- PTAB · Aug 25, 2025 · PGR2025-00028 · APJ George R Hoskins · PGR · Institution
The Board instituted PGR on claims 1–20 and all asserted grounds after finding claim 1 more likely than not unpatentable under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a post-grant review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute a post-grant review as to claims 1–20 of the ’423 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “an educational background of, or practical experience equivalent to, a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems,” where “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 20 (citing Ex. 1003 ¶¶ 20–26). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’423 patent and the types of problems and solutions described in the ’423 patent and cited 2 Petitioner states that it “takes no position on the proper priority date for the [c]hallenged [c]laims” and “uses the earliest possible priority date claimed, December 18, 2013,” for purposes of its asserted grounds. Pet. 14. prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, 1:42–2:21 (stating that “[t]he present application relates to the field of payment processing systems” and describing the functionality of payment accepting units in the “Background” section).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Interpretation We interpret each challenged 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), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b). Petitioner states that, “for purposes of [its] Petition, the Board need not construe any claim terms to resolve the parties’ disputes, and the claims should be given their ordinary and customary meaning.” Pet. 20. Patent Owner agrees that “[n]o constructions are necessary” to decide the issues disputed by the parties. Prelim. Resp. 2–3. We conclude that no express interpretation of any claim term is necessary to determine whether to institute a post-grant review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 8
- PTAB / AIA Trials › §315(e) estoppelNot reached
“For the reasons explained below, we conclude, on the merits and based on the current record, that Petitioner has shown that it is more likely than not that claim 1 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101. See Pet. 77–84. Accordingly, we need not determine at this time whether collateral estoppel applies based on the Board’s decision in PGR2021-00093. The parties, however, should address the issue in their papers during trial, with citations to relevant authority. In particular, the parties are encouraged to address (1) how the collateral estoppel requirement that the issue be “identical to one decided in the first action” applies in the context of an asserted ground under 35 U.S.C. § 101, and (2) the parties’ apparent disagreement as to whether collateral estoppel may be applied in such circumstances on a “limitation-by-limitation basis.” See Pet. 72, 75 (quoting Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022)); Prelim. Resp. 20–21; see also Kroy IP Holdings, LLC v. Groupon, Inc., – F.4th –, No. 2023-1359, 2025 WL 2178321, at *4 (Fed. Cir. Aug. 1, 2025) (Dyk, J., dissenting) (“In subsequent Board proceedings, it is well established that collateral estoppel applies to claims adjudicated by the Board to be unpatentable and also to ‘related claims that present identical issues of patentability,’ i.e., patentably indistinct claims. . . . ‘It is well established that patent claims need not be identical for collateral estoppel to apply.’” (citing MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1377 (Fed. Cir. 2018); Google, 54 F.4th at 1381)).” slip op. at 12
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo · Bilski · Berkheimer · Enfish · Electric PowerPatents in suitUS 11,972,423 - PTAB · Aug 25, 2025 · PGR2025-00027 · APJ George R Hoskins · PGR · Institution
The Board instituted PGR of claims 1–20 on all petitioned grounds, finding claim 1 more likely than not ineligible under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Legal Standards — Petitioner’s Burden In a post-grant 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) (discussing 35 U.S.C. § 312(a)(3), which is identical to 35 U.S.C. § 322(a)(3) in requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”). This 2 Pub. L. No. 112-29, 125 Stat. 284 (2011). burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’920 patent “would have had an educational background of, or practical experience equivalent to, a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems.” Pet. 20; Ex. 1003 ¶¶ 20–26. Further: “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 20; Ex. 1003 ¶ 22. Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See Prelim. Resp. generally. Based on the record presented, including our review of the ’920 patent and the types of problems and solutions described in the ’920 patent and cited prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, 1:42–2:21 (stating “[t]he present application relates to the field of payment processing systems” and describing the functionality of payment accepting units in the “BACKGROUND” section).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues “the Board need not construe any claim terms to resolve the parties’ disputes.” Pet. 20. Patent Owner argues: “No constructions are necessary to deny institution because denial is warranted for numerous reasons that do not depend on claim construction.” Prelim. Resp. 3. However, as discussed below, several of Patent Owner’s arguments seeking to distinguish claim 1 from Low rely on underlying claim construction positions. Except as discussed below in connection with those arguments, we determine no explicit construction is needed to resolve the parties’ controversy as to whether institution should be granted here. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 12
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionInstituted
“We determine Petitioner has made a sufficient showing for Step 2A, Prong 1 based on the current record. Petitioner addresses each of limitations [1.2]–[1.14] and explains how they support Petitioner’s contention that the claim, as a whole, is directed to the alleged abstract idea. See Pet. 80–84. For example, Petitioner notes specifically how limitation [1.2], reciting “identifying one or more payment accepting units,” pertains to identifying a merchant, and how limitations [1.6], [1.7], and [1.9] recite user interaction using the mobile device that enables the completion of a purchase. See id. Petitioner thus shows sufficiently how claim 1, by virtue of the limitations reproduced above,5 recites the concept of “identifying a merchant and enabling completion of a purchase from the merchant.” Id. at 80.” slip op. at 21
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · Electric PowerPatents in suitUS 11,966,920 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 9, 2024 · IPR2024-00633 · APJ Meredith C Petravick · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Brown and Ho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’993 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’993 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“presented to the Office.” Prelim. Resp. 31– 36. In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 8
- BurdenDecided for petitioner
“At this stage of the proceeding, Patent Owner provides no sufficient evidence to rebut Dr. Cameron’s testimony as to what a POSITA would have known from Guoxin and Ho’s drawings and as to the alleged motivations to combine Guoxin and Ho. Based on Petitioner’s evidence and analysis, and taking into account the Preliminary Response, at this stage of the proceeding, we determine that the information in the Petition shows a reasonable likelihood that claim 1 is unpatentable over Guoxin and Ho.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“A [person of ordinary skill in the art (“POSITA”)] in the field to which the ’993 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. Prelim. Resp. 16. Petitioner’s declarant Dr. Cameron asserts that: A [POSITA] with respect to the subject matter of the ’993 patent at the time of the priority date, January 27, 2014, would have had an undergraduate degree in mechanical engineering, or other technical training in product design or equivalent work experience. This person would also possess at least one year of experience in developing and/or evaluating mechanical aspects of fluid systems. Ex. 1004 ¶ 29. For purposes of this Decision, we adopt Patent Owner’s proposed definition of a POSITA, as it is consistent with the ’993 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Dr. Cameron.” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,139,993 - Fluidmaster, Inc. v. Danco, Inc.InstitutedPTAB · Sep 9, 2024 · IPR2024-00634 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1–24 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Brown and Ho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’105 patent. Accordingly, we institute an inter partes review of claims 1–24 of the ’105 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (“IDS”), in the prosecution history of the challenged patent. Id. at 7–8. Here, it is not disputed that Brown and Bjerke were listed on an IDS and, thus, were previously presented to the Office. Pet. 12, n.4; Prelim. Resp. 33. It is also not disputed that Guoxin, Ho, Calmettes, Hall, Kimber, and Schuster were not previously presented to the Office. See Prelim. Resp. 33. Patent Owner argues that Guoxin, Brown, and Ho are cumulative of a reference, DeMarco9, that was previously presented to the Office and relied upon to reject the claims. Prelim. Resp. 33 Patent Owner argues that Guoxin, Brown, and Ho are cumulative to DeMarco because all of the “references are completely silent as to whether the purported ‘extended portion’ is integrally molded with the purported body of the toiled fill valve.” Id. at 33–36. Patent Owner’s arguments are unpersuasive. As can be seen from our discussion of Ho in our analysis below, on this record, we are persuaded that Petitioner has sufficiently shown for purposes of institution how Ho allegedly teaches the claimed integrally molded extended portion. We, thus, are not persuaded that at least Ho is cumulative of DeMarco. Grounds 1–4 rely upon combinations of prior art that include Ho. Ground 5 is based upon Schuster, which was not previously presented to the 9 U.S. Patent No. 5,708,991 (Ex. 1024). Office. Accordingly, we determine that discretionary denial is not warranted. Because we determine that part one of the framework is not satisfied, we need not turn to part two to determine whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“On this record, we are persuaded by Patent Owner that the claim phrase “integrally molded with” should be construed to mean “molded together as a single structure” and to exclude items created as separate pieces and attached together later. Patent Owner’s construction is consistent with the plain language of the claims, which requires the extended portion be “integrally molded with” the body and not just the extended portion be integral with the body. Further, we determine that Patent Owner’s construction is consistent with the ’105 patent, which discloses that “the bowl fill valve 109 may be molded as a portion of the toilet fill valve 100 or it may be snapped or clamped into place, or it may be attached to the toilet fill valve 100 in some other manner, etc.” Id. at 2:23–26 (emphasis added). At this stage of the proceeding, we construe “integrally molded with” to mean molded together as a single structure.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner next disputes that a POSITA would have combined Guoxin and Ho and argues that Petitioner’s alleged rationale to combine Guoxin and Ho as conclusory and lacks sufficient support. Prelim. Resp. 40–42. We determine that Petitioner has sufficiently articulated a motivation to combine Guoxin and Ho to support institution. Petitioner asserted motivation to combine — improved strength and integrity of connection — is supported by the testimony of Dr. Cameron. Dr. Cameron testifies: “Integrally molding the extended portion of Guoxin with the inlet device as taught by Ho would be advantageous in improving the strength and integrity of the connection, and to make it easier to manufacture and assemble.” Ex. 1004 ¶ 125. Based on the record at this stage of the proceeding, we determine that Petitioner has sufficiently shown that the combination of Guoxin and Ho teaches element 1B.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,103,105 - PTAB · May 12, 2022 · IPR2022-00074 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–13 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all other papers and supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Resp. 16; Sur-reply 1. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of follow-on petitions or multiple petitions challenging the ’732 patent. Reply 1; Sur-reply 1. There has only been a single petition for inter partes review filed against the ’732 patent. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are:” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“arguments are persuasive. First, we are persuaded that the ’732 patent is not entitled to priority to the filing date of the ’085 application and the ’689 application because the ’085 application and the ’689 application do not share any common inventors with the ’732 patent. See 35 U.S.C. § 120 (2018) (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”). The ’732 patent names Jared Oehring, Brandon N. Hinderliter, and Arthur Baron as inventors. Ex. 1001, code (72). The ’085 application and the ’689 application name Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1013, code (72); Ex. 1027, code (72). We have reviewed the ’085 application and the ’689 application and determine, on this record, that the applications fail to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations recited by independent claims 1 and 8: “a weight monitoring system,” (Ex. 1001, 9:63, claim 1); “a proppant dispensing system . . . selectively activated by the information handling system,” (id. at 10:1–3, claim 1); “sensing an amount of proppant” (id. at 10:44, claim 8); “comparing the amount of proppant,” (id. at 10:46 claim 8); and “regulating a flow of proppant from the proppant storage container” (id. at 10:49, claim 8).” slip op. at 5
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,254,732 - PTAB · Feb 17, 2022 · IPR2021-01315 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“We are not persuaded by Patent Owner that the circumstances here warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Sur-reply 1–2. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of followon petitions or multiple petitions challenging the ’500 patent. Prelim. Reply 3; Prelim. Sur-reply 1. There has only been a single petition for inter partes review filed against the ’500 patent. Prelim. Reply 3. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314. Patent Owner contends that we should exercise the Director’s discretion to deny institution for a number of reasons, for example, because Petitioner’s challenges to Patent Owner’s patents are allegedly “an attempt to weaponize the IPR process, and impose increased costs and leverage on USWS’s valuable technology in an attempt to overtake this sector of the market.” Prelim. Resp. 15. We have considered all of Patent Owner’s allegations and are not persuaded that exercising discretion is warranted. Patent Owner’s allegations are not supported by sufficient evidence and, to the contrary, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation. Petitioner expresses reasonable concern that Patent Owner may initiate additional district court litigation regarding its as yet unasserted patents. See Prelim. Reply 2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Although Broussard was presented to the Office, we find that the first part of the Advanced Bionics framework is not satisfied, because the Petition does not assert Broussard alone. Rather, Broussard is asserted in combination with Kaarstad in every ground set forth in the Petition. Pet. 14. Kaarstand was not presented to the Office during prosecution. Pet. 14. Patent Owner asserts that Kaarstad is cumulative of Seiver and Kristensen; on the record before us, we agree with Petitioner that it is not. Prelim. Resp. 27–30, Prelim. Reply 5. Specifically, we agree with Petitioner that “Kaarstad includes a power distribution network with two switchgear units and a tiebreaker coupled therebetween.” Prelim. Reply 5 (citing Pet. 24–29). We further agree with Petitioner that these elements disclosed in Kaarstad (i.e. two switchgear units and a tiebreaker coupled therebetween) are the same elements that Patent Owner used to overcome the Examiner’s rejection based on Seiver. Prelim. Reply 5; Ex. 1004, 39. In addition, we agree with Petitioner that Kristensen was never relied on by the Examiner during the underlying prosecution, and that Kristensen merely discloses a single switchgear as opposed to the two switchgears and tiebraker required by the claims. Prelim. Reply 5; Ex. 2002, Abst., 7:52. For these reasons, we determine that Kaarstad is not cumulative of Siever or Kristensen. Thus, the first part of the Advanced Bionics framework is not satisfied because the combination of references asserted in the Petition was not presented previously to the Office. Under the circumstances presented here, we determine that exercising discretion to deny the Petition under § 325(d) is unwarranted.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claims 1–11 and 13–19 of the ’500 patent are obvious over Broussard and Kaarstad.” slip op. at 31
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“arguments are persuasive. Specifically, we are persuaded that the ’500 patent is not entitled to priority to the November 16, 2012, filing date of the ’085 application because the ’500 patent and the ’085 application do not share any common inventors. See U.S.C. § 120 (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor”). The ’500 patent names Jared Oehring and Brandon N. Hinderliter as inventors. Ex. 1001, code (72). The ’085 application names Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). We have reviewed the ’085 application and determine that the ’085 applications fails to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations of independent claims 1 and 14: “at least two switch gear units” (Ex. 1001, 15:44, claim 1; id. at 16:63, claim 14); and “tie breaker electrically coupled between each of the at least two switchgear units” (id. at 15:48–49, claim 1; id. at 16:66– 67). See generally Ex. 1005. Accordingly, on this record, we are persuaded that the effective filing date of the ’500 patent is April 15, 2016.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,893,500 - PTAB · Feb 16, 2022 · IPR2021-01238 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that at least one claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG”) 64 (Nov. 2019) (“The Board will not institute on fewer than all claims or all challenges in a petition.”);1 see also AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019) (“[I]f the Board institutes an IPR, it must . . . address all grounds of unpatentability raised by the petitioner.”).” slip op. at 2
- Other 314aDenied
“This case is unlike other situations in which the Board has exercised its discretion to deny institution. Instead, Patent Owner asks us to deny institution because Petitioner has filed petitions challenging several of Patent Owner’s patents that are not asserted in district court litigation, arguing that the filing of this many petitions by one petitioner against one patent owner is contrary to the purposes of the AIA. Prelim. Resp. 12–23. Patent Owner’s arguments fail to persuade us to exercise our discretion to deny institution in this case. For each of Patent Owner’s patents, Petitioner has filed only one petition. We do not see this action as being contrary to the purposes of the AIA. See, e.g., Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (designated precedential) (citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011)) (noting that the AIA is “not to be used as [a] tool[] for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). Moreover, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation, and Petitioner expresses reasonable concern that Patent Owner may initiate additional litigation regarding its asyet unasserted patents. See Prelim. Reply 2. Accordingly, for the foregoing reasons, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to claim priority to an early-filed U.S. patent application, the earlier-filed application must disclose the invention claimed in the later-filed application “in the manner provided by section 112(a) (other than the requirement to disclose the best mode)” and the later-filed application must “name[] an inventor or joint inventor in the previously filed application.” 35 U.S.C. § 120. For the reasons discussed below, we agree with Petitioner that, on this preliminary record, the ’882 patent is not entitled to claim priority to the filing date of the ’689 application. Each of the independent claims of the ’882 patent recites a first switch gear positioned between a source of electricity and a transmission line and a second switch gear positioned between the transmission line and an electric motor. Ex. 1001, 8:55–57, 9:19–22. “Switchgear” is “[a] general term covering switching and interrupting devices and their combination with associated control, instrumentation, metering, protective and regulating devices.” Ex. 1029, 7. The ’689 application does not disclose a switch gear. See generally Ex. 1004.2 Nor does the ’689 application disclose any switching or interrupting devices or any transformers. See generally id. Therefore, we agree that, on this preliminary record, the ’689 application does not disclose the invention claimed in the ’882 patent in the manner provided by 35 U.S.C. § 112(a). Additionally, the ’689 application lists Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). The ’882 patent lists Jared Oehring and Brandon Neil Hinderliter as inventors. Ex. 1001, code (72); Ex. 1003, 808. Therefore, we agree that, on this 2 Exhibit 1004 is the publication of the ’689 application. Ex. 1004, code (21). preliminary record, the ’882 patent does not name an inventor or joint inventor of the ’689 application. Accordingly, for the foregoing reasons and on this preliminary record, we agree with Petitioner that the ’882 patent is not entitled to claim priority to the filing date of the ’689 application.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,526,882 - PTAB · Dec 17, 2021 · PGR2021-00093 · APJ Meredith C Petravick · PGR · Institution
The Board instituted PGR on claims 1–25 on all petition grounds after finding the § 101 challenge to claim 1 met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv sets forth the factors that we weigh in determining whether to exercise our discretion to deny institution of the post-grant patent review proceeding here under 35 U.S.C. § 324(a). See Fintiv, Paper 11, 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. “[T]he Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Because the claims at issue here, in particular claim 1, differ from the March 2015 amended claims of the ’859 patent and the August 2014 amended claims of the ’296 patent (see, e.g., Ex. 1001, 46:59–47:34), we are not persuaded that the cited prosecution history equally applies to the claims here. In particular, we note that claim 1, which we discuss in the analysis below, does not recite a first transceiver corresponding to a short-range communication mode and a second transceiver corresponding to a long-range communication mode, and does not specify whether a first or second transceiver perform certain actions recited in the claim. Id. As Patent Owner points out (Prelim. Resp. 19), claim 1 of the ’614 patent more but claim 1 does not specify whether it is long or short range and merely recites it being used to establish a connection for the exchange of information between a mobile device and a payment accepting unit in some of the claimed steps. Id. Thus, considering Becton, Dickinson factors (a) and (d), we are not persuaded that the same or substantially the same arguments concerning § 101 were previously presented to the Office. Because we determine that the same or substantially the same arguments with respect to § 101 were not previously presented to the Office, we need not address part two of the Advanced Bionics framework with respect to those arguments.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person having ordinary skill in the art (“POSITA”)] would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). 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 ’614 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionInstituted
“Ex. 1001, 46:61–47:34. Based on the current record, we are persuaded that the limitations above recite the concept of identifying a merchant and making a purchase from the merchant. In particular, claim 1 recites steps for identifying payment accepting units (i.e., a merchant) — limitations 1.2– 1.7.1. Claim 1 also recites steps for conducting the purchase —limitations 1.7.2–1.11. Based on the current record, we find that identifying a merchant and making a purchase from the merchant is a commercial interaction, a sales activity. It falls within the enumerated “[c]ertain methods of organizing human activity” grouping of abstract ideas set forth in MPEP § 2106.04(a)(2).” slip op. at 28
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Berkheimer · Phillips · NautilusPatents in suitUS 10,891,614 - Epicor Software Corporation v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Rehearing
The Board denied both rehearing requests, leaving the institution of § 101 review of claims 1, 5, 8, 19, 20, and 27–31 and denial of prior art grounds unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“D. Conclusion We are not persuaded of an abuse of discretion either by Patent Owner or Petitioner. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that each Request for Rehearing is denied.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board instituted covered business method patent review of the ’201 Patent based upon the following ground, combined from both proceedings: Ground Prior Art Challenged Claims § 101 n/a 1, 5, 8, 19, 20, and 27–31 Papers 17 and 13 (’02 Decision and ’30 Decision, respectively). The Board did not institute covered business method patent review upon any prior art grounds. See ’02 Decision 6 and ’30 Decision 4–5 (listing grounds proffered by Petitioner).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 27 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the date element level”). However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” ’02 Decision 20. See also Pet. 20. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Although Atalla discloses authorization to a file based on information about the file, Ex. 1007, 3:27–58, Petitioner has not shown that the information about the file is individual data element types. Overall, Atalla addresses accessing files, in part, based on whether the files were previously accessed, but a file in not the same as an individual data element value. The section of Atalla cited in Petitioner’s Rehearing Request discloses the need for a correct key code, but that key code is for the entire file and not specific to the data element type. Pet. Req. 6 (citing Ex. 1007, 3:27–58). Although “information about the file” could include information about individual data element types, Petitioner has not demonstrated any such teaching or suggestion in Atalla. As stated in the ’02 Decision, Atalla “does not describe that access authorization file 15 comprises ‘a data element protection catalogue (DPC), which contains each individual data element type (DT) and one or more protection attributes stating processing rules for data element values’ as requires by claim 1.” ’02 Decision 28. Thus, we are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 1, 5, 19, 20, and 27–31 over the anticipation ground of Atalla provided in the Petition.” slip op. at 16
§ 101 eligibility§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,321,201 - Square, Inc. v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00014 · APJ Kevin F Turner · CBM · Rehearing
The Board denied Patent Owner’s request for rehearing, leaving institution intact on the § 101 and § 103 grounds for the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 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 Partnership 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 identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“In the Decision, we discussed the proper construction of the claim term “data element type,” as well as data processing rules related to encryption. Decision 14–17. As such, the Decision evidences that the challenged claims recite both encryption and data element types. Thus, we agree that our statement that “claim 1 does not require data element types or encryption elements” is incorrect. The statement was made in the context of determining whether claim 1 solves a technical problem using a technical solution, where we remain persuaded that it does not. We remain persuaded, as discussed above, that at least claim 1 of the ’201 Patent does not recite a novel or unobvious technological feature and does not solve a technological problem with a technological solution, notwithstanding the errant statement.” slip op. at 10
- PTAB / AIA Trials › Discretionary denialDecided for petitioner
“Discretion to expand a panel rests with the Chief Judge, who, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (informative). “[P]arties are not permitted to request, and panels do not authorize, panel expansion.” Id. The Chief Judge was informed of Patent Owner’s request, and the Chief Judge declined to expand the panel.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Decided for petitioner
“eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response. Decision 20–21 (citing Prelim. Resp. 31–36). In the Preliminary Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 34 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the data element level.”); see also Req. 11. However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” Decision 20–21. See also Pet. 24. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 11
Claim construction§ 101 eligibility§ 103 obviousnessDiscretionary denialPatents in suitUS 6,321,201
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.