• Phillips 66 v. Magēmā Technology, LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01173 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Weiss-based grounds teach or suggest the claimed residual marine fuel oil.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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 “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

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 12–31. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 17

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

    “We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum 10 Petitioner defines “HSFO” as being a “high-sulfur HMFO” and “LSFO” as being a “low-sulfur HMFO.” Pet. 1. product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974 or obvious over the combination of Weiss ’974 and Weiss ’515.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 10,584,287
• Phillips 66 v. Magēmā Technology, LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01168 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974.” slip op. at 11

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

    “We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “E. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 11–32. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16

  Claim constructionDiscretionary denial
  Patents in suitUS 10,308,884
• Phillips 66 v. Magēmā Technology LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01175 · APJ Brian D Range · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–4 were obvious over any asserted combination of references.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be 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.” 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 challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

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

    “feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are obvious over the combination of Weiss ’974, Weiss ’515, and ISO 8217:2017. Petitioner’s arguments show only that the fuel oil is a bunker fuel that complies with ISO 8217. See, e.g., Pet. 27, 47. These arguments alone are insufficient because ISO-8217-compliant bunker fuels can be either distillate-based or residual-based. Ex. 1003, 14–17; Ex. 1082 ¶ 29; Ex. 2007 ¶ 25. Thus, showing that a fuel is a bunker fuel or that a fuel complies with ISO 8217 does not show that the fuel is residual-based.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,533,141
• Phillips 66 v. Magēmā Technology, LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01174 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, or 5 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). 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 “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

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

    “We are not persuaded that Petitioner has shown sufficiently that a person of ordinary skill in the art would have found it obvious to use Buchanan’s blending units to carry out Parkash’s blending process to produce any of HSFO1, HSFO2, or HSFO3. First, paragraph 40 of Buchanan teaches blending a generic “residual fuel product” with a generic “distillate fuel oil product” in order “to form a homogeneous final blended fuel oil product.” Ex. 1049 ¶ 40. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s generic blending teachings to apply to the production of the specific fuel oils Petitioner identifies as HSFO1, HSFO2, and HSFO3. Second, to the extent that Petitioner contends that Buchanan’s teaching applies to any mixture of two fuel oils, one residual and one distillate, we note that Parkash teaches blending multiple process streams, including several distillate streams and at least two residual streams. Ex. 1102, 14. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s two-stream blending unit to apply to Parkash’s multi-stream blending process. Third, Petitioner’s statement that “it would have been obvious to employ ‘[a]ny blending process as known by a [POSITA]’” in carrying out Parkash’s blending method is conclusory. Pet. 67. “[A] finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010)). In other words, Petitioner must provide “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A conclusory statement without supporting evidence or rationale does not provide the requisite reasoning. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”).” slip op. at 19

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 10–30. Petitioner disagrees. Pet. 7–13. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 21

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,604,709
• Revance Therapeutics, Inc. v. Medy-Tox, Inc.Institution denied
  PTAB · Jan 19, 2022 · IPR2021-01204 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 3, 4, 11, or 12 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “inter partes review may not be 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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine 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 institution of an inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “In this case, Petitioner argues that “longer” lasting means “the longer duration of efficacy of an animal-protein-free botulinum toxin composition when compared to an animal-protein-containing botulinum toxin composition that is dosed at the same or comparable amount and administered in the same manner (e.g., by injection) to the same or comparable location(s).” Pet. 20 (quoting Ex. 1001, 4:53–59). Patent Owner does not dispute this proposed construction. Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposed construction because it is consistent with the express definition in the ’731 patent Specification. See Ex. 1001, 4:53–59.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “been obvious over the combination of Ruegg, BOTOX Label, and Jung I. Pet. 21–58. Petitioner provides claim charts, mapping each limitation of claims 1–3 and 9–11 to the teachings of Ruegg, BOTOX Label, and Jung I. Id. at 23–30, 48–52. Petitioner further explains its arguments, including its contention that an ordinarily skilled artisan would have had a reason to combine the teachings of Ruegg and BOTOX Label, and Jung I would have 12 had a reasonable expectation of success when doing so. Id. at 30–48, 52–58. Despite its detailed presentation, Petitioner has not met its burden to show a reasonable likelihood that it would prevail in this challenge.” slip op. at 12

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

    “Petitioner’s proposed construction of the term “longer.” See supra, Section II.A (“[L]onger” lasting means “the longer duration of efficacy of an animal-protein-free botulinum toxin composition when compared to an animal-protein-containing botulinum toxin composition that is dosed at the same or comparable amount and administered in the same manner (e.g., by injection) to the same or comparable location(s).” (emphasis added)). Although Petitioner is correct in pointing out that Ruegg compared the effect of “5.0 U/kg of either RT003 or BOTOX®” (Pet. 35; Ex. 1004, Figure 1), 13 Petitioner has not sufficiently shown that 5.0 U/kg of RT003 is the same or comparable amount as 5.0 U/kg of BOTOX. Indeed, BOTOX Label explains that one unit (U) of BOTOX “corresponds to the calculated median intraperitoneal lethal dose (LD50) in mice.” Ex. 1007, 548. BOTOX Label emphasizes that the method for performing the assay is specific to BOTOX. Id. “Due to specific details of this assay such as the vehicle, dilution scheme and laboratory protocols for the various mouse LD50 assays,” it warns, units of biological activity of BOTOX “cannot be compared to nor converted into Units of any other botulinum toxin or any toxin assessed with any other specific assay method.” Id.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,480,731
• Revance Therapeutics, Inc. v. Medy-Tox, Inc.Institution denied
  PTAB · Jan 19, 2022 · IPR2021-01203 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution on claims 1, 2, 5–10, 13, and 14 because Petitioner did not show that Ruegg’s RT003 and BOTOX doses were the same or comparable amount.

  RulingsInstitution decision

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

    “inter partes review may not be 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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine 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 institution of an inter partes review.” slip op. at 2

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

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, only the term “longer” needs express construction.” slip op. at 6

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

    “same or comparable amount and administered in the same manner (e.g., by injection) to the same or comparable location(s).” (emphasis added)). Although Petitioner is correct in pointing out that Ruegg compared the effect of “5.0 U/kg of either RT003 or BOTOX®” (Pet. 27; Ex. 1004, Figure 1), Petitioner has not sufficiently shown that 5.0 U/kg of RT003 is the same or comparable amount as 5.0 U/kg of BOTOX. Indeed, BOTOX Label explains that one unit (U) of BOTOX “corresponds to the calculated median intraperitoneal lethal dose (LD50) in mice.” Ex. 1007, 548. BOTOX Label emphasizes that the method for performing the assay is specific to BOTOX. Id. “Due to specific details of this assay such as the vehicle, dilution scheme and laboratory protocols for the various mouse LD50 assays,” it warns, units of biological activity of BOTOX “cannot be compared to nor converted into Units of any other botulinum toxin or any toxin assessed with any other specific assay method.” Id.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,480,731
• LG Electronics, Inc. And LG Electronics U.S.A., Inc. v. Gesture Technology Partners, LLCInstitution denied
  PTAB · Jan 13, 2022 · IPR2021-01255 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious, including because the asserted combination did not teach recording the original acquired image.

  RulingsInstitution decision

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

    “point] is clear and unambiguous.” Id. at 7. And that based on a plain reading of the claim, “the image” in the step of “recording by the computer, . . . , of the image,” refers back to and has antecedent support from “an image” in the step of “acquiring an image . . . with said at least one digital camera,” as opposed to the “processed image” also discussed in the claim.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘POSITA’) at the time [of the invention] would have had a bachelor’s degree in electrical engineering, computer engineering, computer science or similar field, and two to three years of experience in image and video capture, or the equivalent” and that “a person with more technical education but less experience, would also meet the relevant standard for POSITAs.” Pet. 6 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 4. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’530 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

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

    “Neither party provides any express claim constructions. See Pet. 6; Prelim. Resp. 4. We agree that no terms require express construction at this stage. 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 (internal quotation omitted).” slip op. at 7

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

    “point] is clear and unambiguous.” Id. at 7. And that based on a plain reading of the claim, “the image” in the step of “recording by the computer, . . . , of the image,” refers back to and has antecedent support from “an image” in the step of “acquiring an image . . . with said at least one digital camera,” as opposed to the “processed image” also discussed in the claim.” slip op. at 13

  Claim construction§ 103 obviousness
  Patents in suitUS 7,804,530
• Human Power Of N Company v. Heartbeet Ltd.Institution denied
  PTAB · Jan 11, 2022 · PGR2021-00094 · APJ Devon Zastrow Newman · PGR · Institution

  The Board denied institution because Petitioner did not show that any challenged claim had an effective filing date on or after March 16, 2013, as required for PGR eligibility.

  RulingsInstitution decision

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

    “To institute a post-grant review, we must determine whether the information presented in the Petition, “if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the Petition and the Preliminary Response, for the reasons set forth below, we determine that Petitioner has not shown that the ’813 patent is eligible for post-grant review. Accordingly, we do not institute a post-grant review of the challenged claims of the ’813 patent.” slip op. at 2

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

    “as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b) (2021). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). Petitioner proposes construction of two terms, “inorganic nitrate” and “requiring a reduction in systolic blood pressure.” Pet. 26–27. Of these terms, Patent Owner does not propose a construction for “inorganic nitrate” (Prelim Resp. 7). For purposes of determining whether to institute trial of the challenged claims, we determine it is not necessary to construe “inorganic nitrate.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA proceeding).” slip op. at 7

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

    “We are persuaded that Petitioner’s proposed definition is unduly restrictive. The claims do not clarify the meaning of “requiring a reduction in systolic blood pressure”; hence, we rely on relevant disclosures in the specification and prosecution history. Phillips, 415 F.3d at 1312–19. The prosecution history adds no clarity to the meaning of this term. As noted by Patent Owner, the specification states that the claimed method seeks to lower the systolic blood pressure in a subject needing such a reduction “preferably to normal levels (about 140/80 mmHg”) and provides an example of a 43-year-old with hypertension whose “blood pressure was 142/99 on the day when the experiment started.” Prelim. Resp. 8–9. We agree with Patent Owner that these disclosures provide general guidance to the person of ordinary skill in the art that the upper bounds of normal systolic blood pressure is about 140 mmHg, and that a person “requiring a reduction in systolic blood pressure” is someone whose systolic blood pressure exceeds that general measurement. Moreover, as discussed above, Petitioner states that a person of ordinary skill in the art would have had a medical degree or equivalent study in fields such as “biochemistry, pharmacology, nutrition chemistry, or kinesiology” (Pet. 13) such that the term would have been interpreted by persons with a sophisticated understanding of human physiology according to the facts and circumstances presented and with the guidance of “about 140 mmHg” providing a general measurement guideline. We conclude that the plain and ordinary meaning of a person “requiring a reduction in systolic blood pressure” is a person having higher than about 140 mmHg systolic blood pressure.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot shown unpatentable

    “The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” based on an “objective inquiry into the four corners of the specification.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). If this test fails, the application is not entitled to the benefit of the earlier filing date.” slip op. at 14

  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 10,842,813
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-00979 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted Dua-based combinations rendered any claim unpatentable.

  RulingsInstitution decision

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

    “WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness 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.”).” slip op. at 14

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

    “WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness 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.”).” slip op. at 14

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

    “district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have been knowledgeable regarding mobile payment methods and systems pertinent to the ’218 patent.” Pet. 11. Petitioner also contends that an ordinarily skilled artisan “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, which would have exposed them to concepts like GlobalPlatform and SmartMX” and that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. at 11–12 (citing Ex. 1003 ¶¶ 27–28). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 8,118,218
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-00978 · APJ Kristi L R Sawert · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted combinations teach or suggest the server-initiated fund transfer limitation in claims 1 and 9.

  RulingsInstitution decision

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

    “institute an inter partes review. 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’855 patent. Accordingly, we do not institute an inter partes review of all challenged claims of the ’855 patent on the grounds asserted in the Petition.” slip op. at 2

  • BurdenDenied

    “Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25

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

    “Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25

  • PTAB / AIA Trials › Discretionary denialNot reached

    “V. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 17–25.” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,448,855

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.