- Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - HTC Corporation / HTC America, Inc. et al. v. Electronic Scripting Products, Inc.All claims unpatentablePTAB · Sep 12, 2019 · IPR2018-01032 · APJ William M Fink · IPR · Final written decision
Claims 1–21 are unpatentable under § 103: claims 1–6, 11–18, and 21 over Welch-HiBall and SIGGRAPH 2001; claims 7–11 and 19–21 over those references and Romanik.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On January 18, 2019, we granted Valve Corporation’s Motion for Joinder in Valve Corp. v. Electronic Scripting Products, Case IPR2019-00074 (PTAB filed Oct. 11, 2018). Paper 12, 10. In doing so, we joined Valve Corporation to this proceeding, resulting in HTC Corporation, HTC America, Inc., and Valve Corporation (collectively “Petitioner”) challenging the claims of the ’935 patent. Id.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide its own explanation of the level of ordinary skill in the art. Patent Owner also does not oppose Petitioner’s proffered level of ordinary skill in the art. Upon consideration of the record, including the level of skill reflected by the cited references, Welch-HiBall and SIGGRAPH 2001, we agree with and therefore adopt Petitioner’s proposed definition for the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of institution, we determined it was unnecessary to construe any of these claim terms expressly to address the parties’ arguments. Inst. Dec. 6. Similarly, in view of the complete record, we find that it is unnecessary to provide a separate explicit claim construction to resolve the issues before us. Instead, to the extent the parties’ arguments are based on the scope of the claims, we resolve the disputed claim scope in the context of the parties’ arguments as set forth below.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner contends SIGGRAPH 2001 is a set of printed, bound course materials distributed to attendees of a course taught by Dr. Welch and colleagues on August 12, 2001, at a widely attended conference (called “SIGGRAPH”), and, therefore, is prior art under 35 U.S.C. § 102(b). Pet. 19–21. Petitioner provides evidence in support of SIGGRAPH 2001’s availability, including Dr. Welch’s testimony regarding the distribution of the course materials at the conference. See id. (citing Exs. 1025–1029, 1036; Welch Decl. ¶¶ 104–108). Patent Owner does not dispute these contentions. In view of the evidence demonstrating the public availability of SIGGRAPH 2001, Petitioner has demonstrated persuasively that SIGGRAPH 2001 is prior art under 35 U.S.C. § 102(b).” slip op. at 9
Patent outcomesUS 8,553,935 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,553,935 - Trans Ova Genetics, LC v. Xy, LLCNo claims unpatentablePTAB · Jun 26, 2019 · IPR2018-00250 · APJ David Cotta · IPR · Final written decision
Claims 1–16 were not proven unpatentable because Petitioner failed to establish that Lu, relied on in every asserted obviousness ground, was prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable
“Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); In re Katz, 687 F.2d 450, 454 (Fed. Cir. 1982). “The question of whether a reference is a work of others for the purposes of § 102(a) is, like that of inventorship, a question of law based on underlying facts.” Allergan, 754 F.3d at 969 (citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). In determining whether a reference is the work of the named inventor(s), the inquiry focuses on whether the relevant content of the reference – which includes “the design, trial, and analysis of results” – was solely the work of the inventor(s). See Allergan, 754 F.3d at 969; Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003) (“What is significant is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.”).” slip op. at 14
- Expert testimonyPatent owner expert creditedOther
“9 We acknowledge that Mr. Miles, as a former board member of XY, as well as XY’s long-time patent counsel and the filer of the ’769 priority provisional applications, may have some interest in the outcome of this IPR and that Mr. Miles is being compensated by XY for time spent relating to his testimony. Ex. 2003 ¶¶ 4–7; Ex. 1033, 21:7–14, 158:8–22. However, we note that Mr. Miles’ testimony was under oath and subject to cross-examination. We find Mr. Miles’ testimony to be credible as to the facts for which it is cited herein.” slip op. at 10
- ExcludeMotion to exclude, deniedMixed
“Exclude. Paragraph 12 of the Miles Declaration reads as follows: “Also[,] in the late 1990s, XY had a collaborative research agreement with a bull stud called Cogent in the United Kingdom.” Ex. 2003 ¶ 12.11 This statement is not itself hearsay because it was asserted by Mr. Miles while testifying in this proceeding, i.e., “at the current trial.” See Fed. R. Evid. 801(c). Petitioner contends that paragraph 12 is inadmissible because it is based, at least in part, on statements contained in Exhibits 2001 and 2002. We are not persuaded by this argument because paragraph 12 does not rely on Exhibits 2001 and 2002. See Ex. 2003 ¶ 12; Ex. 1033, 59:22–62:18 (Mr. Miles’ testimony on basis and meaning of paragraph 12 of his declaration). Petitioner also argues that paragraph 12 should be excluded as improper opinion testimony because it is based on Exhibits 2001 and 2002, to which, according to Petitioner, Mr. Miles is not competent to testify. Mot. 13–14. We are not persuaded by Petitioner’s argument because, as discussed, paragraph 12 does not rely on Exhibits 2001 and 2002.” slip op. at 22
Patent outcomesUS 8,652,769 not shown unpatentable§ 102 anticipationPatents in suitUS 8,652,769 - Unified Patents Inc. v. Vilox Technologies, LLCAll claims unpatentablePTAB · Apr 18, 2019 · IPR2018-00044 · APJ John D Hamann · IPR · Final written decision
Claims 1–4, 7–9, and 13 are unpatentable over Maloney and Bertram; claims 5–6 are unpatentable over Maloney, Bertram, and Kanevsky. The motion to amend was denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in Computer Science or an equivalent field (or equivalent industry experience) and at least one year of experience designing, implementing, and using database management systems.” Pet. 6–7 (citing Ex. 10057 ¶¶ 22–25). Patent Owner’s expert, Dr. Chu, makes the same assessment of the level of skill in the art. Ex. 2017 ¶ 21. We agree with and apply Petitioner’s definition of the level of skill in the art. See Ex. 1005 ¶¶ 22–24. We find that this definition is consistent with the level of ordinary skill in the art reflected by the prior art of record. 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).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In summary, we find no principled basis to replace “determining” with “ascertaining or identifying,” or to require Patent Owner’s “active step.” Nor do we find a principled basis to limit “database schema” as the parties propose. Accordingly, we do not adopt either of the parties’ proposed constructions. Having considered the evidence presented, we conclude that no further express claim construction of this limitation is necessary to resolve the issues presented in this trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“The fact that a term “has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of” the intrinsic evidence. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 752 (Fed. Circ. 2016). To that end, statements made during prosecution are relevant to claim construction, and can serve to define, explain, or disavow claim scope. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (citations omitted). This includes “statement[s] made during prosecution of related patents[, which also] may be properly considered in construing a term common to those patents.” Id. Based on the statements made, and the definition offered (Ex. 1003, 174), during prosecution of the ’423 patent’s parent application, we find persuasive Patent Owner’s interpretation that “truncation” means: “To cut off the beginning or end of a series of characters; specifically, to eliminate one or more of the least significant (typically rightmost) digits.”” slip op. at 16
- Expert testimonyPatent owner expert discountedDecided for patent owner
“with “ascertaining or identifying” in its proposed construction. See PO Resp. 27; Ex. 2017 ¶ 45. Dr. Chu appears to piece this construction together by (i) agreeing with Petitioner’s expert, Dr. Greenspun, that the ’423 patent refers to “identifying” (rather than “determining”) a database schema and (ii) opining that “[a] common definition for ‘identifying’ is ‘to ascertain the origin, nature, or characteristics of.’” Ex. 2017 ¶ 45. Dr. Chu opines that one of ordinary skill in the art “would have understood ‘determining’” to mean “ascertaining the components of.” Id. Dr. Chu further opines that one of ordinary skill in the art would have understood “determining” means “ascertaining or identifying,” in the context of “determining a database schema.” Id. ¶¶ 45, 49. Dr. Chu, however, fails to identify factual support for why “determining” should be replaced with “ascertaining or identifying.” Id. Accordingly, we find that the above cited testimony of Dr. Chu is entitled to little or no weight because it is conclusory and lacks factual support. See 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). Moreover, Patent Owner admits that determining, ascertaining, and identifying are synonyms for each other. Tr. 36:3–9. Thus, Patent Owner does not explain how” slip op. at 12
Patent outcomesUS 7,302,423 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,302,423 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Institution deniedPTAB · Apr 9, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Hewlett Packard Enterprise had previously filed a civil action challenging the validity of a claim, triggering the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Action,” bars institution of an inter partes review when a petitioner filed a civil action challenging the validity of a claim of a patent before the date on which that petitioner filed a petition requesting an inter partes review of that patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an exception for a civil action that was dismissed without prejudice. Id.; see Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew how to provide an exception to a statutory bar by including an exception to the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to- Call, 899 F.3d at 1331. Thus, Congress could have included an exception to the § 315(a)(1) bar for a civil action that was dismissed without prejudice, but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.” slip op. at 6
Discretionary denialPatents in suitUS 8,155,012 - Cisco Systems, Inc. v. Chrimar Systems, Inc.Institution deniedPTAB · Mar 12, 2019 · IPR2018-01515 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Cisco did not show that the cited art disclosed the claimed predetermined response for claims 1, 15, 34, 38, 49, and 64.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review must not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the evidence presented and the arguments made, we determine that Cisco has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“configured to be interrogated” found in the respective preambles of claims 1 and 38 demonstrate that the preambles are “superfluous and [have] no limiting effect because they “merely provide an intended use for the claimed apparatus.” Pet. 6 (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010)). Cisco’s argument that the preambles are “superfluous,” however, ignores the antecedent basis the preambles provide to limitations found in the body of the claims. Although Cisco is correct that preamble language that merely states a purpose or intended use of an invention is generally not treated as limiting the scope of a claim, “when limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015). The Catalina decision that Cisco relies upon is in accord with the Pacing holding and further holds that a preamble may also be limiting when it “is essential to understand limitations or terms in the claim body.” 289 F.3d at 808. In this case, we find the preambles of both claims 1 and 38 are limiting because they provide an antecedent for positively recited limitations and are essential to understanding those limitations. In particular, the preamble of claim 1 recites, “[a] BaseT Ethernet device configured to interrogate for [a] predetermined response via at least one direct current (DC) signal,” which the body of the claim subsequently refers to by reciting, “the predetermined response carried by at least two different magnitudes in slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The problem with Cisco’s proposed interpretation is that it broadly recites any two magnitudes of DC current flow, regardless of whether those magnitudes of DC current are communicating a response that was predetermined. Thus, within the context of the claims, Cisco’s proposed interpretation appears to render “predetermined” meaningless because any two magnitudes of DC current flow encompasses even those responses that would not have been predetermined. Furthermore, claims 1 and 38 expressly state that the “predetermined response” is “carried by at least two different magnitudes in the flow of the at least one direct current (DC) signal.” Cisco’s proposed interpretation improperly conflates the predetermined response with the two different magnitudes of DC current flow used to carry the predetermined response. The plain language of the claims indicates that the two are not synonymous––the at least two different magnitudes of direct current are identified as the means by which the predetermined response is transferred. The specification of the ’825 patent supports our interpretation that a “predetermined response” is not just any two magnitudes of DC current flow. At several points, the specification discusses a BaseT Ethernet device that sends an interrogating signal from a central module to a remote module by way of a DC signal to request information previously defined. See Ex. 1006, 5:37–6:52, 9:1–17, 10:35–42, 15:56–16:35. For example, the specification describes the remote module as providing “a preprogrammed unique identification number” in response to a status request initiated by the central module. Id. at 6:6–14. This information is then compared to information predefined to be what the status signal was intended to retrieve and a determination is made about whether the response is valid. Id. at 6:30–44; see also 9:1–17, 10:35–42, 16:30–35. Thus, the examples of a predetermined response that the ’825 patent specification provides were known identification numbers.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Cisco contends that a person of ordinary skill in the art “would have had at least a B.S. degree in electrical engineering or computer science, or the equivalent, and at least three years of experience in the design of network communication products.” Pet. 9 (citing Ex. 1001 ¶ 42). Patent Owner does not provide an assessment of the appropriate level of skill in the art. See generally Prelim. Resp. We are persuaded that the assessment proposed by Cisco is correct. Further, in this case, the applied prior art reflects the appropriate level of skill at the time of the claimed invention, which is consistent with the level of skill that Cisco proposes. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,812,825 - Telesign Corporation v. Twilio Inc.All claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01977 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–3, 5, 14, 16, 17, and 19 are unpatentable as obvious over Maes and Ransom, alone or with Jiang; the ETSI-based grounds were not proven.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer science with at least two years of experience in application development.” Pet. 8 (citing Ex. 1009 ¶¶ 49–50). Patent Owner argues that a person of ordinary skill in the art would have had “the equivalent of a four-year degree from an accredited institution in computer science, computer engineering, electrical engineering, software engineering, or the equivalent, and approximately 1–2 years of professional experience with or exposure to computer networking, telephony networking protocols, and various APIs,” but “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” PO Resp. 10 (citing Ex. 2010 ¶ 32).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“transfer (REST) API” to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and, hypermedia as the engine of application state.” PO Resp. 10. Petitioner does not propose an express construction for the term “representational state transfer (REST) API,” but acknowledged at the oral hearing that Patent Owner’s proposed construction “simply makes express what [Petitioner] implies.” Tr. 32:24–33:13. Patent Owner’s proposed construction is supported by the specification of the ’376 patent and the extrinsic evidence. Specifically, the ’376 patent indicates that the term “REST” has its ordinary meaning in the art (Ex. 1001, 2:15–16, 8:12–14), and Patent Owner’s declarant, Dr. Negus, explains that a person of ordinary skill in the art would understand the term “REST API” to refer to the interface constraints set forth in Patent Owner’s proposed construction (Ex. 2010 ¶¶ 163–166). Patent Owner’s proposed construction also is consistent with the construction that was adopted by the District Court in a related case. Ex. 2005, 16–22. Therefore, the term “representational state transfer (REST) API” is construed to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and hypermedia as the engine of application state.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successAnalogous artMotivation foundUnpatentable
“had reason to combine the cited teachings of Maes and Ransom. Pet. 12, 14, 22–24, 27–29 (citing Ex. 1009 ¶¶ 51–58, 62–75, 80–82, 88). We agree with and adopt Petitioner’s reasoning. Specifically, Maes and Ransom relate to the same field of endeavor as the ’376 patent, namely, web services. Pet. 12, 14; Ex. 1001, 1:66–2:10, 15:51–61; Ex. 1003, 3:52–65; Ex. 1004 ¶¶ 5, 42, 46, 57–58, 69–70, 78; Ex. 1009 ¶¶ 51–58. It would have been obvious to combine the cited teachings of Maes and Ransom because Ransom’s REST API is a common web service model that provides similar functionality and has several design advantages over Maes’s SOAP API, such as increased interface flexibility and lower bandwidth requirements. Pet. 22–24, 27–29; Ex. 1004 ¶ 163; Ex. 1009 ¶¶ 62–75, 80–82. It also would have been obvious to combine the cited teachings of Maes and Ransom because the teachings of Maes and Ransom are interrelated. Pet. 24, 28–29; Ex. 1009 ¶ 88; see KSR, 550 U.S. at 418 (“Often, it will be necessary . . . to look to interrelated teachings of multiple patents.”). Namely, Maes teaches using a web service (Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1009 ¶ 88), and Ransom explains that REST is one of two common web service models (Ex. 1004 ¶ 163; Ex. 1009 ¶ 88).” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedMixed
“Therefore, because the evidence of record indicates that Petitioner had access to some of Patent Owner’s technology, but does not show specifically that Petitioner copied the invention claimed in the ’376 patent, the objective indicia of copying at best only weighs slightly in favor of non-obviousness.” slip op. at 31
Patent outcomesUS 8,755,376 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,755,376 - Telesign Corporation v. Twilio Inc.All claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01976 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–6, 9, and 13 are unpatentable as obvious over Maes and Ransom; the Board did not find the claims unpatentable on the ETSI-based grounds.
RulingsFinal written decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner’s argument is not persuasive. “The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). As such, “[t]he field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Here, the ’465 patent is directed to “making telephony application development as easy as web programming” by using “the familiar web site visitor model” that allows developers to “reuse their existing tools and techniques.” Ex. 1001, 1:66–2:10; Ex. 1010 ¶ 54. Ransom is directed to transporting data between a mix of secure and unsecure networks in an electric power distribution system using “a communication network” that “is a publicly accessible data network such as the Internet or other network or combination of sub-networks that transmit data utilizing the transmission control protocol/internet protocol (‘TCP/IP’) protocol suite.” Ex. 1004 ¶¶ 5, 58; Ex. 1010 ¶¶ 57–58. Thus, both the ’465 patent and Ransom are directed to the field of web services, with the ’465 patent focusing on telephony applications and Ransom focusing on electric power distribution applications. See Unwired Planet, 841 F.3d at 1001 (“Here, both Galitz and the ’205 patent are in the field of interface design, with Galitz focusing on graphical user interfaces and the ’205 patent focuses on interfaces for location-based services.”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments are not persuasive. Petitioner presents factual support from the prior art and also from Petitioner’s declarant, Dr. Nielson, that combining the cited teachings of Maes and Ransom would have been nothing more than using Ransom’s URI according to its established function of identifying a message recipient to yield the predictable result of sending a message to the identified recipient. Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 62. Petitioner also presents factual support from the prior art and from Dr. Nielson that it would have been obvious to combine Maes and Ransom based on their interrelated teachings. Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 58. Because these reasons for combining Maes and Ransom are sufficient, Petitioner need not show a deficiency in Maes, a teaching, suggestion, or motivation in Maes or Ransom, or a market or design demand for the combination. See KSR, 550 U.S. at 416, 418.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Patent Owner’s arguments are not persuasive. Petitioner presents factual support from the prior art and also from Petitioner’s declarant, Dr. Nielson, that combining the cited teachings of Maes and Ransom would have been nothing more than using Ransom’s URI according to its established function of identifying a message recipient to yield the predictable result of sending a message to the identified recipient. Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 62. Petitioner also presents factual support from the prior art and from Dr. Nielson that it would have been obvious to combine Maes and Ransom based on their interrelated teachings. Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 58. Because these reasons for combining Maes and Ransom are sufficient, Petitioner need not show a deficiency in Maes, a teaching, suggestion, or motivation in Maes or Ransom, or a market or design demand for the combination. See KSR, 550 U.S. at 416, 418.” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for patent owner
“and launch schedule,” “technical architecture plans,” “programming model,” “Application Programming Interfaces (API),” “marketing plan,” “business and/or financial projections,” and “clients.” Ex. 2041, 3. But Patent Owner does not explain how the NDA shows that Petitioner had access to and copied the specific Programmable Voice product. See PO Resp. 55–56; Tr. 75:16–76:7, 77:20–78:4; Ex. 2041, 1–3. Similarly, Patent Owner does not explain how the accounts created by Petitioner’s co-founder show that Petitioner had access to and copied the specific Programmable Voice product. See PO Resp. 55–56; Tr. 75:16–76:7, 77:20–78:4; Exs. 2047–2054, 2063–2066. Further, Patent Owner’s copying allegation focuses on Petitioner’s change from a SOAP-based product to a REST-based product. PO Resp. 55–56. However, Patent Owner acknowledged at the oral hearing that the challenged claims of the ’465 patent do not mention REST. Tr. 45:2–3 (“[T]he ’465 patent itself doesn’t have anything about REST or SOAP in the claims.”). Patent Owner similarly acknowledged at the oral hearing that REST is not the point of novelty of the ’465 patent. Id. at 45:4–7 (“REST and SOAP are just implementation methods . . . that’s not what the point of novelty of these patents is at all.”), 57:13–15 (“SOAP and REST are just languages, API, they’re formats. There’s nothing special about either of them.”). As a result, even if Petitioner changed from a SOAP-based product to a REST-based product, that would not show that Petitioner copied the technology claimed in the ’465 patent. Therefore, because the evidence of record indicates that Petitioner had access to some of Patent Owner’s technology, but does not show specifically that Petitioner copied the invention claimed in the ’465 patent, the objective indicia of copying at best only weighs slightly in favor of non-obviousness.” slip op. at 28
Patent outcomesUS 8,837,465 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,837,465
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.