• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution denied
  PTAB · Dec 16, 2021 · PGR2021-00084 · APJ Meredith C Petravick · PGR · Institution

  The Board denied institution because Petitioner did not show that any of claims 1–20 was more likely than not unpatentable on the asserted § 112, § 102, or § 103 grounds.

  RulingsInstitution decision

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

    “instituted unless “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”1 After considering the Petition, the Preliminary Response, Reply, Sur- reply and the evidence of record, we determine that Petitioner fails to demonstrate that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2

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

    “We are not persuaded by Petitioner’s arguments because Petitioner’s proposed construction improperly attempts to read a particular embodiment described in the ’608 patent into the claims. It is not proper to read limitations from the ’608 patent into the claims: Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “[A]lthough the specification often describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323. As Mr. Smith points out, the ’608 patent does describe offline- payment operated machine 1500 as an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). Ex. 1005 ¶ 84 (citing Ex. 1002, 39:39– 45). But, the ’608 patent describes offline-payment operated machine 1500 as merely one example of an offline-payment operated machine in some implementations. The ’608 patent states: FIG. 28A illustrates a block diagram of an offline-payment operated machine 1500 in accordance with some implementations. For example, the offline-payment operated machine 1500 (e.g., a form of the machine 120) is an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). For example, the offline-payment operated machine 1500 is a washer or dryer at a laundromat, a parking meter, a car wash payment kiosk, or other offline-payment operated machine that dispenses goods and/or services. Ex. 1002, 39:38–48 (emphases added). The ’608 patent emphasizes that offline-payment operated machine 1500 is merely an example. Id. at 39:52– 56 (“The components of the offline-payment operated machine 1500 in FIG. 28A are examples and one of skill in the art will appreciate that various” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person having ordinary skill in the art (“POSITA”)], as of the date of the alleged invention, would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least three years of work experience in electronic payment systems, vending machine technologies, or telecommunication solutions. Pet. 29 (citing Ex. 1005 ¶ 52). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’608 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Under 35 U.S.C. § 112(a), “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . .” To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The requirement under § 112 does not demand that the specification recite the claimed invention verbatim. Id. at 1352 (citations omitted). The “claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement.” In re Smith, 481 F.2d 910, 914 (CCPA 1973). “Original claims are part of the original specification and in many cases will satisfy the written description requirement.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017). We agree with Patent Owner. Petitioner, itself, indicates that the specification of the ’608 patent discloses an interface module counting the electrical pulses generated by a coin receiving switch. The Petition states: “Specifically, the objective inquiry reveals that it is only the ‘first interface module’ that is mentioned as counting one or more electrical pulses generated by the coin receiving switch.” Pet. 32; see also Ex. 1005 ¶ 125 (corresponding testimony of Mr. Smith). In this regard, the ’608 patent states: In FIG. 28A, the first interface module 1522 is configured to sample payment acceptance signals from the microswitch 1502 (e.g., a coin receiving switch) via lead 1532 of the offline-payment operated machine 1500. For example, the payment acceptance signals are indicative of a coin being received by the microswitch 1502 which depress lever 1504. Ex. 1002, 40:35–40. The ’608 patent also describes FIG. 28B as illustrating signals sampled by the first interface module 1522, “[f]or example, the preset sequence of payment acceptance signals indicative of the preset number of coins include pulses (i.e., payment acceptance signals) 1552, 1554, 1556, and 1558.” Id. at 40:50–58; see also id. at 41:59–42:4 (“payment acceptance signals are indicative of a preset number of coins received by the coin receiving switch”); 42:49–55 (describing identifying a count of pulses). The ’608 patent further states: “[T]he terms used for labels (e.g., ‘first,’ ‘second,’ and ‘third’) are meant solely for purposes of designation and not for order or limitation.” Id. at 46:11–14. Claim 19, as originally filed, recited limitation (b), with the coin counting interface module being labeled as the second interface module. Ex. 1003, 283. Given the originally filed claim 19 and the above disclosures of the ’608 patent, Petitioner does not persuade us that the ’608 patent does not reasonably convey to skilled artisans that the patentee did not possess the claimed invention as of the filing date. Petitioner does not show sufficiently that claims 19–20 are more likely than not unpatentable under 35 U.S.C. § 112(a) for lack of written description.” slip op. at 15

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,891,608
• Cloudflare, Inc. v. Sable Networks, Inc.Institution denied
  PTAB · Dec 16, 2021 · IPR2021-01067 · APJ Stacey G White · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 8 would have been obvious over Beshai and Simpson.

  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 the remaining challenged claim. We hereby do not institute an inter partes review as to the challenged claim of the ’431 patent on the asserted grounds of unpatentability.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “claims 1–7 and 9 of the ’431 patent.” Prelim. Resp. 32; Ex. 2006. “[A] patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d). 37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting the requirements of 37 C.F.R. § 1.321(a), and that no further action is required in the Office). Based on our review of Exhibit 2006 and the Office’s public records, we conclude that claims 1–7 and 9 have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), and thus, no inter partes review shall be instituted as to those claims. See 37 C.F.R. § 42.107(e) (“No” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialNot reached

    “E. Discretionary Denial Petitioner contends the Petition should not be denied institution on discretionary grounds. Pet. 57–63; Reply. Patent Owner contends we should deny institution under 35 U.S.C. § 314(a). Prelim. Resp. 33–42; Surreply. 5 Petitioner relies on Simpson for this limitation and does not direct us to any teachings in Beshai regarding the recited “packet discard time limit.” See Pet. 10–11. institute an inter partes review on that basis, we need not determine whether it would be appropriate to discretionarily deny the Petition under § 314(a).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have had an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and about 2 to 3 years of academic or professional work experience in computer networking and switching technology with a focus on routing and quality-of-service or comparable experience.” Pet. 8 (citing Ex. 1003 ¶ 55). As also asserted by Petitioner, a “higher level of education could substitute for less industry level of education.” Id. Patent Owner does not address the level of ordinary skill of the art. See Prelim. Resp. Based on our review of the current record, we adopt Petitioner’s articulation of the level of skill in the art, which is consistent with the ’431 patent and the asserted prior art, and we apply it in our obviousness evaluations below.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 6,954,431
• Juniper Networks, Inc. v. Correct Transmission, LLCRehearing denied
  PTAB · Dec 16, 2021 · IPR2021-00814 · APJ Stephen E Belisle · IPR · Rehearing

  The Board denied Juniper’s rehearing request, leaving intact its denial of institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “because the Board was not persuaded by Petitioner’s arguments and evidence for purposes of institution does not mean that we overlooked or misapprehended Petitioner’s arguments and evidence, and importantly, a request for rehearing is not an opportunity merely to reargue one’s case or to express disagreement with the Board’s decision.” slip op. at 3

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

    “But Bruckman’s “trunk link” (or LAG as argued by Petitioner) is explicitly disclosed as a link to a core network, not as the links (or traces 34 on backplane 26) to subsidiary modules 24, as argued by Petitioner: “In network access systems, for example, a backplane may be used to connect a main module, having a trunk link to a core network, to a number of subsidiary modules, such as line cards, with ports serving network users. Ex. 1007, 1:25–30 (emphasis added); see id. at 1:61–2:4 (“The master module comprises a switch, which is typically used for linking the subsidiary modules via the connection lines to a network trunk.” (emphases added)); Dec. 25. Bruckman also explicitly discloses that “[a]t any given time, a number of the connection lines [between main module 22 and subsidiary modules 24, i.e., traces 34] are likely to be idle” (Ex. 1007, 2:2–4), which is contrary to a purpose of a LAG (see Ex. 1001, 2:10–16 (“The [LAG] forwarding entity usually attempts to distribute the load evenly over each physical output port of the aggregated logical link.” (emphasis added))). See Dec. 25–28. Thus, in the Decision, we found neither Petitioner nor its declarant had explained sufficiently, let alone with particularity, why the skilled artisan, but for hindsight, would have understood Bruckman to teach the Physical/Logical Link Limitations, of which the physical links are subject to the Designating Limitations, as recited, for example, in claim 1. Indeed, we were not persuaded by Petitioner’s arguments in its Petition as to the Physical/Logical Link Limitations, and having reviewed the Request, remain unpersuaded. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[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.”).” slip op. at 4

  Nonecites KSR
  Patents in suitUS 7,768,928
• Microchip Technology Inc. v. HD Silicon Solutions LLCInstitution denied
  PTAB · Dec 15, 2021 · IPR2021-00872 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 would be unpatentable over Lempel and Itou, with or without Haswell.

  RulingsInstitution decision

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

    “In summary, Petitioner does not explain with sufficient specificity how or why a person of ordinary skill in the art would have combined Lempel with Itou. Because each ground upon which the Petition relies is based on the combination of Lempel and Itou, including each independent claim challenged, Petitioner has not proven by a reasonable likelihood that it would prevail in showing that any claim of the ’619 patent is unpatentable. VII. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of claims 1–32 of the ’619 patent is unpatentable. VIII. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied, and we do not institute inter partes review of any claim of the ’619 patent based on the grounds asserted in this Petition.” slip op. at 19

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

    “V. DISCRETION UNDER 35 U.S.C. § 314(A) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp. 40–46 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine that Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of 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. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which is supported by Dr. Sechen’s testimony. See Ex. 1002 ¶¶ 26–28.” slip op. at 7

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

    “For instance, Petitioner does not identify persuasively the differences between either Lempel or Itou and the limitations they supposedly teach in combination, nor does Petitioner provide persuasive explanation as to how either reference would be modified to accommodate the distinct architecture of the other reference (Lempel’s parity checking and Itou’s ECC circuitry) in a combination. Petitioner does not explain adequately how this proposed combination would operate. Because the teachings of Lempel and Itou are somewhat contradictory, Petitioner should have provided at least some explanation as to how the resulting system operates and why a person of ordinary skill in the art would have combined the references to operate in that manner. See Prelim. Resp. 24. Petitioner next argues that a POSITA could use the error detection and recovery method of Itou (e.g., an ECC (Error Check Code)-based method) when a correctable error is detected, and the error detection and recovery method of Lempel (e.g., targeted invalidation of the data errors in the cache and selectively replacing the invalidated data with error-free data from the main memory) when a non-correctable error is detected to reduce the latency associated with accessing the content of the main memory. Pet. 67. This rationale, however, fails to address Lempel’s consistent disparagement of ECC approaches, as adopted in Itou. Based on Lempel’s teachings, adding ECC functionality to an integrated circuit already configured with parity checking functionality would increase “space on the silicon” as well as increase cost. See Ex. 1006, 1:31–44, 1:58–61. Yet, Petitioner does not acknowledge these drawbacks of ECC circuitry, much less explain why they would have been acceptable to a POSITA. Thus, we are not persuaded a POSITA would have been willing to combine the two references as proposed by Petitioner.” slip op. at 17

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,302,619
• Platform Science, Inc. v. XRS CorporationRehearing denied
  PTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a” slip op. at 2

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

    “Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12

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

    “misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19

  § 103 obviousness
  Patents in suitUS 10,255,575
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-00979 · APJ Patrick R Scanlon · IPR · Institution

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

  RulingsInstitution decision

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

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

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

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

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

  RulingsInstitution decision

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

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’855 patent. Accordingly, we do not institute an inter partes review of all challenged claims of the ’855 patent on the grounds asserted in the Petition.” slip op. at 2

  • BurdenDenied

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

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

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

  • PTAB / AIA Trials › Discretionary denialNot reached

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

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,448,855
• Cloudflare, Inc. v. Sable Networks, Inc.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-01005 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 25–27 were obvious over either asserted reference combination; claims 1–24 and 28–29 were disclaimed.

  RulingsInstitution decision

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

    “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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of claims 25–27, and Patent Owner disclaimed all other challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 2–3 years of academic or industry experience in computer networking.” Pet. 5 (citing Ex. 1003 ¶ 23). At this stage, Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’919 patent and the asserted prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above.” slip op. at 8

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

    “Petitioner asserts that no express constructions are necessary for this proceeding. Pet. 5–6. Patent Owner proposes constructions for the claim term “individual micro-flow” (Prelim. Resp. 12–15) and the phrase “having a quality of service capable of supporting the quality of service of the plurality of micro-flows” (id. at 23–25). Based on the record before us, we do not find it necessary to expressly construe any claim terms or phrases in this Decision. 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 8

  • BurdenDecided for patent owner

    “b) Analysis “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio- Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). A petition must specify where each claim limitation is found in the cited references and must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (requiring “a detailed explanation of the significance of the evidence”). Here, Petitioner contends that Cheesman discloses “assembling the plurality of individual micro-flows into a second aggregate flow having a quality of service capable of supporting the quality of service of the plurality of micro-flows,” as required by claim 25, but the Petition does not identify where Cheesman discloses the italicized claim language, which we call the “QoS-capability limitation.” See Pet. 45. In addition, the Petition does not sufficiently explain why a person of ordinary skill in the art would have understood these claimed aspects to be taught or suggested by Cheesman. Thus, the Petition’s showing for this limitation is insufficient.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,012,919
• Schlumberger Technology Corporation v. Dynaenergetics Europe GmbHInstitution denied
  PTAB · Dec 14, 2021 · PGR2021-00089 · APJ Frances L Ippolito · PGR · Institution

  The Board denied institution on all claims because the petition 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 meritsDenied

    “We are authorized to institute a post-grant review where a petition demonstrates that it is more likely than not that at least one challenged patent claim is unpatentable. See 35 U.S.C. § 324. We are never compelled to institute a review, however, because institution is discretionary. Id.; cf. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). As in an IPR proceeding, we deny post-grant review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Cf. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 322(a)(3); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3)). For the reasons discussed below, we deny the institution of post-grant review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art (“POSITA”) “would be expected to have at least a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two years of industry experience related to assembling, operating, and/or designing perforating tools.” Pet. 10 (citing Parrott Decl. ¶ 28). Patent Owner “believes that Petitioner’s definition suggests that a field technician who merely assembles guns could be a POSITA, which is incorrect,” and instead proposes “a POSITA would be expected to have a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two (2) years of industry experience related to designing perforating gun systems.” Prelim. Resp. 35–36 (citing Ex. 2001 ¶ 52). For the purposes of institution, we do not see a material difference between the parties’ proposed definitions. Nonetheless, because Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record, including the prior art, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner for purposes of this Decision. See GPAC Inc., 57 F.3d at 1579.” slip op. at 7

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

    “D. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b) (2020). This standard requires that we construe claims “in accordance with the ordinary and customary meaning of such claim[s] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA trial proceeding). Patent Owner proposes constructions for “shaped charge receptacle” and “retention mechanism extending from a portion of the body.” Prelim. Resp. 36–38; see also PO Sur-reply 1–5. In its Reply, Petitioner disputes Patent Owner’s proposed constructions. Pet. Reply 2–3. For purposes of this Decision, we determine that no claim term requires explicit construction. See Vivid Techs., 200 F.3d at 803 (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “In addition, we determine that Petitioner has not sufficiently explained its alternative argument based on the “simple substitution of the circular openings (for inserting the shaped charges) in Vann for the circular openings with tabs in Von Kaenel.” Pet. 90 (citing Parrott Decl. ¶ 485). As an initial matter, Petitioner’s proposed substitution lacks sufficient clarity because it remains unclear which of Vann’s structures remain in the resulting combination. By emphasizing substitution of the “circular openings” alone in Vann, Petitioner suggests that Vann’s tabs 62 remain without explaining why the tabs are necessary if Von Kaenel’s tabs retain the shaped charges. See id. As discussed, Vann requires that the plurality of charge holders are placed in tandem and jointly cooperate together to make up a charge carrier 48. Ex. 1009, 5:50–56. To do so, tabs 62 formed by extended lateral edges 56, 58 are aligned in an overhanging relationship relative to the central lateral face 70 of the two adjacent charge holders. Id. at 6:61–64, Fig. 5. If the proposed combination employs Von Kaenel’s tabs to retain the charges, preserving the overhanging relationship of Vann’s tabs 62 to retain the charges would appear superfluous, and if Petitioner proposes retaining Vann’s tabs 62 but removing the overhanging relationship, Petitioner does not describe such a structure. In either case, a substitution of Vann’s circular openings alone while Vann’s tabs 62 remain in the resulting combination lacks adequate specificity and support. For completeness, we assess Petitioner’s argument based on the assumption that Petitioner proposes removing Vann’s tabs 62 entirely from the proposed combination. Per this theory, a POSITA would have simply substituted Von Kaenel’s side locking tabs 610 for Vann’s tabs 62 because a POSITA would have recognized the advantages of having the retention mechanisms be a part of the body in order reduce the number of tools and assembly required, to allow for differing offsets, as well as to simplify manufacturing, as discussed in each of Vann, Brooks, and Von Kaenel. Pet. 89–90 (emphasis added) (citing Parrott Decl. ¶ 484; Ex. 1013, Abstract, 2:60–3:16, 5:20–41, 8:41–58; Ex. 1009, 1:18–21, 2:22–29, 1:66–67, 1:41– 43, 3:63–68, 4:14–24; Ex. 1010, 9:48–53, 1:52–64). However, Petitioner has not explained sufficiently how this substitution would “simplify manufacturing” for Vann’s specific stacked formation. Indeed, Vann’s charge carrier is formed by a plurality of charge holders that jointly cooperate in tandem, which includes the cooperation of extended lateral edges that overhang the central lateral face of adjacent charge holders. See Ex. 1009, 6:61–64; Fig. 5. Substitution of Vann’s tabs 62 with Von Kaenel’s side locking tabs 610 would affect Vann’s tandem construction if tabs 62 are removed. See Pet. 80–95. More importantly, Petitioner has failed to explain adequately why a POSITA would have sought to make this combination to simplify manufacturing or reduce assembly given Vann’s specific charge carrier design, which is dependent on the overhanging relationship between separate, stacked charge holders. Id. Further, Mr. Parrott’s testimony is not helpful on this point. In paragraph 485 (cited by Petitioner), Mr. Parrott states that Von Kaenel’s tabs (retention mechanisms) would have been applied with ease to Vann’s perforating gun apparatus, which would have yielded predictable results. A POSITA would have recognized the combination as a simple substitution of the circular openings for inserting the shaped charges in Vann for the circular openings with tabs in Von Kaenel, and a POSITA would have had a reasonable expectation of success. Parrott Decl. ¶ 485 (emphases added). Like the Petition, these statements by Mr. Parrott are conclusory and do not explain the basis for his conclusions. See id. Looking elsewhere, paragraph 484 mirrors statements and citations in the Petition, which as discussed, are insufficient. Id. ¶ 484. And although paragraph 483 articulates the advantages of using “Von Kaenel’s superior teachings in order to better achieve the goal of reliably securing and positioning the shaped charges,” Mr. Parrott neglects to explain the proposed substitution in the context of Vann’s specific charge carrier design that relies on the overhanging edges/tabs of the charge holders for the in tandem assembly and construction. Id. ¶ 483 (citing Ex. 1013, Fig. 6B, 8:59–67). The Supreme Court has made clear that we apply “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Here, Petitioner has failed to make the threshold showing for the” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,844,696
• Cellink AB v. Organovo, Inc.Institution denied
  PTAB · Dec 13, 2021 · IPR2021-01049 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–11 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have had “a minimum of a bachelor’s degree in mechanical engineering, electrical engineering, biomedical engineering, or a related field, and approximately 5 years of relevant experience or equivalent study in electro mechanical systems, regenerative medicine, tissue/organ engineering, and/or biologic and medical research.” Pet. 13 (citing Ex. 1002 ¶¶ 10–12). Patent Owner states that for purposes of its Preliminary Response, it “does not address” Petitioner’s definition, but also states that it “does not agree or acquiesce” to Petitioner’s purported definition. Prelim. Resp. 3. In light of the record now before us, for purposes of this Decision, we accept Petitioner’s definition of a person of ordinary skill in the art. Additionally, we note that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6

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

    “Petitioner provides proposed constructions for several claim terms, including the means-plus-function claim terms. Pet. 13–17. For purposes of the Preliminary Response, Patent Owner applies Petitioner’s constructions. Prelim. Resp. 3. We determine that we do not need to resolve any claim construction disputes for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of inter partes review).” slip op. at 7

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

    “computer processor (system controller),” Petitioner presents two paragraphs in Lipson describing that Lipson’s system controller operates according to “fabrication system software” and “an electronic data file.” Pet. 28 (quoting Ex. 1004 ¶¶ 95 and 94, respectively).6 At best, paragraphs 94 and 95 of Lipson indicate that Lipson’s system controller is a programmable computer processor. These paragraphs in Lipson do not address whether Lipson’s bioprinter comprises the system controller (the programmable computer 6 Petitioner includes a citation to paragraphs 97–101 of the Cimino declaration at the end of the section of its claim chart addressing this limitation. Pet. 29. But, in paragraphs 97 and 98 of his declaration, Dr. Cimino simply mirrors the language in the Petition. Ex. 1002 ¶¶ 97, 98. And paragraphs 99–101 relate to different limitations recited in claim 1 and Petitioner’s alternative arguments based on a § 112 ¶ 6 construction for “programmable computer processor.” Ex. 1002 ¶¶ 99–101. processor), as claim 1 requires. Petitioner and Dr. Cimino likewise fail to address whether Lipson’s bioprinter comprises the system controller when discussing these paragraphs. By way of contrast, we note that for other components the bioprinter comprises, such as one or more printer heads recited in claim 1, Petitioner explicitly maps the component to the “fabrication system” depicted in Lipson Figure 1. Pet. 21–22. Petitioner, however, does not provide a similar analysis for Lipson’s system controller. Petitioner’s failure to do so here is particularly problematic in view of Lipson’s express disclosure that the system controller is an “external computer” and Lipson’s depiction of system controller 104 as a laptop computer that is separate from the bioprinter in Figure 10. Ex. 1004 ¶¶ 26, 90, Fig. 10. As such, there is evidence of record suggesting that Lipson’s fabrication system, which according to Petitioner corresponds to the bioprinter of claim 1, does not comprise the system controller.7 Ex. 1004 ¶ 90, Fig. 10. Petitioner bears the burden of demonstrating that Lipson discloses or suggests a bioprinter comprising a computer programmable processor. In view of Petitioner’s reliance solely on general descriptions of Lipson’s system controller and Petitioner’s failure to address specifically the relationship between the system controller and bioprinter in Lipson, we are 7 Petitioner argues that, to the extent § 112 ¶ 6 applies to the term “programmable computer processor,” the function is “regulating the dispensing of the bio-ink,” and the corresponding structure is software. Pet. 16–17. Petitioner contends that Lipson discloses software for performing the claimed function in paragraphs 95, 96, and 99. Pet. 29. These paragraphs in Lipson, however, describe the software in system controller 104, and, therefore, do not remedy Petitioner’s failure to demonstrate Lipson’s bioprinter comprises a “programmable computer processor.”” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,149,952

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.