- Apple Inc. v. Paul PoniatowskiInstitutedPTAB · Oct 7, 2024 · IPR2024-00731 · APJ Jennifer S Bisk · IPR · Institution
The Board instituted review of claims 1–6, 8–13, 15–20, and 22–27 based on a reasonable likelihood that Wang, Dua, and Yong render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–6, 8–13, 15–20, and 22–27 of the ’578 patent on the sole ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Bederson Decl. ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. To the extent necessary, and for purposes of this Decision, we accept this assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“scanner, reader, or camera” that is aimed at a barcode or special code of a product, the price of which is then added to the retail bill. Pet. 10–11 (quoting Ex. 1001, 7:45–49, 9:5–11). According to Petitioner, the Specification does not elaborate further on the meaning of the term “information concerning prices of goods.” Id. at 11. Petitioner, thus, interprets the term to encompass scenarios in which price information is received directly or indirectly. Id. Petitioner notes that during prosecution of the ’578 patent, the Examiner rejected this limitation over prior art, stating that prior art “sends the scanned bar code information to the server,” which “then preferably returns a description of the item and information,” and “[t]his item description and price information is displayed on the telephone’s display.” Id. at 12 (quoting Ex. 1002, 231). According to Petitioner, this is an example of indirectly receiving information concerning the prices of goods as it comes from a queried server, not from the item itself. Id. Petitioner notes that Patent Owner never disputed, and in fact, made statements supporting that these actions were encompassed by the claim limitation. Id. (citing Ex. 1002, 214). We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Thus, on this record, we preliminarily construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed.Cir.2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,270,578 - Google LLC v. Motion Offense, LLCInstitutedPTAB · Mar 6, 2023 · IPR2022-01313 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 19, 20, and 51 based on the asserted obviousness ground over Houston, Garcia, and Wu.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us. We understand the “at least” phrase to indicate that a POSITA would have a minimum of 2 years of experience in the field of software development and do not agree with Patent Owner that including such minimum makes the proposed definition improperly indefinite. For purposes of this Decision, we apply Petitioner’s statement as our definition of a POSITA.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“At this stage, we agree with Petitioner that the combination of Houston and Garcia teach the required synchronization of folder metadata. Given that the ’215 patent provides no explanation of what is meant by synchronizing folder metadata, we construe that requirement as encompassing synchronization of the metadata of files contained in a folder. Accordingly, based on the evidence and arguments currently of record, for purposes of institution, Petitioner has satisfied its burden for claim element 1o.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We agree that Patent Owner’s contention that Garcia is directed to actions taken by a single user at a single client device is inconsistent with Garcia’s description of a system “for enabling a user to synchronize, manage, and share files and folders across a plurality of client devices and a synchronization server.” Ex. 1006, Abstract. Nor are Patent Owner’s other attorney arguments persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not point to aspects of the cited references that meet this criterion. “[T]hat two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). In addition, Patent Owner’s arguments are unpersuasive as relying on an alleged inability to modify the specific implementations disclosed in Houston in light of Garcia. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“[c]ombining the teachings of references does not involve an ability to combine their specific structures”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 425) (“The test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.”). Patent Owner’s attorney arguments are not persuasive evidence that the proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, for purposes of this Decision, we find Petitioner cites” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“those raised in the Dropbox litigation, because Garcia is not included in that litigation. With respect to Patent Owner’s contention that “Petitioner deliberately decided not to do a full Sotera stipulation,”11 we highlight that in Sand Revolution II, the panel found Petitioner’s stipulation that it would not pursue in district court litigation the same grounds as those asserted in the IPR “mitigates to some degree the concerns of duplicative efforts” and “weighs marginally in favor of not exercising discretion to deny institution.” Sand Revolution II, LLC v. Continental Intermodal Group Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (June 16, 2020) (informative). Also, we disagree with Patent Owner’s contention that NXP USA does not allow stipulations after the Petition is filed. NXP USA states that “the only appropriate time for a petitioner to offer a stipulation . . . is prior to the Board’s decision of whether to institute review” (NXP USA, Paper 13 at 4), which is the case here. Under these circumstances, we find that factor 4 weighs against exercising discretion to deny institution.” slip op. at 47
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,044,215 - Facebook, Inc. / Whatsapp, Inc. et al. v. Uniloc 2017 LLCRehearing deniedPTAB · Jan 17, 2019 · IPR2017-01428 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the determination that claims 9–12, 14–17, 25, and 26 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 3
Claim constructionPatents in suitUS 8,995,433 - PTAB · Sep 6, 2018 · IPR2017-00221 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining its construction of “local network” and “external network”; it did not revisit whether Malik disclosed those limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 37 C.F.R. § 42.71(d). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“cannot be the differentiator between ‘local’ and ‘external’ networks” as alleged by Patent Owner.” Reh’g Req. 3. As we explained in our Final Written Decision, we construed the two terms to be relative. Final Dec. 10– 15. In other words, whether a network is “local” or “external” depends on the perspective of a particular device. We are not persuaded that Figure 5 indicates otherwise. In Figure 5, two networks are labeled “local” (i.e., network 204 and network 504), and one network (network 102) is labeled “Internet.” Ex. 1001, Fig. 5. From the perspective of IVM client 508, network 504 is local; however, from the perspective of IVM client 208, network 504 is external. This is consistent with the description of Figure 5, which states that IVM client 508 “may be located in a user’s residence and be connected to a local IP network 504,” which “can be a WiFi network or a local area network (i.e., LAN), which is also within the user’s residence.” Ex. 1001, 19:66–20:4. At the same time, the ’890 patent describes IVM client 508 as a “global IVM client.” Id. at 20:10–14. Therefore, we do not agree that our construction “yields a non-sensical understanding” of these terms. See Reh’g Req. 4.” slip op. at 4
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Owner’s proposed construction. Although Dr. Forys may have used the term “types” loosely to distinguish between local and external networks, we are not persuaded that he used that word in the same way Patent Owner is using it. See Reh’g Req. 6 (citing Ex. 1003 ¶ 56 (Dr. Forys stating that “[t]he variations among the independent claims are mostly related to different types of networks.”)). The word “type” is often used to distinguish things with different characteristics, and Patent Owner does not persuade us that, in the context of this case, the word references any particular characteristic of a network. Instead, we read Dr. Forys’s testimony as using the word “type” to distinguish between networks that differ solely based on the relative locations of the different networks. This is consistent with the rest of his testimony. See, e.g., Ex. 1003 ¶¶ 64–70 (Dr. Forys explaining his understanding of the difference between “external network” and “local network” to be solely based on the relative location of the networks). Fourth, as explained in our Final Written Decision, we give “little weight to” the quoted testimony of Mr. Easttom, in which he states that the terms are “analogous to the terms ‘private network’ and ‘public network’” because this testimony “is not explained or supported in any way.” Final Dec. 14 (quoting Ex. 2001 ¶ 24). We are not persuaded otherwise by Patent Owner’s quotation from the next paragraph of testimony in which Mr. Easttom discusses claim differentiation. Reh’g. Req. 6–7 (quoting Ex. 2001 ¶ 25 (“A POSA would understand from this explicit claim differentiation the” slip op. at 6
Claim constructionPatents in suitUS 7,535,890 - Arris International PLC / Pace Ltd. et al. v. Sony CorporationRehearing deniedPTAB · Jan 30, 2017 · IPR2016-00834 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Sony’s rehearing request, leaving institution in place because the “reproducing means” in claims 5 and 8 was not shown to be computer-implemented and need not include algorithmic structure.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party 1 Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, § 4(c), 125 Stat. 284 (2011), re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Because the ’676 patent has a filing date before the September 16, 2012, effective date of the statute, we refer to the pre-AIA version of 35 U.S.C. § 112. believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“reproducing means for reproducing the audio data of the channel designated by the default value stored in the storing means,” as recited in claims 5 and 8 of the ’676 patent (the “reproducing means” limitations). Inst. Dec. 12–16. In particular, we agreed with the parties that the reproducing means limitations are written in means-plus-function format pursuant to 35 U.S.C. § 112 ¶ 6 and that the function of the reproducing means is “reproducing the audio data of the channel designated by the default value stored in the storing means.” Id. at 10, 12–13 (citing Pet. 16; Prelim. Resp. 4). We also agreed with Petitioner’s identification of “synthesizer 11” and “controller 13” as being the corresponding structure disclosed in the specification for the reproducing means limitations. Id. at 12–13, 16. We disagreed, however, with Patent Owner’s assertion that the structure of the reproducing means must further include an algorithm disclosed in the specification, as would be required for a computer-implemented means-plus-function limitation. Id. at 13–14 (citing Prelim. Resp. 1, 2, 8). We concluded, therefore, that the reproducing means limitations are, accordingly, properly construed under 35 U.S.C. § 112 ¶ 6 to cover “a controller and a synthesizer, or the equivalent.” ANALYSIS In the Institution Decision, we determined that the ’676 patent discloses a controller and a synthesizer, neither of which is disclosed in the ’676 patent as being computer-implemented, as structure corresponding to the “reproducing means” recited in claims 5 and 8. Inst. Dec. 14–15. As we explained, “synthesizer 11 and controller 13 both are shown and described in the ’676 patent as discrete hardware elements that interface with other hardware elements of the described information reproducing devices.” Id. at 14. We determined, accordingly, that the reproducing means recited in claims 5 and 8 is not a “computer-implemented” means-plus-function term subject to “the legal rule that computer-implemented means-plus-function terms must be construed to include the corresponding algorithmic structure disclosed in the specification.” Id.; cf. Reh’g Req. 2. Contrary to Patent Owner’s contentions (Reh’g Req. 1–2), we did not determine in the Institution Decision that “unless a claim recites the terms ‘computer’ or ‘microprocessor,’ it is not computer-implemented”; that “the claimed controller is not a computer based solely on a word matching exercise”; or that the Board “is free to disregard the law on how computer-implemented means-plus-function terms are to be construed.” Patent Owner’s arguments in its Request for Rehearing do not persuade us of any error in our Institution Decision. slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because, on this record, we conclude that the reproducing means limitations of claims 5 and 8 are not properly construed to include “algorithmic structure,” we also disagree with Patent Owner’s further argument that “[b]ecause Petitioners failed to consider the algorithmic structure corresponding to the ‘reproducing means’ and thus failed to compare the ‘reproducing means’ as properly construed to the prior art for structural equivalency, the Board should have denied institution as to all claims with that term.” Id. at 10. We accordingly deny Patent Owner’s Request for Rehearing. Additionally, the Chief Administrative Patent Judge declines” slip op. at 8
Claim constructionPatents in suitUS 6,097,676 - Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.Rehearing deniedPTAB · Dec 6, 2016 · IPR2015-00826 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–8 unpatentable, and granted sanctions for Petitioner’s failure to timely update real-party-in-interest notices.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. REQUEST FOR REHEARING On rehearing, the burden of showing that the Decision should be modified lies with Patent Owner, the party challenging the Decision. 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.” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“With respect to Southern Company Gas, Petitioner’s assertion ignores the fact that Southern Company Gas did not result merely from a name change, but rather also from a merger with AMS Corp. that occurred before the name change. See Paper 34, 3. In the related IPR, the Board specifically found that AGLR is a real party in interest, and it follows that the merged entity is also a real party in interest. Atlanta Gas, slip op. at 13 (PTAB Jan. 6, 2015) (Paper 88). The merger with AMS Corp. has meaningful effects that impose an obligation on Petitioner to apprise the Board that Southern Gas Company is a real party in interest. Petitioner’s failure to file timely the updated mandatory notice is especially significant in light of the central nature that the issue of AGLR’s status as a real party in interest played in the related IPR. See Atlanta Gas, Paper 87, 46:6–9 (“The problem that we have, and you will remember, we had to fight like tooth and nail to get these documents. At every turn there was an objection to producing documents related to the real party in interest issue or the privity issue.” (statement by Patent Owner at oral hearing in the related IPR)). With respect to The Southern Company, we do not credit Petitioner’s argument that The Southern Company is not a real party in interest in light of Petitioner’s explicit notification to the contrary. Petitioner cannot have it both ways, identifying The Southern Company as a real party in interest (even “out of an abundance of caution”) to ensure compliance with 35 U.S.C. § 312(b), while simultaneously maintaining that it is not a real party in interest to evade the obligations of 37 C.F.R. § 42.8(a)(3). In light of these various considerations, we conclude that Petitioner has performed conduct that warrants a sanction.” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“be to expunge the Decision and the request for rehearing, dismiss the Petition with prejudice, and order [Petitioner] to pay compensatory expenses and attorney fees to [Patent Owner].” Mot. 5. We disagree that this proposed sanction is proportionate to the harm suffered by Patent Owner. In particular, as Petitioner contends, the harm suffered by Patent Owner is limited because “the estoppel provisions apply to the petitioner and ‘the real party in interest or privy of the petitioner.’” Opp. 6 (citing 35 U.S.C. § 325(e)(1)) (emphasis by Petitioner). There is no requirement that a petitioner identify all of its privies in a petition, and Patent Owner’s ability to address whether The Southern Company was a privy that would give rise to estoppel was not impacted by Petitioner’s original failure to file an updated mandatory notice. Furthermore, “[a] sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated.” 37 C.F.R. § 42.11(d)(4) (emphasis added). We have considered, but are not persuaded by, Patent Owner’s argument that “[a]ny remedy short of termination with prejudice would encourage future petitioners to try to suppress the identification of real parties-in-interest.” Mot. 6. A more limited sanction will have sufficient deterrent effect. We determine that an appropriate sanction, proportionate to the harm suffered by Patent Owner, is to award costs and fees incurred in association with this proceeding from the time after issuance of the Final Written Decision until the date of this Decision. 37 C.F.R. § 42.12(b)(6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“Although we agree with Patent Owner in the abstract that the “ordinary and customary meaning” standard applied to expired patents requires that evidence be viewed through the eyes of one of ordinary skill in the art, Patent Owner stretches that principle too far. See id. at 9–10. “[A] claim construction analysis must begin and remain centered on the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 382 F.3d 1111, 1116 (Fed. Cir. 2004). Patent Owner asks us to deviate far from this cardinal principle by incorporating features of the Fisher S254 regulator that are not recited in the claims themselves, under circumstances in which the Fisher S254 regulator is not explicitly identified as such anywhere in the specification of the ’029 patent. “Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). This is particularly the case when the standard we are obliged to apply does not afford Patent Owner a presumption of validity of the patent’s claims. For these reasons, we are not persuaded that we misapprehended or overlooked any aspect of Patent Owner’s claim-construction arguments. Nor are we persuaded that Patent Owner’s evidence in support of those arguments was inadequately considered.” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 5,810,029 - Under Armour, Inc. v. Adidas AGRehearing deniedPTAB · Feb 29, 2016 · IPR2015-01532 · APJ Justin Busch · IPR · Rehearing
The Board denied Under Armour’s rehearing request, leaving in place the denial of institution on claim 17 for anticipation by Bouve and, alternatively, Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 37 C.F.R. § 42.71(d). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner argues it just needs to show “that Kim discloses storing data that falls within the scope of the plain words ‘a length of the route.’” We agree with Petitioner that the plain meaning of “a length of the route” is the appropriate construction because, on this record, we find no reason to give the phrase a special meaning. The Petition, however, did not present persuasive argument that the plain meaning of “a length of the route” encompasses Kim’s total altitude distance.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“users needed to manually estimate route distances between points of interest. Pet. 17–18 (quoting Ex. 1004, 1:28–35). The Petition asserted “Bouve improved upon the prior art system by maintaining route length information in a database.” Id. at 18 (emphasis added). In support of that assertion, the Petition pointed to Bouve’s disclosure that “The processors . . . compute the mileage indication, along the retrieved travel route(s), for each individual item of travel information which is retrieved from the data bases,” and concluded that Bouve computes mileage information along a route and route length between points of interest using route length information stored in a database. Id. (quoting Ex. 1004, 8:18–22 (underlining added). The Petition, however, failed to identify any disclosure in Bouve that “route length information” is maintained in a database. The Petition also argued Bouve discloses recommending a route “based on that stored length of a route” because Bouve allows a user to select the shortest route between two points. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 8,652,009
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.