- Hospitality Core Services LLC v. Nomadix, Inc.Institution deniedPTAB · Apr 27, 2016 · IPR2016-00052 · APJ Howard B Blankenship · IPR · Institution
The Board denied institution on all claims because the IPORT grounds lacked a threshold showing of printed-publication status and it declined the Applegate grounds under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and IPORT V2x are prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“and IPORT V2x are prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute or order a proceeding under . . . chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d) (titled “MULTIPLE PROCEEDINGS”). Further, in construing our authority to institute inter partes review under 37 C.F.R. § 42.108, we are mindful of the guidance provided in § 42.1(b): “[37 C.F.R. § 42] shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” Petitioner’s remaining asserted grounds of unpatentability, five of seven asserted grounds, rely on Applegate, alone or in combination with other references. See Pet. 4‒5, 29‒34, 36. Yet, Applegate received full consideration in view of the subject matter claimed in the ʼ894 patent in the denial of inter partes reexamination. The Central Reexamination Unit determined that a redirection server, as claimed, comprises hardware, and the only element disclosed by Applegate that performs redirection is software. See supra § II.D. We find nothing in this record that might demonstrate error in the CRU’s determinations. For example, as alleged by Patent Owner in its “Comments” to the CRU Director’s denial of the inter partes reexamination, the ʼ894 patent discloses that “[t]he redirection is accomplished by a Home Page Redirect (HPR) performed by the gateway device, a AAA server, or by a portal page redirect unit located internal to or external to the gateway device.” Ex. 1001, col. 9, ll. 5‒8. The claims, however, do not set forth a redirection “device” or “unit” but a redirection “server.” The indicated Specification portion of the ʼ894 patent describes an AAA “server” that may perform the redirection, which may be distinguished from a pure software embodiment performing the function, even if the server is located within the gateway device.5 See, e.g., Ex. 1001, col. 7, ll. 22‒24” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“ordinary skill in the art would have combined the teachings of the references, however, is lacking in a factual basis for such combination. According to Petitioner, “IPORT and Birrell describe the redirection server configured as a separate hardware circuit, and Coss and Colby describe systems using packet address modification for packet redirection, which could likewise be combined with Applegate and [Slemmer] to arrive at the system claimed in the [ʼ]894 patent.” Pet. 59 (citing Ex 1020 ¶ 39 (similar allegations)). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). As our reviewing court instructs: Although the obviousness analysis should “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” the Supreme Court emphasized that this evidentiary flexibility does not relax the requirement that, “[t]o facilitate review, this analysis should be made explicit.” Id. [KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)] (citing [In re] Kahn, 441 F.3d [977, 988 (Fed. Cir. 2006)] (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009). Petitioner’s challenge of the claims over Applegate, Slemmer, and Birrell (Pet. 4 (Ground 3), 32‒33, 58‒59) provides mere conclusory statements in support of the legal conclusion of obviousness. Petitioner offers no convincing rationale, in light of the teachings of the prior art, with respect to why one of ordinary skill in the art would have chosen to combine the elements of the asserted art in a way “to arrive at the system claimed in the [ʼ]894 patent.” Pet. 59.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,636,894
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.