• Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution denied
  PTAB · Aug 26, 2024 · IPR2024-00593 · APJ Meredith C Petravick · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 4–20 are unpatentable over Kennedy and Kurani-816. 2. Ground 2 — Kennedy, Kurani-816, and Yago Claim 3 depends from claim 1. We determine that Petitioner has not met its burden to show a reasonable likelihood that claim 3 would have been obvious over Kennedy, Kurani-816, and Yago. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 20

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

    “We agree with Patent Owner. We are not persuaded by Petitioner that it would have been obvious to a POSITA, based on the disclosures of Kennedy and Kurani-816, to store a digital title in memory 228 of processing server 102 for the purpose of record keeping. See Ex. 2013 ¶ 91. Kennedy discloses that processing server 102 includes a memory 228 for storing data used to perform its function, such as encryption keys, algorithms, and application programs. Ex. 1033 ¶ 46. Kennedy does not disclose memory 228 being a document store for record keeping of transaction messages or other transaction data. See id. In Kennedy, a private blockchain 206 stores data record 208 containing the transaction data. See e.g., id. ¶¶ 48–51; Fig. 2. Kurani-816 discloses digital titles that are specific to an asset and not to a particular financial transaction. Ex. 1034, 3:13–15. The digital titles are stored in a database at a digital title company and provided to the seller or buyer during a transaction. See e.g., id. at 6:34–9:7. Kurani-816 does not disclose transmitting the digital title to a financial transaction processing server, like processing server 102. Id. Thus, neither Kennedy nor Kurani-816 teaches transmitting documents pertaining to a financial transaction and a token corresponding to a financial transaction to identify the document to a first document store, as required by claim elements 1 and 6. For the reasons above, we are not persuaded by Petitioner that claim 1 would have been obvious to a POSITA over Kennedy and Kurani-816.” slip op. at 19

  • Parallel petitionsNot reached

    “Because we have denied institution in IPR2024-00590 and deny institution in this proceeding based on the patentability merits, we do not need to reach the issue of whether both Petitions should be instituted.” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “patent applications, including one filed on August 14, 2015. Ex. 1001, code (30). Petitioner asserts that the ’413 patent is not entitled to priority to August 14, 2015 because the provisional applications do not provide written description support for certain claim terms. Pet. 6–15. Patent Owner disputes Petitioner’s assertion. Prelim. Resp. 20, n.7. As both Kennedy and Kurani-816 were filed after August 14, 2015 (see Ex. 1033, code (22); Ex. 1034, code (22)), if the ’413 patent is entitled to priority to August 14, 2015, then neither Kennedy nor Kurani-816 is available as prior art. We do not need to reach this issue because, regardless of whether Kennedy and Kurani-816 are available as prior art, Petitioner has not shown a reasonable likelihood that it would have been obvious to a POSITA to combine Kennedy and Kurani-816 as proposed by Petitioner.” slip op. at 5

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,984,413
• I4f Licensing NV v. Vilox ABInstitution denied
  PTAB · Aug 21, 2024 · IPR2024-00602 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were anticipated by Miller or obvious over Miller alone or Miller and Roy.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons explained below, we do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Considering all of the arguments and evidence, we agree with Patent Owner that Petitioner insufficiently supports its position that Miller discloses a locking recess with a curved horizontal locking surface. Petitioner does not cite any text in Miller that discloses a locking recess with a curved horizontal locking surface. E.g., Pet. 7–8, 14–23. Instead, Petitioner relies on Miller’s Figure 3 as allegedly showing a curved horizontal locking surface. E.g., id. at 15–18, 21–23. We do not find that Miller’s Figure 3 shows a locking recess with a curved horizontal locking surface in the location identified by Petitioner, i.e., the location of the curved red arrow that Petitioner added to Miller’s Figure 3. E.g., Pet. 15, 22. Even assuming that this portion of Miller’s drawing shows a very subtle rise (which we do not find), it does not show clearly a curve, as opposed to, for example, a slightly inclined flat surface. Moreover, we agree with Patent Owner that, at the point of Petitioner’s curved red arrow, Figure 3’s overlapping representation of the tongue’s lower surface and the groove’s upper surface prevents distinguishing one from the other. Prelim. Resp. 45 (“In Figure 3, the lines merge so that no conclusion can reasonably be made by a [person of ordinary skill in the art] as to whether a locking recess is present in the groove or not.”). Accordingly, Figure 3 does not allow discerning a curve in the groove’s upper surface at the point identified by Petitioner.” slip op. at 17

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

    “Additionally, Petitioner does not provide a persuasive reason that a person of ordinary skill in the art would have had to configure Miller’s panel with a curved horizontal locking surface, in addition to an inclined horizontal locking surface, as required by independent claim 1. Pet. 34–39; Prelim. Resp. 54. In support of its argument that it was well-known to use curved locking surfaces, Petitioner provides a vague string cite of evidence that dubiously includes Miller (which has not been shown to disclose a curved horizontal locking surface). Pet. 37 (citing Ex. 1002 ¶¶ 25–26, 56; Ex. 1006, Figs. 2–4, 9, and 10 and associated description; Ex. 1004; Ex. 1006; Ex. 1005; Ex. 1009; Ex. 1010; Ex. 1011; Ex. 1012; Ex. 1013; Ex. 1014). Moreover, to the extent Petitioner is correct that it was well-known and easy to configure a panel with a curved locking surface, that may show that a person of ordinary skill in the art could have added a curved horizontal locking surface to Miller’s panel. But that does not show sufficiently that such a modification would have been obvious, as it does not demonstrate why a person of ordinary skill in the art would have modified Miller’s cladding panel to add a curved horizontal locking surface. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (stating that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1351–1352 (Fed. Cir. 2014)). Additionally, to the extent that Petitioner is correct that a person of ordinary skill in the art would have recognized a strength benefit of having two locking recesses, that does not explain why a person of ordinary skill in the art would have added a curved locking surface, as opposed to, for example, another substantially planar locking surface like the one at Miller’s contact point 42. Pet. 36–39; Ex. 1004, 5:19–34. And Petitioner does not identify, much less substantiate, any other reason that a person of ordinary skill in the art would have had for combining a curved locking surface with an inclined horizontal locking surface in Miller’s cladding panel. Pet. 36–39. Because Petitioner has not persuasively addressed claim 1’s requirement that its dual locking recesses include one with a curved horizontal locking surface, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Miller. E.g., Pet. 7–8, 34–39. Additionally, this deficiency is not remedied in Petitioner’s challenges to dependent claims 2–15 based on Miller. E.g., Pet. 34, 40–50. Accordingly, Petitioner does not establish a reasonable likelihood of prevailing on its position that dependent claims 2–15 would have been obvious over Miller.” slip op. at 23

  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,421,425
• Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00351 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on all challenged claims because the claims receive the provisional’s earlier priority date, making Gottlieb unavailable as prior art.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 16–22, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot reached

    “Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 13

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 6,575,138
• Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00352 · APJ Carl M Defranco · IPR · Institution

  The Board denied institution because the challenged claims are entitled to the provisional’s earlier filing date, making Gottlieb unavailable as prior art for every asserted ground.

  RulingsInstitution decision

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

    “For a patent to claim the benefit of the filing date of its provisional application, the provisional application must comply with the written description requirement of 35 U.S.C. § 112. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To show sufficient written description support, the provisional must reasonably convey to those skilled in the art that the inventor had possession of the later-claimed subject matter as of the provisional’s filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description inquiry is a question of fact, and, as such, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “The hydraulic link 22 consists of a hydraulic cavity 84 formed by hydraulic chamber 28 and hydraulic chamber cap 86. The cavity 84 is filled with viscous fluid. Within the chamber 28 is located the hydraulic piston part 72 of the needle valve 15. The chamber 28 is fitted around the hydraulic piston 72. O-ring seals 90 are located in the hydraulic chamber cap 86 and in the bottom of the hydraulic chamber 28 to prevent the fluid from leaking out of the cavity 84. The diametrical clearance between the outside diameter of the hydraulic piston 72 and the inside diameter of the hydraulic chamber 28 is extremely small (on the order of 50 to 250 microns). The exact clearance is dependent on the viscosity of the chosen fluid. The hydraulic flow in this clearance . . . is very small. The hydraulic fluid . . . acts as a solid during fast motions, because there is little flow going around the needle piston. Because the actuation occurs suddenly (on the order of 200 μs), the hydraulic fluid between the hydraulic chamber 28 and the needle valve piston 72 does not have the time to flow around the piston 72. Instead, the trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16. Id. at 12:5–13:14 (emphases added). Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Mercedes does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 11

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 6,298,829
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00380 · APJ Hyun J Jung · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim 1–19.

  RulingsInstitution decision

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

    “In inter partes reviews, the petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To institute an inter partes review, a petitioner must show “a reasonable likelihood” of prevailing with respect to at least one of the challenged claims. 35 U.S.C. § 314.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that one of ordinary skill in the art “would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, and systems.” Pet. 17 (citing Ex. 1002 ¶¶ 82–84). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. Prelim. Resp. 30 n.24. We adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’236 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8

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

    “Petitioner proposes interpretations for “mobile device,” “point-of-sale terminal,” “mobile enablement center,” “service data point,” and “register.” Pet. 10–16. Patent Owner responds that “[t]he Board does not need to expressly construe any claim elements to deny the Petition.” Prelim. Resp. 10. likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. 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)).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “asserted merchant identifier in Krasnyansky, the site’s creditID, identifies a merchant terminal, as required by claim 1. As Patent Owner points out, Krasnyansky expressly discloses that creditID identifies an account in a database, not a terminal. Prelim. Resp. 31–36. In particular, Krasnyansky teaches that “both the Wallet and the seller-site must present a unique identifier to the Payserver,” the identifiers “are the key[s] to all accounts in the Payserver’s database,” “each account has a pair of identifiers, both uniquely identifying the account in the database,” “[o]ne of the two identifiers is used in all account-debiting operations,” the identifiers “are seller-site requires the debitID of the Wallet and the creditID of the site.” Ex. 1005, 9:10–18; see also id. at 36:28–37:8 (describing similarly). Petitioner appears to argue that identifying an account in a database would also identify the merchant and merchant terminal. See Pet. 24–26. Petitioner, however, does not point to any portion of Krasnyansky that supports a site’s creditID further identifying a Web site or the computer hosting the Web site. See id. Krasnyansky, instead, only provides express support for the site’s creditID identifying the account. See Ex. 1005, 9:10–18. Krasnyansky also indicates that a site nickname, rather than the site’s creditID, identifies the Web site in one embodiment (see id. at 15:20–22), which further undermines Petitioner’s argument that identifying the account would identify the Web site and the computer running and hosting a Web site. Furthermore, Krasnyansky describes using site nickname and creditID to complete the transaction without any need for identifying the computer running and hosting debit-site 400. See id. at 15:12–16:22. Petitioner does not address these portions of Krasnyansky. See Pet. 24–26. Petitioner, thus, does not argue sufficiently that Krasnyansky requires identifying the computer running and hosting a site to complete any transaction. See id.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,589,236
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00379 · APJ Hyun J Jung · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, chiefly due to the missing terminal-identifier showing.

  RulingsInstitution decision

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

    “instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2

  • Skill levelSkill level board ownOther

    “bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, and industry practices and standards for point-of-sale and payment processing systems.” Pet. 16 (citing Ex. 1002 ¶¶ 87–89). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. Prelim. Resp. 30 n.24. determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’058 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9

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

    “Because determining whether Petitioner shows a reasonable likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. 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.’”) (Fed. Cir. 1999)). As discussed below, even if we applied Petitioner’s proposed interpretation of “terminal,” we would come to the same determination.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “asserted terminal identifier in Krasnyansky, the site’s creditID, identifies a terminal, as required by claim 1. As Patent Owner points out, Krasnyansky expressly discloses that creditID identifies an account in a database, not a terminal. Prelim. Resp. 31–34. In particular, Krasnyansky teaches that “both the Wallet and the seller-site must present a unique identifier to the Payserver,” the identifiers “are the key[s] to all accounts in the Payserver’s database,” “each account has a pair of identifiers, both uniquely identifying the account in the database,” “[o]ne of the two identifiers is used in all account-debiting operations,” the identifiers “are called debitID and creditID,” and a “payment transaction from a Wallet to a seller-site requires see also id. at 36:28–37:8 (describing similarly). Petitioner appears to suggest that identifying an account in a database would also identify the seller’s Web site and, in turn, identify the computer running and hosting the seller’s Web site. See Pet. 24–26. Petitioner, however, does not point to any portion of Krasnyansky that supports a site’s creditID further identifying the Web site or the computer hosting the Web site. See id. Krasnyansky, instead, only provides express support for the site’s creditID identifying the account. See Ex. 1006, 9:10–18. Krasnyansky also indicates that a site nickname, rather than the site’s creditID, identifies the Web site in one embodiment (see id. at 15:20–22), which further undermines Petitioner’s argument that identifying the account would identify the computer running and hosting a Web site. Furthermore, Krasnyansky describes using site nickname and creditID to complete the transaction without any need for identifying the computer running and hosting debit-site 400. See id. at 15:12–16:22. Petitioner does not address these portions of Krasnyansky. See Pet. 24–26. Petitioner, thus, does not argue sufficiently that Krasnyansky requires identifying the computer running and hosting a site to complete any transaction. See id. Even if we adopted Petitioner’s proposed interpretation of “terminal” to mean “any type of computer which enables the input of information” so that “terminal identifier” would identify such a computer, Petitioner does not explain adequately how a site’s creditID identifies any computer when Krasnyansky expressly describes that creditID identifies an account in a database. See Pet. 24–26; Ex. 1002 ¶¶ 111–117.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,535,058
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution denied
  PTAB · Jan 26, 2022 · IPR2021-01241 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. See, generally Prelim. Resp. We find that Petitioner’s definition of a POSA is consistent with the scope and content of the ’936 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7

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

    “We agree with Patent Owner that the claim language provides a temporal relationship between “first scan data” and “second scan data.” We determine that, in claims 1 and 9, “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Our interpretation is based on the plain language of claims 1 and 9, which recite that “second scan data” includes “surface data of a physically changed portion of the patient’s intraoral cavity.” The claim language as a whole makes clear that a physical change occurs between the first scan and the second scan. Petitioner implicitly agrees with this interpretation by characterizing its arguments as showing that “a dentist or orthodontist makes a physical change to the tooth between scans.” Pet. 12 (emphasis added). In other words, claims 1 and 9 require the following order of steps: first scan, physical change, second scan.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “For the reasons discussed above, we determine that claim 1 requires a temporal relationship between “first scan data” and “second scan data.” More specifically, we determine that “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Petitioner contends that “Rubbert’s original scan of the patient’s teeth (without brackets) satisfies the ‘second’ scan data limitation, and the monitoring scan of the patient’s teeth (with brackets) satisfies the ‘first’ scan data limitation, with the teeth without brackets being a ‘physically changed portion’ relative to the teeth with brackets.” Pet. 28. Petitioner’s contention does not satisfy our claim construction for “first scan data” and “second scan data.” Although Petitioner contends that “first scan data” is disclosed by Rubbert’s “monitoring scan of the patient’s teeth (with brackets)” (id.), Petitioner does not show that Rubbert’s monitoring scan is an earlier scan than the one that produces “second scan data.” Instead, Petitioner contends that “second scan data” is disclosed by Rubbert’s earlier scan—an original scan of the patient’s teeth without brackets retrieved from a stored patient record. Pet. 26–28. The temporal relationship between “first scan data” and “second scan data,” as identified by Petitioner in Rubbert, is the reverse of the temporal relationship required by claim 1. According to Petitioner’s contentions, Rubbert’s “second scan data” pertains to an earlier scan than “first scan data.” As properly construed, claim 1 requires the opposite. Furthermore, Petitioner does not show that Rubbert discloses “surface data of a physically changed portion of the patient’s intra-oral cavity,” as recited in claim 1. Petitioner contends that Rubbert discloses this limitation “because the second scan data (without a bracket) is a physically changed portion in the oral cavity relative to the first scan data (with a bracket).” Pet. 28. Petitioner’s contention does not satisfy our claim construction. Petitioner does not identify any disclosure in Rubbert of a physical change that takes place after the alleged first scan (with a bracket) and before the alleged second scan (without a bracket). Rubbert does not disclose physically removing a bracket from the patient’s tooth and then rescanning the tooth after removal of the bracket. Petitioner does not assert otherwise. Although Petitioner asserts that “installing a bracket” is a “physical” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,791,936
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution denied
  PTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.

  RulingsInstitution decision

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

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13

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

    “In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,750,151
• Avery Dennison Rfid Company / Avery Dennison Retail Information Services LLC v. Evrythng LimitedInstitution denied
  PTAB · Nov 16, 2021 · IPR2021-00865 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–26 were unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. As Petitioner argues, Gentile does discuss the use of a scanner to add “additional information” to a unique record for an object, however, Gentile does not disclose the use of a scanner to read a unique identifier for an object during the creation of an association between the unique identifier and an object as required by the claims. Id. at 23–26; see Ex. 1004 ¶¶ 59–61, 65–72. Gentile discloses that “[a]t the time and “stored in product information database 108.” Ex. 1004 ¶¶ 59, 65. Gentile also discloses that at the time the product record associated with the identifier is stored, additional information can be added that could come from a scanning device. Id. ¶¶ 66–67. However, this “additional information” is disclosed as information in addition to the unique identifier. Id. ¶ 67. It is only after the initial association has been created that a scanner is disclosed in Gentile as being used to scan the unique identification tag on a product. Id. ¶¶ 61, 69–70. The claim requires that a scan be performed to determine an identifier for an object, “and then” that the identifier is used to add the object to the object information service, but this is not disclosed by Gentile’s process of creating an association between a unique product identifier and a database record (as disclosed in Figure 2 of Gentile and related disclosure) or by Gentile’s process of scanning a unique product identifier to access an already extant record (as disclosed in Figure 3 of Gentile and related disclosure). Petitioner’s showing relies on elements from each of these two separate processes, for example relying on Gentile’s disclosures of a device scanning a QR code on an object to obtain the identifier (Pet. 42–44) for step (b) and then on the disclosures relating to the initial association of the identifier with a database record for step (c) (Pet. 45–47).” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “E. Asserted Obviousness of Claims 1–11, 13–18, and 21–26 over Gentile and Massé Petitioner’s arguments regarding the unpatentability of claims 1–11, 13–18, and 21–26 rely on the arguments made with respect to anticipation of claim 1 by Gentile. Pet. 58–62. Therefore, for the same reasons, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Massé. F. Asserted Obviousness of Claims 1–11, 13–18, and 20–26 over Gentile and Harris Petitioner’s arguments regarding the unpatentability of claims 1–11, 13–18, and 20–26 rely on the arguments made with respect to anticipation of claim 1 by Gentile. Pet. 62–74. Petitioner does describe Harris as teaching a portion of step (c) of claim 1, however, Petitioner’s argument is that Harris teaches providing “product updates” in order to “update” the records in the ¶¶ 343–345). Petitioner argues that a product ID is included in such updates, and that therefore, “the product updates of Harris include ‘a unique identifier’ and are provided to the ‘product identification database’” via an API. Id. at 69–70. However, Petitioner does not provide any teaching that addresses the deficiency noted in the ground with respect to anticipation over Gentile – and there is no discussion of any teaching of Harris which, alone or in combination with Gentile, would describe the required determination of an identifier for an object that is unique within the information service, which is obtained at a device and then used to add an object to the object information service so as to be accessible using the unique identifier. For this reason, and for the reasons described with respect to the anticipation of claim 1 by Gentile, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Harris. G. Asserted Obviousness over Combinations including Boncyk Relying on arguments regarding anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues that certain claims are unpatentable over a combination of Gentile and Boncyk (claims 1–11, 13–18, and 21–26), Gentile, Massé, and Boncyk (claims 1–11, 13–18, and 20–26), and Gentile, Harris, and Boncyk. Pet. 74– 80. These arguments incorporate by reference the prior arguments, describing a different location for the identification mechanism of step (b) of claim 1. Id. Again, no teaching is identified that addresses the deficiency noted in the grounds upon which these arguments rely. anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Boncyk, or that claims 1–11, 13–18, and 20–26) would have been obvious over Gentile, Massé, and Boncyk or over Gentile, Harris, and Boncyk. H. Asserted Obviousness over Combinations including Davis Relying on arguments regarding anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues that claims 1–26 are unpatentable over a combination of Gentile and Boncyk, Gentile, Massé, and Boncyk, and Gentile, Harris, and Boncyk. Pet. 80–85. These arguments incorporate by reference the prior arguments, substituting an online identification mechanism and the generation of new identifiers for objects “on the fly” when identifying an object. Pet. 80–83. No teaching is identified that addresses the deficiency noted in the grounds upon which these arguments rely. Therefore, for the reasons described with respect to the showings of anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–26 would have been obvious over Gentile and Davis, over Gentile, Massé, and Davis, or over Gentile, Harris, and Davis.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time of the effective filing date, a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, electrical engineering, or a related field of study, and at least three years of experience with online web services, database systems, and/or related software applications.” Pet. 21–22 (citing Ex. 1003 at ¶ 127). Petitioner adds, “[t]his is an approximation and additional education (e.g., masters/doctorate degree(s)) could make up for less practical experience (and vice versa). Id. Patent Owner does not present a different proposal for level of skill or comment on Petitioner’s proposal. See Prelim. Resp. For purposes of this Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art. This level of skill comports with the teachings of the ’595 patent and the asserted prior art.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,582,595
• Polycom, Inc. v. Fullview, Inc.Institution denied
  PTAB · Jul 10, 2019 · IPR2019-00647 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, chiefly because the references did not show the claimed support member intersecting the reflective element’s inner volume.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see 37 C.F.R. § 42.4. After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny the Petition, and do not institute an inter partes review for the reasons discussed below.” slip op. at 2

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

    “element” which is recited in claims 10 and 11. Pet. 15. Petitioner provides citations to the Specification to support the proposed meaning of “an element with three or more sides, excluding the base.” Id. (citing Ex. 1001, 5:30–31, 5:36–38). Patent Owner does not dispute Petitioner’s proposed construction for the term “pyramid shaped element,” but, rather, contends that the term “a support member intersecting an inner volume of the reflective element” (claim 1) or “a support member intersecting an inner volume of the pyramid shaped element” (claim 10) is the “crux of the disagreement” between the parties. Prelim. Resp. 7. According to Patent Owner, the words “inner volume” were emphasized during prosecution and would be construed by a person having ordinary skill in the art as “a ‘non-peripheral volume’ of the ‘reflective element.’” Id. at 8–9 (quoting Ex. 2002 ¶ 35). Patent Owner argues that “[e]very ‘inner volume’ of a ‘reflective element’ is within the volume bounded by all [of] its reflective facets, as in Figure 17 of the ’143 [patent]” such that the “support member” is above a plane touching all of the “reflective” facets and “reach[es] in” to the interior of these reflective facets. Id. at 10–11 (quoting Ex. 2002 ¶ 36). Stated another way, Patent Owner contends that the term “requires more than, and is not satisfied by, the mere showing of ‘a support member making contact with a reflective element.’” Id. at 9 (quoting Ex. 1003, 301–302). After reviewing the parties’ arguments and evidence, we determine that only the term “a support member intersecting an inner volume of a reflective [or pyramid shaped] element” of the ’143 patent requires express construction for purposes of this Decision. See 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.’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). On the present record, including considering the prosecution history, we agree with Patent Owner that the disputed claim term is not satisfied by a support member making peripheral contact with a reflective or pyramid shaped element because “intersecting an inner volume” requires an intersection of the support member through a volume of space defined and bounded by the reflective element. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review”); Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (citations omitted) (A patent’s prosecution history “consists of the complete record of the proceedings before the [US]PTO,” and “provides evidence of how the [US]PTO and the inventor understood the patent.”).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Owner that Yamazawa does not describe the element highlighted in red by Petitioner as intersecting the pyramidal mirror elements highlighted in yellow by Petitioner. In particular, Petitioner does not adequately explain why a person having ordinary skill in the art would understand the vertical lines highlighted in red to intersect an inner volume of Yamazawa’s reflective pyramidal mirror. Yamazawa does not describe such an arrangement in its text, and Yamazawa’s “cross-sectional view” in annotated Figure 1 above does not disclose the presence of the alleged support internal to the reflective element with either continued lines or dotted lines through the pyramidal mirrors highlighted in yellow by Petitioner. Therefore, Yamazawa is ambiguous as to how it is supported. See Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (“Ambiguous references do not anticipate a claim.”).” slip op. at 12

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

    “Based on the record before us, Petitioner does not show sufficiently that a skilled artisan would have had reason to intersect an inner volume of Nalwa’s panoramic viewer with Horn’s support shaft. Neither the Petition nor the Fantone Declaration adequately explains why a skilled artisan would have arranged the combined teachings of Nalwa and Horn such that Horn’s support intersects an inner volume of Nalwa’s reflective element rather than connect Nalwa’s viewer to Horn’s support at the top of the support as shown in Horn’s Figure 1. Petitioner’s rationale that it would have been obvious to secure Nalwa’s panoramic viewer to Horn’s shaft in a manner that would not interfere with the field of view does not explain why it would have been obvious to position the reflective element in the claimed manner relative to Horn’s support rather than on the top surface of the support. In addition, both Horn and Herndon illustrate connecting devices to the top surface of a support. Ex. 1007, Fig. 1; Ex. 2003, Fig. 10. For this reason, Petitioner’s challenge to the patentability of claim 1 over the combination of Nalwa and Horn is cumulative to the rejection over Herndon based on the connection between the reflective element and the support. Accordingly, Petitioner has not demonstrated a reasonable likelihood that claim 1 of the ’143 patent would have been obvious over the combination of Nalwa and Horn. Petitioner relies on the same arguments and evidence for this claim element in connection with independent claim 10 and dependent claims 2, 3, 11, and 12 as well. Pet. 62–72 (citing Ex. 1007, Abstract, 1:5–7, 3:10–31, Figs. 1–3; Ex. 1006, 1:53–2:10; Ex. 1002 ¶ 148). Therefore, Petitioner has not demonstrated a reasonable likelihood that any of claims 2, 3, 10, 11, and 12 would have been obvious over the combination of Nalwa and Horn for the same reasons discussed above for claim 1.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,128,143

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.