• Draftkings Inc. v. Winview Inc.All claims unpatentable
  PTAB · Jan 29, 2024 · IPR2022-01351 · APJ Hubert C Lorin · IPR · Final written decision

  Claims 1, 3, 4, and 6 are unpatentable as obvious over Wallace and Fahy; the Board did not reach the Wallace-only ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had the equivalent of a Bachelor’s Degree in computer science, computer engineering, or a related subject and two or more years of experience in the field of multimedia networking. Less work experience may be compensated for by a higher level of education, such as a Master’s Degree, and vice versa.” Pet. 3 (citing Ex. 1002 ¶ 26). Patent Owner acknowledges Petitioner’s contention but “takes no position with respect to Petitioner’s proposed level of skill.” PO Resp. 15. Petitioner’s proposed definition of a person of ordinary skill in the art is consistent with the ’243 patent, and we adopt that definition for our analysis in this decision. 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).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We begin our analysis by first looking to the claim. “Claim construction begins, as it must, with the words of the claims.” Vehicular Techs. Corp. v. Titan Wheel Int'l, 141 F.3d 1084, 1088 (Fed. Cir. 1998). The preamble of claim 1 recites “equalizing effects of latency differences in a game of skill or chance or other entertainment.” Ex. 1001, 15:2–3. The phrase “latency differences” is not preceded by a qualifier such as “all.” Nor is a source of “latency differences” specified. Nothing in the preamble or in the body of the claim would suggest to one of ordinary skill in the art that the claimed method is limited to addressing the group of all potential sources of latency.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “3. Conclusion as to claim 1 Accordingly, for all the reasons discussed with respect to claim 1, and given that the parties do not present arguments and evidence regarding objective indicia of nonobviousness, we find a preponderance of the evidence supports Petitioner’s position that the combination of Wallace and Fahy teaches the claimed subject matter and Petitioner has articulated a sufficient rationale for combining the teachings of the references with a reasonable expectation of success in arriving at the claimed subject matter. 3. Claims 3, 4 and 6 Petitioner contends that dependent claims 3, 4, and 6 would have been obvious over Wallace and Fahy, providing reasoning why the subject matter of each claim would have been obvious to a person of ordinary skill in the art. Pet. 62–69 (citing, inter alia, Ex. 1002 ¶¶ 117–132). We have reviewed that analysis, supported by the testimony of Dr. Jeffay, and find it persuasive.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “2. Motivation to Combine Wallace and Fahy In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent and would have had a reasonable expectation of success in doing so. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’).” Id. at 418.” slip op. at 35

  Patent outcomesUS 9,878,243 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,878,243
• Fanduel, Inc. v. Winview Inc.All claims unpatentable
  PTAB · Jan 29, 2024 · IPR2022-01306 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1, 4, 7, 28–31, 49, 57, 68, and 81 are unpatentable as obvious over Malaure and McKeown.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the invention of the ’730 patent “would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development,” and “would understand the references referred to in this report and have the capability to draw inferences from them.” Pet. 13 (citing Ex. 1004 ¶¶ 20–21). Patent Owner has not disputed the level of ordinary skill in the art. PO Resp. 17 (“Because the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of skill.”). For purposes of this Decision, we adopt Petitioner’s proposal as consistent with the ’730 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

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

    “In its Petition, Petitioner contends that, “[f]or purposes of this proceeding only, Petitioner does not believe any claim construction is necessary to resolve [its unpatentability] analysis.” Pet. 13 (citing Ex. 1004 ¶ 41). In its Patent Owner Response, Patent Owner agrees with Petitioner by stating that “no claim terms require construction beyond their plain and ordinary meaning. PO Resp. 12. Based on the fully developed trial record, there is no controversy between the parties that requires us to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We observe that Malaure’s central system 1 (e.g., “game server”) includes applications for predictive games 10–15 and on-demand game engines. Ex. 1006 ¶¶ 17, 20; Ex. 1004 ¶ 88. Malaure further teaches that programmers may provide a single set of application components in any desired format and the broadcast system interfaces (BSIs) convert the application components before or during broadcast for delivery over a broadcast network. Ex. 1006 ¶¶ 6, 14. As an example of operation, Malaure teaches that when the operator clicks on button 51, the set of application components (ie. executable program files, bitmaps, sound samples, real-time instructions, video clips etc.) are passed to the CCS 5 and then fed as parallel data streams to the BSIs 26 which convert the application components as appropriate prior to deliver over a respective broadcast network 3. Id. ¶ 26. This disclosure is consistent with and supports Petitioner’s position that Malaure’s applications (e.g., interactive predictive games 10–15) are configured for communicating with the set-top-boxes or personal computers over a broadcast network such as the internet (e.g., WebTV). We further credit Dr. Rubin’s testimony of the same in paragraph 94 of his declaration because Dr. Rubin’s testimony is supported by similar disclosure provided in paragraph 25 of Malaure. Ex. 1004 ¶ 94 (citing Ex. 1006 ¶ 25 (“the application will then be transmitted to the CCS 5 and broadcast to all the user interfaces 4 over the broadcast network”)). Additionally, Malaure teaches that set-top-boxes or personal computers are grouped by their respective broadcast networks. See Ex. 1006, Fig. 1. Malaure teaches that broadcast networks 20–25 are separate, each with its user interfaces 4 (e.g., set-top-boxes and personal computers), and each having: a respective different broadcast protocol. In order to deal with this problem, each target platform has an associated Broadcast System Interface (BSI) 26 which converts the set of application components associated with each application into a plurality of streams of broadcast data, each stream of broadcast data conforming with the broadcast protocol of its respective target platform. Thus when the operator clicks on button 51, the set of application components (ie. executable program files, bitmaps, sound samples, real-time data instructions, video clips etc.) are passed to the CCS 5 and then fed as parallel data streams to the BSIs 26 which convert the application components as appropriate prior to delivery over a respective broadcast network 3.” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Here, Petitioner has done much more than assert Malaure and McKeown are in the same field or from the same time frame. Petitioner explains that Malaure’s system “provides a convenient method of delivering an interactive application to a number of target platforms each having different requirements. For instance, the target platforms may comprise broadcast networks having different data protocols, formats or speeds.” Ex. 1006, ¶[0007]. Thus, Malaure discloses an architecture that “allows the programmers to merely provide a single set of application components in any desired format, without needing to know anything about the ultimate target platforms” over which the applications would communicate to user devices. Id., ¶ [0006]; Ex. 1004, ¶79. A POSITA would recognize the benefits and the flexibilities afforded by Malaure’s system in developing interactive applications. Id., ¶80. Indeed, Malaure itself identifies examples of a number of interactive gaming applications (Ex. 1006, ¶¶[0002], [0017]) and directs a POSITA to McKeown for additional specifics related to one of the interactive games, football. Id., ¶[0020]. Thus, a POSITA would readily incorporate into Malaure the details of the game play associated with the interactive applications described in McKeown. Ex. 1004, ¶80. Pet. 25. Additionally, with respect to limitation [1-a-ii], Petitioner asserts that Malaure further recognized that “[d]ifferent broadcast networks delivering the same programme are not necessarily temporally synchronized” because of variances in the clocks of different set-top-boxes or because different networks may have different clocks. Ex. 1006, ¶[0034]. Thus, “[i]n order to manage these anomalies between networks,” Malaure disclosed that “it is necessary for the BSI handling that network to compensate by introducing the required delay, either by delaying the broadcast of messages, or more appropriately by altering the timing information within messages.” Id., ¶[0035]; Ex. 1004, ¶117. Thus, the combined system of Malaure in view of McKeown discloses sending the lock out signals at “an appropriate time based on an amount of delay” that accounts for system latencies and delays related to different networks. Ex. 1004, ¶118. And because the “lock out” signals of McKeown prevent the users from entering and responding with additional predictions related to game of skill, Malaure and McKeown’s combined system discloses sending a lockout signal at an appropriate time based on an amount of delay to prevent users from submitting a response to a game of skill or chance or other entertainment. Id., ¶¶108-18.” slip op. at 39

  Patent outcomesUS 9,993,730 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,993,730
• Brycer, LLC / Brycer Management, Inc. v. Tegris, Inc.Instituted
  PTAB · Jan 24, 2024 · IPR2023-01196 · APJ Hubert C Lorin · IPR · Institution

  The Board instituted IPR of claims 8–16 on the § 103 ground, finding a reasonable likelihood that the Key, Chauhan, Sweeney, and McKinney combination renders them obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “The Board uses a two-part framework for evaluating arguments under § 325(d): (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.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “Petitioner does not submit constructions for any claim terms. “Petitioner construes terms consistent with the understanding a POSA would have had at the time of the invention.” Pet. 9–10. Patent Owner proposes that the limitation “fire hydrant management software” be construed as “[s]oftware that allows the user to input fire hydrant information, schedule maintenance and create reminders for service.” Prelim. Resp. 12–13 (citing Ex. 2001 ¶¶ 51–54; Ex. 1001, 1:63– 66). At this stage, we construe “fire hydrant management software” as management software that processes information about fire hydrant assets. This comports with Petitioner’s implicit construction. See, e.g., Pet. 1 (“there is nothing novel or non-obvious about the claimed methods of using management software and a registry to track asset inspections”) (emphasis added).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner finds that “Petitioner’s description of the qualifications of a POSA is too general” and it “fails to consider the express scope of the Challenged Claims.” Prelim. Resp. 13. According to Patent Owner, the challenged claims “are limited to a method for ‘using a fire hydrant management software and web-based registry.’” Id. Patent Owner argues, inter alia, that the prosecution history “shows that the claims were allowed after they were limited to a field of technology relating to fire hydrant management software.” Id. (emphasis added). Patent Owner contends that [a] POSA should at minimum have knowledge of and experience in the inspection and maintenance of fire hydrants or at least similar emergency or life safety assets and software available for use in connection therewith in 2007. Id. (citing Ex. 2001 ¶¶ 39–42). We decline at this stage to adopt Patent Owner’s definition for the level of skill for a POSA such that it requires additional knowledge and experience with fire hydrants. The definition is predicated on Patent Owner’s view that “fire hydrant” relates to a functional characteristic of the software. See, e.g., Prelim. Resp 36 (contending, inter alia, that the “fire hydrant management software” is “directed to a particular technology”). For the reasons discussed in the Claim Construction section (§ II.C.), we adopt Petitioner’s implicit construction of “fire hydrant management software” which defines “fire hydrant management software” as management software that processes information about fire hydrant assets. See, e.g., Pet. 1. Given that construction, it would be unnecessary for a POSA to have a level of skill that requires additional knowledge and experience with fire hydrants. We apply Petitioner’s description of the qualifications of a POSA in” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent and would have had a reasonable expectation of success in doing so. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” Id. at 418. In that regard, Petitioner’s position is that, inter alia, the combination of Key, Chauhan, Sweeney, and McKinney renders obvious the claimed method, including using a “fire hydrant management software” as claimed. See, inter alia, Pet. 21–27 (discussing the combination of Key, Chauhan, Sweeney, McKinney), 53 n. 8 (“it would have been obvious that such software was used for fire hydrant management”) (relying on the discussion at Pet. 21–27). According to Petitioner, “Key, Chauhan, Sweeney and McKinney are complementary references that are all in the field of asset management, monitoring, and compliance (including, e.g., inspection, repairs, scheduling, and notices) implemented as online, web-based systems and methods using conventional computers, software, and databases.” Id. at 21. Petitioner explains, inter alia, that: the prior art demonstrates that (i) there was a well-known need and desirability to monitor and inspect various assets to ensure compliance and proper operation, (ii) the need included to improve the monitoring/inspection process through use of web-based computer systems and databases thereby becoming more efficient and less costly, and (iii) such assets were interchangeable within inspection compliance monitoring and reporting systems (including assets for which inspection compliance was regulated, including life/safety and non-life/safety assets). EX1003 Pet. 25 (citing, inter alia, Ex. 1003 ¶¶ 131–138). At this stage, Petitioner sufficiently shows the claimed process would have been obvious to a POSA based on the combination of Key, Chauhan, Sweeney, McKinney, with a reasonable expectation of success. It is consistent with Petitioner’s implicit construction of “fire hydrant management software;” that is, as software managing information about fire hydrant assets. Patent Owner argues, inter alia, that the claimed method employs a “fire hydrant management software” having a technology the combination of Key, Chauhan, Sweeney, McKinney would not have rendered obvious to a POSA with a reasonable expectation of success. See, e.g., Prelim. Resp. 36 (“Challenged Claims and steps recited therein are directed toward addressing problems relating to software capable of managing assets such as fire hydrants.”), id. (the “fire hydrant management software” . . . [is] directed to a particular technology”), 38 (“the ‘966 Patent and Challenged Claims are directed at a much narrower technical field” [than the “the technical field of asset management, monitoring, and compliance” that Petitioner argues]) (citing Pet. 22). Given that we adopt Petitioner’s implicit construction of “fire hydrant management software” as management software that processes information about fire hydrant assets rather than Patent Owner’s view that “fire hydrant” provides a functional distinction, these arguments do not undermine Petitioner’s position. We have considered all of Patent Owner’s arguments. At this stage, based on the evidence, Petitioner sufficiently shows on this record the combination of Key, Chauhan, Sweeney, and McKinney renders obvious the claimed method, including using a “fire hydrant management software” as claimed, with a reasonable expectation of success.” slip op. at 42

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,126,966
• Apple Inc. v. Dodots Licensing Solutions LLCInstitution denied
  PTAB · Jan 3, 2024 · IPR2023-00939 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution on claims 1–24 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art under § 102(e).

  RulingsInstitution decision

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

    “disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 7. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent claims it challenges are unpatentable. 35 U.S.C. § 312(a)(3). Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1–24 of the ’407 patent under the asserted grounds, all of which rely on the Slivka Appendices.” slip op. at 17

  • BurdenDecided for patent owner

    “We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) that were not published with the ’695 patent (Ex. 1004). As discussed herein, we conclude, on the record before us, that Petitioner has insufficiently shown that the relied-upon appendices qualify as prior art under 35 U.S.C. § 102(e), as Petitioner asserts. See Pet. 10.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are not part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record, Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents, should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 14–15, 21 (citing 65 Fed. Reg. 57,024). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. § 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’407 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:8–19. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). Pet. 10; Prelim. Reply. On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. § 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e), as Petitioner asserts. See Pet. 10.” slip op. at 15

  § 102 anticipation
  Patents in suitUS 8,510,407
• Apple Inc. v. Dodots Licensing Solutions LLCInstitution denied
  PTAB · Jan 3, 2024 · IPR2023-00938 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution on claims 1–16 because the petitioner did not show a reasonable likelihood that the Slivka Appendices qualified as prior art under § 102(e).

  RulingsInstitution decision

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

    “On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. § 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e), as Petitioner asserts. See Pet. 8. III. CONCLUSION Each of Petitioner’s invalidity contentions relies, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 5. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent claims it challenges are unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 16

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Similar to the ʼ257 patent at issue in Southwest Software, the ’695 patent omits the Slivka Appendices. In contrast to the ʼ257 patent, the ’695 patent does not even contain an express statement about the incorporation of appendices. Accordingly, as was the case for the ʼ257 patent with respect to the Program Printout Appendix prior to the filing of the certificate of correction, we find the’695 patent does not include the contents of the Slivka Appendices.” slip op. at 14

  • BurdenInstitution denied

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion does not shift to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 6

  § 102 anticipation
  Patents in suitUS 8,020,083
• Apple Inc. v. Dodots Licensing Solutions LLCInstitution denied
  PTAB · Dec 15, 2023 · IPR2023-00937 · APJ Hubert C Lorin · IPR · Institution

  The Board denied institution on claims 1–21 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art.

  RulingsInstitution decision

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

    “On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9. III. CONCLUSION Petitioner’s invalidity contentions rely, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 9. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 18

  • BurdenDenied

    “We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) and insufficient indication on the record that the appendices have been incorporated into the ’695 patent, and that as a result, the relied-upon appendices do not qualify as prior art under 35 U.S.C. § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are neither part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 21 (citing 65 Fed. Reg. 57,024; 35 U.S.C. § 122(b)(1)). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’545 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:13–15. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 17

  § 102 anticipation
  Patents in suitUS 9,369,545
• Google LLC v. Wirelesswerx IP LLCInstituted
  PTAB · Dec 11, 2023 · IPR2023-00850 · APJ Hubert C Lorin · IPR · Institution

  The Board instituted IPR of claims 1–30 on all asserted grounds after finding a reasonable likelihood that Google would show at least one claim unpatentable over Wrappe and Belcea.

  RulingsInstitution decision

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

    “Because Petitioner has demonstrated a reasonable likelihood of success in demonstrating that at least one claim of the ’203 patent as unpatentable under 35 U.S.C. § 103(a) over the combination of Wrappe and Belcea (Ground I), we institute on all challenged claims and all grounds raised in the Petition. See 37 C.F.R. §42.108(a) (2023). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of claims 6–30 under these remaining grounds based on obviousness.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states that “[f]or purposes of this Response, Patent Owner adopts Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’203 Patent as well as the asserted prior art.” Prelim. Resp. 6. Accordingly, we adopt Petitioner’s definition of a person of ordinary skill in the art for our analysis in this decision.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “On this preliminary record, we agree with the Petitioner that the claim 1 limitation “preconfigured geographical zone” is not limited to a “preconfigured geographical zone” defined by a user as Patent Owner contends. See Prelim. Resp. 18–20. Based on a plain reading of the claim, claim 1 puts no limit on the scope of the “preconfigured geographical zone.” Nor do we read the specification as providing a definition of “preconfigured geographical zone” so that when the claim is read in light of the specification its scope is limited to a “preconfigured geographical zone” defined by a user. As Petitioner points out, “the term ‘preconfigured geographical zone’ (or ‘pre-configured geographical zone’) appears in the specification six times, [and in] none of those uses describes the meaning of the term.” Prelim. Reply 2 (citing Ex. 1001, 1:27, 1:62, 3:23, 7:34, 31:56, 37:37). Based on this record, we also agree with Petitioner (Prelim. Reply 2) that claim 30 calls for “applying the plurality of transponders in the network with each other to define the zone,” which means that the recited transponders—not a user—define the zone. Ex. 1001, 44:62–63 (emphasis added); see also, e.g., 5:35–39 (“In another aspect, the transponder or subscriber device can determine whether the transponder or subscriber device is inside or outside the geographical zone in two or three dimensions by obtaining global positioning coordinates, and calculating . . . .)” For the foregoing reasons, at this stage of the proceeding, we construe “preconfigured geographical zone” in claims 1 and 30 broadly and not limited to a “preconfigured geographical zone” defined by a user.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “According to Mr. Andrews, based on these teachings, “a POSITA would have understood that Belcea teaches to first identify the nodes on a specific floor, disregard nodes on other floors, and then perform location determinations using only the nodes on the specific floor desired.” Ex. 1002 ¶ 171; Pet. 38. “Different stores on different floors are less relevant to the user, because even though they may be nearby in the vertical sense (e.g., directly underneath the user on a different floor), if the user is not in the store, then they are less likely to be interested in messages from that store.” Ex. 1002 ¶ 172; Pet. 38. Petitioner contends that a “POSITA would have been motivated to implement these teachings with Wrappe to ensure the user device is connected to the beacon of a store the user is actually in, for example a store on the same floor as the user as opposed to a different store on a different floor.” Pet. 38 (citing Ex. 1002 ¶ 172). “The [combined] system identifies a beacon ‘nearby’ on the same floor because other stores on the floor above or below are not immediately relevant to the user.” Id.” slip op. at 33

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,315,203
• Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentable
  PTAB · Nov 3, 2023 · IPR2023-00287 · APJ Jeremy M Plenzler · IPR · Final written decision

  The Board held claims 1–4, 7–28, and 31–44 unpatentable as obvious over Woycik; it did not reach the Tengler challenge.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert does not know how P[atent ]O[wner]’s proposed definition would impact any opinions in his supporting declaration.’” Id. (citing Ex. 1029, 10:20–11:11); see also Ex. 1034, 10–14. Patent Owner provides no rebuttal to this position in its Sur-Reply, other than alleging that “[a]lthough experienced in ‘point-” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. slip op. at 13

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “Objective indicia of non-obviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia of non-obviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of non-obviousness to be accorded substantial weight, their proponent must establish a nexus between the evidence and the merits of the claimed” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Long-felt need can be shown by evidence that indicates that the prior art had a recognized need for a solution to the problem and that others had tried and failed to find a solution to that problem. Al-Site Corp. v. VSI Int’1, Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983). Notably, the case law characterizes the need in terms of a long-felt but unresolved need. Al-Site, 174 F.3d at 1325 (discussing “long felt but unresolved needs”). Accordingly, Patent Owner must show that the need was both known and not resolved. Patent Owner fails to provide evidence to support its allegations regarding long-felt need. Instead, Patent Owner cites to conclusory paragraphs from Mr. Cheng’s declaration that simply parrot the statements in the Petition. And, based on Patent Owner’s Response, it is not entirely clear what the prior art allegedly had recognized as a problem needing a solution, let alone that others had tried and failed to find a solution to that problem. There is simply no evidence supporting Patent Owner’s position. Moreover, Patent Owner must also show that if the need was known, it was also unresolved. As best we can decipher what the alleged need was, based on our analysis of the challenges below, that need was already met. Finally, we note that it is unclear how the claimed arrangement provides a solution to the problem that others had tried and failed to solve. Indeed, as noted above, the only reference to any claim is Patent Owner’s allegation that “the web-based POS builder system is built completely on the as recited in claims. EX1001, Claims 1, 27, 42, 43, and 44.” PO Resp. 77. For at least the reasons set for above, Patent Owner’s evidence of non- obviousness is entitled to little, if any, weight.” slip op. at 16

  Patent outcomesUS 11,226,793 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,226,793
• Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentable
  PTAB · Nov 3, 2023 · IPR2022-01143 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–4, 7–28, and 31–44 are unpatentable as obvious over Woycik; the Board did not reach the Tengler ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Nevertheless, we also agree with Petitioner that a person of ordinary skill in the art is not limited to someone experienced building POS screens. Although, as noted above, the ’793 patent characterizes the novelty as eliminating the need for a specialized programmer to build POS screens, we explained above. And that is not even recited in the claims of the ’793 patent. Rather, what is now alleged by Patent Owner to be the novel aspect of the invention relates to the web-based back office system. And even if we accept that experience with POS systems is necessary, as Petitioner notes, and Patent Owner does not dispute, “Mr. Gray explains his work experience ‘had to do with point of sale and point of transaction.’” See Pet. Reply 3–4 (citing Ex. 1030, 53:3–54:2). Patent Owner makes much of purported differences between point of sale and point of transaction, but never provides any meaningful articulation of what those actual differences are or how they affect Mr. Gray’s qualifications to testify in this proceeding. See Pet. Reply 4; PO Sur-Reply 32 (stating without further discussion: “Although experienced in ‘point-of-transaction techniques,’ Petitioner’s expert is not a POSITA with respect to the ’793 Patent under either standard. POR, 13-15.”). For purposes of this decision, we analyze the asserted prior art with respect to the level of skill set forth by Petitioner, but we see no meaningful difference in the outcome of this decision if we were to apply the level of skill in the art set forth by Patent Owner.” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). A patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. Here, we have no presumption of nexus. Nor does Patent Owner” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “store server in addition to a web server. See, e.g., PO Resp. 25 (“Unlike the claimed technology, which communicates directly from the webserver to the POS system located in the store, Woycik’s system and software communicates from the central server 22/84 to the in-store local server 16/82 to the kiosk []80.”); see also id. at 28–32. Patent Owner, however, identifies nothing in the claim that precludes the use of an in-store server in addition to the POS builder system being installed on a web server. Nor do we see Rather, the claim expressly recites “a network comprising the Internet,” which means that network can include more than just the Internet. Because the claim does not preclude an in-store server, there is little, if any, dispute remaining. We provide a simplified version of the claim below that concisely illustrates the communication required between the server and POS terminal. According to claim 1, the “server [is] configured to . . . communicate with . . . [a] POS terminal[] over . . . a network comprising the Internet,” “receive . . . information used for creating or modifying the one or more POS screen[ of the POS terminal],” “receive . . . further information [from the POS terminal],” and “configure the . . . POS terminal[] . . . over the network” using the information and further information “to create or modify . . . the . . . POS screen[].”8 Patent Owner, itself, characterizes Woycik’s “local server of the server kiosk act[ing] as the middleman for all communications,” with that local server facilitating communication between Woycik’s web server (central server 22/84) and POS terminals (kiosks 16/82 and/or kiosks 30/36). PO Resp. 31. There is no dispute that Woycik’s local server communicates with its central server over the Internet. Under Patent Owner’s own characterization of Woycik, therefore, central server 22/84 communicates with POS terminals 16/82, 30/36 over a network including the Internet, albeit through the use of an intermediary (i.e., the local server) facilitating that communication.” slip op. at 22

  Patent outcomesUS 11,226,793 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,226,793
• Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Instituted
  PTAB · Nov 1, 2023 · PGR2023-00023 · APJ Brent M Dougal · PGR · Institution

  Instituted PGR of claims 1–20 because at least one challenged claim was more likely than not unpatentable under the asserted grounds.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability under the more likely than not standard. 35 U.S.C. § 324(a); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A claim is unpatentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence,” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA): would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 15. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5

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

    “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) (2022). claim terms. Pet. 25; Prelim. Resp 15–16. We determine that no terms need to be construed at this time. 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 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Petitioner also relies on Pankaj Figure 11 to disclose the preamble and the final limitation, with the exception of the fracturing pump/fracturing equipment being electrical. See Pet. 38–40 (discussing e.g., Pankaj’s control method in Figure 11, teachings of computer implementation), 49–51 (discussing e.g., Pankaj’s controlling of production operations, including a fracturing pump). As previously noted, Petitioner relies on Payne for teaching that the fracturing pump can be electrical. Id. at 31, 49–51. Petitioner also provides reasons why one of skill in the art would combine Payne’s electrical fracturing pump with Pankaj’s fracturing system. Id. at 31–38, 51. Patent Owner does not contest that the combination of Pankaj and Payne teaches the above noted limitations. See generally, Prelim. Resp. 50– 57.” slip op. at 9

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR
  Patents in suitUS 11,373,058

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.