- Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution deniedPTAB · Jun 20, 2023 · IPR2023-00352 · APJ Carl M Defranco · IPR · Institution
The Board denied institution because the challenged claims are entitled to the provisional’s earlier filing date, making Gottlieb unavailable as prior art for every asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For a patent to claim the benefit of the filing date of its provisional application, the provisional application must comply with the written description requirement of 35 U.S.C. § 112. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To show sufficient written description support, the provisional must reasonably convey to those skilled in the art that the inventor had possession of the later-claimed subject matter as of the provisional’s filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description inquiry is a question of fact, and, as such, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The hydraulic link 22 consists of a hydraulic cavity 84 formed by hydraulic chamber 28 and hydraulic chamber cap 86. The cavity 84 is filled with viscous fluid. Within the chamber 28 is located the hydraulic piston part 72 of the needle valve 15. The chamber 28 is fitted around the hydraulic piston 72. O-ring seals 90 are located in the hydraulic chamber cap 86 and in the bottom of the hydraulic chamber 28 to prevent the fluid from leaking out of the cavity 84. The diametrical clearance between the outside diameter of the hydraulic piston 72 and the inside diameter of the hydraulic chamber 28 is extremely small (on the order of 50 to 250 microns). The exact clearance is dependent on the viscosity of the chosen fluid. The hydraulic flow in this clearance . . . is very small. The hydraulic fluid . . . acts as a solid during fast motions, because there is little flow going around the needle piston. Because the actuation occurs suddenly (on the order of 200 μs), the hydraulic fluid between the hydraulic chamber 28 and the needle valve piston 72 does not have the time to flow around the piston 72. Instead, the trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16. Id. at 12:5–13:14 (emphases added). Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Mercedes does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 11
§ 102 anticipation§ 112 disclosurePatents in suitUS 6,298,829 - PTAB · Jun 20, 2023 · IPR2023-00293 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of success on any asserted obviousness ground.
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 and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 17–21, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A POSITA in the technology field of the ’138 patent would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience. (See Ex. 1003, ¶¶ 37–39, 41.) This POSITA would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers. (Id., ¶ 40.) Pet. 23. Patent Owner does not dispute Petitioner’s proposed definition. See Prelim. Resp. 18. Instead, Patent Owner similarly argues “that a POSITA in the timeframe of the invention would have had a degree in mechanical engineering or a similar discipline along with two (2) years of professional experience working with fuel injectors or fuel injection systems for internal combustion engines.” Id. (citing Ex. 2004 ¶ 14). For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends “that the terms of the ’138 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning.” Pet. 15 (citing Ex. 1003 ¶¶ 82–85). Patent Owner asserts that, “[f]or the purposes of this preliminary response, Patent Owner does not seek construction of any term.” Prelim. Resp. 19. On this record, we determine that no claim term requires an express construction for the purpose of determining whether to institute inter partes review. 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 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 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1002 ¶ 208 (emphases added). But, Dr. Quinlan’s citations to Klügl do not support these conclusions. Figure 1 and lines 41–42 of column 1 do not teach that the fluid in chamber 5 moves through a cylindrical space of “constant width” and “unchanging shape,” or that the fluid maintains a constant thickness throughout actuation. Ex. 1006, Fig. 1, 1:41–42, 3:23– 29. Likewise, column 3, lines 32–29 teach that “pressure is exerted on the drive piston 3 via the first membrane 6[.]” See id. at 3:23–29. Absent from these cited passages is any mention of constant width, unchanging shape, or fluid thickness.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,575,138 - PTAB · Jun 20, 2023 · IPR2023-00292 · APJ Carl M Defranco · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood that any claim was obvious over the asserted combinations.
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 and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Bosch would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute inter partes review of challenged claims 1–3, 6, 11, 12, 14, 15, and 18–20 as raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Bosch contends that one skilled in the art “would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience” and “would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers.” Pet. 23 (citing Ex. 1003 ¶¶ 37–41). Westport does not dispute Bosch’s proposed definition of the level of skill in the art, similarly proposing that one skilled in the art “would have had a degree in mechanical engineering or a similar discipline along with two (2) years of professional experience working with fuel injectors or fuel injection systems for internal combustion engines.” Prelim. Resp. 18 (citing Ex. 2004 ¶ 14). For purposes of deciding institution, we adopt Bosch’s proposed definition of the level of skill in the art as reasonable and consistent with the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Bosch contends that “the terms of the ’829 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning.” Pet. 15. Westport asserts that, “[f]or the purposes of this preliminary response, [it] does not seek construction of any term.” Prelim. Resp. 19. On this record, we do not perceive the need to expressly construe any claim term in order to determine whether to institute inter partes review. 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.”).” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Id. ¶ 208 (emphasis added). But, Bosch’s expert’s citations to Klügl do not support these conclusions. Neither Figure 1 nor the cited passage in Klügl’s column 1 teaches that the fluid in chamber 5 moves through a cylindrical space of “constant width” and “unchanging shape,” or that the fluid maintains a constant thickness throughout actuation. See Ex. 1006, Fig. 1, 1:41–42, 3:23–29. Likewise, the cited passage from Klügl’s column 3 teaches that “pressure is exerted on the drive piston 3 via the first membrane 6[.]” See id. at 3:23–29. Absent from these cited passages is any mention of constant width, unchanging shape, or fluid thickness. If anything, the cited passage from Klügl’s column 3 supports that the exertion of pressure on drive piston 3 leads to flexing of membrane 6. Bosch’s expert further testifies that “[t]he fluid is unable to leave chamber 5 during actuation (it cannot flow through throttle 10 and is held in place by a membrane 6).” Ex. 1002 ¶ 212. While that may be so, neither Bosch nor its expert explains how membrane 6 maintains the constant dimensions of the purported cylindrical space, i.e., constant width, unchanging shape, and constant fluid thickness. See id. ¶¶ 208, 222. Rather, the conclusions of Bosch and its expert are unsupported by the cited passages in Klügl and the reference as whole. In contrast, Westport’s expert explains that “membrane [6] will tend to deform inward where it contacts the drive piston and bulge outward where unconstrained in the annular area between the edge of the drive piston and the wall of the transmission module in order to accommodate the volume of the fluid contained therein.” Ex. 2004 ¶ 52. Said another way, Westport’s expert considers that only a portion of membrane 6 bears against drive piston 6, while the remaining portion is left “unconstrained.” Id. ¶ 51. As a result, the unconstrained portion of membrane 6 will experience pressure from the fluid within pressure chamber 5, but will not contact piston 3. Id. The testimony of Westport’s expert’s is consistent and better supported by the disclosure of Klügl while the testimony of Bosch’s expert is incomplete and does not fully account for how membrane 6 functions in Klügl’s actuator assembly. See Ex. 1003 ¶¶ 207–215, 218–222. Moreover, the Petition itself does not explicitly discuss Klügl’s membrane 6 with regard to claim 1(e). See Pet. 34–40. For these reasons, we find that Bosch’s arguments are incomplete and insufficiently developed to support its obviousness contentions for independent claim 1.” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 6,298,829 - Siemens Mobility, Inc., Ground Transportation Systems USA, Inc., Humatics Corp., And Piper Networks, Inc. v. Metrom Rail, LLCInstitution deniedPTAB · Jun 13, 2023 · IPR2023-00439 · APJ Neil T Powell · IPR · Institution
The Board denied institution for all challenged claims because Patent Owner statutorily disclaimed claims 1–30.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“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.” Thus, we shall not institute an inter partes review in this proceeding if Patent Owner has met the requirements of Rule 1.321(a) and disclaimed all challenged claims of the ’595 patent. Consistent with Patent Owner’s assertion, Office records reflect that Patent Owner filed its Disclaimer on April 18, 2023. Additionally, Patent Owner’s Disclaimer complies with Rule 1.321(a). Patent Owner’s Disclaimer is signed by “James Marchi, Chief Executive Officer” of “Metrom Rail, LLC.” Discl. 1. This meets Rule 1.321(a)(1)’s requirement that a disclaimer “[b]e signed by the patentee, or an attorney or agent of record.” Identifying the patent number as “10,179,595,” Patent Owner’s Disclaimer states “I hereby disclaim . . . complete claims . . . 1-30.” Discl. 1. This meets Rule 1.321(a)(2)’s requirement that a disclaimer “[i]dentify the patent and complete claim or claims, or term being disclaimed.” Patent Owner’s Disclaimer also states that “[t]he extent of my interest in said patent is . . . 100% Patent Owner (Reel 047644/Frame” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Additionally, by disclaiming claims 1–30 of the ’595 patent, Patent Owner does disclaim all challenged claims of the ’595 patent. Accordingly, we cannot institute an inter partes review of the ’595 patent. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential). III. ORDER For the reasons given, it is: ORDERED that the Petition is denied as to all challenged claims of the ’595 patent and no trial is instituted.” slip op. at 6
NonePatents in suitUS 10,179,595 - PTAB · Jun 5, 2023 · IPR2022-01437 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied SharkNinja’s rehearing request and left institution denied because the petition did not establish a reasonable likelihood of success on the Xia-Park obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“articulated why it would have been obvious to modify the recovery tank of Xia’s non-wet-filter vacuum to include a strainer basket like that shown in Park’s wet-filter water vacuum. Dec. 13.2 Based on review of the disclosure of Park, the Decision found that the strainer was used to help the wet-filter mechanism work. Id. at 8–10. The Decision noted that the strainer served its purpose at two times—during recirculation of the filtering water when in use and during draining of the filtering water when finished. Id. Thus, the Decision found that the strainer’s purpose was to solve problems unique to wet-filter vacuums. Id. at 11. The Decision found insufficient evidentiary support for Petitioner’s assertion that Park suggested its strainer would be useful in devices like Xia that did not have wet filters. Id. The Decision also found insufficient evidentiary support for Petitioner’s assertion that a person of ordinary skill in the art would nevertheless recognize that Park’s strainer could be useful in devices that did not have wet filters. Id. at 12–13. Accordingly, the Decision determined that the Petition did not meet the burden for institution. Id. at 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). However, we disagree that Petitioner has established the factual underpinnings required to support such a theory. Petitioner’s Request directs us to no evidence the Decision missed on this topic. As noted in the Decision, the expert testimony relies on Park or on other devices in which the strainer is used to prevent clogging of recirculation devices. Dec. 13, n.3. These devices teach no more than Park—strainers used to permit recirculation systems to operate without clogging. See id. The Petition did not identify sufficient evidence that would support a finding that a person of ordinary skill in the art would have recognized, before the date of invention, the obviousness of using Park’s strainer in Xia, a device that operates in a different way than Park. See KSR, 550 U.S. at 417 (noting a precondition of the application-of-a-known-technique rationale is that the technique used to improve a device improves the device “in the same way.”) (emphasis added).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“sense” reason to combine the references, premised on testimony alleging that debris dumped from a wet vacuum tank could clog the drain. Req. Reh’g. 11–12. Petitioner does not direct our attention to where this theory of unpatentability was raised; arguments not raised cannot have been overlooked. In any event, the expert testimony cited is not entitled to persuasive weight because it is not supported by sufficient evidence or technical reasoning. Xerox Corp. et al v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (Decision Denying Institution) (precedential). As explained in the Decision, Petitioner points to no evidence that there was a known problem of drain clogs when disposing of waste water from devices like Xia, nor does Petitioner’s expert explain the reasons why a person of ordinary skill in the art would have nevertheless recognized the problem and its solution. Dec. 12 (“Petitioner has not explained why it would have been obvious to modify Xia by borrowing features that are meant to solve problems unique to water-filter vacuum cleaners”), 13 n.3 (finding that Petitioner’s expert “does not provide an explanation of why a person of ordinary skill in the art would look to add a recirculation filter to devices that do not use recirculation”). Unless there is credible evidence showing otherwise, any perceived obviousness today is only apparent in hindsight. See, e.g., Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1376 (Fed. Cir. 2004) (“Prior knowledge in the field of the invention must be supported by tangible teachings of reference materials, and the suggestion to combine references must not be derived by hindsight from knowledge of the invention itself.”); see also Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1353 (Fed. Cir. 2013) (“an invention can often be the recognition of a problem itself”); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983) (holding that a proper obviousness analysis “precludes consideration of whether the invention would have been obvious . . . after learning all about the invention”).” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 11,185,205 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstitution deniedPTAB · Apr 12, 2023 · IPR2022-01561 · APJ Neil T Powell · IPR · Institution
The Board denied institution on claims 1–14 because the petition did not show a reasonable likelihood of success on the asserted obviousness grounds, and institution would be inefficient.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In claim 1, “server” first appears in limitation 1b’s recitation of “a server.” Ex. 1001, 21:27–28. Every subsequent mention of “server” in claim 1 recites “the server.” Id. at 21:37, 21:40, 21:48, 21:51, 21:53, 21:60. Thus, grammatically, each time claim 1 recites “the server,” it refers back to the same “server” as in all previous recitations. Accordingly, claim 1’s plain meaning refers to the same server each and every time it recites “server.” See Salazar v. AT&T Mobility LLC, --- F.4th ---, 2023 WL 2778774 *3–4 (Fed. Cir. Apr. 5, 2023) (explaining claim language reciting element with definite article refers to same element previously recited) (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008); Harari v. Lee, 655 F.3d 1331, 1341 (Fed. Cir. 2011)). Neither party argues that any reason exists to construe claim 1’s recitations of “a server” and “the server” differently from their plain meanings. See generally Pet.; Prelim. Resp. We construe every one of claim 1’s recitations of “server” as referring to the same server (the “same-server requirement”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23
- Other 314aInstitution denied discretionary otherInstitution denied
“functions (VTSAs) of the server 111, the server 130, and merchant server hosting the product database 121 into the same server.” Pet. 41. As explained above in Sections II.C.3.a–c, Petitioner fails to demonstrate a reasonable likelihood of establishing unpatentability of either of challenged independent claims 1 and 10 or any of challenged dependent claims 2–4, 6, 8, 9, and 11–14. Considering this, to the extent Petitioner’s arguments and evidence may demonstrate a reasonable likelihood of prevailing on its challenge of dependent claim 5 as allegedly obvious over Fletchall and Xavier, we do not find that instituting inter partes review would use the Board’s or the parties’ resources efficiently. See 35 U.S.C. 316(b).” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstitution deniedPTAB · Apr 12, 2023 · IPR2022-01471 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–6 were unpatentable as obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“timely filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Based on our review of the record, we conclude that Petitioner is not reasonably likely to prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“demonstrate that Watanabe describes the step of “importing, by the second application, the order from the state container.” Prelim. Resp. 22–35. Petitioner identifies Watanabe’s nonvolatile memory 83, including various “areas” 87–89, as the claimed “state container” from which the second application imports an order including item information and a unique identifier. Pet. 15, 23–24 (citing Ex. 1002 ¶¶ 143, 170–175). For the importing step itself, Petitioner contends that Watanabe describes retrieving “purchased merchandise information from the application area” (i.e., the claimed state container) “as shown in annotated Figure 29,” which we reproduce below.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“not disclose this step. Pet. 63. Petitioner appears to identify Watanabe as describing importing the order from the state container using a unique identifier. Id. (citing Ex. 1005 ¶¶ 203, 204; Ex. 1002 ¶¶ 397, 398). First, Petitioner fails to account for its reliance on O’Hagan as describing the “state container” and “first application” and fails to explain how and why an ordinarily skilled artisan would combine teachings of O’Hagan and Watanabe to perform the claimed second importing step. Second, Petitioner unpersuasively argues that: “Having considered Watanabe, a POSITA would have been motivated to configure the “running total program,” like that disclosed by the O’Hagan-Giordano combination, to import an order from a state container, like that disclosed by Watanabe, to allow the customer complete a transaction for an item at the POS terminal.” Pet. 64 (citing Ex. 1005 ¶¶ 204, 216, 217; Ex. 1002 ¶ 401). Patent Owner argues, and we agree, that O’Hagan’s running total program plays no role in completing a transaction at a point-of-sale terminal and thus an ordinarily skilled artisan would have no reason modify that program to use Watanabe’s method of importing an order from a state container. Prelim. Resp. 54–56 (citing Ex. 1008 ¶¶ 31, 98, 99, 108–110, Fig. 15). For all these reasons, we find that Petitioner has failed to demonstrate a reasonable likelihood of establishing that the combined teachings of O’Hagan, Watanabe, and Giordano render claim 1 unpatentable as obvious. Because claims 2–6 depend ultimately from claim 1, Petitioner also fails to demonstrate a reasonable likelihood of establishing that claims 2–6 are obvious. F. Exercise of Discretion Under 35 U.S.C. § 325(d)” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Because we have determined that Petitioner fails to demonstrate a reasonable likelihood of establishing that any claim of the ’133 patent is unpatentable, we need not reach Patent Owner’s argument that we should exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. Accordingly, we express no opinion on the issue.” slip op. at 17
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,121,133 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution denied for claims 1–8 because the petitioner did not show the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our decision on institution (Paper 9, “Dec.” or “Decision”), we determined that Petitioner failed to show a reasonable likelihood of prevailing with respect to any of the Challenged Claims and denied institution of inter partes review. Petitioner filed a timely Request for Rehearing in which it asks that we institute inter partes review of the Challenged Claims. Paper 10, 1 (“Reh’g Req.” or “Request”). For the reasons that follow, we deny Petitioner’s Request.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“to “then place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Pet. 19; Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 71, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to and observed or expected position. b) “The Board’s analysis ignores common sense.” Reh’g Req. 4. Petitioner contends that the Board ignored common sense, as “at some point a POSA necessarily would have observed some species of bird flying near some perimeter walls within some building.” Reh’g Req. 4; see also id. at 6 (“It was common sense that a POSA would eventually observe a bird near a perimeter wall and place Brugh’s capture device accordingly.”), 7 (“[T]he Board . . . substitutes a rigid review of the prior art’s disclosure for common sense. . . .”)). This argument is unavailing. “[W]hile ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016). As explained above, Petitioner’s argument discounts the inventor’s discovery, in which he spent “countless hours” before discovering that birds fly along the perimeter wall of a building’s interior. Ex. 2001 ¶ 16. Further, as discussed above, Brugh does not instruct nor teach a POSA to observe flight patterns and determine or adjust the locations of the nets accordingly. We are not persuaded that the inventor’s discovery was merely “common sense,” and if it was, Petitioner should have submitted sufficient evidence to support such a finding. See Arendi, 832 F.3d at 1363. As explained in our Decision, Petitioner did not. See, e.g., Dec. 32 (“Petitioner provides insufficient evidence that bats or other flying animals are likely to fly ‘at or proximate to a perimeter wall and at or near the ceiling’ such that a POSA would find it obvious to place a net at or proximate to the perimeter of a wall within a building”). A request for rehearing under 37 C.F.R. § 42.71(d) is not an opportunity for Petitioner to simply reargue issues we previously addressed.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Owner’s expert, Mr. Tolley, is the inventor of the ’683 patent. We considered this fact but, nevertheless, found Mr. Tolley’s testimony more persuasive than Dr. Chamberlain’s testimony. We considered the provided evidence of Mr. Chamberlain’s declaration and the support thereof and found insufficient evidentiary support for why a POSA would place at least one net at or proximate to the perimeters and at or near the ceiling of the structure. Dec. 32 (citing Ex. 1004 ¶¶ 71, 72). Id. at 33. As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). Dr. Chamberlain’s testimony that at least one net would reduce the flying area was not supported by any evidence. Dec. 34. As such, Dr. Chamberlain’s testimony was afforded little weight. 37 C.F.R. § 42.65(a).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,064,683 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- BurdenInstitution denied meritsInstitution denied
“Petitioner’s argument does not give enough credit to the inventor’s discovery. Mr. Tolley, the inventor, testified that he “spent countless hours monitoring bird flights and patterns within Walmart’s facilities and other indoor structures, focusing not only on where birds typically roosted in the facilities, but also where and how they flew within the enclosures . . . and experimenting with various placements of nets based on [his] observations.” Ex. 2001 ¶ 16. We do not find Petitioner’s citation to the inventor’s testimony, in which the inventor testifies to having “spent countless hours” working on his discovery, to support Petitioner’s argument that the inventor’s discovery would have been obvious based on Brugh’s “instruct[ions to] a POSA to observe the ‘flight patterns’ of these birds” and to “place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 32, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to an observed or expected position.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“been obvious to place at least one net ‘along a perimeter wall . . . in response to observing flight patterns in those locations’ is premised on the alleged fact” that bats and other animals tend to roost in protected locations. Dec. 36 (citing Pet. 18). We then addressed Mr. Chamberlain’s declaration and the support thereof and found insufficient support for his testimony that birds would fly or roost “in or along the perimeter of a wall within a building or structure.” Id. at 36–37 (citing Ex. 1004 ¶¶ 32, 33; Ex. 1018, 81, 85.) As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The first reason was not written as observing flight patterns or, alternatively, expecting flight patterns, but as one reason resulting from “observing flight patterns,” premised on the tendency of birds to roost in a protected, expected location, such as, ostensibly, along the inside perimeter wall of a building. The second reason was that the placement of the nets along a perimeter wall and in another location would shrink the bird’s flying area and thus improve capture. The third reason was, ostensibly, that having more nets, i.e., increased net density, would increase the capture rate. The Decision addressed the first argument regarding observing flight patterns at pages 36–37, the second argument at pages 37–38, and the third argument at pages 38–39.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,729,108 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Rehearing
The Board denied Meridian’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s fourth sub-argument is not persuasive. As explained in our Decision, Dr. Chamberlain’s testimony that birds would fly along the inner perimeter of a building is not supported by evidence. Dec. 18–19. As such, his testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
§ 103 obviousnessPatents in suitUS 10,251,374
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.