Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: December 12, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM,INC.,
`Petitioner,
`
`V.
`
`LEXOS MEDIAIP, LLC,
`Patent Owner.
`
`IPR2023-01001
`Patent 6,118,449
`
`Before PHILLIP J. KAUFFMAN, JEFFREY S. SMITH,and
`SHARONFENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`3SUS.C. $ 314
`
`
`571-272-7822
`
`Paper 9
`Date: December 12, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM,INC.,
`Petitioner,
`
`V.
`
`LEXOS MEDIAIP, LLC,
`Patent Owner.
`
`IPR2023-01001
`Patent 6,118,449
`
`Before PHILLIP J. KAUFFMAN, JEFFREY S. SMITH,and
`SHARONFENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`3SUS.C. $ 314
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`I.
`
`INTRODUCTION
`
`A.—Background and Summary
`
`Amazon.com, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
`
`requesting an inter partes review of claims 1, 27, 38, and 53 of U.S. Patent
`
`No. 6,118,449 (Ex. 1002, “the ’449 patent’). Lexos Media IP, LLC (‘Patent
`
`Owner’’) filed a preliminary response. Paper 8 (“Prelim. Resp.”).
`
`The Boardhas authority to determine whetherto institute an inter
`
`partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35
`
`U.S.C. § 314(a), we may not authorize an inter partes review unless the
`
`information in the Petition “showsthat there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” For the reasons that follow, we institute an inter
`
`partes review asto claims 1, 38, and 53 of the ’449 patent on all grounds of
`
`unpatentability presented.
`
`B.
`
`Real Parties in Interest
`
`Petitioner identifies Amazon.com, Inc.; Amazon.com Services LLC;
`
`and Amazon.com Sales, Inc. as the real parties in interest. Pet. 1.
`
`Patent Owneridentifies only itself as the real party in interest. Paper
`
`6 (Patent Owner’s Mandatory Notices), 1.
`
`C.
`
`Related Matters
`
`Petitioner identifies the following proceeding as a related matter:
`
`Lexos Media IP, LLC y. Amazon.com, Inc., No. 2:22-cv-00169-JRG (E.D.
`
`Tex.) (“the related district court litigation’”’). Pet. 1-2. Petitioner
`
`additionally lists as related 12 pending and 30 terminated cases involving the
`
`°449 patent and/or U.S. Patent No. 5,995,102 (Ex. 1001, “the ’102 patent”).
`
`Id. at 2-4. Petitioner notes that the °449 patent was the subject of inter
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`partes review proceeding IPR2018-01755 (“the 1755 IPR”), and that the
`
`Federal Circuit affirmed the Board decision in that proceeding.
`
`/d. at 5.
`
`Patent Ownerlists twelve pendingcasesas related, including the
`
`related district court litigation. Paper6, 1.
`
`D.
`
`The ’449 Patent
`
`The °449 patentis directed to “[a] system for modifying a cursor
`
`image, as displayed on a video monitor of a remote terminal, to a specific
`
`image having a desired shape and appearance.” Ex. 1001,' code (57). The
`
`context of the invention relates to a graphical user interface in which a
`
`pointing device (e.g., a mouse) is used by the user to navigate a video
`
`display, and in which movementof the pointing device1s indicated by a
`
`corresponding movement of a cursor on the video display.
`
`/d. at 3:22—26,
`
`8:24—-37. A generic cursor may be an arrow,pointing hand, hourglass,etc.
`
`Id. at 3:57-61. The ’449 patent relates to changing that generic cursor by
`
`sending data and control signals from a remote computer to replace such a
`
`cursor with a cursor having an appearancethat is associated with other
`
`content being displayedto the user, e.g., a logo, mascot, or an imageof a
`
`product or service, related to the other content being displayedto the user.
`
`Id. at 3:4-9, 17:5-18:3. Figure 8 of the 449 patent, reproduced below,
`
`shows a web pageaccording to the invention.
`
`' The parties reference the specification of the ’102 patent, parent to the ’449
`patent, rather than the ’449 patentitself. Pet. 2 n.2; Prelim. Resp. 30 n.7
`(describing the patents as having a “commonspecification”). We follow this
`practice for this Decision.
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`
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`In Figure 8, shown above, web page60a is displayed to a user, including
`
`bannerad 62 for cola. /d. at 5:30-32, 13:31-41. The cursor to be used with
`
`this web page changes from a standard cursor(e.g., an arrow) to cola-bottle-
`
`shaped cursor 44a in association with the banner ad 62.
`
`/d.
`
`The ’449 patent describes interactions between a server system and a
`
`user’s terminal to effect the cursor change.
`
`/d. at 4:4—9, 5:37-65, 7:16—-40.
`
`The user terminal is controlled by an operating system (“OS”), and
`
`application programssuch as a browser running on the user terminal use an
`
`application programminginterface (“API”) to interface with the OS. /d. at
`
`7:29-40, Fig. 2.
`
`The server system transmits specified content information to the user
`
`terminal, including information to be displayed on the user’s computer (such
`
`as a hypertext markup language (“HTML”) webpage), cursor display
`
`instruction, and cursor display code. /d. at 8:4—23. The cursor display
`
`instruction indicates where the cursor image data corresponding to the new
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`appearance of the cursor resides.
`
`/d. at 8:49-64. The cursor display code
`
`causes the user’s terminal to display that cursor imagedata in place of the
`
`original cursor, using the API of the operating system to effect these
`
`changes. /d. at 8:34—37, 8:52-57, 13:19-30.
`
`EB.
`
`Challenged Claims
`
`Claims | and 53 are independent. Claim 38 depends from claim 27.
`
`Asdiscussed below, in Section II.A, claim 27, while listed as being
`
`challenged, has been cancelled.
`
`Claim | is reproduced below with identifiers in brackets,
`
`corresponding to the identifiers set forth by Petitioner (Pet. 71-72) and with
`
`additional identifiers added by the Board.
`
`1. A server system for modifying a cursor image to a specific
`image having a desired shape and appearance displayed on
`a display of a remote user’s terminal,
`said system
`comprising:
`
`[a] cursor image data corresponding to said specific image
`
`[b] cursor display code, said cursor display code operable to
`modify said cursor image; and
`
`[c.i] a first server computer for transmitting specified content
`information to said remote user
`terminal
`[c.11]
`said
`specified content information including at least one cursor
`display instruction indicating a location of said cursor
`image data, [c.11] said cursor display instruction and said
`cursor display code operable to cause said user terminalto
`display a modified cursor image on said user’s display in
`the shape and appearance of said specific image,[c.i1.1]
`wherein said specified content information is transmitted
`to said remote user terminal by said first server computer
`responsive to a request from said user terminal for said
`specified content information,
`[c.111.2] and wherein said
`specified
`content
`information
`further
`comprises
`information to be displayed on said display of said user’s
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`[c.iv] said specific image including content
`terminal,
`corresponding to at least a portion of said information to
`be displayed on said display of said user’s terminal, and
`wherein said cursor display code is operable to process
`said cursor display instruction to modify said cursor image
`to said cursor image in the shape and appearance ofsaid
`specific image in response to movement of said cursor
`image over a display of said at least a portion of said
`information to be displayed on said display of said user’s
`terminal, and whereinsaid specific imagerelatesto at least
`a portion of said information to be displayed on said
`display of said remote user’s terminal.
`
`Ex. 1002, 18:39-19:6.
`
`Cancelled claim 27 is identical to claim 1, with the exception of claim
`
`1’s recitation (in element[c.iv]) that “said cursor display code is operable to
`
`process said cursor display instruction to modify said cursor image to said
`
`cursor image in the shape and appearance ofsaid specific image in response
`
`to movementof said cursor image over a display ofsaid at least a portion of
`
`said information to be displayed on said display of said user’s terminal”(id.
`
`at 18:64—19:3 (emphasis added)), which 1s replaced in cancelled claim 27
`
`with the following recitation:
`
`said cursor display code is operable to process said cursor
`display instruction to modify said cursor image to said
`cursor image in the shape and appearanceof said specific
`image in response to movementof said cursor image over
`a specified location on said display of said user’s terminal
`
`Id. at 20:35—67 (emphasis added).
`
`Claim 38 depends from cancelled claim 27:
`
`38. The server system in accordance with claim 27, wherein said
`specified content information is transmitted in the form of
`HTML files that define a web page.
`
`Id. at 21:39-41.
`
`
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`IPR2023-01001
`Patent 6,118,449
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`Claim 53 is reproduced with identifiers in brackets, corresponding to
`
`the identifiers set forth by Petitioner (Pet. 74—75):
`
`53. A method for modifying an initial cursor image displayed on
`a display of a user terminal connected to at least one server,
`comprising:
`
`[a] receiving a request at said at least one server to provide
`specified content information to said user terminal;
`
`[b] providing said specified content information to said user
`terminal in responseto said request, said specified content
`information including at
`least one
`cursor display
`instruction and at least one indication of cursor image data
`corresponding to a specific image; and
`
`[c.1] transforming said initial cursor image displayed on said
`display of said user terminal into the shape and appearance
`of said specific image in response to said cursor display
`instruction, wherein said specified content information
`includes informationthat is to be displayed on said display
`of said user’s terminal, wherein said specific image
`includes content correspondingto at least a portion of said
`information that is to be displayed on said display of said
`user’s terminal, and [c.1i] wherein said cursor display
`instruction indicates a cursor display code operable to
`process said cursor display instruction to modify said
`cursor image to said cursor image in the shape and
`appearance of
`said specific image in response to
`movement of said cursor image over a display of said at
`least a portion of said information to be displayed on said
`display of said user’s terminal, and [c.i1i] wherein said
`specific image has a shape and appearancerelating to said
`information to be displayed.
`
`Td. at 22:30-58.
`
`F.
`
`Evidence
`
`Petitioner relies on the following patent evidence.
`
`
` U.S. Patent No. 5,835,911
`Ex. 1005
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`
`“Nakagawa’’)
`Ex. 1006
`US. Patent No. 5,937,417
`Nielsen
`
`
`
`
`
`
`
`
`Malamudet. al.
`“Malamud’’)
`
`US. Patent No. 6,437,800 Bi
`
`Ex. 1004
`
`
`
`Pet. 6. Petitioner also relies on a declaration from Dr. Craig Rosenberg
`
`(Ex. 1003). Patent Ownerrelies on a declaration from Dr. Michael Shamos
`
`(Ex. 2001).
`
`G.—Asserted Grounds
`
`Petitioner asserts that claims 1, 27,7 38, and 53 would have been
`
`unpatentable on the following grounds:
`
`
`
`
`
`Malamud, Nakagawa
`Nielsen, Malamud
`
`Il.
`
`ANALYSIS
`
`A.
`
`Statutory Authority with Respect to Claim 27
`
`Petitioner presents arguments with respect to the unpatentability of
`
`claim 27. However, as Petitioner acknowledges, claim 27 was found
`
`unpatentable in the 1755 IPR, and this decision wasaffirmed by the Federal
`
`Circuit. See 1755 IPR, Paper 22 (Final Written Decision), 1, 27-28, 44-46;
`
`Ralph Lauren Corp. v. Hirshfeld, 852 F. App’x 540 (Fed. Cir. 2021). An
`
`inter partes review certificate was issued confirming this determination.
`
`Ex. 3001.
`
`? As discussed in Section II.A, claim 27 has been cancelled.
`> The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. § 103. Because the claims
`were issued before the effective date of the AIA’s amendmentsto 35 U.S.C.
`§ 103, we apply the pre-AIA version of § 103 in this Decision. See
`Ex. 1002, code (45).
`
`
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`IPR2023-01001
`Patent 6,118,449
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`Welack statutory authority to entertain Petitioner’s request to cancel
`
`claim 27 for the simple reason that it is no longer a valid claim that may be
`
`canceled. The plain language of the statute makes that point clear. In
`
`particular, § 311(b) providesthat a petitioner in an inter partes review “may
`
`request to cancel as unpatentable 1 or more claims ofa patent.” 35 U.S.C.
`
`§ 311(b) (emphases added). Our reviewing court has explained that
`
`“Tslection 311 is confined to the review of existing patent claims.” Uniloc
`
`2017 LLC v. Hulu, LLC, 966 F.3d 1295, 1304 (Fed. Cir. 2020) (emphasis
`
`added). That is because “[t]o ‘cancel’ carries the ordinary meaning to ‘annul
`2 99
`or destroy|[,]’”which, in the context of § 311(b), presupposesthat the claim
`
`being canceled “1s already in effect.” /d. (citing Mac’s Shell Serv., Inc. v.
`
`Shell Oil Prods. Co., 559 U.S. 175, 183 (2010); Webster’s Third New
`
`International Dictionary (1961) (defining “cancel”as the “destr[uction] [of]
`
`the force, effectiveness, or validity”) (alterations in original)). Thus “[w]hen
`
`given its ordinary meaning, § 311(b) provides that only claimsthat are in
`
`effect may be annulled.™ /d. at 1304—05.
`
`Per the reasoning in Uniloc, institution of an IPR is predicated on the
`
`challenged claims having some “force, effectiveness, or validity” that can be
`
`canceled.
`
`/d. at 1305. So, claims of a patent that have been finally
`
`adjudicated to be invalid in a prior inter partes review cannot subsequently
`
`be “cancel[ed] as unpatentable” under § 311(b), as they no longer exist in
`
`the patent for which the later inter partes review is being sought. Claim 27
`
`of the *449 patent no longer exists as a claim that can be canceled under
`
`§ 311(b).
`
`4 Although the issue in Uniloc was whether the Board has authority to
`consider patent eligibility when analyzing proposed substitute claims in a
`motion to amend, Uniloc nonetheless interprets § 311(b).
`
`9
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`IPR2023-01001
`Patent 6,118,449
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`In sum, the plain language of § 311(b) limits the scope of the Board’s
`
`authority to institute an inter partes review to only those patent claims that
`
`have not been cancelled at the timeofinstitution.> And becausethatis not
`
`the case with claim 27 of the ’449 patent, we lack statutory authority to
`
`institute an IPR on that claim.
`
`B.
`
`Discretionary Denial
`
`Institution of inter partes review 1s discretionary. See Harmonic Inc.
`
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled, to institute an IPR proceeding.”’).
`
`Patent Owner argues that we should exercise discretion to deny
`
`institution under 35 U.S.C. § 314(a) because the factors identified in Apple,
`
`Inc. v. Fintiv, Inc., 1PR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential) (“Fintiv”), weigh in favor of denying institution. Prelim.
`
`Resp. 3—23. Petitioner argues we should not discretionarily deny institution
`
`under 35 U.S.C. § 314(a). Pet. 62-65.
`
`Patent Owner additionally argues that we should exercise discretion to
`
`deny institution under 35 U.S.C. § 325(d) based on the 1755 IPR. Prelim.
`
`Resp. 23-27. Petitioner argues we should not discretionarily deny
`
`institution under 35 U.S.C. § 325(d). Pet. 65-69.
`
`For the reasons discussed below, we do not exercise our discretion to
`
`deny undereither §§ 314(a) or 325(d).
`
`> In contrast, the Director has authority to review claims of an expired patent
`because an expired patentstill carries certain nights, including the right to
`recover damagesfor past infringement under 35 U.S.C. § 286. See, e.g.,
`Sony Corp. v. lancu, 924 F.3d 1235, 1238 n.1 (Fed. Cir. 2019).
`
`10
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`IPR2023-01001
`Patent 6,118,449
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`1.
`
`Discretion - 35 U.S.C. § 314(a)
`
`The precedential decision in Fintiv identifies a non-exclusivelist of
`
`factors parties may consider addressing wherethere is a related, parallel
`
`district court action to determine whether such action provides any basis for
`
`discretionary denial. Fintiv, 5—16. The Director has issued additional
`
`guidance on the application of intiv. See Katherine K. Vidal, Interim
`
`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with
`
`Parallel District Court Litigation (June 21, 2022)° (“Fintiv Memorandum’’).
`
`The Fintiv Memorandumstates that “the PTAB will not
`
`discretionarily deny institution in view ofparallel district court litigation
`
`where a petitioner presents a stipulation not to pursue in a parallel
`
`proceeding the same grounds or any grounds that could have reasonably
`
`been raised before the PTAB.” Fintiv Memorandum,3 (citing Sotera
`
`Wireless, Inc. vy. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1,
`
`2020) (precedential as to § II.A) (“‘Sotera’’)); see id. at 7-9. The Fintiv
`
`Memorandum explains that such a stipulation “mitigates concerns of
`
`potentially conflicting decisions and duplicative efforts between the district
`
`court and the PTAB.” /d. at 7.
`
`Here, Petitioner provides a Sofera stipulation. Pet. 63. Specifically,
`
`Petitioner stipulates that if we institute review, “Petitioner will not pursue
`
`the groundsraised, or that reasonably could have been raised, in this IPR.”
`
`Id. (referencing Sotera),.
`
`Patent Ownerasserts we should deny the Petition despite Petitioner’s
`
`Sotera stipulation because “the sameissues can be tried by the consolidated
`
`° Available at https://www.uspto.gov/sites/default/files/documents/interim_
`procdiscretionarydenialsaiaparalleldistrictcourtlitigationmemo20
`220621 pdf.
`
`11
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`IPR2023-01001
`Patent 6,118,449
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`defendants, who have not offered the samestipulation.” Prelim. Resp. 20-—
`
`21. Patent Owner arguesthat “[a] Sotera stipulation is not a magic bullet
`
`under the circumstanceshere.” /d. at 21. But Patent Owner’s only citation
`
`is to a non-precedential decision issued before the Fintiv Memorandum was
`
`issued.
`
`/d. (citing Cisco Sys., Inc. v. Estech Sys., Inc., 1PR2021-00329,
`
`Paper 13 (PTAB June6, 2021)).
`
`While other parties may be able to raise duplicative issues in the
`
`consolidated proceeding, Petitioner here has stipulated it will not, following
`
`the Sotera formulation. By offering this stipulation, Petitioner has done
`
`whatit can to ensure “that there is minimal potential overlap of the two
`
`proceedings” between these twoparties. Sofera, 20.
`
`BecausePetitioner provides a Sotera stipulation, we decline to
`
`exercise the discretion under § 314(a) to deny institution in view of the
`
`related district court litigation. See Fintiv Memorandum,3, 7, 9.
`
`2.
`
`Discretion - 35 U.S.C. $ 3235(d)
`
`The Director may deny institution of inter partes review when “the
`
`same or substantially the sameprior art or arguments previously were
`
`presented to the Office.” 35 U.S.C. § 325(d). We apply a two-parttest
`
`whenevaluating whether to exercise discretion under § 325(d). See
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential) (“Advanced
`
`Bionics’”’). Specifically, we consider:
`
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and (2)
`if either condition of first part of the framework 1s satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims.
`
`12
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`IPR2023-01001
`Patent 6,118,449
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`Id. In doing so, we broadly consider the factors discussed in
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`
`8 (Dec. 15, 2017) (precedential as to § III.C.5, first para.; informative)
`
`(“Becton, Dickinson”). Id. at 9-11.
`
`In particular, we consider Becton, Dickinson factors(a), (b), and (d) to
`
`determine whether the same or substantially the sameprior art or arguments
`
`previously were presented to the Office.
`
`/d. at 10. These factors relate to:
`
`(a) the similarities and material differences between the asserted
`art and the prior art
`involved during examination;
`(b)
`the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; ... [and]
`(d) the extent of the overlap
`between the arguments made during examination and the manner
`in which Petitioner relies on the prior art or Patent Owner
`distinguishes the priorart.
`
`Becton, Dickinson, 17-18. While these factors mention examination, we are
`
`instructed that
`
`The factors set forth in Becton, Dickinson should be read
`broadly .
`.
`. to apply to any situation in whicha petition relies on
`the same or substantially the same art or arguments previously
`presented to the Office during a proceeding pertaining to the
`challenged patent. For example, although Becton, Dickinson
`factors (a) and (b) pertain to art evaluated “during examination,”
`these factors more broadly provide guidance as to whetherthe art
`presented in the petition is the “sameor substantially the same”
`as the prior art previously presented to the Office during any
`proceeding,
`including prior AIA proceedings. Similarly,
`although Becton, Dickinson factor (d) pertains to arguments
`made “during examination,” this factor more broadly provides
`guidance as to whether the arguments presented in the petition
`are “the same or substantially the same” as the arguments
`previously presented to the Office during any proceeding.
`
`13
`
`
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`IPR2023-01001
`Patent 6,118,449
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`Advanced Bionics, 10; see id. at 8. Our consideration “[a]t bottom .
`
`.
`
`.
`
`reflects a commitment to defer to previous Office evaluations of the
`
`evidence of record unless material error is shown.” /d. at 9.
`
`Patent Ownerarguesthat the same art was presented in the 1755 IPR.
`
`Prelim. Resp. 26—27. Patent Owner describes that Malamud was considered
`
`in the 1755 IPR and describes Nakagawaand Nielsen as cumulative over art
`
`considered in the 1755 IPR.
`
`/d. (citing Ex. 2018 (1755 IPR, Paper 2 (1755
`
`IPR petition) ), 30, 34-35). We agree that Malamud waspresented and
`
`considered in the 1755 IPR. Patent Owner additionally argues that the
`
`presentation of Malamudin the 1755 IPR parallels the arguments that are
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`before us now.
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`/d. at 26.
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`However, as Petitioner correctly asserts, the arguments made in the
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`1755 IPR were markedly different from the arguments presented in this
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`proceeding with respect to whether and how Malamudteaches“specified
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`content information.” Pet. 67-69. The 1755 IPR petitioner relied on
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`information in Malamud’s transmitted messagethat “tells the operating
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`system what type of cursor to display and sets forth the contents and type of
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`information to be displayed in the cursor” (Ex. 1004, 5:49—52) for teaching
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`the “specified content information”(first recited 1n limitation c.1) in claim 1
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`that comprises “information to be displayed on [the] display of [the] user’s
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`terminal” (recited in limitation c.i11.2). 1755 IPR, Paper 221755 IPR final
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`written decision, 18-19, 21-24. This led to a deficiencyin the petition’s
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`showing for the recitation (in limitation c.iv of claim 1) that the cursor image
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`is modified “responsive to movement of said cursor image over a display of
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`said at least a portion of said information to be displayed on said display of
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`said user’s terminal.” /d. at 24-26. It was this argumentin the 1755 IPR
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`that was foundto be fatal to arguments of unpatentability regarding claim |
`
`14
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`IPR2023-01001
`Patent 6,118,449
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`of the *449 patent.
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`/d. at 26 (“Petitioner has not adequately demonstrated
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`how Malamud.. . teaches or suggests this limitation becauseit has failed to
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`explain how Malamud’s cursor image could exhibit movementoveritself.’’).
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`The similar recitations of claim 53 were argued on the samebasis, and were
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`also not found to have been shown to be unpatentable for the same reason.
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`Id. at 26-27.
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`Here, however, Petitioner does not rely on Malamud’s transmitted
`
`message as including the “specified content information”of limitation c.1 of
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`claim | as the petition in the 1755 IPR did; rather, Petitioner here relies on
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`the application program in Malamudasincludingthis information. Pet. 29—
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`31, 48-49; see infra at § IL.F.2. With respect to claim 53, Petitioner here
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`substantially repeats its claim 1 arguments, therefore making different
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`argument with respect to “specified content information” than was made in
`
`the 1755 IPR. Pet., 35. We consider, therefore, with respect to Becton,
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`Dickinson factor (d), this is a significant area in which there is no overlap
`
`between the arguments previously made, which weredispositive in the 1755
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`IPR, and the manner in which Petitioner in this proceeding relies on
`
`Malamud. Even though Malamudwas before the Board in the 1755 IPR,the
`
`arguments presented in the Petition here were not previously considered by
`
`the Office.
`
`Wenote that in Advanced Bionics, factor (d) was not considered
`
`because a determination had been madewith respect to factors (a) and (b)
`
`that the art had been previously presented to the Office in the context of
`
`examination. Advanced Bionics, 20. In deciding not to analyzethis factor,
`
`the Board in Advanced Bionics notedthat it had determined that the sameart
`
`had been presented to the Office, so “the first condition of the first part of
`
`15
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`
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`IPR2023-01001
`Patent 6,118,449
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`the framework [was] satisfied” and no further analysis was necessary for that
`
`first prong of the AdvancedBionicstest.
`
`However Advanced Bionics involved a determination regarding the
`
`prosecution of the challenged patent in that proceeding, and in such cases,it
`
`may be the case that “the record of the Office’s previous consideration of the
`
`artis... silent.” /d. at 10. In such situations, Advanced Bionicsinstructs,
`
`proceeding to the second prong after determining that the same art was
`
`previously before the Office, without considering whether the same
`
`arguments appear in the record, may be merited.
`
`But where, as here, the prior presentation was in a prior inter partes
`
`review, even if factors (a) and (b) might lead us to concludethat the sameart
`
`wasbefore the Office, it is necessary for us to evaluate factor (d). The
`
`consideration of the art by the Office in inter partes review proceedingsis
`
`limited to the arguments made bythe petitioner. See Sirona Dental Sys.
`
`GmbH vy. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (the
`
`Board is not permitted “to deviate from the groundsin the petition and raise
`
`its own obviousnesstheory”); Koninklijke Philips N.V. v. Google LLC, 948
`
`F.3d 1330, 1336 (Fed. Cir. 2020) (holding that the Board erred by raisingits
`
`own obviousness theory based on combination of references not provided in
`
`the petition).
`
`Our evaluation of the first prong of Advanced Bionics makesclear that
`
`our “commitment to defer to previous Office evaluations of the evidence of
`
`record”is not implicated, because there was no previous determination
`
`regarding the asserted art in the mannerin whichit is presented in this
`
`proceeding. Wetherefore do not move forward to the second portion of the
`
`Advanced Bionics framework, which would require us to determineif the
`
`Office erred in such a prior evaluation.
`
`16
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`
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`IPR2023-01001
`Patent 6,118,449
`
`For these reasons, we decline to exercise the discretion to deny the
`
`Petition under 35 U.S.C. § 325(d).
`
`C.
`
`Legal Standards
`
`It is a petitioner’s burden to demonstrate unpatentability. See
`
`Dynamic Drinkware, LLC vy. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`
`1316, 1326-27 (Fed. Cir. 2008)). Petitioner bears “the burden of proving
`
`... unpatentability by a preponderanceof the evidence.” 35 U.S.C.
`
`§ 316(e); see 37 C.F.R. § 42.1(d) (2018).
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter and the prior art are “such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness1s resolved based on underlying factual
`
`determinations, including:
`
`(1) the scope and contentof the prior art; (2) any
`
`differences between the claimed subject matter and the prior art; (3) the level
`
`of skill in the art; and (4) objective evidence of nonobviousness,1.e.,
`
`secondary considerations.’ Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“Whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing /n
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`7 The present record contains no evidence or argumentrelating to secondary
`considerations.
`
`17
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”’)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)). “To satisfy its
`
`burden of proving obviousness, a petitioner cannot employ mere conclusory
`
`statements. The petitioner must instead articulate specific reasoning, based
`
`on evidence of record, to support the legal conclusion of obviousness.” /n re
`
`Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`Weanalyze the asserted grounds with the principles stated above in
`
`mind.
`
`D.
`
`Level of Ordinary Skill in the Art
`
`Petitioner contendsthat:
`
`A person of ordinary skill in the art (‘POSITA”) at the
`claimed priority date would have had experience in the fields of
`human factors engineering or human computer interaction. The
`POSITA would have at least a bachelor’s degree in computer
`science, computer engineering, human factors engineering, or a
`related field and would have hadat least two years of relevant
`work experience in the fields of UI design, or equivalent
`experience.
`
`Pet. 7 (citing Ex. 1003 4§ 31-35). At this time, Patent Owner does not
`
`contest Petitioner’s proposed definition for one of ordinary skill in the art.
`
`Prelim. Resp. 28; see Ex. 2001
`
`29.
`
`For the purposesof this Decision, we adopt Petitioner’s formulation
`
`for the level of skill of one of ordinary skill in the art, which appears to be
`
`consistent with the level of skill in the art reflected in the prior art of record
`
`and the disclosure of the ’449 patent. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001) (“the priorart itself [may] reflect[] an
`
`appropriate level” as evidence of the ordinary level of skill in the art)
`
`18
`
`
`
`IPR2023-01001
`Patent 6,118,449
`
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`
`163 (Fed. Cir. 1985)).
`
`E.
`
`Claim Construction
`
`Petitioner argues that no claim terms needto be construed, with the
`
`exception of a term construed in Lexos Media IP, LLC v. APMEX, Inc.,
`
`2:16-cv-00747-JRG-RSP (E.D. Tex.) (“APMEXlitigation”). Pet. 12-14.
`
`Patent Owneralso argues that we should apply the construction adopted in
`
`the APMEXlitigation. Prelim. Resp. 29.
`
`In that case, the district court construed “content correspondingto at
`
`least a portion of said information to be displayed on said display of said
`
`user’s terminal” to mean “an image representative of at least a portion of the
`
`subject or topic being displayed on the screen.” Ex. 1007, 9-13. The
`
`district court specifically considered whether any icon that changes based on
`
`being positioned over displayed content (including, e.g., a magnification
`
`icon that appears whena cursoris positioned over certain displayed content,
`
`such as a guitar image) is content corresponding to the displayed content,
`
`and determinedthat the term should be construed more narrowly.
`
`/d. at 11—
`
`12 (“If a user were to see the magnification icon off by itself. .
`
`. the user
`
`{?°?
`would not think, ‘guitar!’”). Petitioner contends, however, that adopting or
`
`rejecting this claim construction “does not change the .
`
`.
`
`. analysis for any of
`
`the grounds presented here,”as the prior art relied on for this recitation in
`
`the challenged claims meets the narrower construction adopted by the
`
`district court in the APMEXlitigation, and by implication, would meet the
`
`broader construction considered by that court. Pet. 14.
`
`Patent Owneradditionally contends that we should apply the district
`
`court’s constructions in the APMEXlitigation for the claim terms “cursor
`99 ¢¢
`
`display code,”
`
`“curso
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