• K/S Himpp v. Bragi GmbHAll claims unpatentable
  PTAB · Mar 7, 2025 · IPR2023-01205 · APJ Stacey G White · IPR · Final written decision

  Claims 1–14 were held unpatentable over the asserted prior art, and the revised motion to amend was denied because proposed substitute claims 15–28 were also unpatentable.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–14 of the ’688 patent are unpatentable.15 In addition, we determine that Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 15–28 are unpatentable. Our determinations are summarized below.” slip op. at 89

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “(d) Conclusion for Obviousness of Claim 15 For the reasons provided above, Petitioner has sufficiently shown that each of Petitioner’s asserted grounds (Hain in combination with Rass, Hain in combination with Shaffer and Rass, Hain in combination with Aumer, and Hain in combination with Shaffer and Aumer) renders proposed substitute independent claim 15 obvious. We have considered Patent Owner’s arguments and we do not agree for the reasons addressed above. Accordingly, we are persuaded that Petitioner has shown, by a” slip op. at 79

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “D. Anticipation by Hain Petitioner asserts that claims 1, 2, and 4 are unpatentable under 35 U.S.C. § 102 as anticipated by Hain, citing the Declaration of Dr. Kiaei for support. Pet. 17–29 (citing Ex. 1002). Patent Owner declined to file a Patent Owner Response and waived all arguments as to Petitioner’s challenges to the original claims. Tr. 35:9–16. In the absence of arguments and evidence from the Patent Owner, we still review Petitioner’s assertions to ascertain whether Petitioner has met its burden to establish the unpatentability of the original claims by a preponderance of the evidence. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For the reasons explained below, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1,2, and 4 are anticipated by Hain. 1. Independent Claim 1 Petitioner’s argument regarding the teachings of Hain in regards to” slip op. at 18

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

    “E. Obviousness over Hain and Shaffer Petitioner asserts that claims 1–6, 8–12, and 14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain and Shaffer, citing the Declaration of Dr. Kiaei for support. Pet. 29–61 (citing Ex. 1002). We have reviewed Petitioner’s arguments and evidence and based on the evidence in the complete record, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 1–6, 8–12, and 14 would have been obvious over the combination of Hain and Shaffer. For example, Petitioner’s arguments regarding independent claim 1 may be summarized as follows: Petitioner asserts that Shaffer teaches the preamble7 of claim 1, which recites a method for power control of a wireless earpiece. Pet. 29–31 (citing Ex. 1003 ¶¶ 32, 34, 62, 63, Figs. 3A, 10; Ex. 1002 ¶¶ 56–57). Petitioner contends that Shaffer’s wireless earbuds 1010 and 1012 are powered down automatically when they are placed into their storage case 11. Id. at 30. Specifically, Petitioner argues that Shaffer’s earbuds enter a low power mode in response to a magnetic sensor detecting that the earbuds are in their storage case. Id. at 31. Petitioner further contends that Shaffer in view of Hain teaches” slip op. at 20

  Patent outcomesUS 10,397,688 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,397,688
• K/S Himpp v. Bragi GmbHAll claims unpatentable
  PTAB · Jan 21, 2025 · IPR2023-01150 · APJ Larry J Hume · IPR · Final written decision

  Claims 1–21 are unpatentable; proposed substitute claims 22–42 are unpatentable, and the revised motion to amend is denied.

  RulingsFinal written decision

  • Burden

    “also determine that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 22–42 are unpatentable. Accordingly, we deny Patent Owner’s Revised Motion to Amend.” slip op. at 56

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “also determine that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 22–42 are unpatentable. Accordingly, we deny Patent Owner’s Revised Motion to Amend.” slip op. at 56

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Accordingly, we are persuaded that Petitioner has shown by a preponderance” slip op. at 22

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

    “d. Conclusion for Ground 4: Obviousness of Claim 1 in view of Shaffer and Hain As discussed above, Petitioner’s analysis addresses how the combined” slip op. at 48

  Patent outcomesUS 9,843,853 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 9,843,853
• Netflix, Inc. v. Videolabs, Inc.All claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00628 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1–4 and 8–11 as anticipated by Mehta, and claims 1–14 as obvious over Mehta and Schläpfer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. 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). 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.” slip op. at 9

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

    “We construe only those claim terms that require analysis to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner agree that no claim terms require specific construction to resolve the unpatentability issues presented in the Petition. Pet. 23; PO Resp. 10–11. We agree and do not construe any terms.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Analysis We agree with Petitioner. Mehta discloses storing “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Ex. 1003 ¶ 98. Mr. Wechselberger testifies that this disclosure shows that Mehta’s “MAS receives, stores and supports functionally equivalent programs capable of running on multiple devices because each program corresponds to a different device having different device capabilities (e.g., written using different languages).” Ex. 1002 ¶ 66. This testimony is consistent with that of Dr. Goodrich, who testifies that “each application has a single version made for a particular device type.” Ex. 2020 ¶ 66. Dr. Goodrich later testifies that paragraph 98 of Mehta describes that there could be two functionally equivalent programs with the same name that are compatible with a single user’s computer. Id. at ¶ 88; see PO Resp. 31–32 (citing Ex. 2020 ¶¶ 87–88). We do not credit this later testimony, because it is inconsistent with Dr. Goodrich’s earlier testimony that “each application,” or program of Mehta, is “made for a particular device type.” Ex. 2020 ¶ 66. We agree with Mr. Wechselberger and find that a person of ordinary skill in the art at the time of invention would have understood that Mehta’s disclosure of functionally equivalent programs having the same name that are capable of running on multiple kinds of devices means that each program corresponds to a different device having different capabilities. Further, Mehta discloses that “the MAS only lists those applications that are supported by the subscriber’s device. This allows the subscriber to avoid the problem of having to explicitly select a compatible application.” Ex. 1003 ¶ 117; see Pet. 36–37 (citing Ex. 1002 ¶¶ 75, 77). Mr. Wechselberger testifies that a person of ordinary skill in the art at the time of invention would have understood this disclosure to mean that the MAS provides the subscriber with only a single subscriber-appropriate version that will work for the subscriber. Ex. 1002 ¶ 77. Although Patent Owner contends that Mehta is silent on whether only a single description would be provided if there were multiple implementations (PO Sur-Reply 10–11), we agree with Mr. Wechselberger and find that when multiple implementations have the same name, each implementation corresponds to a different device, and therefore, the MAS would only present to the subscriber the one implementation that works with the subscriber’s device. Ex. 1002 ¶¶ 66, 75, 77.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “piece of content, while the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich, in his deposition, when asked if “one of ordinary skill in the art at the time of the ’790 patent would also understand that Microsoft Word for Windows and Microsoft Word for Mac are also functionally equivalent, correct?” answered “Yes . . . . But they would be even stronger than simply functionally equivalent. They would be different implementations of the same product.” Ex. 1029, 43:14–24. However, later in his deposition, Dr. Goodrich testifies that Microsoft Word for Windows and Microsoft Word for Apple Mac are separate applications, not different implementations of the same application. Ex. 1029, 48:1–20. We disagree with this later testimony. Neither Dr. Goodrich nor Patent Owner persuasively explains why Dr. Goodrich changed his unambiguous position from both his declaration and his earlier deposition testimony. For example, Dr. Goodrich testifies in his deposition that “for the Lion King example, a .MP3 and a .MOV are different implementations of the same product. They’re also functionally equivalent, but functionally equivalent is broader.” Ex. 1029, 45:7–11. Dr. Goodrich continues, “when Mehta is disclosing functionally equivalent, it is not referring to it as different implementations of the same product. Instead, it’s [describing] how to disambiguate [applications] not clustered in terms of implementations . . . based on other metadata.” Id. at 45:14–21. This explanation is unpersuasive because it is inconsistent with Dr. Goodrich’s declaration testimony, in which Dr. Goodrich explicitly testifies that the different versions of Lion King, as well as the different versions of Microsoft Word, are different implementations of the same product. Ex. 2020 ¶ 39. Specifically, in his declaration, Dr. Goodrich testifies that the “various versions of Lion King (such as an .mp3 file or an .mov file) are the implementations of the Lion King. For another example, . . . the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich testifies again that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Ex. 2020 ¶ 70. Further, the reason given in the explanation in his deposition, that Mehta needs to disambiguate applications that are not clustered in terms of implementations based on other metadata, would also apply to the different versions of Lion King, yet Dr. Goodrich consistently testifies that these different versions are different implementations, both in his declaration and in his deposition. Id.; Ex. 1029, 45:7–10. Petitioner contends, and we agree, that the inconsistent testimony of Dr. Goodrich appears to be an attempt to cure Patent Owner’s and Dr. Goodrich’s incomplete analysis of Mehta’s disclosure. See Reply 7–8. In particular, the Petition quotes Mehta’s disclosure that the MAS stores “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Pet. 28 (quoting Ex. 1003 ¶ 98). Dr. Goodrich addresses this disclosure by explaining that two applications, such as Microsoft Word and Apple Pages, are functionally equivalent but are two different applications, not multiple implementations of a single application. Ex. 2020 ¶ 70. In this analysis, Dr. Goodrich does not address the full disclosure of Mehta, which describes that the “functionally equivalent programs hav[e] the same name” (Ex. 1003 ¶ 98), such as Dr. Goodrich’s example of Microsoft Word for Windows and Microsoft Word for Apple Macs. See id. Thus, although Dr. Goodrich is correct in testifying that some functionally equivalent programs, such as Microsoft Word and Apple Pages, are not different implementations of an item of digital content, he is also correct in testifying that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Id. Yet Dr. Goodrich does not identify any difference between the multiple implementations of Microsoft Word and the functionally equivalent programs having the same name as described by Mehta.” slip op. at 18

  Patent outcomesUS 7,233,790 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,233,790
• Netflix, Inc. v. VL Collective IP LLCAll claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00630 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 4, 7, 8, 10, 13, 14, 16, 19, 20, and 22 are anticipated by Cassin; all claims are also obvious over Cassin and Huston and over Huston.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. 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). 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.” slip op. at 7

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

    “We construe only those claim terms that require analysis to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner contends that “no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Pet. 15–16. Similarly, Patent Owner contends that “no express construction of any term is required.” PO Resp. 18. For purposes of this decision, we do not construe any claim terms.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “is included in the indication. See PO Resp. 40. However, the ’559 patent does not describe what is included in the claimed “listing.” Rather, throughout the disclosure of the ’559 patent, the phrase “the listing of one or more pieces of content stored in memory” or a variation thereof is repeated without any further elaboration. Ex. 1001, 3:13–15, 3:26–36, 12:22–26, 12:50–52, 13:29–30. For example, the Specification does not disclose that the listing of one piece of content includes the title of the piece of content, nor an identification number of the piece of content, nor any other information about the piece of content. The disclosed listing is no more than an item of information that indicates that a specific piece of content is stored in the memory of the terminal. Therefore, the plain and ordinary meaning of the claim term “a listing of one . . . piece[] of content stored in the memory,” read in light of the Specification of the ’559 patent, encompasses an item of information that indicates that a specific piece of content is stored in the memory of the terminal. We agree with Petitioner and find that Cassin’s indication that the client currently has the media content item describes an item of information that indicates that a piece of content is stored in the memory of the terminal. Therefore, Cassin’s indication that the client currently has the media item describes “a listing of one . . . piece[] of content stored in the memory” as claimed.” slip op. at 33

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Analysis We agree with Petitioner and find that Cassin’s offer to download an item describes “a response . . . that instructs the terminal to perform one or more actions” as claimed. Reply 11 (citing Pet. 25–26), 13–14. Cassin discloses that the server uses the user information received from the client to query a database in the server for a list of content to which the user is entitled. Ex. 1004 ¶¶ 162, 164. Cassin discloses that the server offers an item from the list to the client for downloading. Id. ¶ 163 (The server offers every item on the list), ¶ 164 (The server attempts to send an item on the list). Cassin discloses that the client checks to see if it already has the item. Id. ¶¶ 163, 164. If the client has the item, the client refuses the download offer. Id. If the client does not have the item, the client accepts the download of the item and stores the item in its content repository. Id. Thus, the client responds to the offer to download an item from the server by (a) checking to see if it has the offered item, and (b) either refusing the download if the client has the item or accepting the download if the client does not have the item. Therefore, we agree with Petitioner and find that “when the server offers a media item for the client to download, the server is ‘instructing the terminal to perform one or more actions to thereby control the flow of content.’” Reply 11 (citing Pet. 25–26). We agree with Petitioner that in response to the server’s offer, “the client will either ‘refuse the download’ (if it has the content) or ‘accepts the download of the media content item from the server and stores the media content in the local content repository’ (if the client does not have the content).” Id. (citing Ex. 1004 ¶ 163). We agree with Petitioner and find that by checking to see if it has the item, and “by refusing or accepting the download offer, the client is doing ‘something to control the flow of content’ in response to the server’s instruction.” Id. (quoting PO Resp. 23). We disagree with Patent Owner’s contentions to the contrary. In particular, we disagree with Patent Owner’s contention that the server’s offer “has not instructed the client to do anything—the client takes action based on other factors (whether or not it already has the media content item).” PO Sur-Reply 3; see PO Resp. 31–32; Ex. 2002 ¶¶ 91–93. We find that the client performs the actions of checking to see if it already has the item and, depending on whether it has the item, either accepting or refusing the offer, in response to receiving the offer from the server. Ex. 1004 ¶¶ 163, 164; Ex. 1003 ¶¶ 72–75. Thus, we agree with Petitioner that the server’s offer instructs the client to (a) determine whether the client has the item and (b) depending on whether the client has the item, either accept or refuse the offer, which describes “instructing the terminal to perform one or more actions to thereby control the flow of content” as claimed. We further find that, because the offered item is from the server’s list which was determined using information from the user and information from the server’s database, the offer to download the item describes “a response to the content status . . . based upon the terminal status information and the server status information” as recited in claim 1.” slip op. at 26

  Patent outcomesUS 7,440,559 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,440,559
• Cisco Systems, Inc. v. Netsocket, Inc.All claims unpatentable
  PTAB · Sep 13, 2024 · IPR2023-00607 · APJ Richard M Lebovitz · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1–5, 7, and 8 as obvious over Xiao, Schelen-1, and Gibson; claims 4–8 as obvious over those references and Schelen-2.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner utilizes Petitioner’s proposed level of skill in the art. PO Resp. 4–5. For purpose of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, which is also consistent with the level of skill reflected in the Specification of the ’698 patent and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

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

    “Patent Owner states that “the Board would benefit from expressly construing the preamble of Claim 1 as limiting to make clear Claim 1’s bounds in the context of Petitioner’s arguments.” PO Resp. 5. Patent Owner’s main point, as we understand it, is that the preamble’s recitation of “wherein the bandwidth broker (BB) is associated to each network domain” is limiting because subsequent limitations in the claim, and dependent claims 2 and 3, “refer[] to the preamble’s statement that there is a bandwidth broker associated with each of the network domains involved in the path from source to destination networks.” Id. at 6–7. Petitioner responds that “[r]egardless of whether the preamble is limiting, the prior art renders obvious the preamble.” Pet. Reply 7. We agree with Patent Owner that the preamble to the claim is limiting, and treat it as such in this Decision.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Patent Owner’s arguments are not supported by persuasive evidence. While Xiao indicates that a bandwidth broker “may not be needed in MPLS-based ISP networks,” Xiao does not disparage or discredit its presence in such a network. “[T]he fact that there may be reasons a skilled artisan would prefer one over the other does not amount to a teaching away from the lesser preferred but still workable option.” Bayer Pharma AG v. Watson Labs, Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017); see also Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Here, Patent Owner has not provided evidence that Xiao “criticize[s], discredit[s], or otherwise discourage[s]” the use of a bandwidth broker in an MPLS network. Patent Owner has also not established that a bandwidth broker would be inoperable when used in an MPLS-based network. “[A] reference may teach away from a use when that use would render the result inoperable.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007). To the contrary, the evidence of record points to the opposite. First, Xiao’s statement that bandwidth brokers might not be needed in an MPLS network, is also an indication that, on the other hand, they may be included in an MPLS network and therefore would be expected to be operable when combined. Indeed, the ’698 patent discloses that RATES in the MPLS domain performs admission control for a flat link state-domain, a characteristic of a bandwidth broker. Ex. 1001, 4:11–21.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We do not agree that this is a new argument. In the Decision, we preliminarily adopted Petitioner’s proposal that Gibson’s admission manager is a bandwidth broker. Institution Dec. 39 (citing Pet. 54 (citing Ex. 1006, 6:14–16; Ex. 1003 ¶¶ 254–255)). The Decision also preliminarily adopted Petitioner’s proposal that Gibson’s administrative server and connection manager correspond to the claimed intra-domain broker. Institution Dec. 39 (citing Pet. 57–58). The Decision to Institute, summarizing Petitioner’s argument, explained that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker), and that the administrative server works with the connection manager to register paths. Decision to Institute 40–41. See Ex. 1003 ¶¶ 274 (“Gibson discloses that the admission manager (‘bandwidth broker’) passes various resource requests to the administrative server and the connection manager (‘at least one intra-domain (1DB)’), which renders obvious ‘passing resource requests from the Bandwidth Broker (BB).’”); 277 (“As shown below at Gibson’s Figure 2, a ‘Request’ for a new LSP is passed from the admission manager (‘bandwidth broker’) to both the administrative server and also to the connection manager (collectively ‘at least one intra-domain (1DB)’).”). The statement by Dr. Houh in his second declaration “that Gibson’s coordination among the admission manager [BB] and the administrative server [IDB] is consistent with the claimed approach to LSP setup” reflects the original argument in the Petition that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker). Institution Dec. 40–41. The argument has not changed and, in light of the complete record, we come to the same determination that we made in the Decision to Institute. The admission manager was described by Dr. Houh as requesting paths from the administrative server and the server working with the connection manager. Ex. 1003 ¶¶ 274–277. Thus, there is “coordination” between the admission manager, and administrative server” slip op. at 66

  Patent outcomesUS 7,190,698 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,190,698
• Roofr Inc. v. Pictometry International Corp.All claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00436 · APJ Garth D Baer · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Pershing-789 and Bailey, with Abhyanker added for claims 6, 7, and 14–18; the alternative Kennedy grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends one skilled in the art “would have had a Bachelor’s degree in an academic area emphasizing construction, architecture, and/or engineering, or similar discipline, and at least two years of experience with roofing measurement and estimation, aerial imagery use in roofing estimation, and roofing measurement software.” PO Resp. 4. Patent Owner’s definition is substantively similar to Petitioner’s. See Pet. 2 (“a person of ordinary skill in the art at the time of the alleged invention would have bachelor’s degree in architecture or an equivalent with at least five years of experience performing roof estimation”). We agree with and adopt Patent Owner’s definition with the added provision that, as we noted in our Institution Decision, “experience may compensate for formal education, and vice versa.” Paper 14, 7.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Cummings, qualifies as a skilled artisan. See PO Resp. 39–47. Instead, Patent Owner contends we “should give significantly more weight” to its expert’s testimony than to Petitioner’s because its expert “has much more relevant experience” and Mr. Cunningham’s opinions “are conclusory and merely repeat verbatim the arguments presented in the Petition.” PO Resp. 39. We disagree. We do not find that Patent Owner’s expert’s opinions are entitled to significantly more weight than Petitioner’s simply based on the experts’ relative experience. Instead, in our analysis below, where necessary, we have evaluated both experts’ opinions and we base our conclusions on the opinions’ persuasiveness. In addition, we do not find it problematic that the Petition repeats certain portions of Petitioner’s expert’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 43–47.” slip op. at 5

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

    “Neither party proposes an express construction for any claim terms. Pet. 2; see generally PO. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “In light of Petitioner’s analysis as outlined above, we agree with Petitioner that together, Pershing-789 and Bailey teach “determin[ing] a footprint and predominant pitch of the roof by analyzing one or more image showing the roof; [and] determin[ing] an estimated roofing area of the roof based on the predominant pitch and the footprint of the roof,” as claimed. Further, given Petitioner’s rationale as outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that it would have been obvious to combine Bailey’s predominantslope teaching with Pershing-789’s area calculation. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 419 (2007).” slip op. at 10

  Patent outcomesUS 9,183,538 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,183,538
• Unified Patents, LLC v. Peter Henrik PedersenAll claims unpatentable
  PTAB · May 10, 2024 · IPR2023-00029 · APJ Stacey G White · IPR · Final written decision

  Claims 1 and 14–17 are unpatentable as obvious over Funk and Law and over Funk and Kamakura.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded that Petitioner’s description is consistent with the prior art and patent specification before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, we adopt Petitioner’s description.” slip op. at 12

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

    “the Challenged Claims, identified below, invoke §112 ¶6, Petitioner identifies their function and corresponding structure in compliance with 37 C.F.R. § 42.104(b)(3).” Id. at 11–21. We are not persuaded that any terms from the ’920 patent should be construed as means plus function terms.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “[a] high volume e-mail ‘newspaper’ delivery system.” Ex. 1006, code (57). Funk’s newspaper is created by “manipulat[ing] publicly available information (AP wire service, Reuters, Business Wire, etc.)” and matching that information to a user profile. Id. at 1:49–50. These various inputs (information sources 100) all feed into service processing system 104. Id. at 5:43–44, Fig. 1. In addition, as we discussed above, Funk also discloses third parties that may send information to the customers. See Reply 9. Law’s “information delivery system includes a web server in operative communication with a plurality of recipients and a plurality of senders.” Ex. 1007, code (57). Thus, Law’s web server and Funk’s service processing system both connect multiple information sources to the email system. Law sets out to “improv[e] the collection and dissemination of recipient preferences for messages . . . by collecting recipient preference data and making it available to a plurality of senders for their use in preparing messages intended for a selected recipient.” Id. at 2:26–30. According to Petitioner, “[i]n the Funk-Law combination, Funk’s system would maintain profiles for senders in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles.” Reply 9–10 (citing Pet. 64, Ex. 1003 ¶ 130, Ex. 1006, 11:29–33). Dr. Houh opines on behalf of Petitioner that one of ordinary skill in the art would have been motivated to “enhance Funk such that the Funk combined processors . . . (1) include[] a software application used to receive sender information including sender identification information from senders via the Internet to establish and update sender profiles, and (2) store[] such sender information in the Funk combination database.” Ex. 1003 ¶ 129. According to Dr. Houh, this would have required the application of a known technique, Funk’s sending messages from parties to customers, by incorporating Law’s sender profiles to help keep track of, organize, and identify senders in Funk. Id. ¶ 130. “Funk contemplates a ‘high volume e-mail ‘newspaper’ delivery system’ that parties can use to send emails to customers, but does not provide explicit disclosure on how various parties sending messages would maintain profiles with Funk’s system.” Ex. 1003 ¶ 130. Dr. Houh further opines that “in the combination of Funk and Law, Funk’s system would maintain profiles for sending parties in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles that the users may update in Funk’s system.” Id. As such, we are persuaded that this modification would have been obvious in light of Law’s teachings. Patent Owner contends that “[t]here is no need in Funk for multiple sender profiles since it uses a single sender, and there is no motivation in Funk or Law to combine Law’s multiple sender profiles application with Funk’s system that only uses a single sender.” PO Resp. 36. We must, however, be mindful of the Supreme Court’s statement that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Petitioner’s asserted modification would allow the existing information sources in Funk to target the impact of their information in a manner similar to the screening provided to users of Funk’s system. Petitioner provides a sufficient rationale to support its assertions that one of ordinary skill in the art would have been motivated to add this functionality to Funk’s system. We are persuaded that Petitioner is correct in asserting that the asserted modification would only require the application of a known method to achieve a predictable result. Pet. 63–65. slip op. at 37

  Patent outcomesUS 6,965,920 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,965,920
• Infineon Technologies AG v. Amatech Group LimitedRehearing granted
  PTAB · Apr 3, 2024 · IPR2022-00951 · APJ Stacey G White · IPR · Rehearing

  On rehearing, the Board held claim 3 unpatentable as obvious over Eray-WO799, revising the final written decision’s outcome for that claim.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6

  • Skill levelSkill level petitioner adoptedOther

    “As stated in our Final Written Decision, we adopted Petitioner’s definition of the person of ordinary skill in the art and found that the person of ordinary skill in the art would have possessed “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Dec. 6–7 (citing Pet. 8; PO Resp. 18). Petitioner’s declarant, Dr. Daniel van der Weide, supported Petitioner’s definition, which was adopted for this proceeding. Ex. 1003 ¶ 25. Dr. van der Weide defined himself as “a person of more than ordinary skill in the art during the relevant timeframe” because “[b]y 2010, [he] held a Ph.D. in electrical engineering, and [he] had at least” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6

  § 103 obviousness
  Patents in suitUS 9,165,240
• Unified Patents, LLC v. Ideahub Inc.All claims unpatentable
  PTAB · Feb 5, 2024 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Final written decision

  Claims 1–13 are unpatentable for lack of written description under § 112(a); the Board did not reach the anticipation and obviousness grounds based on HEVC265.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art at the priority date for the ’274 Patent (“POSITA”) would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as physics or computer science, and two years of work experience with video processing. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years). This definition would apply at the earliest claimed priority date of the ’274 Patent as well as any later date. Pet. 12 (citing Ex. 1005 ¶¶ 50–52). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s definition as it appears to be consistent with the Specification of the ’274 patent and the cited reference.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “A party is collaterally estopped from relitigating an issue if: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 21

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “For the reasons that follow, we determine that the ’928 application does not provide sufficient written description support, for at least independent claim 1 of the ’274 patent, so as to “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of the ’928 application. Ariad, 598 F.3d at 1351. Accordingly, we are persuaded that the ’928 application lacks sufficient written description support for the invention recited in claim 1 of the ’274 patent, and thus, claim 1 does not receive an effective filing date as early as that of the ’928 application (i.e., December 23, 2010). We further determine that Petitioner filed the Petition within the 9-month statutory period for requesting post-grant review in accordance with 35 U.S.C. § 321(c). The ’274 patent issued on September 14, 2021 (see Ex. 1001, code (45)), and the present Petition was accorded a filing date of June 9, 2022 (see Paper 5). Accordingly, the Petition was filed less than 9 months after the date of issuance of the ’274 patent. In view of the above, we are persuaded that the ’274 patent is eligible for post-grant review.” slip op. at 16

  Patent outcomesUS 11,122,274 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,122,274
• Infineon Technologies AG v. Amatech Group LimitedSome claims unpatentable
  PTAB · Dec 1, 2023 · IPR2022-00951 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 4–6, and 8–10 are unpatentable as obvious; claims 3 and 11 were not shown unpatentable, and claim 7 was not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8. In addition, we note that we agree with Patent Owner’s statement that the distinction between the parties’ proposals is not material to any dispute before us and we find that our determinations would be the same under either definition of the person of ordinary skill in the art.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that Dr. van der Weide’s cited testimony is of a nature that should lead us to give his testimony no weight. We note that Patent Owner did not move to strike or exclude Dr. van der Weide’s testimony. When considering credibility and weight of evidence below, we consider Dr. van der Weide’s testimony as a whole as well as all other evidence of record and accord it the appropriate weight.” slip op. at 7

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

    “provide an express construction of the full breadth of a claim term. “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). As such, we proceed in line with Federal Circuit case law, which “prescribes—deciding only the issues necessary to resolve the dispute before it.” Nichia Corp. v. DSS, Inc., No. 2022-1704, 2023 WL 7211097, at *3 (Fed. Cir. Nov. 2, 2023) (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). The Federal Circuit has long recognized that “[c]laim construction is a matter of resolution of disputed meanings and technical scope” and that claim construction may be required in an obviousness context “when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution in order to determine obviousness.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). In order to determine whether Petitioner’s obviousness grounds meet their required burden of proof, we need not expressly state the full scope of this claim term. Thus, we are within our authority to proffer a construction that determines the scope of a claim term in a manner sufficient to determine whether the asserted art teaches the claim. In other words, there may be other ways to meet the disputed limitation, but for the purposes of our Decision, it is proper to expressly determine a claim term’s scope only as much as is required to resolve the disputed issues before us.” slip op. at 17

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

    “the invention(s), but rather as examples of some of the embodiments.” Id. at 25:65–26:1; see also id. at 6:18–20 (embodiments “should be construed as illustrative rather than limiting”), 5:22–24 (“non-limiting example”). The Federal Circuit has noted that “[e]mbodiments in the specification—even if there is only one embodiment—cannot limit the scope of the claims absent the patentee’s ‘words or expressions of manifest exclusion or restriction.’” Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (citing Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014)). After reviewing the complete record, we see no such manifest exclusion or restriction in the ’240 patent specification. We decline Patent Owner’s request to limit the claims to the described single-frequency embodiments. See Phillips, 415 F.3d at 1323. We need not provide further express construction of this claim language for purposes of this Decision.” slip op. at 23

  Patent outcomesUS 9,165,240 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,165,240

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.