Anwar may include functionality to distinguish between commands, Anwar does not detail how to distinguish between different commands, such as moving to the next document and scrolling, that are mapped to the same gesture. See Ex. 1005, Figure 12F (dragging the document toward the left to move to the next document), Figure 13B (dragging the document toward the left to initiate scrolling). Patent Owner suggests applying a triple-click-and-drag gesture, consistent with Anwar’s teaching about using a different number of clicks, to distinguish between these two commands. PO Resp. 38. That may be a reasonable option, based on Anwar’s teachings, but it does not preclude other options, such as those advanced by Petitioner and taught by Narutaka. Anwar does not limit its system to using a different number of clicks, a different style of touch gesture, or a different initial touch location for distinguishing between commands. See Ex. 1005, 15:45–47 (“Those skilled in the art will know or be able to ascertain using no more than routine experimentation, many equivalents to the embodiments and practices described herein. . . . [I]t will be understood that the invention is not to be limited to the embodiments disclosed herein.”); see also KSR, 550 U.S. at 420 (“The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.”). As discussed above, Petitioner has provided reasoning that sufficiently supports the legal conclusion of obviousness. Accordingly, we find that Patent Owner’s argument does not adequately rebut Petitioner’s showing that it would have been obvious to modify Anwar to include Narutaka’s feature of sensing touch duration.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“In light of Petitioner’s demonstrated rationale for combining Anwar and Narutaka, we find that Patent Owner does not adequately rebut Petitioner’s obviousness argument. Patent Owner essentially alleges tradeoffs, but “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). The relative advantages (e.g., expanding document review options) and disadvantages (e.g., added interface complexity) of adding a new type of feature, namely, touch duration sensing, to an interface that already has built into it various other features amount to a tradeoff, a decision well within the level of an ordinarily skilled artisan. Dr. Terveen need not “articulate such analysis” underlying the decision, as Patent Owner contends (see PO Sur- Reply 14–15). See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (obviousness analysis “may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”). Moreover, we note that “just because better alternatives [may] exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Patent Owner does not point to evidence that teaches away from Petitioner’s proposed combination, nor does it point to evidence that the proposed combination would destroy the operation of Anwar’s system. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (a reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed”).” slip op. at 29
Patent outcomesUS 6,690,387 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,690,387 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Apr 10, 2019 · IPR2018-01354 · APJ David C Mckone · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place because it had not misapprehended or overlooked arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Institution Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“Owner’s arguments were outweighed by several other General Plastic factors. Dec. 34–37. To summarize briefly, we determined that Petitioner was not involved with the Groupon case, did not derive any benefit from the arguments or resolution of that case, and did not have any apparent reason to bring its challenge based on Fisher earlier. Id. at 33–34. Accordingly, the first five General Plastic factors weighed in favor of institution. Id. We also discussed at length the strong case Petitioner put forward on the merits for the claims at issue in the Groupon case. Id. at 23–29. The Trial Practice Guide Update counsels that we should consider the General Plastic factors as “part of a balanced assessment of all relevant circumstances in the case, including the merits.” Trial Practice Guide Update, at 10 (emphasis added). We determined that the General Plastic factors addressing judicial economy favored denial, but not strongly, and that they were outweighed by the factors supporting institution. Dec. 34–37. In light of the vacating of the” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–8, 12, 14–21, 25, 27–34, 38, 40–45, 47, 49, 51–57, and 60–66 of U.S. Patent No. 5,961,601 (Ex. 1001, “the ’601 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Upon consideration of the Petition and Preliminary Response, we concluded, under 35 U.S.C. § 314(a), that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim as obvious over Yuval Fisher, SPINNING THE WEB (1996) (Ex. 1005, “Fisher”). Paper 8 (Institution Decision (“Dec.”)) 37.” slip op. at 2
Discretionary denialPatents in suitUS 5,961,601
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.