- Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentablePTAB · Apr 25, 2025 · IPR2024-00079 · APJ George R Hoskins · IPR · Final written decision
Claims 1–6, 8–20, and 23–31 are unpatentable as obvious over Kenley and Long; the Board did not reach the alternative ground.
RulingsFinal written decision- Expert testimonyOther
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“(5) Analysis and Conclusion as to Motivation to Combine We conclude a preponderance of the evidence supports Petitioner’s” slip op. at 48
Patent outcomesUS 9,218,348 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,218,348 - Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentablePTAB · Apr 25, 2025 · IPR2024-00078 · APJ George R Hoskins · IPR · Final written decision
Claims 1–6 and 8–11 are unpatentable as obvious over Kenley and Long; the Board did not reach the alternative ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“the ’478 patent, the applicant clearly and plainly informed the Office that an “[e]xemplary” embodiment of “searching the first temporary storage location for the archive file,” as recited in then-pending claim 34 and step [1.4] of issued claim 1, is found at specifically cited portions of the ’478 patent specification. See Ex. 1002, 147 (“Exemplary support may be found at . . . .”). Those specifically cited disclosures describe how smart data manager 15 “examines” input buffer 20 “for the presence of archive files” or equivalently “to determine whether any archive files are stored therein.” Ex. 1001, Fig. 2A (step 100), 5:39–42, 6:19–27. Based on this prosecution history, we conclude that in one embodiment of claim 1, searching the first temporary storage location for the archive file per step [1.4] is satisfied by examining the first temporary storage location for the presence of an archive file. We reach this conclusion even if the referenced portions of the ’478 patent specification are not regarded as being definitional with respect to the “searching” requirements of step [1.4].” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(5) Analysis and Conclusion as to Motivation to Combine We conclude a preponderance of the evidence supports Petitioner’s” slip op. at 51
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
- BurdenFwd all claims unpatentableUnpatentable
“Accordingly, we conclude Petitioner has shown by a preponderance of” slip op. at 77
Patent outcomesUS 8,473,478 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,473,478 - Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentablePTAB · Apr 25, 2025 · IPR2024-00080 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–21 are unpatentable: claims 1–8, 10–16, and 18–21 as obvious over Sweat, and claims 9 and 17 as obvious over Sweat and Schneider.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner does not dispute this assessment. See PO Resp. 10–11 (“Patent Owner agrees to this definition proposed in the Petition.”). Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’850 Patent. Accord Inst. Dec. 7–8.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction principles, and does not revise or ignore the explicit language of the claims.”). In that vein, “[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.” Hockerson–Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.Cir.1999); accord Phillips, 415 F.3d at 1314 (“[T]he context in which a term is used in the asserted claim can be highly instructive.”). Patent Owner’s interpretation that “the current version” requires two current versions — one locally stored current version and a corresponding remotely stored current version — asks us to improperly adopt a claim construction which ignores explicit claim language and context in order to read unrecited features into the claim. The limitation in question, more fully and in better context, recites “storing the selected previous version . . . as the current version on the local storage location.” Ex. 1001, 9:24–26 (emphasis added). The express language shows that the claim is specifically directed to the current version on the local storage location and not any possible remote current version. As such, even if there were a “current version on the remote storage location” which corresponds to and is kept in parity with the current version on the local storage location, i.e., a backup copy of the locally stored current version, the claim does not recite that feature, establishing that it does not require that feature. Further, as to the context of the claim, the term in question is part of a recited method of restoring a file to a previous version of the file on a local computational machine, rather than a method for maintaining parity of remotely stored backup files during that restoration process. See id. at 8:63–9:28. As such, the explicitly recited claim language and the context of the claim do not support reading an unrecited remote backup feature into the claim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“been obvious to use the “Download” feature described by Sweat to replace a corrupted or otherwise compromised file, thus meeting “storing the selected previous version . . . as the current version on the local storage location.” Pet. 60–62. First, regarding the technical operation of Sweat’s download function, Petitioner explains that a user “download[s] a version of [a] file from the server 106 to the local computer 104” and selects a local “target location to save the selected file.” Id. at 61 (citing Ex. 1006, 10:58–63). Sweat’s download function “[c]opies the file or folder to the user’s local computer” and can “overwrite files that exist on the user’s local computer, as desired.” Ex. 1006, 5:49–55. From those disclosures, Petitioner asserts it would have been obvious to use Sweat’s download function “to restore a previous version of a file by copying the file to the user’s local computer and overwriting the current version of the file on the user’s local computer, so as to save the restored file as the new current version of that file.” Pet. 62 (citing Ex. 1004 ¶¶ 125– 126). Petitioner explains that the download function would be used in such a manner where a user “desire[s] to restore a previous version of the file to replace the current version for example, in the case where the newest version of the file has become corrupted or where desired data has been deleted from” slip op. at 21
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We agree with Petitioner. Sweat’s description of its “Viewing Files” feature explains that “a user must install the appropriate viewer to open and view drawing files.” Ex. 1006, 23:38–41. Sweat lists examples of such viewers including software applications such as Volo™ View Express. Id. at 23:45–46, 23:63–67. While Sweat does not list a CAD file creating application in its exemplary list of viewers in that “Viewing Files” section (see id. at 23:38–24:35), elsewhere, Sweat states that a CAD application, e.g., “AutoCAD®,” is “drawing/viewing software utilized by the viewer” (id. at 23:29–33). Furthermore, Petitioner’s declarant offers undisputed testimony that AutoCAD is software for creating CAD drawing files and can also be used to view those created CAD drawing files. Ex. 1024 ¶ 39 (citing Ex. 1029, 19–23, 541–542). On that evidence, we agree a POSITA would understand that Sweat describes using a viewer to preview previous versions of CAD drawing files and that Sweat also describes AutoCAD (which creates CAD drawing files) can be used as a viewer. In light of that understanding, we agree it would have been obvious to use AutoCAD, i.e., “an application that created the file,” to preview previous versions of that file. Pet. 62–63. We also agree that it would have been rational to do so because the same already locally available software application which created the file could then be used to view the file. Id.; see Ex. 1004 ¶ 128. Owner dismisses Petitioner’s obviousness argument as “irrelevant,” and, instead, argues that Sweat does not disclose the claimed features. PO Sur- Reply 16–17; see PO Resp. 39–40. In particular, Patent Owner argues Sweat “discloses the use of specialized viewing software to view the related file” and emphasizes that “CAD software is clearly not being used in Sweat’s ‘View in Window’ functionality” PO Resp. 39–40 (citing Ex. 1006, 23:39–51); PO Sur-Reply 17. While it may be the case that Sweat does not outright disclose the features recited in the claim, those arguments do not show fault in Petitioner’s case that the claimed features would have been obvious. See CRFD Rsch., Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017) (“Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.”); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016) (“A claimed invention may be obvious even when the prior art does not teach each claim limitation.”), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). Accordingly, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claim 2 is obvious over Sweat.” slip op. at 28
Patent outcomesUS 10,585,850 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,585,850 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 22, 2025 · IPR2025-00123 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of inter partes review of claims 1–8 and 13–25 under § 314(a), finding the trial date and district court investment outweighed Petitioner’s stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The District Court recently denied Petitioner’s motion to stay without prejudice. Ex. 2003, 3. The District Court stated that Petitioner’s motion “is premature” because the Board has not decided “whether or not to institute inter partes review.” Id. We decline to speculate based on the record in this case whether the District Court would grant a renewed motion to stay the District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the first Fintiv factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“G. Summary On balance, we determine that Fintiv factors 1–6 favor discretionary denial of institution. Specifically, as discussed above, factors 2, 3, and 5 each weigh in favor of discretionary denial, factor 4 weighs strongly against discretionary denial, and factors 1 and 6 are neutral. We determine that the projected trial date (at least six months before the projected statutory deadline for a final written decision) and the parties’ significant investment in the District Court Litigation outweigh Petitioner’s stipulation. Thus, based on our holistic view of the Fintiv factors, we exercise our discretion under § 314(a) to deny the Petition. III. CONCLUSION For the reasons discussed above, we exercise our discretion under § 314(a) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 10
Discretionary denialPatents in suitUS 8,745,749 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 21, 2025 · IPR2024-01477 · APJ Bach V Hoang · IPR · Institution
The Board denied institution of IPR on claims 1–14 under § 314(a), finding that the Fintiv factors favoring denial outweighed the stipulation against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Statutory Deadline We weigh this factor as favoring the exercise of discretionary denial. The parties agree that the projected statutory deadline for issuing our Final Written Decision (April 23, 2026) is a little more than six months after trial is currently scheduled in the District Court litigation (October 6, 2025). Supp. Br. 4; Prelim. Resp. 19–20. Because the currently scheduled District Court trial is set to begin six months before our deadline to reach a final decision, this factor favors discretionary denial in this case. See Fintiv, Paper 11 at 9. C. Factor 3 – Investment in the Parallel Proceeding We weigh this factor as favoring the exercise of discretionary denial. Showing substantial investment in the District Court litigation, document production is substantially complete and fact discovery will be completed within two weeks of this Decision on Institution. Ex. 2001, 4–5 (Second Amended Docket Control Order). Further, a hearing on claim construction and associated briefing is complete. Id. And, the deadline to serve Institution. Id. at 4. These actions show that there has been notable investment by the parties in the District Court litigation. Furthermore, we must consider this parallel work in relation to the October 6, 2025 District Court litigation trial date, which is six months before the projected statutory deadline of our Final Written Decision. See Fintiv, Paper 11 at 10. As work in the District Court litigation has moved beyond preliminary stages into more advanced stages, instituting at this time implicates at least some duplicative costs. See id. On the matter of petition timing, it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding. Fintiv, Paper 11 at 11. Here, Petitioner filed its petition on September 27, 2024, which is four months after receiving Patent Owner’s May 29, 2024 disclosure of asserted claims and infringement contentions and nine months after it was served Patent Owner’s December 29, 2023 infringement complaint. Ex. 1017; Ex. 1018, 1. Further, Petitioner served its amended invalidity contentions in the District Court litigation on December 17, 2024, i.e., after it filed its Petition.5 We do not find the timing of the Petition in this case to outweigh the significant investment in the District Court litigation. Considering the substantial investment in the District Court litigation and the rapidly advancing District Court litigation trial date balanced against the timing of the Petition, we determine this factor weighs in favor of discretionary denial.” slip op. at 11
Discretionary denialPatents in suitUS 8,898,803 - Manitowoc Foodservice Companies, LLC v. Gate CFV Solutions, IncInstitution deniedPTAB · Apr 18, 2025 · DER2023-00006 · APJ John E Schneider · DER · Institution
The Board denied institution of a derivation proceeding because Manitowoc did not show that all elements of amended claim 1 were conceived and communicated to Gate CFV Solutions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“invention and communicated that invention to Respondent prior to July 22, 2021, the filing date of Respondent’s ’693 application. See Pet. 6–10. Of great importance here, however, are the requirements noted above, that Petitioner must show: (1) that Petitioner has at least one claim that is the same or substantially the same as Respondent’s claimed invention; (2) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to Respondent; and (3) that the challenged claims are drawn to the same or substantially the same invention as the invention Petitioner disclosed to Respondent. See 37 C.F.R. § 42.405(a)(2), 37 C.F.R. § 42.405(b)(3). For the reasons discussed below, Petitioner has not made the requisite showing in the Petition with respect to at least item (2).” slip op. at 9
None - Sterlite Technologies Inc. v. Afl Telecommunications, LLC.Institution deniedPTAB · Apr 9, 2025 · IPR2025-00127 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8, or 13 were unpatentable over either proposed obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- Skill levelOther
“B. Level of Ordinary Skill in the Art As noted above, resolving the question of obviousness requires determination of the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Here, however, as Patent Owner observes (Prelim. Resp. 10), 8 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. Petitioner has provided no assessment as to the level of ordinary skill to be considered in evaluating the grounds of obviousness that are advanced by Petitioner. The absence of such assessment calls into question the fundamental adequacy of Petitioner in carrying its burden to show a reasonable likelihood of success of unpatentability of the challenged claims that necessarily must take into account the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In any event, we do not discern that there is any apparent dispute between the parties as to the meaning of any claim term. In considering the record at hand, we determine that it is unnecessary to make explicit, or further address, any claim term in deciding whether or not to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the 9 Throughout their briefings, the parties refer to the limitations designated [1.1] through [1.7] using the term “element,” e.g., “element [1.7]” (see, e.g., Pet. 23; Prelim. Resp. 23). For consistency with the parties’ chosen nomenclature, we do the same in this Decision. controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“A POSITA would have been motivated to modify Summers’ fiber optic cable 50 to include Kaji’s intermittently-fixed optical fiber tape 2A to obtain the predictable result of enabling a higher density of optical fibers to be packed in Summers’ fiber optic cable 50, as contemplated by Kaji. *** a POSITA would have had a reasonable expectation of success because such modification would amount to nothing more than a simple substitution of Summers’ four-fiber ribbons 52 with Kaji’s intermittently-fixed optical fiber tape 2A by known methods of cable manufacturing. ***” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,287,591 - Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · Mar 21, 2025 · IPR2023-01460 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Dua, Hong, and Lockwood; the Board did not reach the additional grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1003 ¶¶ 43–45); see also PO Resp. 13 (“Nike applies lululemon’s proposed level of skill in the art.”). There being no dispute, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees, and 1 US 3,641,603, issued Feb. 15, 1972 (Ex. 1003, “Lockwood”). 2 US 2005/0193592 A1, published Sep. 8, 2005 (Ex. 1004, “Dua”). 3 US 6,558,784 B1, issued May 6, 2003 (Ex. 1011, “Norton”). 4 H. Hong, The development of 3D shaped knitted fabrics for technical purposes on a flat knitting machine, INDIAN JOURNAL OF FIBRE & TEXTILE RESEARCH, VOL. 19, PGS. 189–194 (Sep. 1994) (Ex. 1005, “Hong”). 5 US 2006/0053658 A1, published Mar. 16, 2006 (Ex. 1006, “Voughlohn”). notes that our Institution Decision adopted that construction, i.e., “that the ‘domed, three dimensional structure’ of the ‘flat-knitted element,’ recited in claims 1, 10, and 11, is formed ‘during the flat-knitting process.’” PO Resp. 12 (quoting Inst. Dec. 6). Thus, the parties make clear that the claims do not encompass forming the claimed “three-dimensional structure” after the flatknitting process is complete. Thus, we maintain the construction in our Institution Decision that the claimed “central portion having a domed, threedimensional structure” must be formed during the flat-knitting process, and not afterward.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nike and its expert mischaracterize Hong. After close review of the opinions of both parties’ experts, we credit the opinion of lululemon’s expert as more consistent with Hong’s disclosure than that of Nike’s expert. In particular, lululemon’s expert points to Hong’s unmistakable and explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (quoting Ex. 1005, 5) (emphasis added). That disclosure by Hong of “knitting directly” the 3D shape clearly suggests it is formed as part of Hong’s flat-knitting process, and not as part of some post-knit seaming process. Hong’s additional disclosure of “diminish[ing] the labour cost inherent to the use of two-dimensional fabrics” also cuts against Nike’s notion of an additional step of “forming that two-dimensional pattern piece into a three-dimensional structure” following the flat knitting step. See PO Resp. 21–22.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“d. Conclusion For all the above reasons, we find that the combination of Dua, Hong, and Lockwood teaches or suggests an article of footwear having “a domed, three-dimensional structure” that is formed during “a flat-knitting process” and “shaped to extend above the plane” of “flattened” side portions, as recited in claims 1 and 11. We also find that one skilled in the art would have a reasonable expectation of succeeding in forming an article of footwear having such a domed, three-dimensional structure as a result of combining the teachings of Dua, Hong, and Lockwood. And, because Nike does not otherwise contest that one skilled in the art would have had sufficient reason to combine the teachings of Dua, Hong, and Lockwood or that such combination discloses the remaining elements of claims 1 and 11, we need not further address those uncontested elements. See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“The Board, having found the only disputed limitations together in one reference, was not required to address undisputed matters.”). Thus, we conclude that lululemon demonstrates, by a preponderance of the evidence, that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood.” slip op. at 20
Patent outcomesUS 9,730,484 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,730,484 - Askeladden, L.L.C. v. Ohva, Inc.All claims unpatentablePTAB · Mar 10, 2025 · IPR2023-00921 · APJ Amee A Shah · IPR · Final written decision
Claims 1–4 are unpatentable as obvious: claim 1 over Cho, Aaron, and Carpenter; claim 2 over those references and de Geer; claim 3 over Cho and Aaron; and claim 4 over Cho, Aaron, and de …
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application are similar, as indicated by the redline comparison of two provided as Exhibit 1015. Critically, however, the “Summary of the Invention” sections are completely different. Id. at 2–4. The question is whether one of ordinary skill in the art would have understood with reasonable clarity, without the benefit of the Summary added for the ’286 patent/’674 application, that the ՚030 application describes a smart telephone that executes coded instructions to “convert the analog variable voltage audio signal received at the microphone port to the transaction data as digital data.”” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Here, although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. The evidence indicates that the claimed “transaction data” is distinct from the “transaction data B1-Bn” described in connection with the Figure 11 embodiment.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As discussed above in Section II.C, we construe the term “transaction data” as encompassing any data involved in a transaction, including account data. Again, we emphasize that claim 1 requires that the transaction data is accepted by the card reader from an output interface of the transaction card. Cho provides that card reader 230 reads a digital signal that includes account information of card 130 whereby the account information “may include at least one of an account number, a card expiration data, etc.” Ex. 1005, 5:54–58. We further agree with Petitioner that to the extent “transaction data” is for the purpose of conducting banking transactions, Cho’s account data of a credit card number and expiration date can perform that purpose. Patent Owner’s arguments that the transaction data cannot be “static” and that claim 1 requires “processing actual transaction-specific data” are not commensurate with the scope of the claim 1. The claim does not recite any limitations that the transaction data be dynamic or “not static,” nor does it recite any processing of the transaction data outside of using it to “facilitate transactions.” Petitioner has shown that Cho teaches the claimed transaction data.” slip op. at 55
Patent outcomesUS 9,679,286 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,679,286 - PTAB · Feb 27, 2025 · IPR2024-01228 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Fukui.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Petitioner shows a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable over Fukui. Accordingly, we institute inter partes review of all challenged calms based on all grounds asserted in the Petition. See SAS, 138 S.Ct. at 1354.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“III. DISCRETION TO DENY INSTITUTION UNDER 35 U.S.C. § 325(d) Patent Owner argues that if the Board determines that Petitioner’s Fukui-based grounds 1 and 2 are deficient, then the Board should deny institution under § 325(d). Prelim. Resp. 26. In particular, Patent Owner asserts that remaining grounds 3 through 5 rely on art (i.e., Sauter) a reference that is substantially similar to art that was before the Examiner (i.e., Sedor). Id. at 26–27. Because we do not determine that Fukui-based grounds are deficient, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. (citing Ex. 1003 ¶¶ 19–21). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’422 patent, and we adopt it for purposes of this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“Based on the present record, we agree with Petitioner that Patent Owner’s statements during prosecution are relevant to claim construction. Pet. 24–25. During prosecution of the parent application to the ’422 patent, Patent Owner stated, inter alia, that “a person of ordinary skill in the art would understand that the width of a cassette is simply the width of the cassettes from side to side and not some other ‘dimension’ such as the number of receptables or the like.” Ex. 1002, 187. Patent Owner further stated that it disagreed with the Examiner’s statement that paragraph 15 of the specification6 defines width in terms of the number of receptacles and that such a definition of width makes no sense in view of other claims where the standard with is defined in terms of a width of front edge of a tray on which the cassettes are secured. Id. We note that at this stage of the proceeding, Patent Owner has not provided any argument or evidence opposing Petitioner’s proposed construction or supporting the claim construction that it proposed during the district litigation. Our construction is preliminary and the parties are invited to address this claim construction more fully during trial.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,656,422
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.