• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Dec 15, 2021 · IPR2020-01123 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 9 and 29 are unpatentable as anticipated by Arnold and obvious over Arnold; Petitioner did not show they were obvious over Chang and Stefik.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “do not agree with Petitioner that it would have been obvious to combine Stefik’s tamper resistant barrier with Chang. Petitioner argues that a tamper resistant barrier would enhance security and would further Chang’s goal of allowing only authorized code to be executed on its platform. Pet. 64 (citing Ex. 1005, 8:55–59; Ex. 1006, 27:11–15). We agree with Patent Owner that this reason to combine is too general and conclusory to explain how the specific modification of securing Chang’s public keys behind a tamper resistant barrier would have provided a relevant benefit to the combination beyond Chang’s own secure distribution system that provides security, without placing the public key behind a tamper resistant barrier. We determine that such a generalized and conclusory reason for combining Chang and Stefik is insufficient. Magnum, 829 F.3d at 1380 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory on evidence of record, to support the legal conclusion of obviousness.”). Specifically, Chang discloses that platform producers desire to allow only authorized code to be executed on their platform. Ex. 1005, 8:55–59. This is done by identifying the software that will execute on their platform. Id. at 8:60–62. Chang provides a solution to this problem by using software passports that include digital signatures. Id. at 8:65–9:48. Chang’s solution involves using a public key which is not kept behind a tamper resistant barrier. Id. Thus, Petitioner’s proposed motivation to combine to “enhance security” (Pet. 64) and to allow only authorized code to be executed on a platform does not explain why the public key would have to be kept behind a tamper resistant barrier. In response to the argument that its motivation is too conclusory, Petitioner further explains that its proposed motivation to combine (a platform producer’s desire to allow only authorized code on their platforms) would have motivated a POSITA to secure Chang’s public key behind a tamper resistant barrier to prevent a user from replacing the key. Pet. Reply 19 (citing Ex. 1005, 8:55–59). We agree with Patent Owner that this motivation suffers from hindsight bias as it is the same motivation disclosed in the ʼ721 patent itself for securing public keys behind a tamper resistant barrier. Ex. 1001, 14:23–28 (“In addition, maintaining the ‘public’ key within a tamper resistant environment forecloses the significant threat that the owner of protected processing environment 108 may himself attack the environment.”). Petitioner does not provide evidence that the motivation of preventing the user themselves from replacing the public key was a known problem in the industry or that it stems from either Chang or Stefik. Without such evidence, we conclude that Petitioner’s articulated reason for reconstruction. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47

  • Expert testimonyPetitioner expert creditedOther

    “parties, we are persuaded that Arnold discloses limitation (c) of claim 9. Arnold discloses an adapter card with a secured area. Ex. 1004, 5:49–51 (describing that the microprocessor, memory, and cryptographic functions of Arnold’s cryptographic system are “housed within a secured area or module” of an adapter card); Pet. 49–50. Arnold describes the secured area of its adapter card as an area “where data is protected from disclosure” (Ex. 1004, 5:10) and “which is protected from physical and direct electrical access” (Ex. 1004, 10:47–48). Pet. 49–50. These disclosures indicate that the secured area of Arnold’s adapter card is a “tamper resistant barrier” that prevents the data stored within from read access and, therefore, keeps the data “hidden from the user” as recited in limitation (c). We also credit Dr. Chatterjee’s testimony that, based on Arnold’s description of the secured area of the adapter card, the secured area forms a tamper resistant barrier that keeps data stored within, hidden from the user. Ex. 1002 ¶¶ 141–144 (citing Ex. 1004, 3:56–57, 5:9–12, 5:52–53, 6:13–32, 6:28–30, 6:51–52, 6:55–59). Arnold makes clear that the “secured area of the card . . . contains the public key KPU” (Ex. 1004, 6:51–52) and that “said public key (KPU) is stored within said secured area.” Ex. 1004, 12:25; see also id. at 12:42 (“means for providing a public key (KPU) within said secure areas”); Pet. Reply 9. Dr. Chatterjee’s testimony, which we determine to be credible, also supports Petitioner’s contention that Arnold’s public key is within the secured area of Arnold’s adapter card. Ex. 1002 ¶ 143 (“The public key is secured behind a tamper resistant barrier and therefore hidden from the user.”). in the secure area of Arnold’s adapter card and that (2) the secure area protects data from disclosure and prevents physical and direct electrical access.5 Thus, we agree with Petitioner that Arnold’s public key is “secured behind a tamper resistant barrier and therefore hidden from the user” as recited in claim 9.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s articulation of the level of ordinary skill in the art, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a POSITA is supported by the testimony of Dr. Chatterjee and is commensurate with the level of ordinary skill as reflected in the prior art and the ’721 patent. We note, however, that our analysis would be the same under either party’s definition of a POSITA.” slip op. at 13

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

    “Petitioner argues the term “load module” recited in claim 9 should be construed as “executable code, such as a computer program or an applet, plus any associated data required for code execution.” Pet. 19. To support this proposed construction, Petitioner cites the Specification’s statements that “[l]oad modules may contain algorithms, data, cryptographic keys, shared secrets, and/or other information that permits a load module to interact with other system components,” and “[f]or a load module to operate and interact as intended, it must execute without unauthorized modification.” Id. (emphasis omitted) (quoting Ex. 1001, 3:28–35); see also id. at 19–20 (citing Ex. 1001, 4:36, 4:51–56, 5:34–39). Petitioner also points to the “Field of the Invention” section of the ’721 patent, which provides that “[t]he present invention relates to . . . techniques for certifying load modules such as executable computer programs or fragments [(called ‘applets’)] thereof as being authorized for use by a protected or secure processing environment.” Id. at 20 (alterations in original) (emphasis omitted) (quoting Ex. 1001, 1:17–28) (citing Ex. 1001, 2:33–37; Ex. 1002 ¶¶ 67–69). According to Patent Owner, Petitioner’s proposed construction is inconsistent with the construction adopted in co-pending litigation of the related matters, in which the term was construed to mean “executable code and any associated data.” PO Resp. 22 (citing Ex. 2007, 44). Nevertheless, Patent Owner contends that the term “load module” does not require construction and should be given its plain and ordinary meaning. Id. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute and that its arguments would apply equally under the construction of the co-pending litigation or under a plain and ordinary meaning of the term. Id. we agree with Patent Owner that no explicit construction of this phrase is necessary to resolve the disputes between the parties. 2. “associated digital signature” Patent Owner points out that “the District Court [for the Eastern District of Texas] adopted a construction of ‘associated digital signature’ as ‘a digital value, verifiable with a public key, that can be used to determine the source and integrity of the load module/executable.’” PO Resp. 21 (citing Ex. 2001, 1). Nevertheless, Patent Owner contends that the term “associated digital signature” does not require construction and that its arguments would apply equally under the District Court’s construction or a plain and ordinary meaning of the term. Id. at 23. Petitioner does not provide its own construction of the term “associated digital signature.” Based on the arguments presented by the parties, we agree with Patent Owner that no explicit construction of this term is necessary to resolve the disputes between the parties.” slip op. at 14

  Patent outcomesUS 6,157,721 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,157,721
• Ericsson Inc. v. Tot Power Control, S.L.Institution denied
  PTAB · Dec 10, 2021 · IPR2021-01092 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 were obvious over Chi and Murata.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For these reasons, based on the record before us, Petitioner has not shown sufficiently that a person of ordinary skill in the art would have understood that the combination of Chi and Murata teaches or suggests “wherein the desired signal to interference ratio target (SIRtarget) is modified at the start (403) of the outer loop unwinding, to match it to the outer loop power control in normal mode just prior to the start of the outer loop wind[-]up” when the system detects the start of unwinding. Ex. 1001, 8:59–64. For the same limitation in claim 5, Petitioner refers back to its not made a sufficient showing with respect to claim 5. Therefore, we determine the information presented does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claims 1–12 of the ’865 patent are unpatentable under 35 U.S.C. § 103(a) for obviousness over the combination of Chi and Murata. IV. CONCLUSION After considering the parties’ evidence and arguments, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that at least one of claims 1–12 of the ’865 patent is unpatentable based on the only ground asserted in the Petition. V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the alleged invention of the ’865 patent would have been familiar with power control mechanism for cellular systems, and specifically outer loop power control. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in electrical engineering and four years of experience; or by obtaining a Master’s degree in electrical engineering, but having only one to two years of experience; or by having no formal education but experience in cellular communications of at least eight years. Pet. 14 (citing Ex. 1003 ¶ 27). “For the purposes of this preliminary response only, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 10. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review.” slip op. at 8

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

    “C. Claim Construction In an inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–14. contends that no claim terms require express construction for purposes of applying the prior art. Pet. 14. Patent Owner submits that, at this stage of the proceeding, the Board should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 10. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “On the record before us, we agree with Patent Owner that Petitioner fails to show sufficiently that the combination of Chi and Murata teaches or suggests setting the target SIR at the start of unwinding to its value just prior to wind-up, as required by claim 1 of the ’865 patent. See id. at 36. As discussed above, Petitioner acknowledges that Chi does not explicitly teach this limitation, even if Chi may teach a desire for the target SIR to decrease in Murata on which Petitioner relies for meeting this limitation. Based on the current record, we are not persuaded that Murata teaches or suggests setting the target SIR to the value it had just prior to wind-up upon detecting the start of unwinding. Murata’s third embodiment teaches returning to the “initial state” when the system detects the end of wind-up (i.e., departure from the “shadowing state”). Ex. 1005 ¶¶ 110, 116–118. Murata explains that this initial state of operations includes starting with an “initial value of target SIR [that] is the same for all bearers (all services).” Id. ¶ 19. Murata explicitly describes “setting target quality to an initial value when high quality has been detected continuously” upon detecting departure from a shadowing state (i.e., at the start of unwinding). Id. ¶¶ 61–62 (emphasis added). Thus, it appears that Petitioner has misinterpreted Murata’s disclosure, which explicitly describes setting the target SIR at the start of unwinding to a default “initial value” rather than the value of the target SIR just prior to the start of wind-up.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,532,865
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Dec 3, 2021 · IPR2020-00664 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable as obvious over Gammie; claims 1 and 8 are also obvious over Shamoon, which does not render claims 4–7 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals do not differ in any meaningful way with respect to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’627 patent. We” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Petitioner argues that, “even if the preamble is limiting, it has been met by the art.” Pet. Reply 3. Petitioner argues that the preamble language recites only a generic processor and type of storage medium, both of which would be evident from the body’s recitation of steps performed by an executing application. Thus, according to Petitioner, the preamble adds nothing essential to the claim that the claim body does not already require. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, we need not decide whether the preamble limits claim 1 because Petitioner establishes by a preponderance of the evidence that Gammie and Shamoon each respectively teach the preamble of claim 1, as we explain in the sections further below. See §§ II.C.2.a, II.D.2.a.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “2. “secure control application” Petitioner asserts the term “secure control application” recited in claim 1 should be construed to mean “an application that manages access to protected content.” Pet. 14–16 (citing Ex. 1002 ¶¶ 88–90). To support this proposed construction, Petitioner states that the ’627 patent describes the “secure control application” as “‘a first application’” that “‘act[s] as a supervisory digital rights managements system that controls a second application.’” Id. at 15 (quoting Ex. 1001, 2:46–49, 4:23–33); see also id. at 15–16 (citing Ex. 1001, 4:45–48, 4:49–5:1, 5:23–44, 6:25–31). Patent Owner applies Petitioner’s proposed construction in its Response and contends that construction of this term is not necessary to resolve the parties’ controversy. PO Resp. 24. Based on the arguments presented by the parties, and the fact that Patent Owner does not dispute the construction, we adopt Petitioner’s proposed construction for “secure control application.”” slip op. at 11

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

    “be given its plain and ordinary meaning. The term “governed application” is recited in independent claim 1. Dependent claim 4 adds that the governed application “satisfies one or more requirements.” Ex. 1001, 12:43–47. Patent Owner argues that the governed application of claim 1 be subject to certain rules or policies, but fails to explain how these rules and policies differ from the “one or more requirements” of claim 4. See Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (“[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.”). Furthermore, Patent Owner’s proposed construction requires the governed application to be subject to certain rules or policies imposed by the “security module.” The term “security module” appears nowhere in the ʼ627 patent or claims, and its inclusion in the construction of the term would create confusion regarding whether claim 1 includes the additional limitation of a security module separate from its other limitations. Patent Owner’s proposed construction would, therefore, add ambiguity rather than providing clarity to the claim beyond the plain meaning of the term itself.” slip op. at 13

  Patent outcomesUS 9,569,627 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,569,627
• Offshore Technical Compliance, LLC v. Innovative Pressure Testing, LLCAll claims unpatentable
  PTAB · Oct 28, 2021 · IPR2020-00923 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–17 were held unpatentable as obvious over BOP California, Wodjenski, and Winters; the revised motion to amend proposing claims 19–35 was denied.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “1 The Petition requested review of claims 1–18, but Patent Owner filed a statutory disclaimer of claim 18. Pet. 3; Ex. 2001; see 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1372 (Fed. Cir. 2018). claims on which we instituted trial. Based on the record before us, Petitioner has shown, by a preponderance of the evidence, that (1) claims 1–17 of the ’143 patent are unpatentable; and (2) Patent Owner’s proposed substitute claims 19–35 are unpatentable.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “B. Testimony of Mr. Anderson Patent Owner contends that the testimony provided by Petitioner’s” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “D. Claim Construction The Board uses “the same claim construction standard that would be” slip op. at 21

  Patent outcomesUS 9,207,143 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,207,143
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Oct 13, 2021 · IPR2020-00661 · APJ Christopher L Ogden · IPR · Final written decision

  Claim 4 is unpatentable as obvious over Narasimhalu and Chorley; Dolby did not show claim 4 unpatentable over Katznelson and Chorley.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Black’s testimony, Dolby argues that a person of ordinary skill in the art “would have been a person who has had a minimum of a bachelor of science degree in computer science, computer engineering, or a related field, and approximately two years of professional experience or equivalent study in network and system security,” and “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 14–15 (citing Ex. 1002 ¶¶ 25–30). Citing Dr. Jakobsson’s testimony, Intertrust argues that a person of ordinary skill in the art would have had “a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields.” PO Resp. 12 (citing Ex. 2024 ¶ 19). Thus, Intertrust argues for a somewhat higher level of ordinary skill in the art than Dolby, with either one additional year of work experience (three years versus two years) or a higher degree (a master’s degree versus a bachelor’s degree). The parties also describe the relevant work experience slightly differently, with Dolby describing the field as “network and system security,” while Intertrust describes work experience of a more specialized nature: “secure transactions and encryption.” Pet. 14; PO Resp. 12. However, Dr. Jakobsson states that “[t]he opinions set forth in [his declaration] would be the same under either [his] or Dr. Black’s proposal.” Ex. 2024 ¶ 20. We adopt Dolby’s proposed articulation of a slightly lower level of” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In its Response, Intertrust argues that we should adopt the court’s construction in the Texas Actions, which is “processing unit that makes information and processes resistant to unauthorized use.” PO Resp. 13 (citing Ex. 2007, 12–17). Dolby agreed with this construction in its Reply, noting that this is also the same construction adopted in the California Action. Pet. Reply 1 (citing Ex. 1053, 20–23). We agree with the Texas court’s reasoning, and adopt the same construction now agreed by the parties: “processing unit that makes information and processes resistant to unauthorized use.” See Ex. 2007, 12– 17.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “Intertrust argues that “[s]ince the specification makes clear that ‘receiving . . . independently’ means delivered ‘at a different time, over a different path, and/or by a different party,” the addition of the “via separate delivery” language “narrows the scope of claim 4 to require ‘receiving through a different path.’” PO Resp. 16–17 (emphasis omitted) (citing Ex. 1001, 127:12–18). Intertrust points to a similar amendment in the prosecution history of U.S. Patent No. 8,191,157 (a patent in the same family) as further support. See id. at 17–18. Intertrust made similar arguments in the California Action, and likewise proposed that the district court adopt the construction from the Texas Actions. See Ex. 1053, 16–18. The California court disagreed, and adopted Dolby’s proposed construction (the same construction Dolby proposes here). See id. at 16–20. According to the California court, Dolby’s “proposed construction has the virtue of being rooted in ‘the actual claim language adopted by the patentee,’” which “sets a high bar for Intertrust to clear in arguing for an alternative construction,” which Intertrust failed to do. Id. at 19 (quoting Dolby’s responsive brief in the California Action). The court also stated that “the defendants’ stipulation in [the Texas Action] to the construction Intertrust proposes is mostly irrelevant here, as the court in that case did not offer any analysis on the issue.” Id. We agree with the California court, for the reasons set forth in the court’s Claim Construction Order. Ex. 1053, 19–20. We also find persuasive Dolby’s argument, in this case, that “[i]f Applicant’s intention was to claim only a different path and exclude everything else (times, parties, and any other reasonable understanding of delivery), this intention is nowhere explained, let alone clearly expressed as a disclaimer” during prosecution. Pet. Reply 2. Thus, we adopt the construction adopted in the California Action: “receiving via delivery at a different time, over a different path, or from a different source.” Ex. 1053, 20.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “3. Motivation to combine Narasimhalu and Chorley Dolby relies on Chorley to provide an explicit disclosure of storing encrypted electronic content and encryption keys inside a secure electronic appliance, as required in limitations 4b and 4f, respectively. See Pet. 33–34, 40–42. Dolby contends that a person of ordinary skill in the art “would have been motivated to implement [Chorley’s] techniques because they represent conventional and routine techniques used to practice computer-based systems and methods in the art.” Pet. 26 (citing Ex. 1002 ¶¶ 85–93); see also Pet. 29 (citing Ex. 1002 ¶ 92). According to Dolby, the advantage of storing the electronic content and keys within the tamper-resistant housing is that they “are protected . . . from access by a user or a connected host computer.” Pet. 28 (citing Ex. 1006, 2:41–51, 6:7–11; Ex. 1002 ¶¶ 42–46, 90). Dolby also argues that, because Narasimhalu’s secure device needs to access the content multiple times, “storing the content, the keys, and the program for accessing the content would have ensured that the content was available to the user at a later time.” Pet. 29 (citing Ex. 1004, 4:65–5:1, 5:35–41, 8:19– 23, 8:64–9:3; Ex. 1002 ¶¶ 33, 91). In addition, Dolby contends that a person of ordinary skill in the art would have had a reasonable expectation of success in applying Chorley’s teachings of storing the content and keys in the secure device, because Narasimhalu’s device already contains memory storage 52, so using that memory the way Chorley uses RAM 11 and RAM 14 would have been “conventional storage operations [that] would have been well within the skill of a [person of ordinary skill in the art].” Pet. 29 (citing Ex. 1002 ¶¶ 33, 93). Intertrust does not contest Dolby’s motivation to combine. See PO Resp. 21–39; see also id. at 38–39 (discussing Dolby’s contentions regarding limitation 4f, but not challenging the motivation to combine Narasimhalu with Chorley). We find Dolby’s arguments persuasive for the reasons given in the Petition.” slip op. at 25

  Patent outcomesUS 8,191,158 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,191,158
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Oct 13, 2021 · IPR2020-00662 · APJ Christopher L Ogden · IPR · Final written decision

  Claim 24 is unpatentable as anticipated by Hornbuckle and obvious over Katznelson and Narasimhalu.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the art than Dolby, with either one additional year of work experience (three years versus two years) or a higher degree (a master’s degree versus a bachelor’s degree). The parties also describe the relevant work experience slightly differently, with Dolby describing the field as “network and system security,” while Intertrust describes work experience of a more specialized nature: “secure transactions and encryption.” Pet. 14; PO Resp. 13. However, Dr. Jakobsson states that “[t]he opinions set forth in [his declaration] would be the same under either [his] or Dr. Black’s proposal.” Ex. 2024 ¶ 20. We adopt Dolby’s proposed articulation of a slightly lower level of ordinary skill in the art, because it is consistent with the level of technical expertise assumed by the ’304 patent disclosure and the asserted prior art references. Our analysis would be the same under either party’s proposed level of ordinary skill, and Intertrust would not benefit, in our analysis, from its proposed higher level of ordinary skill.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for petitioner

    “We agree with the Texas court that the Texas Action defendants’ proposed construction of “control information,” now proposed by Dolby, is untenable for the reasons given by the court. In its Reply, Dolby does not explicitly contest the Texas court’s construction, but notes that after Intertrust filed its Response, the court in the California Action adopted a similar construction: “information and/or programming controlling operations on or use of a digital file or electronic item.” Pet. Reply 1 n.1 (citing Ex. 1053, 8–11). We consider this construction to be the same as the Texas court’s construction, except that in response to further arguments by Dolby and Intertrust, the California court further clarified that the “resources” falling within the scope of this claim term are specifically “a digital file or electronic item.” See Ex. 1053, 8–11. Neither Dolby nor Intertrust contest that the controlled “resources” are specifically a digital file or electronic item. See, e.g., Pet. Reply 1–2; PO Sur-reply 2–6, 15–24.6” slip op. at 14

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

    “Because the question of whether control information is received “in a different package” is not material to the issues presented in this case, and the parties are otherwise in substantial agreement as to the meaning of this term, we agree with Intertrust that we do not need to construe the term for this decision. See PO Resp. 24 (citing Ex. 2024 ¶ 73; 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.’”)).” slip op. at 28

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached

    “Because the parties are in agreement, and agree with the Texas court that the term “first entity’s control information” indicates that the control information “belongs” to the first entity, we do not need to adopt Intertrust’s proposed explicit construction for this decision. See Nidec, 868 F.3d at 1017. Intertrust’s proposed construction says nothing about the parties’ disputed issue, which is when and how the control information belongs to the first entity. On that point, however, we find persuasive Dolby’s argument that nothing in claim 24 or the ’304 patent requires that control information must belong to the first entity after the first entity delivers the control information to other entities in the VDE. See Pet. Reply 8. As Intertrust acknowledges, the ’304 patent teaches “that one or more entities may supply control information to control the use of the same content.” PO Resp. 25. The information “belongs” to them when they supply it, and after that point, the control information still reflects the interests of the entity who submitted the control information. See Ex. 1001, 57:2–4 (“‘Rules and controls’ define the respective rights and obligations of each of the various VDE participants.”). But it is the computing system recited in claim 24, not the first entity, that ultimately applies the submitting (“first”) entity’s control information to govern the digital content’s usage. See Ex. 1001, 328:2–7; see also id. at 57:24–26 (“‘Rules and controls’ may ‘persist’ as they pass through a ‘chain of handling and control,’ and may be ‘inherited’ as they are passed down from one VDE participant to the next.”).” slip op. at 30

  Patent outcomesUS 6,640,304 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,640,304
• Google LLC v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00756 · APJ Michael R Zecher · IPR · Final written decision

  Claims 9–12 are unpatentable under § 103(a) as obvious over Paulson and Surprenant; additional grounds combine those references with Beenau and, for claim 11, McConnell.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Relying on the testimony of Mr. Lipoff, Google provides the following assessment of the level of skill in the art: A person of ordinary skill at the time of the alleged invention of the ’952 patent would have held at least a bachelor’s degree in electrical engineering or computer science and had one year of relevant experience in the field of wireless communications. Less work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 8–9 (citation omitted) (citing Ex. 1003 ¶¶ 33–35). Uniloc argues that Google’s proposed assessment is improper because it does not define thresholds for “[l]ess work experience” or “higher level of education.” PO Resp. 6 (alteration in original). Uniloc, however, does not offer its own 4 In its Patent Owner Response, Uniloc does not present arguments or evidence of secondary considerations. See PO Resp. assessment of the level of skill in the art, much less indicate that the resolution of any issue depends on a specific type of work experience or a specific level of education. See id. We, therefore, adopt Google’s proposed assessment of the level of skill in the art and apply it to our obviousness analysis below because it is consistent with the ’952 patent and the asserted prior art.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a person of ordinary skill in the art would have recognized these frequencies to be within the scope of a “plurality of predetermined frequencies” because the frequencies are set initially, before communication takes place, and are based on the capabilities of the communicating devices [(i.e., the transmit device and the receive device)], which are known in advance in at least one disclosed embodiment. Ex. 1003 ¶ 68 (citing Ex. 1005, 13:23–26). In his Declaration accompanying the Reply Brief, Mr. Lipoff clarifies how the “initially determined” frequencies at step 402 preset the range of frequencies discussed in the context of steps 404 and 406 by testifying that, “[t]o achieve [Paulson’s] goal of reducing the probability of interference from noise, one of ordinary skill [in the art] would have understood that it is essential for the noise characteristic created at Step 404 to cover at least the frequencies initially set in Step 402.” Ex. 1027 ¶ 11. Mr. Lipoff further clarifies that “[o]ne of ordinary skill [in the art] would have understood that the phrase ‘initially determined,’ in conjunction with Paulson’s disclosure about further refining the available frequencies in light of the noise characteristic in the surrounding environment, conveys that the range of frequencies identified at Step 402 is related to the later steps in Paulson’s process,” specifically steps 404 and 406. Id. ¶ 19. We credit the aforementioned testimony of Mr. Lipoff because it takes into account the reasonable inferences a person of ordinary skill the art would draw to explain how Paulson’s “initially determined” frequencies at step 402 preset the range of frequencies that are further refined based on the noise characteristic in the surrounding environment at steps 404 and 406. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 30

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

    “Owner Response, Uniloc provides a table listing the parties’ proposed constructions in the district court case, but does not argue that any particular claim term requires construction for purposes of this Final Written Decision. See PO Resp. 6–8. After considering the fully developed trial record, the issues raised by the parties do not turn on the construction of a particular claim term. As a result, we need not construe any claim term for purposes of determining whether Google has demonstrated by a preponderance of the evidence that claims 9–12 of the ’952 are unpatentable as obvious under § 103(a). 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))). In our obviousness analysis below, we address the scope and meaning of the claim term “non-user-configurable data,” as this term pertains to the teachings of Surprenant contested by the parties. See infra Section II.B.5.c. More specifically, we address below whether Surprenant’s acoustics modulation protocol identification (“AMP ID”), which is described as being a “unique identification string” specific to “transmit device 101,” teaches or suggests the claim term “non-user-configurable data” as that term is used in the context of the ’952 patent. See infra id. B. Obviousness Over the Combined Teachings of Paulson and Surprenant” slip op. at 9

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

    “At the outset, we note that Uniloc advocates—and Google does not dispute—that the claim term “non-user-configurable data” should be construed in accordance with its plain and ordinary meaning—namely, data that is not configurable by a user. See PO Sur-reply 10 (arguing that “non- user-configurable data . . . must be data that is not configurable by the user”); Tr. 31:13–17, 32:21–23 (arguing the same). Instead, the parties’ dispute appears to turn on what types of data amount to data that is not configurable by a user. The specification of the ’952 patent provides important guidance in this respect because it discloses that “[n]on-user-configurable data includes data such as hardware component model numbers, serial numbers, and version numbers, and hardware component parameters such as processor speed, voltage, current signaling, and clock specifications.” Ex. 1001, 6:37–41 (emphasis added). Dependent claim 8 of the ’952 patent, which was not challenged in this proceeding, further limits “non-user-configurable data” to only “hardware component numbers, serial numbers, and version numbers.” Id. at 14:50–52. In contrast, independent claim 9 is broader in scope because it does not limit “non-user-configurable data” to any specific type of data and, therefore, encompasses all the examples from the specification identified above. With this in mind, we turn to Google’s reliance on Surprenant’s AMP ID to teach the “non-user-configurable data,” as recited in independent claim 9. Based on the fully developed trial record, we agree with Google that Surprenant’s AMP ID teaches the “non-user-configurable data” because it discloses that it is a “unique identification string” specific to “transmit device 101.” Pet. 45 (quoting Ex. 1006, 7:45–49). Although Surprenant does not provide further clarification as to what might qualify as a “unique identification string,” Mr. Lipoff provides testimony accompanying the Petition that explains the following: “[b]ecause the AMP ID is disclosed as a ‘unique identification string’ specific to a transmit device, one of ordinary skill [in the art] would have understood it to be derived from a unique property of the device itself that is not user-configurable.” Ex. 1003 ¶ 107. As just one example, Mr. Lipoff testifies that it would have been obvious to a person of ordinary skill in the art for Surprenant’s AMP ID “to take the form of . . . the device’s serial number,” because it is a “unique identification string” that is nothing more than “data [that] helps uniquely identify the transmit device.” Id. ¶ 109. We credit the aforementioned testimony of Mr. Lipoff because it is consistent with Surprenant’s disclosure that the AMP ID is a “unique identification string” specific to “transmit device 101,” and his testimony also is consistent with the examples of “non-user-configurable data” set forth in the specification of the ’952 patent.” slip op. at 43

  Patent outcomesUS 9,564,952 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,564,952
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing 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 neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

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

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

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

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515
• Hulu, LLC / Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00647 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–5 and 12 were not shown unpatentable over Pyle and Marusi or Lewis and Marusi because each ground failed to establish a required claim limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing 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 neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 7–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’720 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “‘[t]he plain language of the claim clearly indicates only a single [list] is used’ to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 15 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’720 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’720 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[d], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[c] and discussed above. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 14

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

    “Fundamentally, Petitioner fails to provide any reason in the Petition as to why one of ordinary skill in the art would have found it obvious to retrieve a list of assets based on Lewis. Instead of providing a reason as to why retrieving a list of assets would have been obvious, Petitioner points to a result achieved by Lewis—generating a dynamic manifest file that contains a list of URLs to container files containing content. In the context before us, pointing to a result to allege that a step in a process leading to the result would have been obvious is insufficient without also providing a reason with rational underpinning. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Here, Petitioner relies upon the result of Lewis’s process—generating a dynamic manifest file containing a list of URLs—as the only basis as to why a previous step in the claim would have been obvious without providing any reason why the achieved result means the previous step would have been obvious. Further, although Petitioner cites to Dr. Reader’s declaration (Ex. 1003 ¶ 233), Dr. Reader’s testimony does not provide any further explanation or reason as to why this aspect of limitation 1[c] would have been obvious.11 Rather, the Petition’s 11 To the extent Petitioner relies upon its discussion of the combined teachings of Lewis and Marusi as set forth at the beginning of Petitioner’s discussion of this ground (see Pet. 54–57), that portion of the Petition does not provide an additional reason why retrieving a list of assets as recited in discussion appears to be exactly the same as Dr. Reader’s testimony on this point. Thus, Petitioner’s argument that it would have been obvious to retrieve a list of assets in light of Lewis is not supported sufficiently on the record before us.” slip op. at 46

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDecided for patent owner

    “In its Reply, Petitioner contends that “[c]ontrary to [Patent Owner’s] claim that Lewis does not teach a list and that there was no reason to modify Lewis’ system ([PO Resp.] 30–32), the Petition and Dr. Reader clearly explain why lists and database operations would have been obvious to a [person of ordinary skill in the art].” Pet. Reply 19 (citing Pet. 62–63; Ex. 1003 ¶¶ 237–239). Petitioner reiterates the position asserted in the Petition—that it would have been obvious to retrieve a list of assets because Lewis teaches that a dynamic manifest file contains a list of URLs to container files containing content. Id. Petitioner also contends that “Lewis itself explains that it was well-known that manifest files contain a list of media assets to be played.” Id. (citing Ex. 1006 ¶ 20 (noting that “Manifest Resp. 37–38 (citing Ex. 2010 ¶ 79). In its Reply, Petitioner responds to Patent Owner’s assertion by pointing to stored video segments 375 as assets, not just processed video segments 315a–c. Pet. Reply 19 (citing Ex. 1003 ¶¶ 230–231). In the Petition, Petitioner did not assert or rely upon stored video segments 375 as teaching the recited “assets” or “list of assets”; rather, Petitioner relied upon processed video segments 315a–c. See Pet. 62. Petitioner’s attempt to assert, for the first time, in its Reply that processed video segments 375 also teach the recited “assets” is an improper reply argument. See, e.g., Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74, available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Generally, a reply . . . may only respond to arguments raised in the preceding brief. . . . ‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability . . . of an original . . . claim . . . .”); see PO Sur-reply 16–18 (discussing Petitioner’s new argument). Petitioner’s attempt to (1) rely upon stored video segments 375 to teach the recited assets and (2) assert that Lewis teaches, as opposed to rendering obvious, retrieving a list of assets are both new arguments that are inappropriately raised for the first time in Petitioner’s Reply and, therefore, we disregard them. file 257 includes entries 258a through 258f”), Fig. 2 (noting that Figure 2 shows entries pointing to video segments)).” slip op. at 45

  Patent outcomesUS 9,270,720 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,270,720
• Cisco Systems, Inc. v. K.Mizra LLCInstituted
  PTAB · Sep 24, 2021 · IPR2021-00593 · APJ Minn Chung · IPR · Institution

  The Board instituted IPR on claims 1–3, 5–13, and 15–19 because Cisco showed a reasonable likelihood of prevailing on obviousness over Gleichauf, Ovadia, and Lewis.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “under NHK have sought to balance considerations such as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5 (collecting cases). Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors consider: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not oppose Petitioner’s articulation of the level of ordinary skill in the art, although Patent Owner states that it “reserves the right to dispute Petitioner’s definition if an IPR is instituted.” Prelim. Resp. 16. Based on the current record, we find Petitioner’s proposal 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); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention.” slip op. at 17

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; Prelim. Resp. 17) but do not identify any issue that would turn on the construction of this term, at least for purposes of deciding whether to institute a review. See generally Pet.; Prelim. Resp. Based on the current record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Based on the record presented, we determine, for purposes of this Decision, Petitioner has shown sufficiently how a person of ordinary skill in the art would have combined Gleichauf with Ovadia to obtain the subject matter recited in limitations [1.2] and [1.4]. We also determine, for purposes of this Decision, Petitioner sufficiently articulates a reason why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Ovadia with a reasonable expectation of success.” slip op. at 50

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,234,705

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.