- Google LLC v. Sandpiper CDN, LLCAll claims unpatentablePTAB · Oct 9, 2026 · IPR2025-00826 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–23 are unpatentable under § 103, including over Glines alone and the additional asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner provides substantially the same assessment. PO Resp. 16. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction. Pet. 3; PO Resp. 16. We address the parties’ interpretation of the scope of “causing said hostname to be resolved” in our discussion of Petitioner’s assertions for limitation [1.d]. Based on the record before us, we determine that no claim term requires express construction.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Strike new argumentNew argument consideredDecided for petitioner
“We do not agree. The Petition states that Glines discloses that the anycast is resolved by an ISP DNS server. Pet. 20. The Petition identifies Glines’s local ISP DNS resolver 18 as the claimed ISP DNS server. Id. The Petitioner further asserts that Glines’s ISP DNS resolver 18 sends the request to the DNS server 38, but states that “Glines’s local DNS resolver, an ISP DNS server, thus causes the hostname . . . to be resolved.” Id. at 21–22. The Petition also drew an analogy with the ’112 patent and the role of local DNS server 70a in the Petition. See Pet. 20–21. Because the Petition and the Reply both identify Glines’s local ISP DNS resolver 18 as causing the hostname to be resolved, Petitioner has not advanced a new theory of unpatentability in its Reply. 6 At oral argument, Patent Owner suggested a narrower claim reading, but admitted that this had not been briefed. Tr. 36:15–38:9, 44:9–16. We do not address this reading because it was not set forth in the briefing. In the briefing, Patent Owner took the broader reading discussed here. See Tr. 41:12–23; PO Sur-reply 7.” slip op. at 13
Patent outcomesUS 9,021,112 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,021,112 - Apple Inc. v. Ferid AllaniAll claims unpatentablePTAB · Aug 25, 2026 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–27 are unpatentable: claims 24 and 26 over Rossmann and Himmel; claims 1–2, 4–6, 10–23, 25, and 27 over Rossmann, Himmel, King, and Adar; claims 3 and 7–9 over those references and Boyle.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); see Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“meaning of “icon” as claimed, including the dependent claims, the specification, the prosecution history, and the extrinsic evidence including expert testimony and dictionary definitions, we determine that the plain meaning of “icon” is readily apparent from the claims themselves. See Phillips, 415 F.3d at 1314 (“In some cases, the ordinary meaning of claim language as understood by a person of ordinary skill in the art may be readily apparent even to lay judges.”). We find that the plain meaning of “icon” as claimed encompasses at least “textual elements” because claim 20 recites “the icons comprise textual elements.” See id. (“Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term.”). We highlight that the additional intrinsic evidence cited by the parties is consistent with the plain meaning. For example, Figures 1 and 2 of the specification show icons comprising textual elements. As another example, during prosecution of the ’058 patent, the Examiner found that the claimed icons were taught by textual hyperlinks. Ex. 1002, 586, 592. In order to overcome the Examiner’s rejection and obtain an allowance (id. at 641–50), applicant subsequently amended the claims to recite “specifically designed,” thus implicitly conceding to the Examiner’s interpretation of icon as encompassing textual hyperlinks. Id. at 625–640; see PO Resp. 43–44 (citing Ex. 1002, 626–27, 645–46) (acknowledging that the Examiner allowed the claims because applicant amended the claims to recite “specifically designed for containing a set of icons.”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“Requiring an element to be "specifically designed" for another element narrows the claim because it requires more than the first element being merely capable of being used with the second element. The term "configured to" is generally construed narrowly to mean "made to" and "designed to" rather than broadly to require merely "capable of". See In re Giannelli, 739 F. 3d 1375, 1379-80 (Fed. Cir. 2014) (the phrase "configured to" requires more than "mere capability." Rather, that term is synonymous with "made to" and "designed to."). However, rather than use "configured to", in order to avoid any confusion as to the narrower scope of the claims as amended, Applicant herein directly and explicitly requires "designed to." In re Giannelli at 1379-80 (Fed. Cir. 2014) (reversing an obviousness rejection because (1) the claims were properly construed narrowly to mean "designed to" and not broadly to encompass merely "capable of", and (2) the USPTO had not explained the motivation for modifying the prior art to meet the "design to" requirement) See also MPEP 2111.04, citing to In re Giannelli, for the proposition that a claim can be narrowed to require that it be "designed and constructed to be used" in a specific manner (as a rowing machine in the case of In re Giannelli). Logan has not been specifically designed and constructed in the required manner, so it does not cure all deficiencies of the primary reference Iki (which lacks any tree menu structure). Logan describes only "remote web" pages 90, 95 that are merely pages retrieved from Web browsing and stored in a web computer 25. Iki as modified by Logan would result on in a tree menu structure wherein not all levels of the tree included the required selection pages specifically designed for containing the claimed set of icons. Ex. 1002, 626–27 (emphasis omitted).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner contends that a person of ordinary skill in the art would have modified Rossmann to include several advantages expressly taught by Himmel: Himmel’s consumer hot list bookmark set for the benefits of providing a user with a consistent user interface when accessing a website; to simplify navigation for the user by providing an additional navigation aid; to provide more immediate access to commonly used web actions; to reduce the network traffic required to navigate through webpages to arrive at a particular web function; and to reduce usage charges and data usage. Pet. 22–23 (citing Ex. 1003 ¶¶ 94–99; Ex. 1004, 2:38–56, 12:24–34, 14:35–44; Ex. 1005, 18:63–65, 20:11–16). Petitioner contends that modifying Rossmann’s Figures 4A through 4G to include Himmel’s consumer hot list bookmark set yields each selection page including both selection icons for navigating to other local pages along with direct access icons such as on sale today to directly navigate to a predetermined web site to perform a common web action. Id. at 23–25 (citing Ex. 1003 ¶¶ 96–100; Ex. 1004, Figs. 4D–F). Petitioner contends that the selection page of Rossmann as modified by the bookmark set of Himmel teaches a first locally stored page specifically designed to include a direct access icon because the selection page is “used to include” a direct access icon, such as on sale today, and that during use, this selection page is programmed to display the set of direct access icons for selection by the user. Pet. 25 (citing Ex. 1003 ¶¶ 96–100); see id. at 21–24. Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success because technology for bookmarking websites and web actions was known at the time of invention, modifying Rossmann to utilize known bookmark manager software would have been straight forward, Rossmann already includes hardware and programming instructions to access a web server, and Himmel teaches that known prior art methods utilized both selection and direct access icons on a single page. Id. at 25–26 (citing Ex. 1003 ¶¶ 101–103; Ex. 1004, 2:38–41, 14:21–44; Ex. 1005, Fig. 6A, 21:27–34).” slip op. at 19
Patent outcomesUS 10,943,058 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,943,058 - SAP America, Inc. v. Cyandia, Inc.All claims unpatentablePTAB · Mar 13, 2026 · IPR2024-01433 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 are unpatentable as obvious over the PCT Publication and Austin-Lane.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” PO Resp. 9. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“device indicated by the session data” encompasses “determining a notification method based on” session data indicating the current state of the external device, where the current state of the device encompasses an online state as well as an offline state. See Pet. 53–54; Tr. 55:3–10 (The Board: “Are there any other states of an external device other than online or offline?” Patent Owner: “As far as I know, Your Honor, those are the only two[.]”), Tr. 65:24–66:1 (The Board: “When the claim says current state, they mean it’s online or offline?” Petitioner: “Correct.”), Tr. 20:23–21:8. The specification is consistent with the plain language of the claim in disclosing two examples of the claimed “current state,” namely, online and offline. Ex. 1101, 21:1–4. The specification discloses that the notification manager “queries session manager 456 to determine the user’s connectedness.” Id. at 21:6–8. The specification discloses that if the user is “online, notify by, for example, the user’s active session. If offline, notify by, for example, a txt [sic] message, call the user’s landline, call a friend of the user, and the like.” Id. at 21:1–4, 23:28–31.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Patent Owner’s expert witness, Dr. Goodrich, show written description support for providing a notification to an active external device, Patent Owner has not cited any portion of the 2009 Parent, nor any portion of the testimony of Dr. Goodrich, to show that the 2009 Parent provides written description support for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. We highlight that Paragraphs 130 and 131 of the 2011 CIP Application disclose offline notification preferences for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. Ex. 1110 ¶¶ 130–131. Specifically, paragraphs 130 and 131 describe that: the notification manager of the eventing and alerting subsystem 452 queries the configuration server 454 for the user's notification preferences and correlates these notification preferences with session manager 456 to determine the best notification method. That is, the notification manager queries the configuration server 454 and determines, for example, that the user has certain online notification preferences and certain offline notification preferences. If online, notify by, for example, the user's active session. If offline, notify by, for example, a txt message. . . . The notification manager of the eventing and alerting subsystem 452 then queries session manager 456 to determine the user's connectedness. Id. That is, if the user’s connectedness, or “current state” of the claimed external device, is offline, and the user’s offline notification preferences are “notify by txt message,” the notification manager will determine that the notification method for the external device having a current state of offline is by txt message. See id. Thus, the 2011 CIP Application describes a notification manager that queries a session manager to determine whether an external device is offline, and if the external device is offline, determines a notification method for providing an alert on the external device based on the current status of the external device as offline and the user’s offline notification preferences. Although we find this written description support for the determining limitation in the 2011 CIP Application, we do not find this written description support in the 2009 Parent.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As to the “determining a notification method” limitation (1.10), Petitioner asserts that Austin-Lane teaches determining: (1) the user device(s) to send the notification to (e.g., phone, PDA, notebook computer, desktop computer); (2) the communication protocol to use to send the notification, i.e., how to send the notification (e.g., SMTP (for email), SMS (for texts), HTTP (for web browsers)); and (3) the type of alert to provide, i.e., how to present the notification, (e.g., text, an icon, a pop-up window, a video, an email, an audible or tactile alarm), based on the current state of the at least one external device indicated by the session data (“presence information”), which may include whether and on which device(s) the user is online and/or whether and on which applications the user has an active session. Id. at 53 (internal citations omitted) (citing Ex. 1105 ¶¶ 4, 5, 29, 32, 33, 39, 46, 48, 61, 79, Fig. 1). We highlight that paragraph 61 of Austin-Lane discloses that: The type preferences 650 may include preferences for various notification types. . . . [A]uction alert #1 660 defines the following delivery precedence 663: (1) a web browser (if the user is online), (2) an IM client (if the user is online), (3) a mobile phone #1, (4) a PDA, (5) a mobile phone #2, (6) a pager, and (7) an email inbox. Ex. 1105 ¶ 61; see id. ¶¶ 74–77 (Describing that one of several notification methods for delivering an alert to a user’s device is determined based on the current state of the user’s device as online or offline). Thus, Austin-Lane describes determining a notification method by which to provide an alert on an external device based on the current state of the external device as online as well as offline.” slip op. at 29
Patent outcomesUS 8,751,948 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 8,751,948 - Apple Inc. v. Smith Interface Technologies, LLCAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01084 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–4, 8–18, 22–30, and 34–39 are unpatentable as obvious over Shiplacoff and over Shiplacoff combined with Nan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof. Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner’s declarant, Loren Terveen, Ph.D., testifies that “[s]uch experience could be obtained through research and study in a graduate program or through comparable exposure through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 22. Patent Owner agrees with this definition. PO Resp. 13 (citing Dec. 5). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“according to the Phillips standard.” Pet. 4. Patent Owner contends that under the plain language of claim 1, the “one or more criteria” is satisfied when a “movement parameter” of “the second input” is detected to be “above a movement threshold.” PO Resp. 14. Patent Owner contends that under the plain language of claim 27, the “second one or more criteria” is satisfied when “a duration parameter” of the “second input” is detected to be “above a duration threshold.” Id. at 15. Patent Owner contends that the plain language of limitations [1j] and [1k] requires an operation capable of detecting a second input by a second contact that includes movement across a display in a direction, determining whether the second input meets or does not meet the recited criteria, and triggers performance of each of the corresponding display actions as appropriate. Id. at 15–19. Patent Owner 15. Id. at 21–23. Patent Owner contends that the plain language of limitations [27d]–[27f] recited in claim 27 require an operation that enables the device to detect a second input by a second contact that includes movement across the display in a direction, determine whether the second input meets or does not meet the two recited criteria, and trigger performance of each of the recited display actions as appropriate. Id. at 19– 20. Patent Owner contends that for “the second input” recited in limitations [1j] and [1k], “the second input” must be detected in the same operational context. Id. at 23–24. In particular, Patent Owner contends that limitations [1j] and [1k], and similar limitations recited in claims 15 and 27, “require a single, common contact event as the starting point of the claimed logic operations.” Id. at 24; see id. at 25–26. We do not need to determine whether Patent Owner’s proposed constructions are correct, because under either Petitioner’s or Patent Owner’s proposed constructions, we find that the prior art would have rendered all challenged claims obvious as discussed below in our patentability analysis.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“at 418; see also id. at 421 (“A person of ordinary skill is . . . a person of ordinary creativity, not an automaton.”). Patent Owner’s contention and the supporting testimony of Dr. Madisetti does not address Shiplacoff’s teaching of using a gesture, such as Shiplacoff’s flick gesture, to return to launch screen. We agree with Petitioner and Dr. Terveen in finding that Shiplacoff’s disclosure that “returning to the launch screen . . . is performed by performing a gesture” (Ex. 1004 ¶ 99) such as a flicking gesture (Ex. 1004 ¶¶ 126, 129; Ex. 1023 ¶ 13) teaches using a flicking gesture to return from home screen to launch screen. See Pet. 16, 22–24; Ex. 1003 ¶¶ 52–53, 59; Ex. 1023 ¶ 13; Reply 7–10. Because Dr. Terveen’s testimony is consistent with and supported by the teachings of Shiplacoff as a whole (in contrast to that of Dr. Madisetti), we credit the testimony of Dr. Terveen in finding that using a gesture to return from home screen to launch screen as taught by Shiplacoff, where the gesture is a flick gesture as taught by Shiplacoff, yields the predictable result of using a flick gesture to return from home screen to launch screen. Ex. 1023 ¶ 13; Ex. 1003 ¶¶ 52–61; KSR, 550 U.S. at 416.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“articulate why a person of ordinary skill in the art would have used Shiplacoff’s flicking gesture to switch from full screen mode to the launch screen. PO Resp. 47–49. Petitioner contends that Shiplacoff’s swipe up gesture teaches limitation [1j] by including a movement parameter above a movement threshold. Pet. 17–23. Petitioner contends that Shiplacoff teaches that a user can perform another gesture to return to the home screen. Id. at 23. Petitioner contends that when a gesture different from the swipe up gesture is used to return to the home screen, a person of ordinary skill would have used a flicking gesture because the flicking gesture has a different movement parameter than the swipe up gesture, namely, a movement parameter that does not meet the movement threshold. Pet. 23– 24 (citing Ex. 1004 ¶¶ 99–102, 167; Ex. 1003 ¶¶ 60–61). We agree with Petitioner for the reasons given in the Petition and as discussed above. We reiterate that using a gesture to return from home screen to launch screen as taught by Shiplacoff, where the gesture is a flicking gesture as taught by Shiplacoff, yields the predictable result of using a flicking gesture to return from home screen to launch screen. Ex. 1023 ¶ 13; Ex. 1003 ¶¶ 52–61; KSR, 550 U.S. at 416. We disagree with Patent Owner’s contention that Shiplacoff teaches away from using the flicking gesture to switch from full screen mode to the launch screen because, according to Patent Owner, Shiplacoff already uses the flick gesture to perform scrolling in full screen mode. PO Resp. 49–52 the same gesture in a given mode can be assigned to different functions depending on where, when, and how the gesture is input by the user, as discussed above. Reply 11–12 (discussing Shiplacoff’s teaching of associating the same tap gesture with different functions depending on where the tap occurs), 13–14 (discussing Duarte’s teaching of associating both a drag gesture and a scrolling gesture to the same mode). Ex. 1023 ¶¶ 16–19. We agree with Petitioner and Dr. Terveen, that based on the teachings of Shiplacoff (and, by incorporation, Duarte), a person of ordinary skill in the art would have recognized that a flick started in area 102 or near an edge of screen 101 and continuing onto screen 101 would be distinguished from a flick entirely within screen 101 based on location, and would perform a different function. Ex. 1023 ¶¶ 18–19. We also agree with Petitioner and Dr. Terveen, that Duarte teaches associating a gesture with one function when a modifier key is not pressed, and associating the same gesture with a different function when the modifier key is pressed, such that a flick performed when the key is not pressed would perform one function such as scrolling and a flick performed when the key is pressed would perform another, such as changing the display mode. Reply 15 (citing Ex. 2003 ¶ 64; Ex. 1023 ¶ 20). We agree with Petitioner that Shiplacoff does not teach away from using a flicking gesture to change from full screen mode to home screen because it “does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” Reply 10 (quoting Depuy Spine, 567 F.3d at1327).” slip op. at 25
Patent outcomesUS 10,649,578 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,649,578 - Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentablePTAB · Jan 16, 2026 · IPR2022-00518 · APJ Jeffrey S Smith · IPR · Remand
Claims 1–4 and 6 are unpatentable under §103 because the prior-art combinations teach limitations 1(c) and 1(g) under the proper construction of “style.”
RulingsRemand decision- RemandOther
“As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11
- Strike new argumentNew argument consideredDecided for petitioner
“We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6
Patent outcomesUS 7,594,168 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,594,168 - Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentablePTAB · Jan 16, 2026 · IPR2022-00597 · APJ Jeffrey S Smith · IPR · Remand
Claims 1–4 and 6 are unpatentable under §103 over both listed prior art combinations; Lemay Web teaches the claimed style under the Federal Circuit’s construction.
RulingsRemand decision- RemandOther
“As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11
- Strike new argumentNew argument consideredDecided for petitioner
“We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8
Patent outcomesUS 7,594,168 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,594,168 - Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentablePTAB · Jan 16, 2026 · IPR2021-01226 · APJ Jeffrey S Smith · IPR · Remand
Claims 1–4 and 6 are unpatentable under § 103 over the asserted combinations because the prior art teaches the limitations under the proper construction of “style.”
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 2030, 793:7–11. GoDaddy’s expert testified, with reference to Exhibit 2027, 80, that “Yeah. I’m not a hundred percent sure I understand your question, but yes, if you had six animations on a page, for example, you’d have six blocks of markup that looked like the markup at the bottom right of that slide, starting with applet.” Id. at 793:12–16. In addressing Patent Owner’s question about “each unique animation,” GoDaddy’s expert provided a hypothetical example of a web page having six animations, and explained that the six animations have six blocks of markup. Ex. 2030, 793:13–16. We find that this testimony means that if a web page has six unique animations, then for each unique animation, a corresponding HTML file contains the style settings for the image objects of that animation, such that the “six animations on a page . . . have six blocks of markup.” Id. We find that the subsequent testimony of GoDaddy’s expert cited by Patent Owner is consistent with the expert’s initial testimony that Lemay Web’s style is “applied to all of the multiple images that make up this animation.” Ex. 2029, 747:5–7. We also find that the subsequent testimony is consistent with and supported by the disclosure of Lemay Web, which teaches that an animation has a set of image files and is added to a Web page using the Animator applet. Ex. 1004, 88 (“[Y]ou’ll learn just enough about Java applets to set up animation on your Web page. . . . To create animation using Java and the Animator applet, you’ll need . . . [a] set of image files . . . that make up your animation.”); see id. at 88–91. That is, Lemay Web, consistent with the testimony of GoDaddy’s expert, discloses that the style settings for the animation of the pocket watch in the HTML file are uniformly applied to the 12 pocket watch image objects. Id. at 88–91. Contrary to Patent Owner’s contention, the testimony of GoDaddy’s expert further supports our finding that the style settings in the HTML file of Lemay Web are applied to the multiple image objects that make up the animation. Patent Owner does not identify anything else from the district court trial connected to the “style” issue raised by the Federal Circuit. We conclude that the jury verdict does not change our decision here. IV. CONCLUSION” slip op. at 18
Patent outcomesUS 7,594,168 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,594,168 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Apr 28, 2025 · IPR2021-00662 · APJ Jennifer S Bisk · IPR · Remand
On remand, the Board held claims 1 and 2 unpatentable under § 103: Yamazaki and Schubert for claim 1, with Tadatomo added for claim 2.
RulingsRemand decision- RemandOther
“As directed by the Federal Circuit, we assess whether Yamazaki teaches the cathode/anode limitation of claim 1. We do not revisit our analysis of the other limitations of claim 1. Remand Dec. 10–11 (agreeing with the Board’s findings on the other limitations of claim 1 disputed on appeal).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“using the j-lead method (Petitioner’s position) or the thin film deposition method (Patent Owner’s position). Pet Remand Br. 2–5; PO Remand Br. 1– 4. Each side has arguments and expert testimony supporting their position.9,10 After considering each side’s arguments and all the associated evidence, we agree that the record supports Petitioner’s position for the reasons discussed below.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“b. Figure 1 of Yamazaki We find that Yamazaki’s Figure 1 plainly shows electrically conductive patterns 11a at opposite edges of chip substrate 11, with each conductive pattern wrapping around an edge of the substrate. Ex. 1007 9 Patent Owner argues that Dr. Dupuis’ analysis on this issue “is confined to a single paragraph and adds nothing of substance relative to the Petition” and the Board should, therefore, “afford it little or no weight.” PO Remand Br. 1 (citing Ex. 1035 ¶ 246). Patent Owner also points to its own expert, Dr. Schubert, noting that his “opinions on this issue span over 20 pages and are supported by technical literature.” Id. (citing Ex. 2112 ¶¶ 158–208). We do not agree that the length of expert testimony, by itself, is a determining factor in its reliability. Moreover, we note that Dr. Dupuis also cites to technical literature. Ex. 1035 ¶ 246 (citing Ex. 1017, Figs. 3–4, ¶ 22). We decline to discount expert testimony based on these arguments regarding their relative length. 10 Patent Owner also states that “the Federal Circuit noted how Dr. Schubert’s opinions regarding Yamazaki were ‘unrebutted’ and that Satco ‘provides no response.’” PO Remand Br. 2. This is a mischaracterization of the Federal Circuit’s opinion, which explicitly identifies as unrebutted only Dr. Schubert’s testimony that “‘[i]n real applications,’” the “‘adhesive between the LED chip and supporting substrate would be approximately 1 micron to 10 microns thick.’” Remand Dec. 9. We see no other statements in the Remand Decision characterizing any other, let alone all, of Dr. Schubert’s opinions regarding Yamazaki as unrebutted. Fig. 1; see Ex. 1035 ¶ 246. This is true even presuming, as directed by the Federal Circuit, that the bolding of this element does not provide any information on relative thickness of element 11a. Id.” slip op. at 13
- Obviousness (§103) › KSR rationalesMotivation foundReasonable expectation foundUnpatentable
“conventional options for creating element 11a, that, regardless of the figures, both methods would have been obvious to a person of ordinary skill. Pet. Remand Br. 4–5. As stated, we find that Figure 1 teaches element 11a as composed of j-leads. However, we also agree that even if Figure 1 did not teach j-leads, the fact that there are only two conventional methods for creating element 11a indicates that both methods would have been obvious. See Uber Techs., Inc. v. X One Inc., 957 F.3d 1334, 1340 (Fed. Cir. 2020). In Uber, the parties agreed that there were only two possible solutions for whether to plot locations, i.e., either before transmitting location information (server-side plotting) or after transmitting location information (terminalside plotting). Id. at 1339. The Court held that both solutions would have been obvious to a person of ordinary skill. Id. at 1340. The same is true here. The difference between the j-lead and thin film deposition methods amounts to a design choice between two ways to manufacture element 11a. A person of ordinary skill would therefore have two predictable choices for this manufacture, providing them with a simple design choice as to whether to use j-leads or thin film deposition. See Uber, 957 F.3d at 1340. “Because a person of ordinary skill ‘has good reasons to pursue the known options within his or her technical grasp,’ § 103 bars the patentability of such obvious variations.” Id. (quoting KSR, 550 U.S. at 417, 421); see also CRFD Rsch., Inc. v. Matal, 876 F.3d 1330, 1347 (Fed. Cir. 2017) (explaining that “a person of ordinary skill would have two predictable choices for when the [prior art] would transmit browser information, providing a person of ordinary skill with a simple design choice” between the two options); ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (explaining that where an “ordinary artisan would . . . be left with two design choices . . . [e]ach of these two design choices is an obvious combination”); Wyers v. Master Lock Co., 616 F.3d 1231, 1241 (Fed. Cir. 2010) (holding that a motivation to combine and a reasonable expectation of success exist when “it is simply a matter of common sense” to combine known elements of the prior art to solve a known problem). g. Conclusion The record supports a finding that a person of ordinary skill in the art would have understood Figure 1 to teach element 11a as composed of j-leads. The record also supports a finding that a person of ordinary skill in the art would have understood that at the relevant time, both stamping j-leads and depositing/etching were conventional methods for creating metal leads. Based on either of these findings, we agree with Petitioner that a person of ordinary skill in the art would have understood that Yamazaki teaches the cathode/anode limitation of claim 1. For the same reasons given in our Final Decision, we find that the combination of Yamazaki and Schubert teaches the other limitations of claim 1 and that an ordinarily skilled artisan would have had reasons, with rational underpinning, to combine the references, and the skilled artisan would have had a reasonable expectation of success. Final Dec. 28–42.” slip op. at 21
Patent outcomesUS 10,644,213 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 10,644,213 - Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.All claims unpatentablePTAB · Mar 7, 2025 · IPR2024-00139 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over the CAB Website and CAB Whitepaper; the Board did not reach the other instituted grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“would have had a bachelor’s degree in a pertinent discipline, such as electrical engineering, civil engineering, mechanical engineering or equivalent with 2–3 years of experience in electrical utility systems, planning, and design” and “the number of years of experience could be higher or lower given the level of education and vice versa.” Pet. 23. In its Preliminary Response, Patent Owner contended Petitioner’s level of ordinary skill is too high. Prelim. Resp. 32. According to Patent Owner, a POSITA would have had “an associate degree in an engineering discipline, and 1–2 years’ experience in electrical power systems” and “[a] lack of work experience can be remedied by additional education, and vice versa.” Prelim. Resp. 31 (citing Ex. 2001 ¶ 21). Our Institution Decision states that we preliminarily determined a POSITA would have had a bachelor’s degree in an engineering discipline and two years of experience in electrical power systems. Inst. Dec. 5–6. Patent Owner’s Response states that Patent Owner applies the Board’s 9 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. preliminary determination (PO Resp. 6, n.3), and Petitioner did not subsequently address the issue. Based on the full record, we determine a POSITA would have had a bachelor’s degree in an engineering discipline and two years of experience in electrical power systems. We are satisfied that this comports with the level of skill necessary to understand and implement the teachings of the ’291 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (explaining the applied prior art may reflect an appropriate level of skill). slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“the cable hangers (which support the current wires, data wires and other wires). That is, a single multi-function line supports the cable hangers, as a messenger wire, and provides a current path, as a grounding conductor.” Ex. 1001, 2:33–37 (emphasis added). And the sentence following that passage, which is cited by both parties, states: “Accordingly, as used herein, a ‘multi-function line’ means a tension member that supports current wires and/or cable hangers, and, which is conductive.” Ex. 1001, 2:37–40 (emphasis added). The sentences immediately following that sentence provide additional context, stating: “That is, a messenger wire is not a ‘multi-function line.’ Similarly, a conductor that does not support other constructs is not a ‘multi-function line.’” Ex. 1001, 2:40–42 (emphasis added). Thus, the specification indicates that a multi-function line is a tension member, “is conductive,” and supports other constructs such as current wires and/or cable hangers. In contrast, the specification does not mention “effective ground fault current path.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Based on the entire record, Petitioner shows that the combination of the CAB Website and the CAB Whitepaper satisfy the limitations of claim 1. We also agree with Petitioner that a POSITA would have had reason to combine the references’ teachings, at least because the CAB Website expressly refers to the CAB Whitepaper, suggesting to a POSITA that the references’ teachings should be considered together. Pet. 47–48; see Reply 6–8.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“First, we agree with Petitioner that Patent Owner has not shown that the cited products are coextensive with, and have the required nexus between, the products and claim 1. See Reply 18–29. Even if Patent Owner sells an “Integrated Grounding System” that satisfies each limitation of claim 1, that system is undeniably comprised of “various” “exemplary” interchangeable parts that have uses outside of the claimed invention, that at least purportedly relate to many other of Patent Owner’s patents, and that were known in the prior art. E.g., Ex. 2064, ¶ 304 (identifying “exemplary” product part numbers, including CAB-9605, CAB-9705, CAB-9760, and CAB-9607), n.10; App’x A, A5 (identifying a part number “representative” part the “mid-pier kit”); Ex. 1049, 6–7 (identifying Patent Owner’s patent’s relating to different part numbers). For example, Patent Owner identifies two patent numbers purportedly protecting its “grounding Mid Pier Kit,” the ’551 patent and US Pat. No. 10,461,518. Ex. 1049, 6–7. Patent Owner identifies three of its patents as protecting its copper messenger wire, part number CAB-9605: (i) the ’551 patent, (ii) US Pat. No. 10,461,518, and (iii) US Pat. No. 10,811,859. Id. And Patent Owner identifies eight different patents, but not the ’551 patent, as protecting the cited cable hangers, CAB- 9760. Id. And as explained in the analysis above, all of these parts were known and available in the prior art, as evidenced by the CAB Website and the CAB Whitepaper. We can discern no nexus between the features of the ’551 patent and the alleged objective evidence of nonobviousness given that the so-called “Integrated System” includes multiple, interchangeable, and “exemplary” part numbers that were known in the prior art. See Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1364 (Fed. Cir. 2023) (“But our case law makes clear that objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was known in the prior art—not necessarily well-known.” (internal quotations and citations omitted)); see also Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”).” slip op. at 21
Patent outcomesUS 10,177,551 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,177,551 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentablePTAB · Feb 28, 2025 · IPR2021-00045 · APJ Nathan A Engels · IPR · Remand
Claims 1–3, 9–11, and 17–19 are unpatentable as obvious over Masters; claims 5, 13, and 21 are unpatentable as obvious over Masters and Stone.
RulingsRemand decision- RemandOther
“stated that on remand, the Board should “adopt a new construction that includes application instance-level, application-level, device-level, and tierlevel data” and “the Board should determine whether Masters, including its Decision Review Display and Path Display, renders the ‘collecting’ and ‘correlating’ limitations obvious in view of the Board’s new construction. In addition, the Board should consider Masters’ Appendix J in assessing whether Masters’ Path Display teaches life cycle events and the claimed correlating step.” Netflix, 2024 WL 3507601 at *8. After the Federal Circuit issued its mandate, with our authorization, the parties filed the following briefs: Petitioner’s Opening Brief on Remand (Paper 41, “Pet. Remand Br.”), Patent Owner’s Response Brief on Remand (Paper 42, “PO Remand Resp.”), Petitioner’s Reply Brief on Remand (Paper 43, “Pet. Remand Reply”), and Patent Owner’s Sur-Reply Brief on Remand (Paper 44, “PO Remand Sur-Reply”).” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We determine a POSITA would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience,” which is consistent with the parties’ arguments and testimony of the parties’ declarants, as well as the level reflected in the ’722 patent and the asserted prior art. We determine it is unnecessary to reach the parties’ additional statements of the knowledge and skills that a POSITA would allegedly possess, as the parties’ arguments do not hinge on those statements.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s proposed construction to be generally consistent with the intrinsic record (including the claim language) and the Federal Circuit’s guidance. However, we decline to adopt the use of “related to” instead of “associated with” in Petitioner’s proposed construction because we determine the language used in the claim, “associated with,” is clear enough on its face and Petitioner provides no persuasive justification for altering the plain meaning to “related to”. Consistent with the Federal Circuit’s guidance, we determine the proper construction of “performance data” further includes data pertaining to the performance of a server and/or a technology tier. Netflix, 2024 WL 3507601 at *6 (citing Ex. 1001, 3:56–57, 4:3–8, 4:14–18, 7:26–29). Accordingly, we determine “performance data” means “data associated with the performance of one or more application instances, including instance-level, application-level, device-level, and tierlevel data and includes data pertaining to the performance of a server and/or a technology tier.” We determine no other terms require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Applying our construction of “performance data,” we agree with Petitioner that, among other things, the CPU utilization and review time shown in Masters’ Figure 5.6.2.1-2 and Figures 8A and 8B fall within the scope of the claimed “performance data.” See Pet. 50–56; Reply 17. The CPU utilization data and review time data are both data associated with the performance of one or more application instances. Further, the Figures and corresponding description in Appendix J evidence collection of the performance data for each application instance. Pet. 34–38, 50; Ex. 1024, 39. Similarly, the startup of a copy of the Auto-Special process on Altair11 constitutes a life cycle event, as it is the creation of an application instance, and the termination of Auto-Special on Altair7 is another example of a life cycle event, as claimed. Ex. 1024, 39; see Pet. 39–44. We agree with Petitioner that these Figures and related descriptions in Masters teach collecting performance data and correlating the performance data to the life cycle events. See Pet. 46, 50–55. We also agree with Petitioner that Masters’ Figures 9A and 9B similarly show the collection and correlation of performance data, at least with the response time, action time, CPU score, and similar metrics depicted in the Figures. Pet. 47–49. Figures 9A and 9B show the correlation of the performance data to a life cycle event, by, for example, depicting the performance issue (an overload on Altair11) that cause the creation of a new application instance on Altair3. Pet. Reply 12. We agree with Petitioner that the response time to trigger the creation of an application instance on Altrair3 and the amount of time the application instance takes to start are two examples of performance data correlated with the life cycle event. Pet. Masters, Figures 9A and 9B depict Masters’ Decision Review Display that provides a summary of allocation and reallocation actions taken by the RMA, and “[f]or each action, timing information regarding how long it took the Resource Management functions, e.g., the Resource Manager . . . and the Program Controller . . ., to both arrive at a decision and to enact the decided action are shown along with host fitness scores that were used in arriving at the allocation decision.” Ex. 1004, 30:1–10. We disagree with Patent Owner’s arguments that the Masters’ “response time” “cannot be associated with the performance of the ‘Semi-Auto’ application instance because the response time passes before the instance exists” (PO Remand Br. 4), and we agree with Petitioner that the time required to start an application instance is a metric associated with the creation of that instance. In sum, we agree with Petitioner that Masters teaches the Correlating Limitations.” slip op. at 28
Patent outcomesUS 7,457,722 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,457,722
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.