- 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 - Metacluster LT, Uab v. Bright Data Ltd.InstitutedPTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution
Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’034 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,272,034 - PTAB · Mar 23, 2023 · PGR2022-00058 · APJ Benjamin D M Wood · PGR · Institution
The Board instituted PGR on claims 1–17 on all asserted grounds, finding it more likely than not that claim 1 is unpatentable under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence), the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), the Preliminary Reply, and the Preliminary Sur-reply, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage of the proceeding. See Prelim. Resp. 18 (“[f]or purposes of this Preliminary Response only, Patent Owner uses Petitioner’s proposed level of skill in the art.”). We discern no reason, at this stage of the proceeding, to question Petitioner’s proposed level of ordinary skill, which is supported by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- BurdenDecided for petitioner
“Section 42.6(a)(3) states that “[a]rguments must not be incorporated by reference from one document into another document.” The purpose of this rule to prevent a party from circumventing page limits and to conserve Board resources. See Cisco, 10 (“incorporation by reference of numerous arguments from Dr. Roy’s 250-page Declaration into the Petition serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 250 pages of Dr. Roy’s Declaration . . . to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioner’s assertions.”). Patent Owner does not identify specific arguments in Mr. Plunkett’s declaration that are not in the Petition, or specific conclusory statements within the Petition that are overly reliant on the Plunkett Declaration. Nor have we found any improper incorporation in the course of our own review. Accordingly, we are not persuaded that we should ignore any portion of the Plunkett Declaration on this basis.” slip op. at 28
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Claim terms using the word “means” are presumed to invoke § 112(f), and terms without the word “means” are presumed not to invoke this subsection. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Because “server gateway” does not include the word “means,” it is presumed not to be a means-plus-function claim term under § 112(f). This presumption can be rebutted, however, by demonstrating that the term fails to “recite sufficiently definite structure,” or recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal quotation marks omitted). It is Patent Owner’s burden to produce sufficient evidence to overcome this presumption. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1367 (Fed. Cir. 2022) (“From a procedural standpoint, this presumption imposes on the party challenging the presumption the burden of going forward with evidence . . . that a person of ordinary skill in the art believes the term does not recite sufficiently definite structure.”) (internal citation, quotation marks, and alterations omitted). There does not appear to be a dispute, at this stage of the proceeding, that “server gateway” denotes at least some structure to persons of ordinary skill: a server connecting a game user computational device and a blockchain. Thus, we are not persuaded, on the current record, that “server gateway” is a “generic term[] or black box recitation[] of structure or abstractions.” MTD Prods. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019). Patent Owner nonetheless argues that although the term may recite some structure, the recited structure is insufficient to perform “the recited functions,” which Patent Owner asserts are: (1) “operating a blockchain” slip op. at 14
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · GrahamPatents in suitUS 11,189,131 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5
§ 101 eligibilitycites BerkheimerPatents in suitUS 9,669,308 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00131 · APJ Jeremy M Plenzler · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving in place its determination that challenged claims 3–6, 8–14, 16–25, 27–30, and 32–41 are ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 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.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“Id. at 13 (citing Ex. 1001, 26:5–11 (claim 3)). But McRO does not stand for the general proposition that use of rules or conditions to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily incorporates the invention’s distributed architecture—an architecture providing a technological solution to a technological problem,” which “provides the requisite ‘something more’ than the performance of ‘well-” slip op. at 7
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 8,061,598 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00033 · APJ Matthew R Clements · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving claims 25, 26, 30, and 32 unpatentable under § 101 because the request did not show the Board misapprehended or overlooked a matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 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.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Other
“Smartflash’s arguments are either new or were addressed in our Final Decision. For example, Smartflash’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 11–13) is new, and therefore, improper in a request for rehearing, because Smartflash did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response. See PO Resp. 15–29 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 38 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatsoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”), id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”).” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00032 · APJ Gregg I Anderson · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving its determination that claims 14, 19, and 22 are patent ineligible under § 101 unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. 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.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“determination that claims 14, 19, and 22 (“the challenged claims”) are directed to patent-ineligible subject matter. Req. Reh’g 5. In its Request, Smartflash presents arguments directed to alleged similarities between the challenged claims and those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–10) and Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016), and alleged differences between the challenged claims and those at issue in Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for patent owner
“As we stated in our Final Written Decision and Petitioner argues, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 14, 19, and 22, the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 15–17; Notice Resp. 1–2. These limitations of claims 14, 19, and 22 “do not yield a result that overrides the routine and conventional manner in which this technology operates.” Final Dec. 20. Rather, each of the challenged claims is “an abstract-idea-based solution implemented with generic technical components in a conventional way,” making it patent ineligible. See BASCOM, 2016 WL 3514158, at *6, 3 We note that U.S. Patent No. 7,334,720 B2 is not at issue in this proceeding. *7. Also, “[t]he concept of storing two different types of information4 in the same place or on the same device is an age old practice.” Final Dec. 22. For example, “the prior art discloses products, such as electronic data, that could store both the content and conditions for providing access to the content, such as ‘a time bomb or other disabling device which will disable the product at the end of the rental period.’” Id. at 22–23 (citing Ex. 1315, Abstract, 10:24–30).” slip op. at 7
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00031 · APJ Gregg I Anderson · CBM · Rehearing
The Board denied Smartflash’s rehearing request and left its decision that claims 1, 5, 8, and 10 are unpatentable under § 101 unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 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.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“As we stated in our Final Written Decision and Petitioners argue, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 1, 5, 8, and 10 the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 14–17; Notice Resp. 1–2. These limitations of claims 1, 5, 8, and 10 “do not yield a result that overrides the routine and conventional manner in which this technology operates.” Final Dec. 20. Rather, each of the challenged claims is “an abstract-idea-based solution implemented with generic technical components in a conventional way,” making it patent ineligible. See BASCOM, 2016 WL 3514158, at *6, 3 We note that U.S. Patent No. 7,334,720 B2 is not at issue in this proceeding. *7. Also, “[t]he concept of storing two different types of information4 in the same place or on the same device is an age old practice.” Final Dec. 22. For example, “the prior art discloses products, such as electronic data, that could store both the content and conditions for providing access to the content, such as ‘a time bomb or other disabling device which will disable the product at the end of the rental period.’” Id. at 22–23 (citing Ex. 1215, Abstract, 10:24–30).” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“Rather than providing a proper request for rehearing, addressing particular matters that we previously misapprehended or overlooked, Smartflash’s Request provides new briefing by expounding on argument already made. Smartflash cannot simply allege that an “issue” (e.g., whether the claims are directed to an abstract idea) was previously addressed, generally, and proceed to present new argument on that issue in a request for rehearing. See 37 C.F.R. § 42.71. Smartflash’s arguments are either new or were addressed in our Final Decision. For example, Smartflash’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and therefore, improper in a request for rehearing, because Smartflash did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response. See PO Resp. 16–25 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 42 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatsoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”), id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”).” slip op. at 5
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCRehearing deniedPTAB · Jun 10, 2016 · CBM2014-00194 · APJ Jennifer S Bisk · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its determination that claim 32 is unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. 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.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“Patent Owner’s arguments are either new or were addressed in our Final Decision. For example, Patent Owner’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and therefore, improper in a request for rehearing, because Patent Owner did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response (see PO Resp. passim (arguing only the second step of the Mayo and Alice test)). To the extent portions of the Request are supported by Patent Owner’s argument in the general citations to the record, we considered those arguments in our Final Decision, as even Patent Owner acknowledges. See, e.g., Req. Reh’g 7 (citing Final Dec. 15) (“The Board rejected Patent Owner’s reliance on DDR Holdings (at 15), holding that Claim 7 was not ‘rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’”). For example, Patent Owner’s arguments about inventive concept (Req. Reh’g 5– 7, 12–15) were addressed at pages 10–13 and 18–20 of our Final Decision, Patent Owner’s arguments about preemption (Req. Reh’g. 6–7) were addressed at pages 20–22 of our Final Decision, and Patent Owner’s arguments about DDR Holdings (Req. Reh’g. 7–10) were addressed at pages 14–18 of our Final Decision. Mere disagreement with our Final Decision also is not a proper basis for rehearing.” slip op. at 5
§ 101 eligibilitycites AlicePatents in suitUS 8,118,221 - Epicor Software Corporation v. Protegrity CorporationRehearing deniedPTAB · Jun 30, 2015 · CBM2015-00006 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied both rehearing requests, leaving in place institution on § 101 claims 1–60 and § 102 Denning claims 1, 2, 6, 9, 17, 18, 22, and 25.
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 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board instituted covered business method patent review of the ’281 patent based upon the following grounds: Ground Prior Art Challenged Claims § 101 n/a 1–60 Denning1 § 102 1, 2, 6, 9, 17, 18, 22, and 25” slip op. at 2
- BurdenDecided for patent owner
“As we stated in the Decision, Petitioner, must identify and articulate clearly each prior art combination relied on to support an assertion of unpatentability based on obviousness. Decision 36–37. Providing numerous claim charts and a broad statement that any or all of the prior art could be combined, without articulating the precise combination, is insufficient. Petitioner’s approach of offering a plurality of prior art references for consideration, without the particular and necessary combination to be selected or chosen by the Board, is improper. See 37 C.F.R. § 42.304 (b)(4). We are not persuaded by Petitioner that we abused our discretion in declining to institute review of any claim based on grounds of: obviousness over Denning, Lang, Atalla, and/or Hwang; obviousness over Denning, Lang, Atalla, and/or Hwang, and further over Thomson; and obviousness over Denning, Lang, Atalla, and/or Hwang and further over Abraham.” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“We did not overlook Patent Owner’s argument regarding patent- eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response because it was not commensurate with the scope of the claims. Decision 20–21 (citing Prelim. Resp. 30–32). In the Preliminary Response, Patent Owner argues that the claims are directed toward data protection systems and methods that work on the cell or data element level. Id. The claims, however, do not require that data protection at the data element level or preclude data protection at the record-level. See Decision 16–17. We also did not ignore Patent Owner’s argument regarding the cited disclosure of Denning. Although, Denning is evidence included in the record of this proceeding, Patent Owner does not identify where it was raised in its Preliminary Response with regards to Patent Owner’s abstract idea argument, and we can find no such argument in its Preliminary Response. See PO Req. 9; see Prelim. Resp. 24–33. We could not have overlooked or ignored an argument that was not raised in the Preliminary Response. Nonetheless, Patent Owner’s argument regarding Denning’s alleged disclosure that “that data protection must be done at the record-level, and not at the data element level” (PO Req. 9) is unpersuasive because it is not commensurate with the scope of the claims. The claims do not require that data protection at the data element level or preclude data protection at the record-level. See Decision 16–17. We, thus, are not persuaded by Patent Owner that we abused our discretion in determining that the claims of the ’281 patent are more likely than not directed to a patent-ineligible abstract idea.” slip op. at 9
§ 101 eligibility§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,402,281
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.