- PTAB · Sep 21, 2022 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted review of claims 1, 2, 4–10, 12–17, 19, and 20 on all asserted grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“from Mr. Crevelt. Based largely on this testimony, Petitioner demonstrates a reasonable likelihood that Smith discloses a “method of electronic fund transfer between a stored value account and a gaming account” as recited in limitation [1.0].” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,785,926 - PTAB · Sep 21, 2022 · IPR2022-00706 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–10, 12–17, 19, and 20 on all petitioned grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314, the Office may not institute review of fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). For the reasons expressed below, we determine that Petitioner has demonstrated a reasonable likelihood of establishing that at least claim 1 is unpatentable. In accordance with the SAS decision and 37 C.F.R. § 42.108(a), we institute an inter partes review of all challenged claims of the ’176 patent on all grounds alleged by Petitioner. D. THE CHALLENGED CLAIMS” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Here, neither party proposes an interpretation of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to depart from that approach. B. LEVEL OF ORDINARY SKILL IN THE ART” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not contest Mr. Crevelt’s testimony, and we discern no reason to question Mr. Crevelt’s credibility. Thus, for purposes of institution, we adopt the level of skill in the art proffered by Petitioner. C. LEGAL STANDARDS” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner challenges claims 1, 2, 4–10, 12–17, 19, and 20 as obvious based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,466,176 - PTAB · Aug 31, 2022 · IPR2022-00696 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1, 2, 6, 8–12, and 15–20 after finding a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preamble—“computer-based method of transferring funds between a stored value account and a gaming account” (Pet. 13–15 (citing Ex. 1005 ¶¶ 36, 39, 43, 45, 92, Figs. 1, 3, 6;; Ex. 1001 ¶¶ 99–102)); Method Step 1—“receiving, by one or more computing devices, a player identifier of a player, wherein the player identifier is associated with a gaming account having a balance maintained by a casino computing system” (Pet. 15–19 (citing Ex. 1005 ¶¶ 9–19, 34–36, 39, 41–46, 47, 49, 59, 73, 76–78, 85–86, Figs. 1, 3, 6; Ex. 1001 ¶¶ 104– 113)); Method Step 2—“identifying, by any of the one or more computing devices, a stored value account based at least partially on the player identifier, wherein the stored value account is associated with a stored value payment vehicle issued to the player, and wherein a balance of the stored value account is maintained by an issuer processor computing system” (Pet. 19–23 (citing Ex. 1005, Abstract, ¶¶ 17, 33– 35, 41, 43–44, 49, 56, 58, 75, 77–78, 84, 91, 93–94, Figs. 1, 3, 5, 6; Ex. 1001 ¶¶ 114–124)); and Method Steps 3 and 4—“instructing, by any of the one or more computing devices, the issuer processor computing system to decrease the balance of the stored value account; and instructing, by any of the one or more computing devices, the casino computing system to increase the balance of the gaming account.” (Pet. 23–24 (citing Ex. 1005 ¶¶ 44–45, 77–79, 85, Figs. 3, 6; Ex. 1001 ¶¶ 125–130)). At this stage, Sightline does not respond to Everi’s showing. After reviewing the preliminary record (including Everi’s contentions, the cited portions of Smith, and the testimony of Everi’s declarant), we are persuaded that Everi demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as obvious over Smith.” slip op. at 5
Nonecites PhillipsPatents in suitUS 8,998,708 - PTAB · Aug 31, 2022 · IPR2022-00614 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1, 2, 6–11, 14–20, and 22–26 based on a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 9 (citing Ex. 1001 ¶ 37). Patent Owner does not presently challenge Petitioner’s definition of the level of ordinary skill in the art. On this record, we adopt Petitioner’s formulation regarding the level of ordinary skill in the art. We also find that Petitioner’s formulation is consistent with the level of skill reflected by the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes construction for any of the claim terms. Pet. 9–10. Accordingly, we decline to construe any claim terms at this time. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,809 - PTAB · Aug 31, 2022 · IPR2022-00663 · APJ Carl M Defranco · IPR · Institution
Review instituted for claims 1, 2, 4–9, 11–17, 19, and 20; Everi showed a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion We have fully considered Everi’s showing with respect to how Smith discloses or renders obvious each of the steps of method claim 1. See Pet. 14–27. In doing so, we conclude that Everi demonstrates a reasonable likelihood that the method of challenged claim 1 is unpatentable as obvious over Smith.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“over Smith. See Pet. 10–47. In challenging claim 1, Everi provides a detailed mapping of how Smith satisfies each of the recited steps. See id. at 17–27. Although Sightline does not respond to Everi’s challenge at this stage, we nonetheless consider Everi’s showing with respect to each of the recited steps of method claim 1.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. Here, neither party proposes an express construction of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to further construe any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“Everi’s declarant, Mr. Crevelt, testifies that one skilled in the art during the relevant time frame “would have at least a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Ex. 1001 ¶ 37. At this stage, Everi’s formulation of the relevant skill in the art appears reasonable. Hence, we adopt it for purposes of institution. We also note that Everi’s formulation appears consistent with the level of skill reflected in the asserted prior art.” slip op. at 6
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,196,123 - PTAB · Jul 14, 2022 · IPR2022-00411 · APJ Paul J Korniczky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6–9, 11, or 13 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, Preliminary Response, and other evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we deny Petitioner’s request to institute an inter partes review of claims 1, 2, 6–9, 11, and 13 of the ’690 patent.” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“2 The substantive discussion in Petitioner’s three declarations are essentially identical to each other and to the Petition. For example, pages 40–74 of the Petition are essentially identical to a single paragraph in each of the declarations –– Hopkins Decl. ¶ 88 on pages 54–92, Keough Decl. ¶ 88 on pages 63–97, and Denton Decl. ¶ 65 on pages 46–81. Thus, we question whether the declarations provide independent analysis and we give the declarations little, if any, weight. See Intex Recreation Corp. et al. v. Team Worldwide Corp., IPR2018-00875, Paper 129 at 40, n. 15 (PTAB Sept. 11, 2019) (“We further note that Dr. Stevick’s testimony is nearly identical to the language appearing in the Patent Owner Response, down to the case citation. This identity in language causes us to attribute less weight to a declarant’s testimony.” (citations omitted)).” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that Petitioner’s definition is unclear. Prelim. Resp. 14. Petitioner’s definition includes unclear and subjective requirements such as that the person of ordinary skill in the art have (a) worked “long enough to be aware of” certain items, including unexplained “primary existing RV features,” (b) familiarity with unexplained “common terminology,” (c) “good mechanical aptitude,” (d) “good spatial perception,” (e) “significant experience” with a wide variety of roles, and (f) “sufficient awareness of the various governmental regulations applicable to RVs.” Id. (citing Pet. 18–20). Patent Owner’s proposed definition of the person of ordinary skill in the art appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’690 patent. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Patent Owner.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“While we generally agree with Patent Owner that a person of ordinary skill in the art would understand that a truss and beam, as used in the ’690 patent, are two different structures, serve different purposes, and provide different benefits to the overall design of a chassis, Patent Owner identifies the function, but not the structure, of a truss and beam. After considering the extrinsic and intrinsic evidence, we construe: (1) a beam to be a “body, with one dimension large compared with the other dimensions, configured to carry lateral loads (perpendicular to the large and bending dimension) and bending movements;” and (2) a truss to be a “frame built from members in tension and compression.” These definitions are consistent with the support structures shown in Figures 7 and 9 and discussed in column 3, lines 21–48 of the Specification. Referring to Figures 7 and 9, for example, truss 93C is a frame built from members in tension and compression and beam 93D has one large dimension and supports loads applied to its perpendicular axis. In addition, third section 93 of chassis 90 has beams, not trusses. Ex. 1001, 3:26–28.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,046,690 - Interactive Communications International, Inc. v. Blackhawk Network, Inc.All claims unpatentablePTAB · Mar 15, 2022 · PGR2020-00084 · APJ Frederick C Laney · PGR · Final written decision
Claims 1–19, 21–42, and 44–53 are unpatentable as obvious over Szrek; claims 20 and 43 are unpatentable as obvious over Szrek and Gilmore.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s contention persuasive. We agree that the description of a POSA in this case, which is most consistent with the scope and content of the ’894 patent and the prior art, properly includes a working knowledge of both POS activation systems and lottery systems. Therefore, the level of skill in the art for this case is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Although Patent Owner’s proposal most accurately reflects the background of the hypothetical person of ordinary skill in the art, the differences between the parties’ proposed formulations are not material to any issue in dispute and the parties do not contend otherwise. All of the findings and conclusions set forth below would have been the same had we instead adopted Petitioner’s proposed formulation.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“After considering the parties’ arguments and evidence, we determine that the plain meaning of “transaction processor”/“transaction processor system” applies, which is a processor [system] that processes transactions between two devices.8 We agree with Petitioner that adding “third party” to the plain meaning simply creates uncertainty. For example, it is unclear whether “third party” imports a limitation for the owner/manufacturer of the processor/system to be a different entity than the owner/manufacturer of the retailer and lottery administration devices (which is unrelated to the functionality or structure of the processor/system) or whether “third party” 8 Rather than “between two devices,” Patent Owner refers to “between a lottery administration system and retailer.” PO Resp. 20. Because other elements in the claims dictate the particular devices with which the transaction processor communicates, we determine that it would be improper to import that limitation into the meaning of “transaction processor”/“transaction processor system.” Nevertheless, even if those particular devices were imported, it would not change our obviousness analysis because no issue rests on whether the alleged transaction processor in the prior art is processing a transaction between a lottery administration system and retailer. imports a limitation for the processor/system to be a separate and distinct device from the retailer point of sale and lottery administration devices. Although Patent Owner’s counsel made clear that the latter interpretation was intended (Tr. 41:10–42:7, 43:2–43:15), we do not agree that the use of the words “third party” in Figures 7 and 8 of the ’894 patent limits the “transaction processor” and “transaction processor system” to being a separate and distinct device from the retailer and lottery administration devices. Identifying the transaction processor as a “Third Party Processor” in two illustrative figures depicting a process (Ex. 1001, Figs. 7, 8), without anything more in the written description to explain why a “third party processor” may be an important or significant aspect of the transaction processor or invention as a whole, does not justify limiting the plain meaning of a “transaction processor” to the “third party processor” shown. Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (explaining that an invention will only be limited to its preferred embodiment when “the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Therefore, we construe “transaction processor” and “transaction processor system” in accordance with their plain meaning, which is a processor [system] that processes transactions between two devices. Additionally, we decline to limit “transaction processor” and “transaction processor system” to “third party” processors or systems because the intrinsic record does not justify such a modification and it would create uncertainty. However, we do construe the “transaction processor”/“transaction processor system,” “retailer”/“retailer POS,” and “lottery administration system” as separate and distinct components.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“processing unit, causes payment confirmation for the pre-printed lottery ticket to be provided to the lottery administration system. And Patent Owner disputes whether Petitioner has sufficiently shown Szrek discloses the transaction processor (store back office 240) provides payment confirmation to the lottery administration system (game provider 250). PO Resp. 13–14, 48–53; Sur-reply 19–20. We are persuaded by Petitioner, however, that Szrek’s description of the inter-operational characteristics of store back office 240, cash register/POS terminal 230, and game provider system 250 would have suggested to a skilled artisan at the time of the invention that store back office 240 would include an instruction to cause payment confirmation for the pre-printed lottery ticket to be provided to the game provider system 250. Ex. 1007, 4:28–29, 4:56–67, 5:17–20, 6:44–47; Ex. 1005 ¶¶ 62–64.” slip op. at 43
Patent outcomesUS 10,769,894 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,769,894 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCNo claims unpatentablePTAB · Mar 7, 2022 · IPR2020-01367 · APJ Scott C Moore · IPR · Final written decision
Claims 1–36 were not shown unpatentable because Kennewick did not teach the claimed ambiguity of words having different meanings in different contexts or the required context identification.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art (a “POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4–5 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not dispute Petitioner’s assertion, and Patent Owner and its declarant, Dr. Gershman, both apply Petitioner’s definition of a POSITA. Resp. 3. On this record and given the absence of any dispute, we adopt and apply Petitioner’s proposed formulation regarding the level of ordinary skill in the art, which we find is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In its Petition, Petitioner asks us to construe the “implicit hypothesis” term of claims 38, 40, and 42. Pet. 7–8. As discussed above, however, Patent Owner filed a disclaimer that eliminated these claims from this proceeding. Petitioner does not ask us to construe any terms in the remaining challenged claims. See id.; see generally Reply. Patent Owner also does not ask us to construe any claim terms. See generally Response. On this record, we decline to adopt constructions of any claims. See Nidec, 868 F.3d at 1017. slip op. at 9
- Expert testimonyPetitioner expert discountedMixed
“Dr. Smyth’s declaration testimony about words having different meanings in different contexts is unpersuasive. Dr. Smyth testifies that the keyword “‘temperature’ could be interpreted as an outdoor temperature or as a body temperature depending on context.” See Ex. 1002 ¶ 69. This testimony is not persuasive because the word “temperature” refers to a measurement of warmth or coolness in both examples. That is, “temperature” has the same meaning in both contexts. Moreover, as Dr. Gershman points out, Kennewick does not teach or suggest a body temperature. Ex. 2001 ¶ 26. Dr. Smyth’s testimony is unpersuasive for this additional reason. See Ex. 1002 ¶ 69.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“forth by both parties, we are not persuaded that Kennewick teaches or suggests that the word “temperature” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. As detailed above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with the ordinary and customary language of the claims, the specification of the ’681 patent, and the disclosure of Kennewick. See id. In contrast, Petitioner’s arguments are inconsistent with the ordinary and customary meaning of the claim language and the specification of the ’681 patent, and are not adequately supported by the disclosure of Kennewick. On this record, and having considered the evidence and arguments put forth by both parties, we also are not persuaded that Kennewick teaches or suggests that the phrase “what about flight one hundred and twenty too?” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 6–7; Ex. 2001 ¶¶ 28–30. Moreover, even if the “flight” example did describe two contexts (one in which “flight 122” exists, and one in which it does not), Petitioner’s argument would still fail because Petitioner has offered no persuasive evidence that Kennewick teaches or suggests identifying one of these two alleged contexts based on Kennewick’s short-term shared information (dialog history) and long-term shared information (user profiles) as required by independent claims 1, 13, and 25. For the reasons explained above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with and supported by the claims and specification of the ’681 patent and the disclosure of Kennewick. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. In contrast, Petitioner’s arguments are not consistent with or supported by the ordinary and customary meaning of the claim language, the specification of the ’681 patent, or the disclosure of Kennewick.” slip op. at 20
Patent outcomesUS 8,073,681 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,073,681 - PTAB · Feb 11, 2022 · IPR2021-01341 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–10, finding a reasonable likelihood of success on the Tan and Boies obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s witness, Mr. Andrews, may not be credible because of some past relationship with Petitioner or its related companies. Prelim. Resp. 50–52. Patent Owner offers mere unsubstantiated allegations and cites no persuasive evidence that causes us to question Mr. Andrews’s credibility at this stage of the proceeding.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: An ordinary artisan would have been a person having, as of October 24, 2001, a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶40.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Prelim. Resp. For the purposes of this Institution Decision, we accept Petitioner’s unopposed, proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’994 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,713,994 - PTAB · Feb 11, 2022 · IPR2021-01353 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on all challenged claims, 1–7 and 14–16, under all three §103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: An ordinary artisan as of October 24, 2001 would have been a person having a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶19.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Prelim. Resp. For the purposes of this Institution Decision, we accept Petitioner’s unopposed, proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’709 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“one of ordinary skill in the art, and therefore no claim construction is necessary at this time.” Pet. 5. Patent Owner argues that Petitioner appears to provide some interpretation of the claims in its challenges and states that Petitioner’s assertion that the claims carry their plain and ordinary meaning is “flawed,” but does not expressly assert that any claim language requires express construction by the Board. See Prelim. Resp. 9–10, and generally. At this stage of the proceeding, we do not find it necessary to construe any claim language. The language of the claims appears to be readily understandable on its face. If any claim language is in dispute at trial, we encourage the parties to further develop the record thereon. C.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,532,709
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.