- Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Nov 27, 2019 · IPR2019-01125 · APJ Jameson Lee · IPR · Institution
The Board denied institution on claim 5 because its ambiguous scope prevented a reliable merits assessment and made trial resource intensive.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Id. at 2:29–42. Thus, within the context of both the claim and the Specification, a radio system and a station are not the same. It is unclear what is referred to by the reference in claim 5 to “radio systems in accordance with the first radio interface standard.”” slip op. at 14
- Other 314aInstitution denied discretionary otherDenied
“Because the claim language is ambiguous as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds 5 We recognize that in limited circumstances, clear errors in claims can be corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly does not meet that standard. What the Applicant for patent intended by the language used is subject to much speculation and conjecture. of unpatentability. If the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63. Furthermore, given that any trial instituted here would address a single claim that we regard to be ambiguous, that issue would likely become the sole focus of that trial. That seems problematic given that Petitioner may not request to cancel any claim based on an assertion of indefiniteness. See 35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).” slip op. at 16
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,016,676 - DISH Network L.L.C. v. Multimedia Content Management LLCInstitution deniedPTAB · Nov 13, 2019 · IPR2019-01015 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and any preliminary response “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.” Having considered the Petition, Preliminary Response, Reply, and Sur-reply, as well as the parties’ supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent. We, therefore, do not institute an inter partes review of claims 1, 6, 13, 15, 19, 23, 24, 25, 27, 28, 29, 30, 32, 33, and 41 of the ’468 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“implemented within the bidirectional communication paradigm, but Petitioner has not sufficiently explained why an ordinarily skilled artisan would have been motivated to use both the prior art access control using bidirectional communication and the improved access control using unidirectional communication at the same time. Hoang ’980 teaches “the present invention teaches methods and systems for communicating a client’s DOD account status to a client using uni-directional communications.” Ex. 1008 ¶ 49. Thus, unidirectional communications are used to send a client’s on-demand account status from a server to a client. Hoang ’980’s teaching that “all aspects of the present invention can be implemented within the bi-directional communication paradigm” indicates that a server within a system with bidirectional communication capabilities could transmit a client’s on-demand status to a client. However, Petitioner’s inference that this system would then also utilize account control using the resource-intensive bidirectional communications is speculative and not sufficiently supported by the evidence of record. Moreover, Petitioner’s proposed combination would use both unidirectional access control and bidirectional access control for the same data request. Petitioner argues the benefits of on-demand video would have motivated an ordinarily skilled artisan to implement access control using both unidirectional and bidirectional communications (Pet. 18‒20). Mr. Wechselberger’s testimony that user-initiated video-on-demand programming was a beneficial feature that cannot be used in a unidirectional system explains why an ordinarily skilled artisan may have been motivated to use bidirectional communications to control access to on-demand video content. Ex. 1006 ¶¶ 109‒110. But Petitioner has failed to establish why an ordinarily skilled artisan would have used both access control paradigms for the same data request. More specifically, with respect to the proposed combination, Petitioner does not explain persuasively why an ordinarily skilled artisan would have continued to use unidirectional communications to provide access control for a data request when using bidirectional communications already provides access control for the same data request. For these reasons, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 7. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 7. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art, which Patent Owner asserted in a prior petition. Prelim. Resp. 2. Patent Owner asserts that for the purposes of determining whether to institute the Petition, the differences between its previously-proposed definition and Petitioner’s proposed definition are not dispositive. Id. at 2‒3. We are satisfied that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’468 patent and the prior art of record. Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the following terms: “to generate[ing . . .] controller instructions” (Pet. 8‒9); “a controller node” (Pet. 9‒10); “a service provider network” (Pet. 10‒12); “selectively transmit[ting, by the plurality of gateway units,] the content requests to the service provider network in accordance with the controller instructions” (Pet. 13); and “gateway units” (Pet. 13‒14). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒5. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,799,468 - DISH Network L.L.C. v. Multimedia Content Management LLCInstitution deniedPTAB · Nov 13, 2019 · IPR2019-01014 · APJ Matthew J Mcneill · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Independent Claim 1 A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the priority date of the ’925 patent is before the effective date of the applicable AIA amendments, the pre-AIA versions of 35 U.S.C. §§ 102 and 103 apply. determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze Petitioner’s obviousness grounds with the principles identified above in mind.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“motivated to combine the prior art method of controlling access to programming using bidirectional communications with the improved method of controlling access to programming using only unidirectional communications because Hoang ’980 teaches “those skilled in the art will recognize that all aspects of the present invention can be implemented within the bi-directional communication paradigm, the only difference being that even more features can be provided to the digital broadcast and DOD user when a bi-directional communication link is available.” Ex. 1008 ¶ 49.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the alleged invention “would have a bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science or a similar technology degree and at least two years of relevant industry experience, including Internet networking architectures, digital programming delivery in broadcast, cable or satellite television networks, and associated set top boxes.” Pet. 8. Petitioner further states that “the prior art reflects the level of skill in the art.” Pet. 8. Mr. Wechselberger’s testimony supports Petitioner’s position. Ex. 1006 ¶ 38. Patent Owner proposes a different level of ordinary skill in the art,” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“transmit[ting, by the plurality of network elements, the] content requests to the service provider network in accordance with the controller instructions” (Pet. 17); “network elements” (Pet. 18); and “pay-per-view advertising” (Pet. 18‒19). Patent Owner proposes constructions for the same terms. Prelim. Resp. 3‒6. The District Court in the related case identified above construed each of the proposed terms. See Ex. 2003. Based on the current record and as explained further below, we determine that no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,465,925 - Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
Patent outcomesUS 9,868,985 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,868,985 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Jun 5, 2019 · IPR2018-01685 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution because the petition did not persuasively map Barriga-Caceres to the construed federated-environment limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Petitioner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Petitioner’s stated basis for rehearing is that we “misapprehended or overlooked that Barriga-Caceres’s disclosure would” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–2, 4–11, and 15–20 (“the challenged claims”) of U.S. Patent No. 7,631,346 (Ex. 1001, “the ’346 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). On April 11, 2019, we entered a Decision on Institution (Paper 10, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’346 patent on any of the asserted grounds. Dec. 22. Petitioner timely filed this Request for Rehearing of the Decision. Paper 11 (“Request” or “Req. Reh’g.”).” slip op. at 2
- BurdenDecided for patent owner
“(“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). However, as the Supreme Court has counseled, “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’ [35 U.S.C.] § 312(a)(3). From the outset, we see that Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355, 200 L. Ed. 2d 695 (2018). Although we are sympathetic to the timing of the Federal Circuit’s construction, Petitioner does not argue persuasively, or provide authority to the effect, that we should reformulate the Petition to fit this claim construction. The additional explanation Petitioner now offers, as discussed below, concerning how the teachings of Barriga-Caceres are mapped to the “federated computing environment” limitation using the claim construction from the Federal Circuit, was not presented in the Petition, and Petitioner did not attempt to make it available to us before our statutory deadline. That is, we could not have misapprehended or overlooked arguments and evidence not presented in a cohesive manner in the Petition.” slip op. at 6
NonePatents in suitUS 7,631,346 - Apple Inc. v. Qualcomm Inc.Rehearing deniedPTAB · May 23, 2019 · IPR2018-01270 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving institution denied because Apple did not show Samsung disclosed the claimed notification and power-button silencing during an incoming call.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify the matters misapprehended or overlooked, and where each matter was addressed in a motion, opposition, or reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (2) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1006, 32)). We found the cited portions of Samsung to describe (1) that if there was no call already in progress, the user could silence an incoming call with the power button, but neither the in-use information nor call waiting would cause the claimed notification, and (2) that if a call was already in progress, call waiting would display a notification for a new call, but there was nothing to indicate that the user could silence a ‘ring,’ or even the call waiting alert, using the power button. See Decision 16. In other words, the “in-use” notification was insufficient because it was not shown to be displayed while a call was incoming, and the “call waiting” notification was insufficient because it was not shown to be employed at a time a user could use the power button to silence a “ring.”” slip op. at 4
- Strike new argumentNew argument disregardedDenied
“New Evidence Petitioner asserts that the “new arguments provided in [the] Request [are] appropriate” because “Petitioners are permitted in a request for rehearing to address inaccurate characterizations that they may not be able” slip op. at 7
- BurdenDecided for patent owner
“distinction,” and the reference need not describe a “separate during incoming calls state.” Instead, the problem is that Samsung’s in-use display is described as showing information that one of skill in the art would expect to be shown after a call has been answered (i.e., the timer), and Petitioner failed to establish that the information would have been displayed before a call was answered. In this proceeding, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). With no showing that the in-use information would be displayed before the call was answered, Petitioner did not carry its burden.” slip op. at 4
NonePatents in suitUS 9,203,940 - Microsoft Corporation / Microsoft Mobile Inc. v. Koninklijke Philips N.V.All claims unpatentablePTAB · Apr 10, 2019 · IPR2018-00023 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–12 are unpatentable under §103 over the six Anwar-based grounds using Narutaka and, depending on the claims, Astala, Korhonen, and/or Westerman.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Petitioner also directed us to paragraph 145 of Dr. Terveen’s declaration testimony. Id. (citing Ex. 1004 ¶ 14616). In that paragraph, Dr. Terveen testifies that an ordinarily skilled artisan “would have found it obvious to stop the scrolling in Anwar’s system when the end of the document is reached if that happened before a finger touch,” and that “[t]his would have been expected.” Ex. 1004 ¶ 145. Dr. Terveen further testifies in the same paragraph that “[a] user would have found it strange if Anwar’s system caused the document to loop back to the beginning or scroll through a series of blank pages.” Id. Additionally, Dr. Terveen testifies that adding an end-of-scroll signal would have been “trivial” because “Anwar’s system already allows the document to simply stop moving upon release,” and “a similar flag could be set to detect when the parser/renderer hits the end of file signal in the internal representation file.” Id. We credit Dr. Terveen’s declaration testimony based on the teachings of Westerman, a prior art reference on which Petitioner relies for a different ground asserted in the Petition. In particular, Westerman explicitly teaches using an end-of-scroll signal upon scrolling to the end of a document. Ex. 1007, 72 (“[T]he host computer can send a signal instructing motion continuation mode to be canceled if the cursor reaches the edge of the screen or end of a document.”) (quoted by Pet. 49).” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Because claims 1, 7, and 8 are directed to systems, we construed this claim term as requiring sensing for each of the signals in the recited group and terminating scrolling upon whichever signal is sensed first. Id. at 7–8.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“feature of sensing touch duration would have provided that “additional information” for the system to distinguish between a scrolling command and some other command, such as moving to the next document. Pet. 40; Pet. Reply 6 (“Sensing the duration of a touch would have solved the problem of differentiating between touches intended to scroll and those intended as another command.”); see also Ex. 1006 ¶¶ 18–20 (disclosure in Narutaka of using touch duration to distinguish between a scroll instruction and some other instruction). Accordingly, as discussed above, providing the ability to sense touch duration in order to distinguish between commands supports the legal conclusion of obviousness. It is not necessary for Petitioner to explain further whether an ordinarily skilled artisan would have chosen to combine Anwar and Narutaka over other options for distinguishing between different commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulate reasoning with some rational underpinning to support the legal conclusion of obviousness.”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 424 (2007) (“The Court of Appeals considered the issue too narrowly by . . . asking whether a pedal designer writing on a blank slate would have chosen both Asana and a modular sensor similar to the ones used in the Chevrolet truckline . . . . The proper question . . . was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asana with a sensor.”). We note Patent Owner’s contention that Anwar already includes functionality to distinguish between commands, for example, using a different number of clicks, a different style of touch gesture, and a different initial touch location, and that “Anwar provides no suggestion that additional functionality beyond that already present in Anwar’s interface is required to recognize a known command.” PO Resp. 36, 41. Although Anwar may include functionality to distinguish between commands, Anwar does not detail how to distinguish between different commands, such as moving to the next document and scrolling, that are mapped to the same gesture. See Ex. 1005, Figure 12F (dragging the document toward the left to move to the next document), Figure 13B (dragging the document toward the left to initiate scrolling). Patent Owner suggests applying a triple-click-and-drag gesture, consistent with Anwar’s teaching about using a different number of clicks, to distinguish between these two commands. PO Resp. 38. That may be a reasonable option, based on Anwar’s teachings, but it does not preclude other options, such as those advanced by Petitioner and taught by Narutaka. Anwar does not limit its system to using a different number of clicks, a different style of touch gesture, or a different initial touch location for distinguishing between commands. See Ex. 1005, 15:45–47 (“Those skilled in the art will know or be able to ascertain using no more than routine experimentation, many equivalents to the embodiments and practices described herein. . . . [I]t will be understood that the invention is not to be limited to the embodiments disclosed herein.”); see also KSR, 550 U.S. at 420 (“The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.”). As discussed above, Petitioner has provided reasoning that sufficiently supports the legal conclusion of obviousness. Accordingly, we find that Patent Owner’s argument does not adequately rebut Petitioner’s showing that it would have been obvious to modify Anwar to include Narutaka’s feature of sensing touch duration.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“In light of Petitioner’s demonstrated rationale for combining Anwar and Narutaka, we find that Patent Owner does not adequately rebut Petitioner’s obviousness argument. Patent Owner essentially alleges tradeoffs, but “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). The relative advantages (e.g., expanding document review options) and disadvantages (e.g., added interface complexity) of adding a new type of feature, namely, touch duration sensing, to an interface that already has built into it various other features amount to a tradeoff, a decision well within the level of an ordinarily skilled artisan. Dr. Terveen need not “articulate such analysis” underlying the decision, as Patent Owner contends (see PO Sur- Reply 14–15). See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (obviousness analysis “may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”). Moreover, we note that “just because better alternatives [may] exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Patent Owner does not point to evidence that teaches away from Petitioner’s proposed combination, nor does it point to evidence that the proposed combination would destroy the operation of Anwar’s system. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (a reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed”).” slip op. at 29
Patent outcomesUS 6,690,387 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,690,387 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Apr 10, 2019 · IPR2018-01354 · APJ David C Mckone · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place because it had not misapprehended or overlooked arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Institution Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“Owner’s arguments were outweighed by several other General Plastic factors. Dec. 34–37. To summarize briefly, we determined that Petitioner was not involved with the Groupon case, did not derive any benefit from the arguments or resolution of that case, and did not have any apparent reason to bring its challenge based on Fisher earlier. Id. at 33–34. Accordingly, the first five General Plastic factors weighed in favor of institution. Id. We also discussed at length the strong case Petitioner put forward on the merits for the claims at issue in the Groupon case. Id. at 23–29. The Trial Practice Guide Update counsels that we should consider the General Plastic factors as “part of a balanced assessment of all relevant circumstances in the case, including the merits.” Trial Practice Guide Update, at 10 (emphasis added). We determined that the General Plastic factors addressing judicial economy favored denial, but not strongly, and that they were outweighed by the factors supporting institution. Dec. 34–37. In light of the vacating of the” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–8, 12, 14–21, 25, 27–34, 38, 40–45, 47, 49, 51–57, and 60–66 of U.S. Patent No. 5,961,601 (Ex. 1001, “the ’601 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Upon consideration of the Petition and Preliminary Response, we concluded, under 35 U.S.C. § 314(a), that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim as obvious over Yuval Fisher, SPINNING THE WEB (1996) (Ex. 1005, “Fisher”). Paper 8 (Institution Decision (“Dec.”)) 37.” slip op. at 2
Discretionary denialPatents in suitUS 5,961,601 - Talari Networks, Inc. v. Fatpipe Private Networks LimitedRehearing deniedPTAB · Mar 15, 2019 · IPR2016-00976 · APJ Stacey G White · IPR · Rehearing
The Board denied Talari’s rehearing request, leaving in place its determination that claim 19 was not proven unpatentable over Karol.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting rehearing of a decision, the challenging party must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the record. Id. We have considered Petitioner’s Request, but for reasons that follow, we decline to modify our Decision. slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“relevant part, “wherein the step of sending a packet to the controller site interface is repeated as multiple packets are sent, and the controller sends different packets of a given message to different parallel networks.” In the Decision, we found that Petitioner did not establish that Karol disclosed sending different packets of a given message to different parallel networks. Dec. 37. Petitioner contends that we “overlooked the teachings of the ’235 patent regarding a ‘message,’ misinterpreted the scope of claim 19, and misapprehended [Petitioner’s] argument regarding Karol, in finding that Karol does not also anticipate or render obvious claim 19.” Req. Reh’g 1. According to Petitioner, our analysis as to Karol’s usage of the terms “packet,” “datagram,” and “message” was in error because we misapprehended the meaning of a message in the context of the ’235 patent. Id. at 1–2. All of Petitioner’s arguments are premised on its assertion that a session is an example of a message. See generally id. For reasons stated below, we disagree with Petitioner’s assertion and thus, we are not persuaded of error as to claim 19.” slip op. at 2
§ 103 obviousnessPatents in suitUS 6,775,235 - Talari Networks, Inc. v. Fatpipe Networks Private LimitedRehearing deniedPTAB · Mar 15, 2019 · IPR2016-00976 · APJ Stacey G White · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and maintained its determination that claims 4 and 9 would have been obvious over Karol.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting rehearing of a decision, the challenging party must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the record. Id. We have considered Patent Owner’s Request and for reasons that follow, we clarify our reasoning in the Decision regarding the unpatentability of claims 4 and 9 and we maintain our determination that Petitioner established by a preponderance of the evidence the unpatentability of claims 4 and 9. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Thus, we were tasked with looking to see if the assertion of knowledge and common sense of the person of ordinary skill was supported with “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by our reviewing court. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). In support of his opinion that per-packet routing was within the knowledge of one of ordinary skill, Dr. Negus discusses the passage in question. Id. ¶ 192. Specifically, he argues that the ’235 patent admits that routing on a per-packet basis was known at the time of the patent’s invention. Id. He testified that “routing decisions that are based entirely upon the origin (for example, source address) of the packet independent of the particular flows or sessions that particular packets from such an origin are associated with (see, for example, Ex. 1001 at 4:15–23)” were discussed in the ’235 patent. Id. As further evidence of the knowledge of a person of ordinary skill he also cited “Stallings, a common reference textbook on data and computer communications, [that] describes ‘source routing’ whereby the ‘source station specifies the route by including a sequential list of routers in the datagram’ (see, for example, Ex. 1011 at p. 539).” Id. ¶ 1.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
- Expert testimonyPetitioner expert creditedDecided for petitioner
§ 103 obviousnesscites KSRPatents in suitUS 6,775,235
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.