• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00836 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 28

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

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5.” slip op. at 23

  Patent outcomesUS 7,069,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,069,560
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00835 · APJ Kevin C Trock · IPR · Remand

  Claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable over Kiss and FIPA97; the remaining remanded claims were not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “On appeal, the Federal Circuit affirmed all of our determinations of unpatentability of challenged claims. See Microsoft, 2022 WL 989403, at *1. The Federal Circuit also affirmed our “determination of no proven unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and 53–55 of the ’560 patent.” Id. The Federal Circuit reversed certain findings we made in concluding that claims 8–10, 63, and 86–89 of the ’115 patent and claims 10, 11, and 28 of the ’560 patent had not been proven unpatentable and remanded for further consideration of those claims. Id. Upon our authorization (Paper 45), the parties filed additional briefing limited to addressing the remanded claims. See Petitioner’s Remand Opening Brief (Paper 50, “Pet. Remand Opening Br.”), Patent Owner’s Remand Opening Brief (Paper 51, “PO Remand Opening Br.”), Petitioner’s Remand Response Brief (Paper 53,” slip op. at 6

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

    “Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5.” slip op. at 23

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

    “In the context of claim 1 from which claim 8 depends, Petitioner argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  Patent outcomesUS 7,069,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,069,560
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00814 · APJ Kevin C Trock · IPR · Remand

  Claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable as obvious over Kiss and FIPA97; claims 9, 10, and 63 of the ’115 patent and …

  RulingsRemand decision

  • RemandOther

    “the ’560 patent, we found in the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR that Petitioner did not present sufficient evidence to show how or why a person of ordinary skill in the art would have combined Kiss and FIPA97 to obtain the recited subject matter of these claims. 810 Final Dec. 145–149; 814 Final Dec. 135; 835 Final Dec. 108. On appeal, the Federal Circuit reversed our finding and remanded “for the Board to address any remaining obviousness disputes concerning these claims.” Microsoft, 2022 WL 989403, at *3–5. On remand, Patent Owner appears to disagree with the Federal Circuit’s decision and argues that Petitioner failed to show how a person of ordinary skill in the art would have combined Kiss and FIPA97. PO Remand Opening Br. 2–9; PO Remand Resp. Br. 2. In response, Petitioner argues Patent Owner’s argument is improper because the mandate rule “prevents parties from raising issues on remand that were within the scope of the judgment appealed from and resolved by the appellate court.” Pet. Remand Resp. Br. 3–4 (citing Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)). Petitioner further argues that the Federal Circuit has expressly resolved the question of whether the Petition has sufficiently set forth “the ‘how’ and ‘why’ of the cited combination” in favor of Petitioner and, therefore, we should not address or revisit the issue on remand. Id. at 7. We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • BurdenDecided for patent owner

    “We note, as an initial matter, that it is Petitioner’s burden to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Despite having been afforded an opportunity on remand to address our claim construction set forth in the Final Written Decisions, Petitioner does not address in its how the cited prior art teaches or suggests the limitation under our construction. See Pet. Remand Opening Br. 3–5, 7. Thus, Petitioner does not meet its burden to show by a preponderance of the evidence that claims 9, 10, and 63 of the ’115 patent and claim 28 of the ’560 patent are unpatentable over the combination of Kiss and FIPA97. In addition, for the reasons discussed below, Petitioner’s cited evidence does not show sufficiently that the cited prior art teaches or suggests “process characteristics” recited in the claims under our construction of the term—i.e., “characteristics of a process for an agent.” As noted above, Petitioner argued during trial that FIPA97’s “interaction-protocols” parameter is “analogous to both the Machine Type and Language examples [of Process Characteristics] from the specification.” See Pet. Reply 78. On remand, Petitioner does not present this “similarity” argument. See generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Although Petitioner’s argument on the alleged similarity of FIPA97’s “interaction-protocols” to the Specification’s examples of Process Characteristics may be relevant to the question of whether FIPA97 teaches or suggests the recited “process characteristics” under our construction, we are not persuaded that Petitioner has cited sufficient evidence to show FIPA97’s “interaction-protocols” parameter is analogous to the Specification’s Machine Type and Language examples.” slip op. at 32

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00811 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent are unpatentable under § 103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Final Written Decisions, we determined that a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” 810 Final Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final Dec. 12. We see no reason to depart from this determination, which the parties did not challenge on appeal.” slip op. at 18

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Microsoft Corporation v. Ipa Technologies Inc.Some claims unpatentable
  PTAB · Dec 22, 2022 · IPR2019-00810 · APJ Kevin C Trock · IPR · Remand

  On remand, claims 8 and 86–89 of the ’115 patent and claims 10 and 11 of the ’560 patent were held unpatentable under §103; claims 9, 10, and 63 of the ’115 patent and claim …

  RulingsRemand decision

  • RemandOther

    “We agree with Petitioner’s argument. We disagree with and reject Patent Owner’s argument in its remand papers directed to Petitioner’s reasons for the cited combination as being inconsistent with the Federal Circuit’s decision, which determined that Petitioner has shown sufficiently and FIPA97 to obtain the subject matter recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. See Microsoft, 2022 WL 989403, at *3–5. Pursuant to the Federal Circuit’s decision and mandate, we address below the remaining obviousness disputes concerning claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent. In the Final Written Decisions in the 810 IPR, 814 IPR, and 835 IPR, we did not reach the issue of whether Petitioner has shown sufficiently that the cited combination teaches or suggests all limitations of these claims. See 810 Final Dec. 144– 149; 814 Final Dec. 132–135; 835 Final Dec. 106–109. We do so now and address the parties’ disputes regarding the teachings of the cited prior art as they relate to the limitations recited in claims 8–10 and 63 of the ’115 patent and claim 28 of the ’560 patent.” slip op. at 23

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

    “argued in the Petition that a “trigger” recited in claim 1 (see Ex. 1001, 29:10–24) is “a general mechanism for requesting some action be taken when one or more conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–81). Patent Owner did not dispute Petitioner’s proposed meaning of “trigger” recited in claim 1. See PO Resp. 24–38. In the Final Written Decision in the 810 IPR, we adopted this undisputed interpretation of “trigger” because the construction is consistent with the disclosure in the Specification. 810 Final Dec. 120 (citing Ex. 1001, 21:22–24 (“triggers [provide] a general mechanism for requesting some action be taken when a set of conditions is met”)). This claim construction was not appealed and, as noted above, the Federal Circuit did not address the construction of this claim term. See Microsoft, 2022 WL 989403. Considering the full record, we see no reason to depart from the claim construction of the term “trigger” the same claim construction for purposes of this Remand Decision. Petitioner and Dr. Lieberman proposed the same interpretation for the claim term “trigger” recited in claim 8. See Ex. 1003 ¶ 371. We agree with this construction because claim 8 incorporates all of the limitations of claim 1 from which it depends and the same terms appearing in different portions of a claim should be given the same meaning absent compelling evidence to the contrary. See Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009) (“We apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” (internal quotation marks omitted) (citations omitted)); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.”). We also agree with Dr. Lieberman’s proposed interpretation of the claim term “trigger declaration” as “a statement in a program that specifies the characteristics of a trigger” (Ex. 1003 ¶ 371) because the construction is consistent with the disclosure in the Specification. See Ex. 1001, 17:5–9 (“Each registered agent may be optionally associated with one or more triggers, which preferably could be referenced through their associated Trigger Declaration fields 712 in the parent facilitator Agent Registry 702.”); see also Ex. 1003 ¶ 374 (citing Ex. 1001, 17:5–9, Fig. 7).” slip op. at 27

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

    “Patent Owner’s argument is unavailing because, as discussed above, Dr. Lieberman persuasively explained that in FIPA97’s FIPA-AVEB- Request-Notification contract-net “[t]he GA is responsible for the creation and management of a content index, and uses this index to respond to requests from the CA” (Ex. 1003 ¶ 373 (citing Ex. 1011, 11)) and that a person of ordinary skill in the art would have understood that, for the GA to monitor for changes over a given time period and inform the CA of any changes to the status of a specific AV program that conform to a precondition “preconditions2” within that period, “the agent registry must include declaration functionality” for preconditions relating to the status of AV programs (id. ¶ 374). We are persuaded that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary skill in the art that the GA’s context index (the claimed “agent registry data structure”) includes a statement of a precondition relating to a specific AV program listed in the content index. In its remand paper, Patent Owner argues that “nothing in Part 6 FIPA97 explicitly teaches that a precondition2 is stored within a General Agent as asserted by Petitioner.” PO Remand Resp. Br. 7 (underlined emphasis added). Patent Owner’s argument is unavailing because Petitioner’s asserted theory of unpatentability is one of obviousness, not anticipation. Thus, Petitioner need not show “FIPA97 explicitly teaches that a precondition2 is stored within a [Guide] Agent,” as Patent Owner demands. See id. For the reasons discussed above, we are persuaded that Petitioner set forth sufficient evidence in the Petition to show that the cited disclosures of FIPA97 at least would have suggested to a person of ordinary structure”) includes a statement of a precondition (the claimed “trigger declaration”) relating to a specific AV program listed in the content index. Thus, we determine that the Petition establishes sufficiently that FIPA97 teaches or suggests “the agent registry data structure includes at least one trigger declaration for one active agent,” as recited in claim 8.” slip op. at 29

  • BurdenNot shown unpatentable

    “We note, as an initial matter, that it is Petitioner’s burden to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Despite having been afforded an opportunity on remand to address our claim construction set forth in the Final Written Decisions, Petitioner does not address in its how the cited prior art teaches or suggests the limitation under our construction. See Pet. Remand Opening Br. 3–5, 7. Thus, Petitioner does not meet its burden to show by a preponderance of the evidence that claims 9, 10, and 63 of the ’115 patent and claim 28 of the ’560 patent are unpatentable over the combination of Kiss and FIPA97. In addition, for the reasons discussed below, Petitioner’s cited evidence does not show sufficiently that the cited prior art teaches or suggests “process characteristics” recited in the claims under our construction of the term—i.e., “characteristics of a process for an agent.” As noted above, Petitioner argued during trial that FIPA97’s “interaction-protocols” parameter is “analogous to both the Machine Type and Language examples [of Process Characteristics] from the specification.” See Pet. Reply 78. On remand, Petitioner does not present this “similarity” argument. See generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Although Petitioner’s argument on the alleged similarity of FIPA97’s “interaction-protocols” to the Specification’s examples of Process Characteristics may be relevant to the question of whether FIPA97 teaches or suggests the recited “process characteristics” under our construction, we are not persuaded that Petitioner has cited sufficient evidence to show FIPA97’s “interaction-protocols” parameter is analogous to the Specification’s Machine Type and Language examples. First, Petitioner did not explain during trial, nor does it explain on remand, why FIPA97’s “interaction-protocols” parameter is analogous to the Machine Type and Language examples in the Specification. See Pet. Reply 78; see generally Pet. Remand Opening Br., Pet. Remand Resp. Br. In addition, Petitioner did not cite, nor does it cite on remand, any declaration generally Pet. Remand Opening Br., Pet. Remand Resp. Br. Petitioner’s argument, therefore, is conclusory and unpersuasive as unsupported attorney argument. See Icon Health & Fitness, Inc. v. Strava Inc., 849 F.3d 1034, 1046 (Fed. Cir. 2017) (“Attorney argument is not evidence or explanation in support of a conclusion.”); Invitrogen Corp. v. Clontech Lab., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (“Unsubstantiated attorney argument regarding the meaning of technical evidence is no substitute for competent, substantiated expert testimony.”).” slip op. at 32

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,851,115
• Configit A/S v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to 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); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6

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

    “With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13

  Patent outcomesUS 6,836,766 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,766
• Inductev Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01166 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 1, 5–8, 15, and 19–22 are anticipated by O’Brien, and claims 1–23 are obvious over O’Brien and Haaster.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSA”) “at the relevant time (around 2008) would have had at least a bachelor’s 5 Ex. 1024 was served, but not filed in this proceeding. Opp. Mot. to Exclude v. degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent research”; “[a]lternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to electrical engineering (or equivalent), with at least one year of industry experience.” Pet. 8 (citing Allen Decl. ¶¶ 31–34). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the specification of the ’935 patent and asserted prior art of record.” slip op. at 10

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

    “Petitioner asserts that “prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning” and “submits that no terms need to be construed to find the asserted claims unpatentable under the grounds set forth herein.” Pet. 9. Patent Owner does not submit any claim construction for any term. See generally PO Resp. We do not discern a dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. 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 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Frequency Power Transmission System for Wireless Systems and Devices.” Ex. 1007, Title. Petitioner asserts that O’Brien “was publicly available more than one year prior to the ’935 patent’s filing date” as “O’Brien was completed and approved by faculty members at the University of Dresden on March 11, 2006” and the “‘Machine-Readable Cataloging’ (MARC) record for O’Brien demonstrates that O’Brien was received, cataloged, and indexed by the Verbundzentrale Des Gemeinsamen Bibliotheksverbundes as of March 2, 2007.” Pet. 10–11 (citing Ex. 1005 ¶¶ 38, 40–43). Patent Owner does not challenge Petitioner’s assertions regarding O’Brien’s public accessibility. See generally PO Resp.6 Because Petitioner has shown, by a preponderance of the evidence, public accessibility of O’Brien through the MARC record and the library indexing as of March 2, 2007, as discussed above, and there is no evidence to the contrary, we find that O’Brien was publicly available more than one year prior to the filing date of the 6 We note here, however, Patent Owner’s contention that Petitioner has not properly authenticated O’Brien. Mot. Exclude 1. We address the issue of authentication below in connection with our denial of Patent Owner’s Motion to Exclude. See Section IV. ’935 patent (December 28, 2009), and thus qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 12

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

    “As stated in our Decision on Institution, although we agree with Patent Owner’s explanation of how O’Brien describes source coils and tuning circuits in discrete chapters of the reference, the Petition explains sufficiently that the Tuneable Resonant Circuit is inexorably linked to the source coils and that the circuits are thus tuned to resonance. Dec. on Inst. 20. The arguments presented by Patent Owner do not persuade us otherwise. See Sur-reply 3−4 (arguing that O’Brien’s disclosure of tuning circuits is distinct from its disclosure of coils and, therefore, Petitioner’s discussion of one does not imply the other). As explained above, despite the Petition’s prominent reliance on the source-side Tuneable Resonant Circuit, highlighted in purple in Figure 5-1, Petitioner also relies on the discussions in Chapter 6 that describe the characteristics of the tuning circuits and Chapter 7 that describe source coils and the resonant circuits as “Source side systems.” Pet. 18−20. Accordingly, and as previously noticed in our Decision on Institution, the Petition gives sufficient notice that O’Brien’s source coils are part of the “source resonator.” Dec. on Inst. 20. Therefore, we are not persuaded by Patent Owner’s arguments that the Petition fails to show that O’Brien discloses the claimed “source resonator.” For the same reason, we are not persuaded that Petitioner’s Reply represents a new theory as compared with the position taken in the Petition. Consequently, Petitioner has shown that the “source resonator optionally coupled to an energy source” of claim 1 is taught by O’Brien’s source side system where the tunable resonant circuit (including the source coils) is coupled to the power source. Pet. 18−20; Ex. 1007, Figs. 5−1 (depicting the coupling to the power source), 6−1 (depicting the source side power conversion part of the system with tuning circuits in three different axes in an omni-directional system); 112−112 (Chapter 6 – describing the power converter of the source side and stating that the “power rating of the source side converter is primarily determined by the losses in the source coils for operation at resonance”); 114−115 (Chapter 6 – describing resonant circuit parameters where the source and receiver sides are tuned to a resonant frequency and form a transformer); 139−140 (Chapter 7 – describing “Source side systems,” the source coils operating characteristics, and three resonators connected to three independent power supplies); Allen Decl. ¶¶ 76−78.” slip op. at 23

  Patent outcomesUS 8,304,935 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,304,935
• Apple Inc. v. Zipit Wireless, Inc.All claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01131 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 13 and 17–19 are unpatentable under § 103 over the specified combinations of Van Dok, Sinivaara, Werndorfer, and the additional references.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Traynor obtained his undergraduate degree 1 year before the critical date he lacks the requisite 2 years of industry experience as of the critical date. Mot. 3–4. Our Consolidated Trial Practice Guide provides that “[a]n expert training, or education to testify in the form of an opinion.” Consolidated Trial Practice Guide 74 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated 34 (citing Fed. R. Evid. 702). Further, the Trial Practice Guide also provides that “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Id. (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F. 3d 1356, 1363–1364 (Fed. Cir. 2008)). We find that Dr. Traynor is qualified in the pertinent art. Dr. Traynor received his Bachelor’s degree in Computer Science in May 2002, his Masters’ degree in Computer Science in May 2004, and his Ph.D. in Computer Science in 2008. Ex. 1003 ¶ 2; Ex. 1004, 5. He has served as a professor since 2008 and is currently a Professor in the Department of Computer and Information Science and Engineering at the University of Florida. Id. at ¶ 3. He has over 8 years of industry experience and has published 90 articles in the areas of information security, mobility, and networking. Ex. 1003 ¶¶ 6–7, 9–11, Ex. 1004 12–24, 31. We note that Patent Owner did not depose Dr. Traynor or ask him about his post undergraduate experience before the critical date.” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “1003 and Exhibit 1103, asserting that they are inadmissible based on FRE 702, 703, and 704, and improperly contain hearsay based on FRE 802, 803, 804, 805, 806, and 807. Mot. 2–3. Patent Owner’s contentions regarding admissibility of Dr. Traynor’s declarations and hearsay contained in the declarations all stem from Dr. Traynor’s alleged lack of industry experience sufficient to establish ordinary skill in the art as of the critical date of the ’837 patent. See Mot. 3–8; Opp. Reply 2–5. Petitioner opposes, arguing that (1) Dr. Traynor need not be a person of ordinary skill in the art as of the critical date (December 24, 2003); (2) Dr. Traynor is highly qualified in the pertinent art; and (3) Patent Owner’s objections to the declarations were not timely filed and lacked particularity. Opp. 1–2. We are not persuaded by Patent Owner’s arguments that because” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet. 5 n.2; Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10

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

    “We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))). Petitioner offers no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the prosecution history.” Id. at 5 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11 We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11

  Patent outcomesUS 7,894,837 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,894,837
• Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS 7,894,837 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,894,837
• Philip Morris Products S.A. v. Healthier Choices Management Corp.All claims unpatentable
  PTAB · Dec 15, 2022 · IPR2022-00454 · APJ Julia Heaney · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by Hammel; the revised contingent motion to amend with substitute claims 9–16 is denied for lack of written-description support.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, or a related field and two to three years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, or a related field, and one to two years of industry experience” and “would have been familiar with electrically powered smoking devices and the components and underlying technology used therein.” Pet. 6–7 (citing Ex. 1003 ¶¶ 24–26). Patent Owner argues that a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, or a related field, an understanding of combustion reactions in electric smoking articles, and one to three years of practical experience” and would have been “familiar with electrical smoking devices and the components and design considerations thereof.” PO Resp. 8 (citing Ex. 2001 ¶¶ 28–31). Neither party has responded to the other’s position as to the level of ordinary skill, or identified any material difference between their proposals. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Patent Owner, because it is consistent with the disclosures of the ’170 patent and the prior art of record. We note, however, that neither party contends that any issue in this case turns on the differences between the parties’ definitions of one of ordinary skill in the art.” slip op. at 7

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

    “We decline to adopt Patent Owner’s construction because it improperly reads extraneous limitations into the claim from the specification, “wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The ’170 patent discloses multiple embodiments of a combustible material reservoir; Patent Owner does not dispute this. See PO Sur-reply 7–8. Further, Patent Owner does not present a sufficient underlying factual basis to support Dr. Garris’s testimony that a person of ordinary skill in the art would understand “combustible material reservoir” as Patent Owner proposes. See Ex. 2001 ¶¶ 63–64. Therefore, we are not persuaded that the airflow limitations that Patent Owner reads into “combustible material reservoir” are necessary. In view of the foregoing, we construe the term “combustible material reservoir” to have its ordinary meaning, i.e., a reservoir for combustible material.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir.” slip op. at 24

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

    “insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir. For the foregoing reasons, we are persuaded that a preponderance of the evidence shows that Hammel discloses each of the limitations of claims 1 and 5.” slip op. at 24

  Patent outcomesUS 10,561,170 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,561,170

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