- Hubspot, Inc. v. Trident Holdings, Inc.Institution deniedPTAB · Oct 27, 2022 · IPR2022-00907 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all grounds because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Because the person of ordinary skill in the art is a hypothetical person, we are not persuaded by Patent Owner’s argument regarding actual individuals that allegedly are disqualified by Petitioner’s definition. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. Our analysis would not differ, however, if we adopted Patent Owner’s proposed definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the passage cited by Patent Owner exhibits a clear intent to define “campaign” and does so with the requisite clarity, deliberateness, and precision. We thus lexicographic definition for the term. See Ex. 1001, 16:60–65. Patent Owner, however, truncates the lexicographic definition for its proposed construction without explaining the basis for the truncation. We need not determine whether the alteration is appropriate because we see no meaningful difference between Patent Owner’s proposed construction and the lexicographic definition vis-à-vis our analysis below. Accordingly, for the purpose of this Decision, we construe “campaign” as “a coordinated set of marketing activities.”” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Jones is not a coordinated set of marketing activities but only an expression to sell something. Prelim. Resp. 15. We agree with Patent Owner because Petitioner’s mapping of Jones’s offers to “campaigns” is inconsistent with our construction of “campaign” as “a coordinated set of marketing activities.” See supra § III.B. Petitioner does not identify any disclosure in Jones or provide any reasoning suggesting that an offer in Jones is a coordinated set of marketing activities. As such, Petitioner’s arguments do not persuade us that Jones discloses selectively generating and storing a campaign population. Furthermore, even if we discounted the lexicographic definition, Petitioner does not explain adequately why an offer in Jones would be a “campaign” under the ordinary meaning of the term. Instead, Petitioner merely equates Jones’s offers to campaigns with repeated parenthetical references. Pet. 14–16. Petitioner argues that Jones discloses developing offers to be marketed to consumers (id. at 14 (citing Ex. 1005, 6:66–7:1)) and that the offers are “geared to an individual consumer and presented over 3:39–41)).7 These disclosures may indicate that Jones’s offers could be considered a form of marketing, but Petitioner still fails to explain sufficiently how an individual offer would comprise a marketing campaign. Accordingly, we are not persuaded that Jones discloses generating and storing a campaign population that comprises a plurality of marketing campaigns. For the above reasons, we determine Petitioner has not met its burden to show a reasonable likelihood it would prevail with respect to the contention that claims 1 and 27 are unpatentable over Jones.” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,236,977 - Avail Medsystems, Inc. v. Teladoc Health, Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 10,887,545 - Askeladden L.L.C. v. Aml IP LLCInstitution deniedPTAB · May 11, 2022 · IPR2022-00319 · APJ Michael L Woods · IPR · Institution
The Board denied institution on all grounds and claims 1–13 because the Petition did not show a reasonable likelihood that Armes, alone or with Steury or Maritzen, rendered the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to satisfy both the “bridge computer” and at least one “service provider computer,” we do not see how the method steps recited in limitations B, Ci, and Cii are satisfied. Petitioner’s attempt to satisfy these steps with Armes’s card provider 3 computer (i.e., as the “bridge computer”) raises multiple questions that persuade us Petitioner has not demonstrated by a reasonable likelihood that these limitations are satisfied. For example, to satisfy the recited “service providers,” Petitioner relies on “incentive rewards [or MR] companies.” Pet. 25 (citing Ex. 1005 ¶¶ 52, 59, 87); see also id. at 40 (relying on MR company to satisfy limitation B); see also id. at 41 (relying on MR company to satisfy limitation Ci); see also id. at 43 (relying on MR company to satisfy limitation Cii). Petitioner also cites to the testimony of Mr. Zatkovich. See, e.g., id. at 39– 41 (citing Ex. 1002 ¶¶ 120–124). The Petition does not clearly explain how Armes’s “bridge computer” (i.e., the card provider’s computer system) makes a “determin[ation] from among the plurality of service providers,” however, when the card provider itself is a service provider. The testimony of Mr. Zatkovich does not relieve our confusion. Mr. Zatkovich’s testimony merely parrots, verbatim, that which is in the Petition. Compare Ex. 1002 ¶¶ 120–124, with Pet. 39–41. Although Petitioner and Mr. Zatkovich cite to Armes, the citations are to disjointed disclosure whose relevance is not clearly apparent. See Fritch, 972 F.2d 1266 (“one cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art”); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”). For instance, Mr. Zatkovich cites to both Armes’s back end application service 8 and STN system 18 for performing the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider.” See Ex. 1002 ¶¶ 122, 124; see also Pet. 40; see also supra § I.D. It is not clear to us, however, how “STN system 18” and “backend application service 8”—both acting as the “bridge computer”—perform the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider,” as recited in claim 1. In support of his assertions, Mr. Zatkovich quotes Armes’s disclosure that “CAS 7 recognizes the transaction as involving a STN 15, and forwards the request to the STN system 18” (Ex. 1002 ¶ 122, citing Ex. 1005 ¶ 109)) and “backend application service 8, upon receiving a STN 15, recognizes the associated PPC originated with another card issuer 92” (Ex. 1002 ¶ 124 (citing Ex. 1005 ¶ 95)). Even if “CAS 7 recognizes the transaction as involving a STN 15,” for example, we do not see this as performing the step of “determining whether the given vendor is associated with the same service provider,” as Petitioner asserts. See Pet. 40. As explained above, Armes uses STNs to improve credit card security (supra § II.D.1), and the computer system’s mere recognition that “the transaction [] involve[es] a STN” is not a determination of “whether the given vendor is associated with the same service provider.”” slip op. at 36
- Skill levelSkill level board ownDecided for patent owner
“We are not persuaded that a POSITA “would have at least one or two years of experience with payment or credit systems,” as Petitioner proposes (see Pet. 17), or “would have at least a Master of Science [] Degree . . . or equivalent work experience in the field of computer networks,” as Patent Owner proposes. See Prelim. Resp. 6. Rather, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed level of skill. For purposes of this Decision, we find that a POSITA at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study along with knowledge of the general structure of payment or credit systems, its hardware and software components.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“Both parties acknowledge and agree with the final Claim Construction Order. See Pet. 14; see also Prelim. Resp. 4. We further note that the claims of the ’979 patent “shall be construed using the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021). For purposes of this Decision, we consider and adopt the District Court’s claim construction of “bridge computer” in our analysis. Id. (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). 2. “service provider” In the Claim Construction Order, the court concluded that the term “service provider” shall mean “a business that provides internet-related services to customers.” Ex. 1017, 1. Petitioner does not propose a construction of this term. See Pet. 11– 16. Patent Owner, on the other hand, expounds upon the District Court’s claim construction, submitting that there are two different types of “service providers”: (1) “A service provider of [the] type may maintain a virtual presence on the web in the form of a web site”; and (2) one that “may offer on-line access to customers (e.g., broadband or dial-up Internet access using an Internet account associated with the service).” See Prelim. Resp. 4–5. Patent Owner does not dispute the District Court’s interpretation, however, and acknowledges that “[t]hese different types of service providers are referred to collectively herein as ‘service providers’ or ‘Internet service providers’.” Id. 5. For purposes of this Decision, we consider and adopt the District Court’s claim construction of “service provider” in our analysis. 37 C.F.R. § 42.100(b).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Specifically, we agree with Patent Owner that Petitioner improperly uses hindsight “to pick and choose among isolated disclosures in [Armes] to deprecate the claimed invention.” Prelim. Resp. 28 (quoting In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988))); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”).” slip op. at 34
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,876,979 - Apple Inc. v. Rfcyber Corp.Institution deniedPTAB · Mar 24, 2022 · PGR2022-00003 · APJ Patrick R Scanlon · PGR · Institution
The Board denied Apple’s untimely joinder motion and denied institution because the petition was filed outside the nine-month PGR filing period.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“motion under§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner’s Motion for Joinder was filed October 20, 2021, which is more than one month after the Board instituted post-grant review in the Google PGR on July 23, 2021. Petitioner, however, argues that special circumstances warrant that the Board exercise its discretion under 37 C.F.R. § 42.5 to waive the one-month joinder period. Mot. 3–6.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Eligibility for Post-Grant Review under 35 U.S.C. § 321 Institution of post-grant review is barred when a petition is filed more than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the Petition in this proceeding was accorded a filing date of October 20, 2021 (see Paper 1). Thus, the Petition was filed outside the 9-month statutory period for requesting post-grant review under § 321(c). Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed under 35 U.S.C. § 321(c).” slip op. at 8
Discretionary denialPatents in suitUS 10,600,046 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01173 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Weiss-based grounds teach or suggest the claimed residual marine fuel oil.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 12–31. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum 10 Petitioner defines “HSFO” as being a “high-sulfur HMFO” and “LSFO” as being a “low-sulfur HMFO.” Pet. 1. product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974 or obvious over the combination of Weiss ’974 and Weiss ’515.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,584,287 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01168 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are anticipated by Weiss ’974.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine we need not expressly construe any terms of the challenged claims at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“E. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 11–32. Petitioner disagrees. Pet. 6–12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16
Claim constructionDiscretionary denialPatents in suitUS 10,308,884 - Phillips 66 v. Magēmā Technology LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01175 · APJ Brian D Range · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–4 were obvious over any asserted combination of references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the posthydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are obvious over the combination of Weiss ’974, Weiss ’515, and ISO 8217:2017. Petitioner’s arguments show only that the fuel oil is a bunker fuel that complies with ISO 8217. See, e.g., Pet. 27, 47. These arguments alone are insufficient because ISO-8217-compliant bunker fuels can be either distillate-based or residual-based. Ex. 1003, 14–17; Ex. 1082 ¶ 29; Ex. 2007 ¶ 25. Thus, showing that a fuel is a bunker fuel or that a fuel complies with ISO 8217 does not show that the fuel is residual-based.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,533,141 - Phillips 66 v. Magēmā Technology, LLCInstitution deniedPTAB · Jan 21, 2022 · IPR2021-01174 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, or 5 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has shown sufficiently that a person of ordinary skill in the art would have found it obvious to use Buchanan’s blending units to carry out Parkash’s blending process to produce any of HSFO1, HSFO2, or HSFO3. First, paragraph 40 of Buchanan teaches blending a generic “residual fuel product” with a generic “distillate fuel oil product” in order “to form a homogeneous final blended fuel oil product.” Ex. 1049 ¶ 40. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s generic blending teachings to apply to the production of the specific fuel oils Petitioner identifies as HSFO1, HSFO2, and HSFO3. Second, to the extent that Petitioner contends that Buchanan’s teaching applies to any mixture of two fuel oils, one residual and one distillate, we note that Parkash teaches blending multiple process streams, including several distillate streams and at least two residual streams. Ex. 1102, 14. Petitioner does not explain why a person of ordinary skill in the art would have considered Buchanan’s two-stream blending unit to apply to Parkash’s multi-stream blending process. Third, Petitioner’s statement that “it would have been obvious to employ ‘[a]ny blending process as known by a [POSITA]’” in carrying out Parkash’s blending method is conclusory. Pet. 67. “[A] finding of obviousness at the time of invention requires a ‘plausible rational[e] as to why the prior art references would have worked together.’” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010)). In other words, Petitioner must provide “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A conclusory statement without supporting evidence or rationale does not provide the requisite reasoning. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. Resp. 10–30. Petitioner disagrees. Pet. 7–13. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution.” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,604,709 - LG Electronics, Inc. And LG Electronics U.S.A., Inc. v. Gesture Technology Partners, LLCInstitution deniedPTAB · Jan 13, 2022 · IPR2021-01255 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious, including because the asserted combination did not teach recording the original acquired image.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“point] is clear and unambiguous.” Id. at 7. And that based on a plain reading of the claim, “the image” in the step of “recording by the computer, . . . , of the image,” refers back to and has antecedent support from “an image” in the step of “acquiring an image . . . with said at least one digital camera,” as opposed to the “processed image” also discussed in the claim.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(‘POSITA’) at the time [of the invention] would have had a bachelor’s degree in electrical engineering, computer engineering, computer science or similar field, and two to three years of experience in image and video capture, or the equivalent” and that “a person with more technical education but less experience, would also meet the relevant standard for POSITAs.” Pet. 6 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 4. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’530 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither party provides any express claim constructions. See Pet. 6; Prelim. Resp. 4. We agree that no terms require express construction at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in (internal quotation omitted).” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“point] is clear and unambiguous.” Id. at 7. And that based on a plain reading of the claim, “the image” in the step of “recording by the computer, . . . , of the image,” refers back to and has antecedent support from “an image” in the step of “acquiring an image . . . with said at least one digital camera,” as opposed to the “processed image” also discussed in the claim.” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,804,530 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution deniedPTAB · Dec 14, 2021 · IPR2021-00979 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted Dua-based combinations rendered any claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been knowledgeable regarding mobile payment methods and systems pertinent to the ’218 patent.” Pet. 11. Petitioner also contends that an ordinarily skilled artisan “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, which would have exposed them to concepts like GlobalPlatform and SmartMX” and that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. at 11–12 (citing Ex. 1003 ¶¶ 27–28). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,118,218
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.