• Uber Technologies, Inc. v. Enovsys LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00825 · APJ Andrew L Nalven · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “Pursuant to 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.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “Step 1 of Figure 7 begins by obtaining the geographic information of the area to search for possible remote targets. Id. at 8:57–59. In step 2, the next geographic region where a possible search for a PRU is estimated. Id. at 8:64–66. In step 3, a page is sent out to that geographic region for remote units in the region to reveal their location. Id. at 9:2–4. In steps 4 and 5, if remote units are identified in the paged area, that information is forwarded to the network and the process continues to step 7 where the process is aborted. Id. at 9:4–6. Step 6 is performed if no units are identified in the paged area. Id. at 9:6–9. There, a check is done to establish if there are any remaining cells or grids higher up in the chain to be searched, and if so, the process returns to step 2 to search additional geographic areas. Id. at 9:9–12. The iterative process described in Figure 7 is consistent with Patent Owner’s proposed construction requiring forwarding a notification to only one or more PRUs currently located in a specific geographic boundary. Ex. 2001 ¶ 55; see also Ex. 1001, 8:32–54 (describing a grid search technique that may be implemented by the process of Figure 7).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent.” Pet. 8 (citing Ex. 1002 ¶¶ 28–30). Patent Owner does not dispute Petitioner’s proffered definition as to the level of ordinary skill in the art. Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We are further not persuaded by Petitioner’s argument that forwarding notifications to the PRUs only within a specified geographic region renders element 12[D]’s step of verifying whether the PRUs exists within said region unnecessary. Pet. 35 n.8. Rather, we credit Mr. McAlexander who testifies that forwarding notifications to individually pollable geographic boundaries “does not obviate the need for the PRU to identify that the notification has been received or verify its location within the individual geographic boundary before responding.” Ex. 2001 ¶ 155.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,199,726
• Uber Technologies, Inc. v. Enovsys, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00827 · APJ Thomas L Giannetti · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 15, or 22 unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Andrews Decl. ¶ 25). At this stage, Patent Owner does not dispute this contention. Prelim. Resp. 5. For the purpose of determining institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’918 patent specification and the asserted prior art.” slip op. at 20

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “means.” See Ex. 1001, 11:60–12:4, 12:6–8, 15:30–37. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 63 applies. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C. § 112(f). Because the ’918 patent has a filing date before the We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 1, 2, and 22. See Pet. 7–12; Prelim. Resp. 9–21. slip op. at 10

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

    “Having reviewed Patent Owner’s position on claim limitation 1[C], we determine that we do not need to expressly construe this claim term to effective date of the relevant amendment, we refer to the pre-AIA version of § 112. Owner acknowledges that the asserted network “includes control units programmed to obtain the locations of the offender and victim devices,” and does not base its arguments on the construction of this limitation. Id. at 42.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,756,918
• Uber Technologies, Inc. v. Enovsys, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00826 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Andrews Decl. ¶¶ 25–26). Patent Owner does not dispute this contention or offer an alternative formulation. See Prelim. Resp. 6. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’752 patent specification and the asserted prior art.” slip op. at 19

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-Plus-Function Terms Challenged claims 14 and 15 recite elements using the word “means.” See Ex. 1001, 13:6–18, 13:20–22. The use of the word “means” in a claim ’752 patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of §103. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 14 and 15. See Pet. 8–12; Prelim. Resp. 11–19.” slip op. at 10

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

    “geographic region.” The ’752 patent describes polling specific sub-regions of the network for a PRU. Ex. 1001, 2:12–15, 7:22–34. As Mr. McAlexander testifies, “[a] PRU may choose to instruct the network to relay certain information to mobile units in a specific geographic region. That information would then be appended to the geographic boundary information and beamed in the specified geographic region.” McAlexander Decl. ¶ 49 (quoting Ex. 1001, 10:19–23) (alteration in original). For example, a nearby boundary can be polled for the locations of nearby wireless customers within proximity of a distressed wireless customer. As described in the ’752 patent, a distressed mobile user M1 may need to find where another party might exist in that geographic region. The user could initiate a page from their PRU for the closest available PRUs that could be found in that geographic jurisdiction. Looking at FIG. 3, mobile user M1 will provide its location, latitude and longitude (x0,y0) to the closest available ground station serving area C1 or grid G1. As stated earlier, appropriate terrestrial technology will be scattered in that region to serve the PRUs in that area as shown in FIG. 1. Once a ground station picks up this signal, it sends a page for all location reporting devices in the specified boundary surrounding mobile unit M1, FIG. 3 to disclose their location. Ex. 1001, 7:22–34 (emphasis added). slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,441,752
• Google LLC v. Security First Innovations, LLCInstitution denied
  PTAB · Jun 6, 2024 · IPR2024-00213 · APJ Daniel Kazhdan · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–10 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “inter partes review, see 35 U.S.C. § 314, and she delegated that authority to the Board. See 37 C.F.R. § 42.4(a). The Board may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine that the Petition in this case does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use. A higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶ 40). The Preliminary Response does not provide a description of the person of ordinary skill in the art or dispute Petitioner’s description. Patent Owner’s expert “accept[ed] Dr. Bhattacharjee’s proposed qualifications of a [skilled artisan]” for purposes of his declaration. Ex. 2003 ¶ 20. For purposes of assessing institution, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it is consistent with the prior art before us in this proceeding. C. Claim construction slip op. at 7

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

    “The Preliminary Response argues that limitations [1A] and [1B-2] “require storing two or more shares generated from a dataset on two or more physical storage devices.” Prelim. Resp. 5. This, purportedly, is “a central feature” of the invention. Id.; see generally id. at 4–7. The relevant limitations recite: “[1A] a plurality of physical storage devices storing thereon a plurality of shares, the plurality of shares being associated with at least one session key used to secure a dataset” and a secure storage system configured to “[1B-2] generate the plurality of shares for storage on the plurality of physical storage devices by performing a securing operation on the dataset received from the client device and distributing the dataset in the shares.” See Ex. 1001 98:3–6, 98:12–15. As the Preliminary Response notes, the Federal Circuit has repeatedly held that “‘a plurality of’ means ‘at least two of.’” SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1377 (Fed. Cir. 2021) (citing cases); Prelim. Resp. 5. As the Preliminary Response further notes, the Petition itself seems to interpret the claims as requiring storage on at least two physical storage devices. Prelim. Resp. 7. Specifically, the Petition argues that “Dickinson-Takeda . . . stores encryption results . . . on at least two of storage devices D1-D4.” Id. (quoting Pet. 68); see Ex. 2003 ¶ 19. Implicit in this is the need for at least two separate physical storage devices. Thus, we conclude that the claims require storing the shares among two or more physical storage devices.” slip op. at 9

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

    “this decision we construe limitations [1A] and [1B-2] together to require storing two shares among at least two physical storage devices. Petitioner never addresses this requirement, and we find this to be a fatal flaw. According to Petitioner, Takeda teaches limitations [1A] and [1B-2] as follows: “Takeda’s technique involves dividing plaintext – which is any non-encrypted (i.e., unciphered) information – into blocks, ciphering different blocks using different ‘ciphering attributes’ (e.g., ciphering keys and/or ciphering algorithms), and outputting the ciphered blocks with the ciphering attributes.” Pet. 10; see generally id. at 10–16, 28–31, 39–40. Patent Owner responds that “Takeda’s blocks are stored together in a single storage device,” and this does not disclose or suggest storing the shares on at least two physical storage devices. Prelim. Resp. 8; see id. at 8–9 (citing Ex. 2003 ¶¶ 51–53). We agree with Patent Owner. Petitioner has not shown a reasonable likelihood that Takeda discloses or suggests storing data on physically separable storage devices. The Petition points to Takeda’s teaching that the data is “divided into blocks.” Pet. 11. As Patent Owner notes, Takeda teaches that these blocks are all stored on a single, physical device. Prelim. Resp. 8. Specifically, Takeda teaches that “[t]he ciphertext is stored in the removable recording medium 39 or the storage device 37.” Ex. 1008 ¶ 92.5 We determine that Takeda does not teach or suggest storing this data in at least two separate media, at least two separate storage devices, or at least one of each. Correspondingly, Takeda’s Figures show data blocks next to each other—i.e., on one physical device. See id. at Figs. 1–4. The Petition does not suggest that Ophir teaches storing shares among different physical storage devices. As the Petition itself notes, Ophir seems to use a single “mediator [to] provide[] secure virtual storage to data clients.” Pet. 9 (quoting Ex. 1007 Abstract) (emphasis omitted).” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,338,140
• Bright Data Ltd. v. Oxylabs, UabInstitution denied
  PTAB · Apr 3, 2024 · IPR2023-01442 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under either anticipation ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. In addition, for the reasons stated on the merits of the Petition, we do not reach the question of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a). We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have been an individual who, as of July 18, 2002, the filing date of the ’667 Patent, had either: (1) a Bachelor’s Degree or higher in the field of electrical engineering, computer engineering, or computer science and at least one year of related practical experience; or (2) at least four years of practical experience in data management.” Pet. 9 (citing Williams Decl. ¶¶ 30–31). Patent Owner does not provide a description of the person of ordinary skill or dispute Petitioner’s description.” slip op. at 7

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

    “Neither party proposes claim constructions for our consideration. Petitioner “gives the claim terms their plain and ordinary meaning in light of the specification and prosecution history as would have been read by a [person of ordinary skill].” Pet. 9. Patent Owner does not comment on claim construction. We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to construe claim terms to resolve the issues in dispute. E. Description of the Prior Art References” slip op. at 8

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

    “The Federal Circuit addressed the legal standard for anticipation in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016): “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” 815 F.3d at 1341 (citation omitted) (footnote omitted). C. Level of Ordinary Skill in the Art” slip op. at 7

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 7,020,667
• Bright Data Ltd. v. Oxylabs, UabInstitution denied
  PTAB · Apr 2, 2024 · IPR2023-01441 · APJ Stacey G White · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny institution of inter partes review.” slip op. at 2

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

    “persuasive. As both parties note, the phrase in question recites “creating” a second data miner, which requires the generation of a new data miner. Petitioner’s declarant testifies that during prosecution of the ’526 patent prior art references were “expressly distinguished” because the prior art merely “pick[ed] a pre-existing search engine” or fell short because “no new miners [were] created.” Ex. 1008 ¶ 49 (citing Ex. 1002, 83, 34); accord Ex. 2001 ¶ 57 (similar testimony from Patent Owner’s declarant). We agree with the parties that this phrase requires the generation of a new data miner. Patent Owner argues that Petitioner’s construction falls short because it does not properly address the requirement that the second data miner be created “in response to the customer request.” Patent Owner states, and we agree, that “provid[ing] customized results to the user based on the customized parameters of the user search request” does not address the requirement that the second data miner be created “in response to” a customer request. Prelim. Resp. 9. In support of Patent Owner’s assertions, Patent Owner’s declarant points out that “as described with reference to FIG. 2 of the ’526 Patent, ‘customer requests for information can be received’ at block 66 and then at block 68, [‘]additional low level miners can be written in response, or high level miners, if required and not yet written, can be created.’” Ex. 2001 ¶ 61 (citing Ex. 1001, 8:32–35) (emphasis added). As stated in the ’526 patent a “‘miner’ or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66. The ’526 patent further notes that “the data miners are modular components that have specific input and output specifications.” Id. at 6:25–26. Further, “[m]iners are specified in terms of the data, usually as indicated by the below-described keys, that must be available when they start, and the data (including other keys) that they will create during successful processing.” Id. at 6:36–40. Thus, our review of the intrinsic record persuades us that creation of a second data miner requires the creation of a new “analysis engine,” and not just the provision of customized parameters to an existing “analysis engine.” Therefore, for the purposes of this decision, we construe the phrase “creating at least a second data miner in response to the customer request for information,” to require (1) the creation of at least one new second data miner, (2) that this creation be done in response to a customer request.” slip op. at 11

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

    “As to the first argument, we agree with Patent Owner that Petitioner has not shown sufficiently that Jacobsen’s site ranking is created in response to a user request. Jacobsen’s site ranking feature “analyzes the Internet (i.e., the sites found) to determine the degree to which sites have been found interesting by others in the desired context/profession.” Ex. 1003 ¶ 67. A word score is saved for each word on each page (i.e., except for stop words, as discussed above). When a user enters a query, the inventive SSSE determines a set of (relevant) pages that contain the query terms. For each page, the word scores are summed for the words of the query to compute a site ranking for that page. The site rankings for the pages are then used in determining how to display the search results to the user. Id. ¶ 69. Based on our review of Jacobsen’s disclosures, we are persuaded that the query is an input to the site ranking feature. As described in the ’526 specification, a “‘miner’' or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66 (emphasis added). Site ranking in Jacobsen is performed after a user query, but on the record before us, Petitioner has not shown that the analysis engine used to rank the sites is not created “in response to” the user query. See also Pet. 14 n. 7 (stating that Jacobsen discloses “the use of a pre-existing template to search the results of a first data miner”). In addition, Petitioner has not shown sufficiently that the site ranking feature in Jacobsen would disclose a data miner as recited in the claims. The ’526 patent describes prior art systems that “generat[ed] an inverted index of words that occur on Web pages.” Ex. 1001, 1:22–23. User queries were provided with output based on that index and the results “returned are usually ranked by relevance using e.g., link information or key word frequency of occurrence.” Id. at 1:29–31. Petitioner’s declarant describes these disclosures are applicant admitted prior art. Ex. 1008 ¶ 52. The ’526 patent criticizes this prior method as inefficient because, despite the ranking “finding particular types of information typically entails a great deal of mundane sifting through query results by a person” and this process is “labor-intensive and mundane,” ranking “can consume an excessive’ amount of time.” Ex. 1001, 1:31–35, 1:42–43, 2:5–6. In contrast, the ’526 patent’s system purportedly “integrates the knowledge of many experts to sift through a large corpus of data to respond to what might be relatively complex requests for information.” Id. at 3:9–11. Its data miners are analysis engines that operate based on expert rules. Id. at code (57), 5:63– 66. Petitioner’s allegations have not persuaded us that Jacobsen’s site ranking feature overcomes the problems of the prior art ranking system. Accordingly, based on the record before us, we determine that” slip op. at 25

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

    “E. Alleged Obviousness of Claims 2 and 35 Over Jacobsen, and Over Jacobsen and Jaramillo, and Alleged Obviousness of Claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 Over Jacobsen and Hegli Petitioner asserts that dependent claims 2 and 35 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen, and as obvious over Jacobsen and Jaramillo. Pet. 4, 32–38. Petitioner also asserts that dependent claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen and Hegli. Pet. 4, 38–50. Petitioner’s assertions here rely on the same disclosures from Jacobsen regarding the above discussed independent claims and do not remedy the above noted deficiency. As such, on the record before us, we are not persuaded by Petitioner’s Jacobsen-based challenges to claims 2, 6–9, 11, 16, 17, 35, 39–42, 44, 49, and 50. F. Alleged Anticipation of Claims 1, 6, 9, 11, 13, 19, 20, 34, 39, 42, 44, 46,” slip op. at 27

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,010,526
• Ferno-Washington, Inc. / Ferno Group, Inc. v. Stryker CorporationInstitution denied
  PTAB · Mar 19, 2024 · IPR2024-00042 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 3 or 4 were obvious over either asserted combination.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to either of the Challenged Claims. We thus deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner acknowledges, however, that “the particular definition of a person of ordinary skill in the art . . . [is not] determinative at this stage because the Petition can be denied under [Petitioner’s] own proposed skill level.” Id. (citing Pet. 10). Petitioner’s definition reflects a lower level of skill, as it does not require a POSITA to have “about 3-5 years’ experience designing, developing, manufacturing, or studying the types of mechanisms found on patient supports, cots, cot fasteners, or other similar mechanisms,” as Patent Owner proposes. Compare Prelim. Resp. 8, with Pet. 10. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We find Petitioner’s definition is consistent with the ’884 patent and the asserted prior art. Pet. 10; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Petitioner does not advance construction of any particular term and submits that no term requires construction beyond its plain and ordinary meaning. See Pet. 11. Similarly, Patent Owner does not propose construction of any claim term and submits that even under the plain and ordinary meaning, as proposed by Petitioner, the Challenged Claims are not invalid. See Prelim. Resp. 6–8. For purposes of this Decision, we need not and do not expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “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 8

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

    “We agree with Patent Owner that Petitioner has not shown, for purposes of institution, a sufficient reason a skilled artisan would have modified Ferneau A, as Petitioner has proposed, based on Ferneau B. Neither Ferneau A’s posts nor Ferneau B’s bumpers 92, 94 are “oriented between said mid-length thereof and said litter frame,” as required by claim 3. Thus, Petitioner has not shown that either Ferneau A or Ferneau B teaches or suggests the limitation at issue, and Petitioner’s proposed modification is not supported by reasoning beyond what appears to be a hindsight reconstruction of the claimed feature. Petitioner’s argument (Pet. 14–15) and Dr. Stevick’s accompanying testimony (Ex. 1002 ¶ 62a) that Ferneau A’s posts “could ensnarl a pant leg or shoelace” and that using “mounts rather than the post would lessen the possibility that an operator’s finger or other extremity could be pinched” does not fully address the claim limitation and fails to account for the fact that neither Ferneau A nor Ferneau B teaches a mount “oriented between said mid-length thereof and said litter frame,” as required by claim 3. Ferneau B expressly taught locating the mounts between the mid-length of the X-frame and base frame, not the litter frame. See, e.g., Ex. 1009, Figs. 1–4. Petitioner’s reasoning does not identify why a person of skill would have had reason to, or been motivated to, place mounts in a location not taught by Ferneau B. Furthermore, Petitioner’s reasoning presumes that Ferneau A’s frame encounters metal-to-metal contact when the cot is collapsed, yet the record does not support such a finding. Indeed, if Ferneau A’s mounts serve the same function as Ferneau B’s rubber bumpers 92, 94, as Petitioner states (see Pet. 14), Ferneau A’s frame would not encounter such metal-to-metal contact.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Safe Haven Wildlife Removal And Property Management Experts LLC v. Meridian Wildlife Services LLCInstitution denied
  PTAB · Feb 22, 2024 · IPR2023-01340 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations of Bird Barrier Video and the cited references.

  RulingsInstitution decision

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

    “D. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations).9 Graham v. John Deere Co., 383 U.S. 1,” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that “a POSA6 ‘would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals,’” quoting the definition of a POSA adopted by the Board at the” slip op. at 8

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

    “actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally 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 and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 9

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

    “Analysis Based on the current record, we agree with Patent Owner, that the Petition does not adequately explain why it would have been obvious to a person of ordinary skill in the art to determine the species of flying vertebrate (as required by limitation 1a) and position the netting for capture based on the species of flying vertebrate (as required by limitation 1d). All of the references relied upon assume the species of flying vertebrate. Specifically, Bird Barrier Video assumes that the flying vertebrate is a bird. See generally, Ex. 1003; see also Ex. 1004. Albanese and Sheldon (which specifically applies to American woodcocks) also assume that the flying vertebrate is a bird. See generally, Ex. 1010, see also Ex. 1011. Kunz assumes the flying vertebrate is a bat. See generally, Ex. 1009. Although, Kunz mentions birds, it does so in the context of setting its mist nets so as to not catch birds. Ex. 1009, 30. Thus, none of these references suggest that the method described therein pertains to a type of flying vertebrate other than the type of flying vertebrate described. In the absence of any explanation as to why a person of ordinary skill in the art would need to determine the species of flying vertebrate, Petitioner’s assertion that a person of ordinary skill “would be motivated to combine [Kunz, Albanese, and Sheldon] with the teachings of Bird Barrier Video to increase the chances of capturing a targeted bird within a large building” lacks rationale underpinning. Pet. 27. We also determine that Petitioner does not sufficiently explain why a person of ordinary skill in the art would be motivated to replace Bird Barrier Video’s magnetic connectors with hooks as required by limitation 1ci. Ex. 1001, 6:1. Petitioner contends that “using hooks instead of magnetic heads would have been obvious to a POSA as there is no material difference on the ends of poles to attach the poles to an overhead structure is commonly used in various fields. Pet. 29 (citing Ex. 1018, “Bebout”). Petitioner, however, does not explain how Bebout’s teachings would lead a person of ordinary skill in the art to modify or replace Bird Barrier Video’s magnetic heads with hooks. See generally, Petition. Further, we do not agree with Petitioner’s assertion that there is no material difference between magnetic heads and hooks. For example, we understand that Bird Barrier Video’s magnetic head requires a magnetic surface, whereas hooks do not. Conversely, we understand hooks to require a structure that provides something for the hook to hook on to, whereas magnetic heads do not. Thus, it is not necessarily true that both a magnetic head and a hook have the same functionality such that a skilled artisan would find it obvious to replace one with the other.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,943,073
• Safe Haven Wildlife Removal And Property Management Experts LLC v. Meridian Wildlife Services LLCInstitution denied
  PTAB · Feb 22, 2024 · IPR2023-01341 · APJ Amee A Shah · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations of Bird Barrier Video and the other references.

  RulingsInstitution decision

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

    “On the record before us, Petitioner has not demonstrated a reasonable likelihood of establishing obviousness of claims 1–3 based on Bird Barrier Video and/or Kunz and/or Albanese and/or Sheldon. Because we deny institution on the merits, we do not address Patent Owner’s arguments that the proposed combination lacks particularity and that the Chamberlain Declaration is inadmissible. Prelim. Resp. 4–9, 29–33 (citing Ex. 2001; Fed. R. Evid. 801, 802; 37 C.F.R. § 42.62). IV. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’663 patent, we do not institute an inter partes review” slip op. at 39

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that “a POSA10 ‘would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals,’” quoting the definition of a POSA adopted by the Board at the institution stage in IPR2022-01253. Pet. 22 (quoting Ex. 1014, 9). Patent Owner does not challenge this definition of the level of skill at this time. See generally Prelim. Resp.; Sur-Reply. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

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

    “Patent Owner argues that (a) Petitioner fails to sufficiently identify how the challenged claims are to be construed, and (b) “[t]he amendments and arguments made during prosecution of the ’663 patent reveal that the phrase ‘configured to raise the entire bird netting’ in Claim 1 [limitation b.iii] must be construed to require the capability to raise the entire bird netting to prevent the netting from blocking activities on the floor of the building it is used in.” Prelim. Resp. 9–15 (citing Ex. 1002, 21). As explained below in Section III.E.3, we find that, for reasons not related to limitation b.iii of claim 1, Petitioner’s arguments and evidence do not demonstrate a reasonable likelihood of establishing that the challenged claims are unpatentable. Thus, we do not find it necessary to construe expressly any language of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “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 15

  • BurdenNot shown unpatentable

    “3. Analysis Even assuming, arguendo, that the Bird Barrier Video teaches at least independent claim 1’s device that is “for repeated quick set up for safe live capture of a flying vertebrate indoors in a large building having a floor and a ceiling supported by rafters or beams” and comprises “bird netting capable of catching and holding the flying vertebrate when it flies into the bird underpinning demonstrating how or why a person of ordinary skill in the art would have modified Bird Barrier Video to, at least, have a plurality of poles for sitting on the floor and a hook positioned at a top of each pole configured to attach the poles overhead to the ceiling by attachment over the top of a ceiling rafter and beam, as recited in claim 1’s limitations b and b.i. Regarding limitation b, Petitioner acknowledges that Bird Barrier Video does not disclose or suggest that its poles are “for sitting on the floor.” Pet. 24. Petitioner contends “it would be obvious to place them on the floor if needed to capture a bird in a lower location.” Id. Yet, the claim requires that the poles are for “sitting on the floor,” and not simply “to place” on the floor. Petitioner does not explain, nor does Bird Barrier Video show, the structure of Bird Barrier Video’s poles such that they can be “for sitting on the floor.” Moreover, Petitioner’s reasoning presumes that the net disclosed in the Bird Barrier video, which is suspended from the ceiling, would be incapable of capturing low-flying birds, yet the record does not support such a finding.” slip op. at 33

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,154,663
• Manufacturing Resources International, Inc. v. Samsung Electronics Co. Ltd.Institution denied
  PTAB · Feb 7, 2024 · IPR2023-01201 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, or 5 obvious over either asserted reference combination.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the RE ’117 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s statement of the level of ordinary skill in the art, except that we delete the qualifier “at least,” which renders the statement vague by rendering the scope of ordinary skill unbounded at the top. This level of ordinary skill appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).9 C.” slip op. at 9

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

    “1. “display panel” According to Petitioner, “display panel” means “a flat type screen on which images are displayed, such as a Liquid Crystal Display or Plasma Display Panel.” Id. at 17. Patent Owner asserts that Petitioner improperly limits “display panel” to only a “screen” on which images are displayed. Prelim. Resp. 8. Patent Owner states, however, that “construction of this term does not impact the issues in this proceeding.” Id. Patent Owner does not dispute Petitioner’s position that “display panel” includes Liquid Crystal Display and Plasma Display Panel. Therefore, it is not necessary to construe “display panel” for purposes of this decision. “circuit board mounting part” 2. Petitioner proposes a construction for “circuit board mounting part” which appears in each of claims 1, 2, and 5. Pet. 19–25. Our decision, however, does not depend on any construction of the term “circuit board mounting part.” Thus, it is not necessary to construe this term.” slip op. at 11

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

    “disclosed in Figure 1, especially since “the text of the ’117 patent does not limit the entry/exit of the cooling paths.” Prelim. Reply 2. However, given that the goal of the RE ’117 patent is to avoid inter-heating by providing separate cooling fluid paths, as discussed above, it is not consistent with the Specification to have mixing of the two cooling fluid paths within the panel display device. We are not reading an extraneous limitation from the Specification into the claim. Rather, we are interpreting the limitation “separated from each other” in light of the Specification, which is the single best guide to the meaning of a disputed term. Phillips, 415 F.3d at 1315.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham

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.