• Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Jan 3, 2023 · IPR2022-01127 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution because Toyota did not show a reasonable likelihood that any challenged claim was unpatentable, including because Peisa did not disclose selecting data from fewer than all radio bearers.

  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 . . . 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 arguments and evidence presented by Petitioner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

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

    “The following limitation 1[g], however, provides that “in the first iteration . . . data is selected from a subset of the plurality of radio bearers.” Id. at 14:10–11 (emphasis added). This clause does not simply reiterate “the plurality of radio bearers,” but expressly adds “a subset.” The word “subset” plainly modifies “a plurality of radio bearers,” and must have some limiting meaning. For example, if we were to interpret “subset” as encompassing all or less than all of the radio bearers as Petitioner asserts, than the word, i.e., limitation, “subset” is entirely unnecessary, given that the claim already provides such broader meaning. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). See Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim”). Indeed, if “a subset” can include data selected from all the radio bearer’s then Petitioner’s interpretation reads the term “subset” essentially, if not entirely, out of the claim.” slip op. at 15

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

    “This argument and Dr. Akl’s testimony is problematic because it does not explain technically, or logically, why input flows that transmit less than “a determined fair distribution” are “non-selected.” Neither the arguments in the Petition, nor Dr. Akl’s testimony, fully address this particular jump in logic. Even if the input flow transmits less than its fair distribution of bandwidth, (and a backlog counter is incremented to reflect that the input flow has buffered data that was not transmitted), this does not explain that a particular radio bearer is excluded from being allocated bandwidth resources such that it is “non-selected,” i.e., that resources are applied only to less than all of the radio bearers. The Petition even tacitly acknowledges that each input flow in Peisa transmits data, explaining that “[w]hen the scheduling algorithm does reach step 445 in the first iteration, it will ‘update’ the ‘backlog counters’ for each input flow that did not get to transmit all of its data during the first iteration.” Id. at 49 (citing Ex. 1004, 9:1–34).” slip op. at 26

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

    “Apart from “a processor,” Petitioner does not discuss or analyze any additional limitations, including limitations 1[g] and 8[h], with respect to obviousness. See Pet. 63 (“Thus, the “processor” and ‘processor configured to . . .’ limitations of claims 1 and 8 would have at least been obvious based on Peisa.”). Petitioner relies on its evidence and arguments with respect to ground 1 for the remainder of the obviousness ground. See id. (The Petitioner states “given the above-discussed disclosures of Peisa in Ground 1 for the other limitations of claims 1–4, 6–11 and 13–14, Peisa would have at least rendered obvious claims 1–4, 6–11 and 13–14) (citing Ex. 1003 ¶¶ 169–73). Petitioner’s obviousness ground based on Peisa, thus does not provide persuasive evidence or arguments that a person of ordinary skill in the art would have understood Peisa to disclose the limitations in limitations 1[g] and 8[h]. Accordingly, based on the arguments and evidence of parties on the record before us, we determine that Petitioner has not established a reasonable likelihood of showing any of the challenged claims as obvious over Peisa.” slip op. at 31

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,292,138
• Sani-Tech West, Inc. v. Meissner Filtration Products, Inc.Institution denied
  PTAB · Dec 8, 2022 · IPR2022-01123 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious, principally for failing to explain why a skilled artisan would add hose barbs.

  RulingsInstitution decision

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

    “Obviousness requires more than a mere showing that each limitation in a challenged claim was independently known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Rather, a patent challenger must articulate a reason why an ordinarily skilled artisan would have modified the prior art. Id. at 418. Because Petitioner has failed to articulate a reason to modify Goebel to include the claimed hose barbs, there is no reasonable likelihood that it would prevail in showing claim 1 and its dependent claims 2–8 would have been obvious over Goebel.” slip op. at 9

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

    “as Patent Owner argues, that Petitioner has not explained sufficiently why an ordinarily skilled artisan would have attached hose barbs to the ends of Goebel’s pipe coupling 14. See Prelim. Resp. 15, 17. Indeed, other than asserting that hose barbs were well-known, Petitioner only refers to Goebel for “indicat[ing] that the hose to which it is connected at each end may be secured using a clamp.” Pet. 16 (citing Ex. 1004, 1:60–2:3, claim 3). Without any explanation of its relevance to hose barbs by either Petitioner or Mr. Clem, however, we decline to speculate the significance of this teaching. Obviousness requires more than a mere showing that each limitation in a challenged claim was independently known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Rather, a patent challenger must articulate a reason why an ordinarily skilled artisan would have modified the prior art. Id. at 418. Because Petitioner has failed to articulate a reason to modify Goebel to include the claimed hose barbs, there is no” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundDecided for patent owner

    “In fact, Petitioner’s argument appears to support the opposite conclusion. According to Petitioner, “barb fittings are known by POSAs to be particularly poorly suited to sterile and aseptic processing because they incorporate pockets where bacteria and contaminants may reside.” Id. at 46–47 (citing Ex. 1003 ¶ 96). This statement appears consistent with Maurer’s teaching. Indeed, Maurer teaches “it is advantageous if the design avoids the creation of cavities or pockets in which contaminated material can collect.” Ex. 1005, 14:16–18. This is especially important because, as Petitioner points out, Maurer envisions using its device “in pressure measurement in kidney dialysis machines.” Pet. 30 (citing Ex. 1005, Abstract, 14:6–20). Given Maurer’s goal to avoid contamination (see Ex. 1005, 1:24–31, 8:33–36, 9:50–56), and Petitioner’s acknowledgement that barb fittings are “particularly poorly suited to sterile and aseptic processing because they incorporate pockets where bacteria and contaminants may reside” (Pet. 46–47), we find Petitioner has not explained sufficiently why an ordinarily skilled artisan would have incorporated hose barbs into Maurer’s device. Thus, there is no reasonable likelihood that Petitioner would prevail in showing claim 1 would have been obvious over Maurer and Milton.” slip op. at 13

  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,373,825
• Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies LLCInstitution denied
  PTAB · Dec 6, 2022 · IPR2022-01083 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted 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(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.” 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 claims on any ground asserted in the Petition.” slip op. at 2

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

    “it is used consistently throughout. First, in describing related prior art, the ’903 patent states that “[t]he through plug is constituted of an insulating material covering a sidewall of a through hole and a low electrical resistance metal material . . . in a columnar shape that is positioned so as to be surrounded by the insulating material and that serves as a conductive member.” Ex. 1001, 1:35–40. In describing its own drawings, reference numeral 15 consistently is used to refer to the “through plug.” Id. at 2:37– 52. Figures 1A and 1B “are views schematically showing the structure of a semiconductor device (semiconductor chip) according to an embodiment of the present invention.” Id. at 5:46–48, Figs. 1A, 1B. In these figures, reference numeral 15 refers to “[a] through plug.” Id. at 6:16. This through plug “is constituted of a columnar electric conductor 15a . . . and an insulation layer 15b . . . surrounding the electric conductor 15a.” Id. at 6:21–25. Similarly, reference numeral 15 refers to the “through plug” in Figures 1C, 2A, 2B, 3, 4, 5, 6, 7A, and 7B. Id. at 6:35–40, 7:10–38, 8:10– 17, 8:32–38, 8:65–9:43. Where it is referred to in these same parts of the ’903 patent, the conductive core is discussed as merely a portion of the through plug and is referred to by the reference numeral 15a. Id. Thus, the ’903 patent consistently defines the through plug as having two portions: both a conductive core and a surrounding insulation layer. This is true whether the patent is referring to either of its disclosed embodiments or the prior art. Based on this unambiguous usage, we determine that the ’903 patent defines the term “through plug” as including both a conductive core and a surrounding insulating layer. See Phillips, 415 F.3d at 1320–21 (“the specification ‘acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).” slip op. at 5

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

    “We are not persuaded that the Petition adequately identifies how Christensen teaches or suggests a through plug as that term is used in the ’903 patent. As noted above, the ’903 patent requires a through plug to have both a conductive core and a surrounding insulating layer. It is clear on the current record that Christensen’s “conductive stud” could correspond to the conductive portion of such a through plug. Ex. 1033, 4:66–5:1 (“the stud 34 may comprise any number of conductive materials”). But Petitioner does not show sufficiently that Christensen teaches or suggests the surrounding insulating layer necessary to turn the conductive core into a through plug. First, Petitioner does not allege that Christensen teaches or suggests such a layer. Pet. 33–34. Second, Christensen discloses the use of “conductive materials” and “material[s] which promote[] adhesion to the surrounding oxide such as titanium or titanium nitride.” Ex. 1033, 4:66–5:1, 5:15–20. None of these materials are identified by Christensen as insulators. Id. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that Christensen alone teaches or suggests the through plug of the challenged claims. b. Christensen and Lin Petitioner also argues that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims. Pet. 34–36. Specifically, Petitioner argues that “[t]o the extent [it is determined] that Christensen alone is not sufficient because the conductive stud 34 does not extend all the way through wafer 12, Christensen in view of Lin renders obvious a ‘through plug.’” Id. at 34. According to this argument, “Lin teaches a backside process for forming ‘a conductive plug through a silicon’ wafer and an insulation layer,” and it would have been obvious to form such a plug “from the backside of the wafer 12 below [Christensen’s] conductive stud 34,” such that the combination of the two structures would form a conductive path all the way through the structure of Christensen’s Figures 8B and 9. Id. at 34–35 (emphasis omitted). As with the argument based on Christensen alone, however, this argument does not show sufficiently that the combination of Christensen and Lin teaches or suggests a through plug that has both a conductive core and a surrounding insulating layer. Lin describes its structure as a “conductive plug” and does not describe any insulation surrounding that structure. Ex. 1054, 1:60–64, 3:2– 34, 4:23–32, Fig. 7. “The conductive plugs” of Lin “typically compris[e] metal,” which Lin does not describe as an insulator. Id. at 3:21–25. Nor does Petitioner allege the presence of a conductive core surrounded by insulation either in Lin itself or in the combination of Lin and Christensen. Pet. 34–36. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that the combination of Christensen and Lin teaches or suggests the through plug of the challenged claims.” slip op. at 9

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

    “An invention is not obvious just ‘because all of the elements that comprise the invention were known in the prior art.’” 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, 1351 (Fed. Cir. 2010)). Instead, “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.’” Id. (quoting Power-One, 599 F.3d at 1352). This rationale requires “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). “[I]t can be important to” include within this reasoning “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. Here, Petitioner offers two reasons to combine the teachings of Shim and Shirakawa. First, Petitioner argues that “Shim’s diffusion teachings would facilitate the formation of” Shirakawa’s collector layer. Pet. 65–66. On the present record, we do not find this reason sufficiently persuasive. Even though Shim does teach a way to make the n-GaAs that Shirakawa uses, Shirakawa teaches a different way to make the same material, and other prior-art references agree with Shirakawa. Ex. 1022, 1:34–40 (“silicon ions of a silicon layer formed on a GaAs substrate are diffused by means of ion-implantation method using little energy and annealing treatment”); Ex. 1005, 9:36–42 (first embodiment “collector layer” is “laminated on top of a semi-insulating GaAs substrate . . . by epitaxial growth process”), 12:47–48 (fourth embodiment made in same way as first embodiment); Ex. 1016, 8:7–19 (“a highly doped n type GaAs subcollector layer . . . [and other layers] are made to grow above a semiinsulating GaAs substrate . . . by a metal organic vapor phase epitaxial growth method”); Ex. 1025, 4:40–45 (teaching “[f]orming two flat epitaxial layers of gallium arsenide to obtain [a] collector,” including “a layer . . . of the n+ conductivity type and a layer . . . of the n -conductivity type” by “epitaxial growth . . . from the vapour phase or from the liquid phase”). The mere fact that Shim offers an alternative process does not, in the absence of a reason to adopt that alternative process, provide a reason for a person of ordinary skill in the art to make Shirakawa’s n-GaAs via Shim’s method rather than via Shirakawa’s own method. In addition, Patent Owner’s declarant, Dr. Peter Elenius, testifies that the ion implantation involved in Shim’s diffusion process would damage Shirakawa’s gallium arsenide in a way that would dissuade a person of ordinary skill in the art from using that process to produce the HBT of Shirakawa. Ex. 2001 ¶¶ 52–57. The other reason that Petitioner provides to combine the teachings of Shim and Shirakawa is that Shim’s diffusion “method us[es] little energy and annealing treatment.” Pet. 66 (quoting Ex. 1022, 1:34–40). Shim’s method is described as “diffus[ion] by means of ion-implantation method using little energy and annealing treatment,” which Shim distinguishes from earlier methods “widely used in the art,” which involved “ion-implantation . . . using high energy.” Ex. 1022, 1:12–40. Shim teaches that its lower-energy ion implantation does not suffer from the “problem” of the earlier method, “damaging of ohmic contacts of metal electrodes” due to the injection of “lots of impurity ions.” Id. at 1:17–22; see id. at 3:37–40 (“the manufacturing method of the present invention can prevent damage to be generated in ohmic contacts of source/drain electrodes due to ion-injecting of high density”). Thus, the lower energy of Shim’s process is a benefit of that process over earlier ion implantation processes, which use higher energy. Shim does not teach that its use of lower-energy ion implantation is an improvement over other processes, such as the epitaxial growth taught by Shirakawa and the other references cited by Petitioner. Thus, Petitioner does not explain sufficiently why lower energy would be a benefit of the Shim- Shirakawa combination over Shirakawa alone. Accordingly, we are not persuaded on the current record that Petitioner has shown sufficiently that a person of ordinary skill in the art would have had a reason to combine the teachings of Shirakawa and Shim to arrive at a combination that teaches or suggests the “diffusion layer patterns” of the challenged claims. slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,402,903
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution denied
  PTAB · Nov 3, 2022 · IPR2022-00917 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “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) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 12 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12

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

    “given their plain and ordinary meaning.” Pet. 30. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claims 1, 19, and 62) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 39–46. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13

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

    “We agree with Patent Owner that Petitioner has not shown sufficiently that Cheney/Lord discloses a sealing member that is at least partially located over the contact holder. Cheney’s Figure 2 and 3 show connector block 26, which Petitioner alleges is a sealing member, as being supported solely by its sides within aperture 40 of housing member 34, which Petitioner alleges is a contact holder, and no portion of the connector block 26 is above or over any portion of housing member 34. Petitioner has not demonstrated sufficiently that the plan and ordinary meaning of the term “over” in the context of the ’452 patent would have been understood to encompasses such a configuration.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,980,452
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution denied
  PTAB · Nov 3, 2022 · IPR2022-00918 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 11 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12

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

    “Petitioner contends that, for its Petition, all claim terms “should be given their plain and ordinary meaning.” Pet. 27. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claim 41) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 16–31. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13

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

    “We find merit in Patent Owner’s arguments. When considering the disclosures of Cheney, Lord, and Shah in their entirety, as we must, we are not persuaded Petitioner has identified sufficiently a rational underpinning that supports the reasoning for why a skilled artisan would have modified Cheney/Lord in the manner claimed. Petitioner proposes modifying Cheney/Lord by adding a sealing layer, such as the one Shah discloses, to the opposite side of the sensor proximal segment 20 that is connected to connector block 26 to further enhance the seal around the sensor and provide the sensor additional protection against moisture. At first glance this may seem like a valid reason, but further inspection of Cheney, Lord, and Shah demonstrates that those references provide no evidentiary support for the alleged reason. Cheney/Lord describe the sensor proximal segment 20 as being a flexible thin film sensor including elongated thin film conductors embedded or encased between upper and lower layers of insulative material, which has openings for exposing the conductive contact pads 22 that electrically interconnect with the corresponding connective strips 40 in connector block 26, which sealingly engages with sensor proximal segment 20 to hermetically seal the contact pads against moisture ingress. Ex. 1006, 2:11– 23, 3:16–24, 3:34–40, 3:51–4:3; Ex. 1005, 1:33–42, 3:45–57. We find nothing in Cheney/Lord that even suggests a skilled artisan would have had a need for improving the sealing characteristics of the insulative material on the side of the sensor proximal segment 20 that is opposite of the side connected to connector block 26. On the contrary, Cheney/Lord teaches that a hermetic seal can be created by connecting connector block 26 to only the side of the sensor proximal segment 20 with exposed conductive contact pads 22; Cheney/Lord teaches that the other side is already fully embedded or encased within an insulative material. Shah is no more availing as evidence supporting Petitioner’s reasoning. Rather than suggesting a need to further enhance the seal covering the sensor proximal segment 20 on the side opposite of the side with exposed conductive contact pads 22, Shah teaches that it sealing layer 25 is intended “to seal the location where the needle penetrates” mounting base 10 to reach the infusion site and provide “a more sanitary infusion site by keeping the infusion site insulated.” Ex. 1019 ¶ 39, Figs. 2, 3B. As Patent Owner correctly argues, Petitioner’s proposed modification would completely thwart the ability of sealing layer 25 to perform that intended function because the sensor proximal segment 20 is located a significant distance away from the needle penetration area, thus, preventing sealing layer 25 from offering any insulating protection to the infusion site. And contrary to suggesting adding a sealing layer to the unexposed side of the sensor proximal segment 20, Shah suggests there is no importance to having a sealing layer over the sensor’s unexposed side by stating that sealing layer 25 “may be located so that it is only covering the needle insertion area.” Ex. 1019 ¶ 39 (emphasis added). Mr. Leinsing also offers little, if any, support to Petitioner’s reasoning. In fact, the declaration of Mr. Leinsing is largely duplicative of the contentions Petitioner argues in the Petition. Compare Pet. 60–64 with Ex. 1003 ¶¶ 376–388. Most notably, Mr. Leinsing does not even suggest (let alone provide a reasoned basis to show) a skilled artisan would have appreciated the need to further tighten/enhance the seal above the sensor and connector block in Cheney/Lord and provide additional protection of the sensor/connector against moisture; instead, Mr. Leinsing simply states “it would have been obvious to use the sealing layer of Shah on the opposite side of the sensor from Cheney/Lord’s connector block to further tighten/enhance the seal around the sensor and thus provide additional protection of the sensor/connector against moisture.” Ex. 1003 ¶ 386. As a result, we give little persuasive weight to the testimony of Mr. Leinsing. Therefore, we find Petitioner has not demonstrated sufficiently a reasonable likelihood of proving that Cheney/Lord in view of Shah discloses a seal member that “at least partially surrounds the electrical contact and at least a portion of the transcutaneous glucose sensor when the transcutaneous glucose sensor is operably connected to the sensor electronics,” as recited in independent claim 41. Furthermore, as noted above, Petitioner’s contentions regarding the Lord/Shah combination is substantively the same and, as such, the same reasons and result apply.” slip op. at 29

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,980,452
• Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00710 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on claims 1–20 because the Petition did not show a reasonable likelihood that either Ikeda or Nakajima disclosed the limitations of independent claims 1, 9, and 15.

  RulingsInstitution decision

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

    “whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner. Our review is to determine whether the totality of the information presented in the Petition and Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. For the above reasons, we determine Petitioner has not established a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’158 patent. Therefore, we deny inter partes review of the ’158 patent on all challenged claims and all grounds asserted in the Petition. See 35 U.S.C. § 314(a). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of the ’158 patent is denied.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, and based on the current record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. However, we note Patent Owner’s proposed characterization of a skilled artisan is not meaningfully different than the one proposed by Petitioner without the “at least” language. Because we find the parties’ characterizations to be consistent with the ’158 patent and the asserted prior art, we apply in our analysis below Petitioner’s characterization, as modified by the Board, for the level of ordinary skill in the art.” slip op. at 9

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

    “phrase “wherein each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors” requires each optics component to pass light separately to a distinct sensor of the plurality of sensors.6 Ex. 1001, 25:34–36. This is so because the phrase expressly singles out “each optics component” from “the plurality of optics components” and associates it with passing light to “a sensor” that is 6 In the context of the ’158 patent, a sensor may be an array of photo-detectors and multiple sensors may be formed on a single semiconductor substrate or chip. Ex. 1001, code (57), 4:18–21, 4:67–5:3, 7:17–39, 11:62– 676, 14:45–47, 15:46–65, 16:8–15, Figs. 2, 3, 9, 14, 15. distinguished from “the plurality of sensors.” Id. (emphasis added). As a result, claim 1 requires each optics component to have a configuration that allows it to pass light separately to an individual sensor distinct from the other sensor(s) in the plurality of sensors.” slip op. at 11

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

    “We agree. For the reasons discussed above (supra §II.C.1), “each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors,” as recited in claim 1, requires each of the plurality of optics components to be configured to pass light separately to a distinct sensor of the plurality of sensors and cannot rely on a common optics component to pass light to all of the sensors. Although Petitioner provides little guidance, the only two structures in Figure 11 of Ikeda that can even arguably be optics components “configured to pass light” are lens 1 and prism 23. And Ikeda discloses those structures as functioning as a single unit that is common to the three disclosed sensors. See Ex. 1005, 11:62–12:1. As such, Ikeda only discloses a single optical component/unit configured to pass light to a plurality of sensors, rather than a plurality of optical components/units that are each able to pass light to their respective sensor(s) out of the plurality of sensors. In fact, the only structure included in Figure 11 that Petitioner’s expert, Dr. Bovik, suggests is configurable to pass light to a sensor is the lens. See Ex. 1004 ¶¶ 39–41, 49, 66. For example, Dr. Bovik describes that, during operation of the device Ikeda discloses, the light from an object enters lens 1, which then passes the light through filters to projects the light upon an image sensing device. Id. ¶ 39. Although the Petition and Dr. Bovik lump “a lens 1, a prism 23, optical low-pass filters 2, and a color filter 20 (all purple)” together and refer to them collectively as “provid[ing] a ‘light path’ to pass light (yellow) from an object image to be ‘projected upon the first, second, and third image sensing devices 18, 3, and 19’” (Pet. 16, Ex. 1004 ¶ 66), Ikeda suggests that lens 1 is the only structure configured to pass light (i.e., establish the light path) to a sensor. This is evidenced by the fact that Ikeda describes the prism, optical low-pass filters, and a color filter as all being “provided at the intermediate position of the light path” that begins at lens 1. Ex. 1005, 13:34–38, 13:59– 63 (emphasis added). In order for the prism, optical low-pass filters, and a color filter to be at an intermediate position of the light path, the light path must necessarily have been established before reaching them. Consistent with this understanding, Dr. Bovik only describes lenses as being configurable to pass light to a sensor (i.e., to zoom and focus incident light); the diaphragms, irises, and neutral density (ND) filters are described as “varying the amount of incident light” that has been passed; the optical low pass filters are described as “combat[ing] high-frequency moiré patterns” in the light that has been passed; and the color filters and filter arrays are described as “filtering specific wavelengths, or colors” of light that has been passed. Ex. 1004 ¶ 40. Therefore, because Ikeda only discloses a single optical component” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,232,158
• Globalfoundries Inc. / Globalfoundries U.S. Inc. et al. v. Katana Silicon Technologies, LLCInstitution denied
  PTAB · Oct 7, 2022 · IPR2022-00763 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted 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(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) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.” Ex. 1001, 26:62–27:12. Claims 2– 12 and 16–18 all depend directly or indirectly from claim 1. Id. at 27:13– 28:31. Accordingly, all of the claims Petitioner challenges as obvious over combinations of prior art based on JP848 incorporate the limitations of claim 1. 37 C.F.R. § 1.75(c). Therefore, to show the obviousness of any of these claims, Petitioner must show that the asserted prior art teaches or suggests “a contact which is electrically coupled to the source/drain” that “is in contact with the source/drain at a source/drain surface.”” slip op. at 7

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

    “ANALYSIS A. Claim Construction Petitioner argues that no claim terms require express construction. Pet. 12. Patent Owner also does not propose express construction of any term. Prelim. Resp. 16–17. We agree with the parties that no terms in the challenged claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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 5

  Claim construction§ 103 obviousness
  Patents in suitUS 6,291,861
• Merchsource, LLC v. Hyper Ice, Inc.Institution denied
  PTAB · Jul 28, 2022 · IPR2022-00533 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 were unpatentable under either asserted obviousness ground.

  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) (2022) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, upon considering the current record, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art had “a bachelor’s degree in mechanical engineering or industrial design and at least 2-3 years of experience in consumer product design, production, development, and/or manufacturing, or equivalent experience.” Pet. 24 (referencing Ex. 1002 ¶ 33). Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 12. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’708 patent, based on our review of the current record.” slip op. at 18

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record.9 See 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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. 9 The parties’ joint claim construction statement, filed in the parallel district court litigation between the parties, identifies the following disputed terms: “a handle attached to the main enclosure,” “an outer gripping surface,” “a charge condition,” and “a charge indication display.” Ex. 1013, 2–3. As will be evident from our analysis below, none of these claim terms are implicated in our Decision.” slip op. at 19

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

    “demonstrated that a person having ordinary skill in the art would have modified Shaanxi’s teachings to include a battery in the handle of Shaanxi’s massager to arrive at the subject matter of the “battery” limitation of claim 1, given that Shaanxi teaches its motor is located in the handle. Although we agree with Petitioner that Shaanxi’s electric massager would need a source of electricity (Pet. 25), Petitioner fails to address the implication of modifying Shaanxi’s teachings of a massager with a motor located in its handle to include a battery in the handle. See Pet. 28–30 (discussing Horie’s disclosure of a power tool with a battery in the handle by providing no analysis of why a person having ordinary skill in the art would have modified Shaanxi to include a battery in the handle); Ex. 1002 ¶¶ 77–80, 88–93 (testifying as to why a person having ordinary skill in the art would have looked to using a rechargeable battery, but not addressing why an artisan of ordinary skill would have modified Shaanxi as proposed given that the massager has a motor in the handle). Specifically, neither Petitioner nor its declarant provides any reasoning as to why a person having ordinary skill in the art would have modified a massager with a motor in the handle to also include a battery in the handle beyond stating that an electrical power source would be needed. Obviousness, however, requires “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (emphasis added); see also id. (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 13 (PTAB October 16, 2018) (“Moreover, it is Petitioner’s burden to demonstrate ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)) (emphasis added) (informative).” slip op. at 22

  Claim construction§ 103 obviousness
  Patents in suitUS 10,912,708
• Avail Medsystems, Inc. v. Teladoc Health, Inc.Institution denied
  PTAB · Jul 21, 2022 · IPR2022-00444 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any of claims 1–20 was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “A. Legal Standards Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner notes both parties assert a similar educational background, but they differ on the kind of additional practical experience a skilled artisan would have had––i.e., two years of research or experience in teleconferencing systems versus two years of experience in robotics or telemedicine. Id. at 10. However, Patent Owner does not explain, in application, how the two years of research or experience in teleconferencing systems versus telemedicine affects the patentability analysis in this case. See generally Prelim. Resp. And Patent Owner argues that regardless of which level of skill is adopted the opinions of Petitioner’s expert, Dr. Stone, “should be given little or no weight because Dr. Stone does not have the requisite level of skill to testify from the perspective of a [skilled artisan].” Id. at 11–12. For purposes of this Decision, we accept Petitioner’s contention regarding the level of skill that a skilled artisan would have had at the time of the invention because it is not evident that the difference between the two years of research or experience in teleconferencing systems versus telemedicine would have any meaningful effect on our determination of the issues presented. Regarding Patent Owner’s argument about whether the background of Petitioner’s expert qualifies him to offer testimony from the perspective of a skilled artisan, we address that issue below (see infra § II.D.1.a.3).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable. The opinions would not be based on any specialized knowledge, training, or experience that would be helpful to the factfinder. In fact, “[a]dmitting testimony from a person ... with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.” [Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008)]. That testimony would “amount[ ] to nothing more than advocacy from the witness stand.” Id. at 1364–65. Kyocera, 22 F.4th at 1376–77. We find substantially the same fact pattern presents itself in this case. In particular, the definition of a skilled artisan we have adopted for this Decision, which was proposed by Petitioner and Dr. Stone, requires at least two years of research or work experience in designing or engineering teleconferencing systems, such as those used in telemedicine (see supra § II.B). Although Dr. Stone has advanced degrees in electrical engineering and extensive experience with medical devices (see Ex. 1002 ¶¶ 3–12; Ex. 1003, 1–4, 8–11), he lacks specific experience researching or engineering teleconferencing systems, such as those used in telemedicine. We agree with Patent Owner that Dr. Stone’s vague reference to “numerous experiences with teleconferencing” and to having performed “design reviews of telemedicine devices” (Ex. 1002 ¶ 13 (emphasis added)) falls short of establishing two years of research or work experience in designing or engineering teleconferencing systems. Therefore, it would be inappropriate for us to consider any testimony by Dr. Stone on any issue that is analyzed through the lens of an ordinarily skilled artisan.7” slip op. at 25

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

    “The evidence from King that Petitioner cites may reasonably support a finding that a skilled artisan would have known to use the auxiliary video port 70 of mobile robot 12 to connect King’s boom-mounted video camera (see Ex. 1010 ¶ 18; Ex. 1011 ¶¶ 3, 14), but it fails to demonstrate with any particularity a reason why a skilled artisan would have selected an articulating boom to couple a second camera to the mobile robot 12 of Wang. In fact, we do not find anywhere in the Petition a clear statement why a skilled artisan would do so; rather, the Petition focuses on why a skilled artisan would have known to couple a camera to an articulating boom. See Pet. 24, 29–32.” slip op. at 28

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,887,545
• Content Square SAS v. Medallia Inc.Institution denied
  PTAB · Jul 14, 2022 · IPR2022-00316 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution on all challenged claims because neither obviousness ground showed a reasonable likelihood of establishing the claims’ required cancellation or abandonment functionality.

  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 . . . 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 arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “A petitioner in an inter partes review may challenge the claims of a patent “only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that [a] reference was publicly accessible before the critical date of the challenged patent and therefore that there is a” slip op. at 24

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

    “Claim 1, limitation [1b] recites in part: web site user cancellation or abandonment prediction functionality operative to determine, based on a website action of a given user, that the given user intends to cancel a transaction associated with the website-based process or abandon the web site-based process Id. at 10:30–34 (emphases added). Reading the claim in light of the specification, it is clear that a “transaction” is a business transaction and that a “website-based process” is, for example, a business transaction process or” slip op. at 33

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

    “E. Ground 2: Claims 1–19 – Alleged Obviousness over Nickerson Error, and Salle Petitioner explains that “Salle is relied on for the limited purpose of disclosing ‘prediction functionality’ for determining if users are having difficulty completing a transaction and intend to cancel or abandon the transaction.” Pet. 21 (citing Ex. 1006 ¶ 36) (alteration in original). Petitioner does not allege nor rely on Salle to teach the “cancel a transaction associated with the website-based process or abandon the website-based process” as recited in each of independent claim 1, 9, and 19. For the same reasons as discussed above relative to claim 1 in view of Nickerson and Error, we are not persuaded that the Petition supports a reasonable likelihood that claims 1, 9, and 19 are unpatentable as obvious over Nickerson, Error, and Salle. Petitioner’s challenges of dependent claims 2–8 and 10–18 suffer the same deficiency, and we likewise determine that Petitioner falls short in demonstrating a reasonable likelihood that those dependent claims are unpatentable as obvious over Nickerson, Error, and Salle.” slip op. at 39

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,886,552

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.