• Apple Inc. v. MPH Technologies OYNo claims unpatentable
  PTAB · Oct 5, 2020 · IPR2019-00821 · APJ John D Hamann · IPR · Final written decision

  Claims 1–16 were not shown unpatentable: Ahonen and Ishiyama do not teach establishing the first secure connection as active when formed, and adding Gupta does not cure that deficiency.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We have considered Dr. Goldschlag’s testimony about the meaning of this limitation, but we accord it little weight because it is contrary to the plain claim language and the Specification’s teachings, and is without sufficient factual corroboration. See Ex. 1020 ¶¶ 39–43; Ex. 1001, 7:13–16, 7:39–46, 7:45–46, 12:19–22; see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); 37 C.F.R § 42.65(a).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’302 patent as one who would have had “a B.S. degree in Computer Science, Electrical Engineering, or an equivalent field, as well as at least 3–5 years of academic or industry experience in network security, or comparable industry experience.” Dec. on Inst. 7 (citing Pet. 14; Ex. 1003 ¶ 22). Patent Owner does not dispute our adoption of Petitioner’s definition, nor otherwise address the level of ordinary skill at the time of the invention of the ’302 patent. See generally PO. Resp.; see also Ex. 2002 ¶ 24. Because Petitioner’s definition of the level of skill in the art is consistent with the ’302 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below. IV.” slip op. at 8

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

    “A. Secure Connection In the Petition, Petitioner argued that a secure connection means “one or more . . . security associations.” Pet. 15 (citing Ex. 1003 ¶¶ 40–43). In our Decision on Institution, we concluded that “we need not decide whether a ‘secure connection’ should be limited to one or more SAs[, but r]ather, it is sufficient that the parties do not dispute that a secure connection covers one or more SAs.” Dec. on Inst. 9 (citations omitted). In the subsequent papers, the parties confirm that they do not dispute that a secure connection covers one or more SAs. Pet. Reply 3; PO Sur-Reply 2. Accordingly, we find that no express construction of “secure connection” is needed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

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

    “B. Establishing Patent Owner argues that “‘establishing a first/second secure connection’ requires forming or creating a new secure connection.” PO Resp. 22; see also id. at 22–23 (citing Ex. 1001, 7:39–41, 7:45–48, 10:12–16, 12:19–25; Ex. 2002 ¶ 69). Petitioner agrees that “‘[e]stablishing’ should be construed to mean ‘forming or creating a new secure connection,’ as proposed by” Patent Owner. Pet. Reply 4. We conclude that the ’302 patent’s Specification supports this proposed construction, and we construe “establishing a . . . secure connection” as meaning “forming or creating a new secure connection.” See Ex. 1001, code (57), 7:13–15, 7:39–41, 10:12– 16. V.” slip op. at 9

  Patent outcomesUS 8,037,302 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,037,302
• Ubisoft, Inc. / Square Enix, Inc. v. Uniloc 2017 LLCNo claims unpatentable
  PTAB · Oct 25, 2018 · IPR2017-01291 · APJ Miriam L Quinn · IPR · Final written decision

  The Board held that claims 1, 3, 7, 9, 13, and 15 were not shown unpatentable because Olsen did not disclose determining license availability for the user.

  RulingsFinal written decision

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

    “computer-readable program code means embodied in said medium” and “computer readable program code means for maintaining license management policy information,” among several additional computer readable program code means limitations. This claim language utilizes the word “means,” which triggers a rebuttable presumption that § 112, ¶ 6 applies. Williamson v. Citrix Online, 792 F.3d 1339, 1349 (Fed. Cir. 2015). If the “computer readable program code means” terms recited in claim 13 are indeed means-plus-function terms, then the Petition is deficient, as it fails to present the required claim construction analysis. 37 C.F.R. § 42.104(b)(3). In other words, in light of the presumption that applies to a claim reciting “means,” we look for an explanation by Petitioner, who has the burden of showing in its Petition how the challenged claim is to be construed and how that construed claim is unpatentable. Id. Petitioner proffers no analysis of the scope of these claim terms and, more particularly, why or how the presumption is rebutted.2 Because neither party rebutted the presumption that § 112, ¶ 6 applies to the “computer readable program code means,” we address this term as a means-plus-function term. Accordingly, the limitation “computer readable program code means for maintaining license management policy information,” at a minimum, encompasses the embodied algorithms linked 2 We recognize that in discussing the prior art, the Petition maps the “computer readable program means” to a license service provider software. Pet. 27. This showing, however, is insufficient to explain a rebuttal of the presumption borne by the use of “means.” to the function “maintaining license management policy information.” Those algorithms, following our analysis for the term “means for maintaining” discussed above are, at a minimum: setting policies such as limiting the number of users, whether crossing the limit of users is allowed or not, and how users are counted.” slip op. at 10

  • BurdenNot shown unpatentable

    “however, Petitioner’s evidence falls short of the preponderance of the evidence standard. The Petitioner bears the burden of proving a proposition of unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). The burden of showing something by a preponderance of the evidence requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence before the trier of fact may find in favor of the party who carries the burden. Concrete Pipe & Products of Cal., Inc. v. Construction Laborers Pension Trust for Southern Cal., 508 U.S. 602, 622 (1993). Olsen’s user information/login information is used in two processes: (1) to access license records in the database in the process of creating the license certificate object (id. at 11:3234); and (2) in the process of determining whether the requested license units are available to the client (id. at 11:4046). Olsen describes the process of “actually obtaining” the license by first determining “whether all of the required license units are available.” Id. at 11:4648. Olsen’s license certificate object does this by reviewing the policy attributes of the license, the user information associated with the request, any existing license assignments, and the raw number of units originally installed. Id. at 11:4046. Thus, there is evidence of the user information being part of the license availability determination. Olsen is clear, however, in stating that the license certificate object “suitably determines whether the license units corresponding to the license record are available to the requesting client.” Id. (emphasis added). Olsen describes the client as a “conventional network terminal, for example a personal computer” that is connected to the server. Id. at 5:656:1. The client of Olsen is not an individual, person, or virtual representation of a network user. Therefore, we find that Olsen determines license availability for the client—not the user. No other passage from Olsen describes determining license availability for the requesting user. While user information may be used in determining the license availability for the client, Olsen, we find, does not describe what role the user information plays in the determination such that the license availability determination would be user-specific. Thus, the nonexistence of the user-specific determination is more probable than its existence. See Concrete Pipe, 508 U.S. at 622. And, therefore, Petitioner has not shown by a preponderance of the evidence that Olsen discloses “determining the license availability for the selected one of the plurality of application programs for the user based on the maintained license management policy information,” as required by claim 1.” slip op. at 17

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

    “user information being part of the license availability determination. Olsen is clear, however, in stating that the license certificate object “suitably determines whether the license units corresponding to the license record are available to the requesting client.” Id. (emphasis added). Olsen describes the client as a “conventional network terminal, for example a personal computer” that is connected to the server. Id. at 5:656:1. The client of Olsen is not an individual, person, or virtual representation of a network user. Therefore, we find that Olsen determines license availability for the client—not the user. No other passage from Olsen describes determining license availability for the requesting user. While user information may be used in determining the license availability for the client, Olsen, we find, does not describe what role the user information plays in the determination such that the license availability determination would be user-specific. Thus, the nonexistence of the user-specific determination is more probable than its existence. See Concrete Pipe, 508 U.S. at 622. And, therefore, Petitioner has not shown by a preponderance of the evidence that Olsen discloses “determining the license availability for the selected one of the plurality of application programs for the user based on the maintained license management policy information,” as required by claim 1.” slip op. at 18

  Patent outcomesUS 6,728,766 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,728,766
• Arris Group, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Dec 13, 2017 · IPR2016-01160 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–20 were not held unpatentable because the asserted combination did not teach the construed synchronization signal.

  RulingsFinal written decision

  • Prior constructionPrior construction not adoptedOther

    “Owner that our construction in the Decision to Institute is overly broad to the extent it encompasses a synchronization frame. Petitioner relies heavily on column 5, lines 50 to 52 of the ’404 patent, but that disclosure does not unambiguously support Petitioner’s proposed construction. The paragraph, which we reproduce below for context, describes “normal (non-sleep mode) operation”: During normal (non-sleep mode) operation, a phase-lock loop (PLL) 62 receives from the FFT 56 a timing reference signal 62a (see FIG. 1A) via a line 62b. The timing reference signal 62a is transmitted from the transmitter with which the receiver 16 communicates (e.g., the CO transmitter). This signal is advantageously a pure tone of fixed frequency and phase which is synchronized with the Master Clock in the transmitter; its frequency defines the frame rate of the transceivers. Other forms of timing signal may, of course, be used, but use of a pure tone has the advantage of simplicity and reliability even when portions of the transceiver are powered down in accordance with the invention. The PLL 62 locks itself to this signal and drives clock 30 in synchronism with the Master Clock in the driving transmitter. This also synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver. Control of the receiver section is provided by the controller 32. Ex. 1001, 5:37–53 (emphasis added to 5:50–52). Rather than read “this” as referring to timing reference signal 62a, as Petitioner contends, we read “this” as referring to what is disclosed in the preceding sentence—i.e., driving clock 30 in synchronism with the Master Clock in the driving transmitter. The synchronism of clock 30 with the Master Clock in the driving transmitter is what “synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver.” Ex. 1001, 5:50–52.” slip op. at 7

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

    “Having considered the arguments and evidence, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” As a result, an express construction of this term is not necessary in order to resolve the parties’ dispute.” slip op. at 10

  • Skill levelOther

    “We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. 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 11

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

    “We agree with Patent Owner. The contentions in the Petition are based upon Petitioner’s proposed construction of “synchronization signal” as encompassing a synchronization frame—i.e., “allowing for frame synchronization.” See, e.g., Pet. 24, 37–38. We have not adopted that construction, however, for the reasons discussed above. Because our construction of “synchronization signal” excludes a synchronization frame, we are not persuaded that the argument and evidence in the Petition shows that the combination of Bowie, Vanzieleghem, and ANSI T1.413 teaches transmitting/receiving, in full power mode, a “synchronization signal.” Moreover, we agree with Patent Owner that Petitioner’s reliance, in the Reply, upon the teachings of a pilot tone in Vanzieleghem and ANSI T1.413 constitutes a change in theory and, therefore, is beyond the scope of a proper reply. Notwithstanding the mention of “a pilot tone” in paragraph 58 of Dr. McNally’s declaration, the Petition itself unambiguously identifies the synchronization frame, not a pilot tone, as the recited “synchronization symbol.” See, e.g., Pet. 37–38 (citing Bowie’s and ANSI T1.413’s teachings of synchronization frame). We, therefore, do not address whether the pilot tone taught in Vanzieleghem and in ANSI T1.413 teaches the recited “synchronization signal.” As a result, Petitioner has not shown, by a preponderance of the evidence, that claims 1–20 would have been obvious over Bowie, Vanzieleghem, and ANSI T1.413.” slip op. at 15

  Patent outcomesUS 8,611,404 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,611,404
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Sep 6, 2017 · IPR2016-00747 · APJ William M Fink · IPR · Final written decision

  Claims 6–10 were not shown unpatentable under §103 because Rufino’s responding computer was already connected, and Petitioner did not adequately explain combining Rufino with Todd.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not discern substantial differences in the parties’ proposed descriptions of the level of ordinary skill in the art. Both require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. We adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 7

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

    “considered whether the preamble is a limitation. Inst. Dec. 8–10. We determined it is a limitation because it provides antecedent basis for terms in the body of the claim and was in part relied upon during prosecution to distinguish the prior art. Id. Neither party disputes that determination, and we see no reason to alter it here.” slip op. at 8

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

    “Petitioner is correct that Patent Owner’s sole citation to the specification does not define the “broadcast channel,” but characterizes it as “one embodiment.” Ex. 1001, 4:10–12. Elsewhere, the specification refers to broadcast channel more broadly in terms of computers connected in an mregular graph, similar to claim 6, which requires “said broadcast channel being an m-regular graph where m is at least 3.” For example, the specification explains at column 4, lines 50–55 that “FIG. 1 illustrates a graph that is 4-regular and 4-connected which represents the broadcast channel. Each of the nine nodes A–I represents a computer that is connected to the broadcast channel . . . .” (emphasis added). See also id. at 2:53–58, Figs. 4A–C (illustrating other broadcast channel embodiments). Thus, consistent with Petitioner’s contention, a broadcast channel comprises computers connected according to some topology, e.g., 4-regular and 4-connected. Because the specification and claim use the term consistently and broadly to refer to connections between computers, we determine that no further construction of “broadcast channel” beyond the requirements placed on it by the claims themselves is necessary.” slip op. at 9

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

    “1. “m-regular” Petitioner proposes the term “m-regular,” recited in independent claim 6, means “each node is connected to exactly m other nodes.” Pet. 13 (citing Ex. 1001, 4:40–50, 14:51–15:6). Patent Owner does not offer a construction of this term. Prelim. Resp. 10; PO Resp. 12–13. For purposes of the Decision to Institute, we agreed that Petitioner’s proposed construction accords with the broadest reasonable construction consistent with the Specification, which, for example, explains that a graph in which each node is connected to four other nodes is referred to as a 4-regular graph. Ex. 1101, 4:40–41, 5:55–57 (“Since the broadcast channel is a 4- regular graph, each of the identified computers is already connected to four computers.”). In the absence of dispute, we see no need to alter the construction here. Accordingly, we construe “m-regular” to mean “each node is connected to exactly m other nodes.”” slip op. at 8

  Patent outcomesUS 6,732,147 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,732,147
• Mylan Pharmaceuticals Inc. / Wockhardt Bio AG et al. v. Astrazeneca ABNo claims unpatentable
  PTAB · Aug 18, 2017 · IPR2015-01340 · APJ Rama G Elluru · IPR · Final written decision

  Petitioners failed to prove claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 unpatentable under the instituted §103 grounds, chiefly because the proposed modifications lacked a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “C. Credibility of the Experts We give more weight to the testimony of Patent Owner’s expert, Dr. Weber, over that of Petitioners’ expert, Dr. Rotella, with respect to testimony that is in direct conflict. We favor Dr. Weber’s testimony because of her extensive experience in the design and development of DP 4 inhibitors for type-2 diabetes treatment. See Ex. 2056 ¶¶ 9–12; Ex. 2210, 1– 2. Moreover, Dr. Weber entered the DP 4 field at the relevant time, i.e., the time of invention, around 2000. Ex. 1073, 108:16–21; Tr. 35:16–22. We find that her testimony has been consistent, not just throughout this proceeding, but also with evidence predating this proceeding. See, e.g., Ex. 2056 ¶¶ 88, 115–118; 154–162; Ex. 1073, 51:2–54:14, 113:6–16, 119:19– 121:9; Ex. 2161, 558.” slip op. at 9

  • Skill levelSkill level board ownOther

    “The parties’ formulations as to the level of ordinary skill in the art are similar, and neither side identifies with specificity an error in the opposing side’s formulation. See PO Resp. 21; Pet. Reply 10. On the record presented, we hold that the cited prior art is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves). Specifically, the references are consistent with the parties’ formulations and demonstrate the level of skill in the art. Our determinations regarding the patentability of the challenged claims would remain the same under either side’s proposed formulation.” slip op. at 8

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

    “On the full record before us, we determine that Petitioners have not demonstrated by a preponderance of the evidence that a skilled artisan would have chosen Ashworth I’s compound 25 as a “lead compound.” Although Ashworth I indicates that compounds 24–29 were non-toxic in T cell assays up to 72 hours, and further indicates compound 25 was one among four compounds that were comparable to boroprolines, no further data is provided to guide the skilled artisan to select compound 25 among the other 2-cyanopyrrolidides as a lead compound for further modification to develop a DP 4 inhibitor. Ex. 1007, 1165–66. More importantly, the data reported in Ashworth I was based on in vitro data at room temperature, not in vivo data. PO Resp. 25 (citing Ex. 2174, 82:23–83:11). Indeed, Dr. Rotella states, “those studies were carried out at room temperature, which is roughly 20 degrees [Celsius]. I’ll point out that body temperature is higher than that, and that temperature has a direct effect on half-life. As you elevate temperature, you can expect half-life to decrease.” Ex. 2174, 82:23-83:11. Dr. Rotella further admits that he is not aware of any disclosure describing testing of Ashworth compounds in humans. Ex. 2174, 60:23-61:9. In addition, Ashworth I acknowledged that these compounds exhibited an intramolecular cyclization problem and that further work on optimization of the pyrrolidine ring was necessary and would be reported shortly. Ex. 1007, 1163–65. Others in the prior art also continued to seek solutions to the problem of intramolecular cyclization, such as those posed by Ashworth I compounds. See PO Resp. 27–28.” slip op. at 16

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

    “(4) No Reasonable Expectation of Increasing Stability We are not persuaded that the skilled artisan would have had a reasonable expectation of success in achieving increased stability of Ashworth I’s compound 25 based on Hanessian I’s teachings concerning the cyclopropanation of proline. See Pet. 29. There was no disclosure in the prior art of cylopropanating the pyrrolidine ring of compound 25, or any similar compound. Indeed, Dr. Rotella admitted “that there wasn’t anything in the literature prior to the invention of saxagliptin that actually suggested that cyclopropanation of an Ashworth-One type DPP4 inhibitor would improve its stability.” Ex. 2174, 142:3-9. In addition, there is not sufficient evidence as to how the modified cyano-moiety would have been understood to affect compound 25’s stability. Given the structural differences, we find there is insufficient evidence suggesting that the skilled artisan could have reasonably predicted how cyclopropanating compound 25’s P1 group (as opposed to the proline compound discussed in Hanessian I) would have affected the cyano moiety’s (as opposed to the substituent in Hanessian I) orientation in space. Furthermore, there is insufficient evidence as to whether that modified orientation would have sufficiently decreased intramolecular cyclization. Indeed, Dr. Rotella testified that: [I]n the process of that modification of orientation in space [when you fuse two rings together], you may observe effects on potency, you may observe effects on solution stability, you may observe other effects on other properties that one might measure in connection with a drug discovery project. Ex. 2174, 119:10–120:2. When asked, “[a]nd those effects might be either positive or negative; correct?” Dr. Rotella replied, “[t]hey might be, yes.” Ex. 2174, 120:3–5. Dr. Rotella also testified that at the time of the invention, the objective of adding a cyclopropyl substituent to the pyrrolidine ring of compound 25 would have been exploratory. He testified: Q. Well, what is the objective of putting the cyclopropane on the molecule, in your opinion? A. There are two possible objectives based on the data -- there are at least two possible objectives based on the data available surrounding compound 25. Q. And what are they? A. One would be to explore whether or not you could improve potency. A second would be whether or not you could improve solution stability. One might also explore how that -- those changes, either by themselves or in combination with two changes, might also improve or change -- sorry -- to improve solid-state stability. Furthermore, since nothing is known, at least at this point in time, about other properties associated with compound 25, you’d want to understand what those properties were and adjust them as need be. Generally speaking, those properties are things that we call, collectively, pharmaceutical properties. Ex. 2174, 115:11–116:13 (emphasis added). This testimony does not sufficiently support Petitioners’ contention that a skilled artisan would have reasonably expected cyclopropanating the pyrrolidine ring of compound 25 to increase its stability.” slip op. at 26

  Patent outcomesUS RE44,186 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
• Twilio Inc. v. Telesign CorporationNo claims unpatentable
  PTAB · Jun 26, 2017 · IPR2016-00360 · APJ Kimberly Mcgraw · IPR · Final written decision

  The Board found claims 1–4, 6, 7, 9, and 11–14 not shown unpatentable because the asserted combinations did not teach registering a user based on the phone carrier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the ’034 patent would have had “at least an undergraduate degree in computer science, or equivalent experience, and in addition would be familiar with Internet communications and accessing databases.” Corrected 2 Nguyen (US 7,577,847 B2, filed Nov. 3, 2004, issued Aug. 18, 2009) (Ex. 1003). 3 De Petris (US 2004/0219904 A1, filed Apr. 6, 2004, pub. Nov. 4, 2004) (Ex. 1005). 4 Singhal (US 2004/0203595 A1, filed Aug. 12, 2002, pub. Oct. 14, 2004) (Ex. 1006). Pet. 9–10. Patent Owner does not dispute Petitioner’s assessment. PO Resp. 10–11. Based on the current record, including our review of the ’034 patent and the types of problems and solutions described in the ’034 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest reasonable construction standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine that only the registering step of claim element 1[e] requires explicit construction and only to the extent necessary to resolve the controversy. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (noting that claim terms need only be construed to the extent necessary to resolve the controversy). “[e] registering the user through at least one of the communication networks based on the type of phone, the phone carrier, the geographic characteristics associated with the telephone number and the verification message” With respect to the “registering the user” phrase in claim element 1[e], we note that the parties appear to agree that the phrase means “storing user-specific data.” See Corrected Pet. 22; PO Resp. 14. For the purposes of this Decision, we adopt the parties’ construction and construe “registering the user” to mean “storing user-specific data.”” slip op. at 9

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

    “interpretation of the “registering . . . based on” language in claim 1 is an overly broad construction that is not reasonable in light of the Specification. Instead, we agree with Patent Owner and interpret the phrase “registering the user . . . based on the type of phone, the phone carrier, [and] the geographic characteristics associated with the telephone number” as recited in claim element 1[e] to mean using the recited items (i.e., phone type, phone carrier, and geographic characteristics) as criteria or factors when storing user-specific data. Under this construction, the phone carrier is one of the criteria or factors that are used when storing user-specific data. As an initial matter, we agree with Patent Owner that “registering the user . . . based on” the phone characteristics as recited in claim element 1[e] is not satisfied by merely determining those characteristics. See, e.g., PO Resp. 14–15. The claim language itself recites the determining step as claim element 1[b] and the registering step as claim element 1[e]. Thus, registering the user based on the phone carrier (step 1[e]) cannot be satisfied by merely determining the phone carrier (step 1[b]), as Petitioner’s proposed interpretation would appear to permit. Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention. See, e.g., CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (stating that absent evidence to the contrary, “we must presume that the use of these different terms in the claims connotes different meanings”).” slip op. at 12

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

    “Upon review of a fully developed record, we determine that Petitioner has not demonstrated that Nguyen teaches or suggests “registering the user . . . based on . . . the phone carrier.” Petitioner has not shown that Nguyen teaches or suggests that the phone carrier itself is used as a criterion or factor when storing user-specific data. We understand Petitioner to argue in the Corrected Petition that because Nguyen teaches determining each of the recited phone characteristics, and only registers the user after those characteristics are determined, Nguyen teaches registering a user based on those phone characteristics. See Corrected Pet. 45–47. Petitioner also states that Nguyen teaches that a player’s registration is either approved or rejected based on comparison step 235, which requires that collected player data is compared with “approval criteria.” Reply 18 (citing Ex. 1003, Fig. 2, 9:63– 67); see also Corrected Pet. 56 (stating that “[d]uring the registration process in Figure 2, Nguyen discloses approving or denying access to its gaming site or system upon determining characteristics of the received telephone number”). However, these allegations are not sufficient to establish that Nguyen teaches registering a user based on a phone carrier. Petitioner has not shown that the phone carrier itself is used as a criterion or factor when storing user-specific data. Although Nguyen teaches using “approval criteria” in determining whether or not to register the user, Nguyen does not disclose that the phone carrier is an approval criterion. Rather, Nguyen states that the approval criteria can include the laws of the jurisdiction where the player is located, the player’s credit rating, and the player’s relationship to owners/operators of the Internet casino. Ex. 1002, 9:54–57, Fig. 2, step 235. The gaming system determines whether to approve or reject the player’s registration “based on the comparison in step 235.” Id. at 9:63–64. The “registration approved” step 240 does not discuss a phone carrier; instead, approval requires (1) verification of whether or not the player’s registered location/address is within a jurisdiction that allows gaming, and (2) verification that the player is old enough to participate in gaming according to the rules of the jurisdiction. Id. at 9:63–10:2. Thus, Petitioner has not shown that Nguyen teaches using the “phone carrier” as a criterion or factor when storing user-specific data.” slip op. at 23

  Patent outcomesUS 7,945,034 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,034
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 29, 2017 · IPR2016-00963 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because Lin was not established as a publicly accessible printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The levels of ordinary skill proposed by the parties do not differ significantly, as suggested by Dr. Karger’s testimony that his opinions would be the same under either party’s proposal. See id. Both parties’ proposed descriptions require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 8

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

    “Our analysis does not end there, however, because “public accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 25–26. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 27–28; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 73–74; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 17; Ex. 1004; Ex. 2030. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 5 with claim 25, claim 8 with claim 26, and claim 10 with claim 27, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 22

  Patent outcomesUS 6,829,634 not shown unpatentable
  § 102 anticipationcites KSR · Graham
  Patents in suitUS 6,829,634
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 29, 2017 · IPR2015-01964 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because Lin was not established as a publicly accessible printed publication; the contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 25–26. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13

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

    “of record through the prism of the Federal Circuit’s case law regarding public accessibility of references, we conclude that Petitioner has not met its burden of showing Lin was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art could have located it exercising reasonable diligence. Therefore, we conclude Lin is not a printed publication under 35 U.S.C. § 102(a) that can be used to challenge the patentability of the claims in the ’634 patent in this proceeding. 3. Analysis of the Asserted Unpatentability Grounds Both of the asserted grounds at issue in this trial rely on Lin for teaching limitations of the challenged claims. See Pet. 14–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 10, 15, and 18 are anticipated by Lin or that claims 1–18 are unpatentable as obvious over Lin.” slip op. at 22

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

    “of record through the prism of the Federal Circuit’s case law regarding public accessibility of references, we conclude that Petitioner has not met its burden of showing Lin was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art could have located it exercising reasonable diligence. Therefore, we conclude Lin is not a printed publication under 35 U.S.C. § 102(a) that can be used to challenge the patentability of the claims in the ’634 patent in this proceeding. 3. Analysis of the Asserted Unpatentability Grounds Both of the asserted grounds at issue in this trial rely on Lin for teaching limitations of the challenged claims. See Pet. 14–59. As explained above, however, Petitioner has not established that Lin is a prior art printed publication under 35 U.S.C. § 102(a). Consequently, we determine that Petitioner has not shown by a preponderance of the evidence that claims 10, 15, and 18 are anticipated by Lin or that claims 1–18 are unpatentable as obvious over Lin.” slip op. at 22

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 5 with claim 25, claim 8 with claim 26, and claim 10 with claim 27, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 22

  Patent outcomesUS 6,829,634 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,829,634
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 23, 2017 · IPR2016-00935 · APJ William M Fink · IPR · Final written decision

  Claims 1–12 and 16–17 were not shown unpatentable because Lin was not established as a publicly accessible printed publication, and each asserted ground relied on Lin.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.’” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).” slip op. at 10

  • Strike new argumentNew argument disregardedGranted

    “We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 82–83; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2022. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 60. Patent Owner filed such a paper (Paper 64), and Petitioner filed a responsive paper (Paper 66). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “D. Contingent Motion to Amend In its Contingent Motion to Amend, Patent Owner seeks to substitute claim 1 with claim 18, claim 7 with claim 19, and claim 8 with claim 20, but only if the original claims are determined to be unpatentable. Mot. Am. 2. As explained herein, Petitioner has not shown that the original claims are unpatentable. Therefore, we dismiss Patent Owner’s Contingent Motion to Amend as moot.” slip op. at 23

  • ExcludeNot reached

    “E. Motions to Exclude Petitioner seeks to exclude certain paragraphs of Exhibits 2026 and Exhibit 2027. Pet. Mot. Exc. 4–6. Because we do not rely on the cited evidence in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude as moot. Patent Owner seeks to exclude the following exhibits on evidentiary grounds: Karger Declarations (Exs. 1019, 1024, and 1025), Little Declaration (Ex. 1004), Butler Affidavit (Ex. 1042), Bennett Declaration (Ex. 1026), and Lin (Ex. 1004, Ex. B). PO Mot. Exc. 4–12. Even considering this evidence, we have determined Petitioner has not met its burden of showing Lin was a printed publication. Patent Owner also seeks to exclude Exhibits 1002, 1005, 1008–1015, 1017, 1023, 1025–1029, 1030– 1033, 1042–1043, and 1048–1051 on evidentiary grounds. Id. at 12–15. We have not relied on any of these exhibits in this Final Written Decision. For these reasons, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 23

  Patent outcomesUS 6,714,966 not shown unpatentable
  § 102 anticipationcites KSR · Graham
  Patents in suitUS 6,714,966
• Activision Blizzard, Inc. / Electronic Arts Inc. et al. v. Acceleration Bay, LLCNo claims unpatentable
  PTAB · Mar 23, 2017 · IPR2015-01951 · APJ William M Fink · IPR · Final written decision

  Claims 1–12 and 16–17 were not shown unpatentable because Lin was not established as a prior art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not discern substantial differences in the parties’ proposed descriptions of the level of ordinary skill in the art. Both require at least an undergraduate degree in computer science or related technical field, and both require at least two years of industry experience (although Petitioner proposes four years), but both agree that an advanced degree could substitute for work experience. For purposes of this Decision, we adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition.” slip op. at 7

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

    “accessibility” requires more than technical accessibility—there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence. See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin was disseminated to members of the interested public or, for that matter, that any member of the public accessed Lin after it was posted on the CSE website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of knowing” whether anyone accessed Lin); PO Resp. 29–30. Thus, we must determine whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found Lin on the CSE Technical Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because nothing in the record suggests that the CSE Library’s website was indexed by a commercial internet search engine in 1999, two factors are relevant to our determination: whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and whether a person of ordinary skill, upon accessing the website, would have been able to find Lin. See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999 absent evidence that website containing the reference had been indexed by an internet search engine); see also Blue Calypso, 815 F.3d at 1349 (discussing factors applied in Voter Verified for determining public accessibility of online reference).” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the portions of the cited exhibits relating to the “Epidemiological Protocols” webpage, and the portions of Petitioner’s Reply citing such evidence, are outside the appropriate scope of reply. See Ex. 1026 ¶¶ 31–33; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶ 82–83; Pet. Reply 4–5. The Petition and Mr. Little’s declaration submitted therewith, as well as Mr. Little’s deposition testimony, refer only to the availability of Lin on the UCSD CSE Technical Reports Library website. Pet. 19; Ex. 1004; Ex. 2022. In its Reply, Petitioner contends for the first time that Lin was available in a different way—via the “Epidemiological Protocols” webpage—without any explanation as to why this evidence could not have been presented in the Petition. Pet. Reply 4–5. Under these circumstances, 8 The Board authorized Patent Owner to file a paper containing an itemized listing of Petitioner’s reply arguments and evidence that Patent Owner considered to be beyond the proper scope of reply. Paper 60. Patent Owner filed such a paper (Paper 64), and Petitioner filed a responsive paper (Paper 66). Patent Owner also raised the issue of evidence and arguments outside the proper scope of reply in its Motion to Exclude. PO Mot. Exc. 1–3. A motion to exclude ordinarily is not the proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules, as a motion to exclude is for challenging the “admissibility of evidence” under the Federal Rules of Evidence. 37 C.F.R. §§ 42.62, 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758, 48,767 (Aug. 14, 2012). Nonetheless, we cite Patent Owner’s Motion to Exclude and Petitioner’s Opposition to the Motion to Exclude for completeness because we have considered the entirety of the parties’ contentions on the issue. it would be a proper exercise of our discretion not to consider the evidence and arguments related to the “Epidemiological Protocols” webpage newly presented in the Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“[A] reply that raises a new issue or belatedly presents evidence will not be considered . . . . Examples of indications that a new issue has been raised in a reply include . . . new evidence that could have been presented in a prior filing.”).” slip op. at 20

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Finally, we accord little weight to the opinions of Dr. Karger and Dr. Bennett that, based on the evidence cited by Petitioner, Lin was publicly accessible. See Ex. 1024 ¶ 80; Ex. 1026 ¶ 33. Whether a reference qualifies as a printed publication is a legal conclusion, based on underlying factual determinations, Blue Calypso, 815 F.3d at 1348, and the opinions rendered by Dr. Karger and Dr. Bennett are not based on sufficient facts or the relevant case law regarding public accessibility of references.” slip op. at 22

  Patent outcomesUS 6,714,966 not shown unpatentable
  § 102 anticipationcites KSR · Graham
  Patents in suitUS 6,714,966

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.