- CMS Cepcor Ltd. / CMS Cepcor Americas LLC v. Sandvik Intellectual Property ABNo claims unpatentablePTAB · Apr 16, 2026 · IPR2024-01381 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–14 were not shown unpatentable because Polinski and Piepho do not teach the claimed tapered region extending from the shaft’s second end, and Petitioner did not establish adequate motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Petitioner argues that a person of ordinary skill in the art (“POSITA”) relating to the ’090 patent would have had “a bachelor’s degree in mechanical engineering or a related field, and at least 2 years of experience with industrial equipment design and development.” Pet. 3 (citing Ex. 1002 ¶ 29). Petitioner further contends that one of ordinary skill “may also have a combination of more formal education and less work experience or a combination of less/different formal education and more work experience.” Id. In the Patent Owner Response, Patent Owner states that it “does not object to the defined level of skill in the art.” PO Resp. 12 (citing Pet. 3). appears consistent with the problems addressed in the ’090 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“challenge, the crux of the parties’ dispute revolves around the limitation in claim 1 of “an axial region of the shaft body extending from the second end and being tapered relative to a longitudinal axis of the shaft.” We agree with for the tapered axial region and that starting point would be the extremity of the shaft not an undefined point in the “end region.” Because Patent Owner proposes a construction of “end” that would have general application to all claim terms including the first end of the shaft, the second end of the shaft, and the sleeve end, and that construction has no bearing on the issues we address below, we do not reach Patent Owner’s proposed general construction of “end” by itself. We determine that no other claim terms require express construction for purposes of this Decision. 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’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above in our claim construction analysis, apart from the issue of the general construction of “end,” we determine that this limitation uppermost extremity of the shaft. Because neither Polinski nor Piepho disclose a tapered axial region starting at the uppermost extremity of the shaft, we find that Petitioner has not shown that the combination of Polinksi and Piepho discloses this limitation.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“This paragraph discusses “accurate alignment” in connection with joint 21, not tapered end 25. Ex. 1018, 3:23–35. The paragraph subsequently states that both joint 21 and end 25 are tapered but that shaft end 25 may alternatively be cylindrical. Id. We also find nothing in this paragraph supporting Petitioner’s assertion that alignment “is notoriously more difficult with purely cylindrical shafting” (Pet. 16–17). In order to support its position, Petitioner improperly conflates separate statements in this paragraph of Piepho, i.e., joint 21 provides accurate alignment, joint 21 is tapered, and end 25 is tapered. Petitioner makes an unsupported logical leap that the result of these three statements is that tapered end 25 provides accurate alignment. However, Petitioner fails to reconcile this argument with the final sentence in this paragraph that shaft end 25 may also be cylindrical as shown in Figure 4. Figure 4 “is an external view of another embodiment of” Piepho’s shaft. Ex. 1018, 2:49–50. In Figure 4, joint 21 has the same tapered configuration as shown in Figure 3 but end 25 is not tapered. Based on our review of Piepho’s Figures 3 and 4, we find that Piepho’s reference to “accurate alignment” refers to joint 21 and not to tapered end 25 as Petitioner alleges. Because Mr. Smith’s testimony (Ex. 1002, 59) essentially parrots the Petition on this point and is inconsistent with our finding, his testimony is entitled to little, if any, weight. For the foregoing reasons, we find that Petitioner has not established that a person of ordinary skill in the art would have been motivated to would teach this claim limitation.8 Because Petitioner has not shown that the combination of Polinski and Piepho teaches limitation 1b or an adequate motivation to combine, Petitioner has not shown by a preponderance of the evidence that claim 1 is obvious over Polinski, Piepho, and Harless.” slip op. at 27
Patent outcomesUS 11,014,090 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,014,090 - PTAB · Mar 25, 2026 · IPR2024-01380 · APJ Arthur M Peslak · IPR · Final written decision
The Board cancelled original claims 1–10 and granted substitute claims 11–19 because Petitioner did not prove claim 11 obvious over Torrence and Piepho.
RulingsFinal written decision- 112 supportGranted
“relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Id. “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Yingbin-Nature (Guangdong) Wood Ind. Co., Ltd. v/ Int’l Trade Com’n, 535 F.3d 1322, 1334 (Fed. Cir. 2008). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “This inquiry . . . is a question of fact.” Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Further, inventions in the mechanical and electrical-based arts usually involve predictable factors and can be more predictable than other fields, such as chemistry and biology. See In re Fisher, 427 F.2d 833, 839 (CCPA 1970);” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We determine that no express construction of any claim term is necessary for purposes of this Decision. 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’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“[c]ombin[e] the tapered region of Piepho with the shaft of Torrence, the tapered region would extend from an uppermost extremity of the shaft.” RMTA Opp. 9. But, Petitioner concedes that neither reference discloses a tapered region extending from the uppermost extremity. Petitioner argues that Torrence’s shaft is straight (Amended RMTA Sur-reply 9) and that “[t]he tapered region of Piepho does not extend to the extreme end of the shaft.” RMTA Opp. 11 (emphasis added). Because neither Torrence nor Piepho discloses a shaft with a tapered region that “extends from an uppermost extremity of the shaft,” we find that the combination of Torrence and Piepho does not teach limitation 11[a]. We now analyze whether Petitioner provides reasoning with a rational underpinning why a person of ordinary skill in the art would have been motivated to modify Torrence with Piepho to extend Torrence’s taper from the upper extremity of its shaft. slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,827,568 - DBR Finance, Inc. v. Rugged Cross Hunting Blinds, LLCNo claims unpatentablePTAB · May 29, 2025 · IPR2024-00291 · APJ Cynthia L Murphy · IPR · Final written decision
The Board held claims 1–19 not unpatentable because Petitioner did not prove the proposed Whybrew–Strength combinations disclosed the claimed mesh panels with spaced holes.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We question, therefore, whether someone having an education in textile engineering or physics, but no experience in the field of hunting blinds, would be consistent with the level of skill portrayed by the ’535 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that Petitioner’s expert’s experience, education, and qualifications are rooted in textiles, fibers and physics, and sophisticated subjects related thereto. See Ex. 1007 ¶¶ 14–20. But his deposition revealed that he has little or no experience in the field of hunting blinds. See Ex. 2038, 8–14.5 5 The same might be said of Patent Owner’s expert. See Ex. 2031, ¶¶ 6–7; Ex. 1023, 16. However, our obviousness analysis leaned lightly, if at all, on her declarations and testimony.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Mesh Material In the Petition, Petitioner asks that “the term ‘mesh material’” be interpreted in accordance with “a plain and ordinary usage.” Pet. 25. Per Petitioner, the “plain and ordinary” meaning of the term “mesh material” is “a woven material of open texture with spaced holes therein.” Id. Per Petitioner, “[o]ther typical terms used to describe a mesh-like material” are “a screen material, or a netting material, which are believed to be synonyms.” Id. Patent Owner does not dispute that a mesh material would have an open texture with spaced holes therein. See PO Resp. 18. We find that Petitioner’s proposed construction aligns with the ’535 Patent’s specification. See Ex. 1001. The drawings in the ’535 Patent depict the mesh material 26 as having an array of uniformly spaced circular holes forming a net-like structure (see id., Fig. 1A, 1B, 4, 9) or an array of uniformly spaced rectangular openings (see id. Fig. 8) forming a screen-like structure. The embodiments of the mesh material 26 listed in the ’535 Patent (e.g., a mesh banner material, scrims, a network of fibers, etc.) are materials having net-like or screen-like structures. See id. at 6:47–7:28.6” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Our construction aligns with the claim language; Petitioner’s proposed construction does not. See Ex. 1001, 10:4–19. The independent challenged claims set forth “one or more panels of mesh material” and then set forth “said one or more panels comprising: a first side with a camouflage pattern; and a second side with a dark color coating.” Id. at 10:4–11. The recited “said one or more panels” corresponds to the previously recited “one or more panels of mesh material,” not panels comprising a material that was only a “mesh” prior to printing/coating. See id. Also, the independent challenged claims set forth that “the one or more panels of the mesh material define an outer surface of the camouflage structure.” See id. at 10:18–19, 1:23–24 (emphasis added). And the panel(s) defining a hunting blind’s outer surface would include the dark color coating. Our construction aligns with the ’535 Patent’s specification; Petitioner’s proposed construction does not. See Ex. 1001. The ’535 Patent repeatedly describes the relevant panel material in the hunting blind (i.e., post printing/coating) as a mesh material. See id., Abst., 1:19–5:34, 6:47–7:28, 9:16–54, Figs. 1A, 1B, 9. The ’535 Patent expressly describes and depicts the mesh material 26 as including the camouflage pattern and the dark-color coating. See id. at 1:52–56, 3:24–25, 3:31–33, Figs. 1A, 1B. The ’535 Patent says that “panels” of this coated mesh material 26 “are used to form” a hunting blind. Id. at 3:22–26. The ’535 Patent says that “[m]esh material is presented for a hunting blind with a camouflage pattern printed on a first side and a second side with a color coating.” Id. at Abst. The ’535 Patent says that “mesh material of interwoven fabric is provided for a hunting blind including a camouflage pattern printed on a first side and a second side with a dark color coating.” Id. at 1:19–22; see also id. at 1:44–49. Our construction aligns with the ’535 Patent’s prosecution history; Petitioner’s proposed construction does not. See Ex. 1006. As mentioned above, throughout prosecution of the ’535 Patent, the same prior art material was mapped to the claimed panel(s) of mesh material. See Ex. 1006, 64–72, 122–106. The mapped-to prior art mesh material was described during prosecution as an “interwoven fabric” with “a pattern” printed on a first side and “a dark color coating” on a second side. Ex. 1006, 64; see also id. at 122. And the mapped-to prior art mesh material (i.e., which included not only the interwoven fabric but also the printed pattern and the dark color coating) had a “net-like structure” with an array of uniformly spaced “net holes” that are “not closed.” Ex. 2021, 4:1–5, see also id. at 2:58–3:6, 4:34–45, Figs. 1, 2a. Thus, we understand that claimed panel(s) of mesh material must have” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“However, Patent Owner does not bear the burden of proving Strength’s camouflage material 10 does not have holes. Rather, Petitioner bears the burden of proving that Strength’s camouflage material 10 does have holes. And Petitioner’s arguments that undermine Patent Owner’s position that Strength’s camouflage material 10 does not have holes, concurrently undermine Petitioner’s position that Strength’s camouflage material 10 does have holes. Per Petitioner, “Strength is silent on whether visible holes exist in the fabric” (Pet. Reply 8) and “the Strength reference doesn’t discuss anything about holes” (Tr. 14). Petitioner’s expert testified that it was his “understanding that Strength is silent” on “whether or not there are holes.” Ex. 2038, 44. Petitioner contends that Strength’s silence about the presence/ absence of holes hinders Patent Owner from proving that Strength’s camouflage material 10 does not have holes. See Pet. Reply 8. We agree. But this same silence likewise hinders Petitioner from proving that Strength’s camouflage material 10 does have holes.” slip op. at 35
Patent outcomesUS 11,399,535 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,399,535 - Toast, Inc v. Gratuity, LLCAll claims unpatentablePTAB · Mar 24, 2025 · IPR2023-01408 · APJ Cynthia L Murphy · IPR · Final written decision
Claims 1–13 are unpatentable as obvious over Marshall, Marshall and Webb, Phillips and Marshall, or Phillips, Marshall, and Webb.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner’s proposed definition of a POSITA, to the extent that it aligns with the level of skill portrayed by the ’050 Patent. As discussed above, the ’050 Patent does not does not provide one with any technical direction for making and using a multi-restaurant embodiment that avoids or solves calculation/extraction problems due to disparate client (e.g., restaurant) systems. The ’050 Patent also does not provide one with any technical direction for scaling up and/or transitioning to a cloud-based system. We infer from this that a POSITA would have the education and the experience enabling him/her to effectively and economically handle these tasks without technical direction, despite the problems associated therewith. Put another way, the actual application of these technical endeavors would not be beyond his/her skill. Although Petitioner provides a slightly different expression for the level of ordinary skill in the art (see Pet. 9–10), it substantively agrees with Patent Owner’s proposed level of skill and adopting Petitioner’s precise level of ordinary skill would not change our decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner presents several pages of argument about claim construction, but offers no proposed construction for any of the claim terms. See PO Resp. 11–18. “Petitioner maintains that no claim construction is necessary.” Pet. Resp. 4. We determine that no express claim construction is necessary for any claim terms. 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 controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“with a restaurant’s timeclock programs, time and attendance systems, and/or payroll processing systems. See Ex. 1004 ¶¶ 69, 108. Webb discloses that, in a restaurant setting, a POS system can be communicatively coupled to a time and attendance server. See Ex. 1006, Abstract, 24:51–60, Figs. 1A, 1B. Thus, Marshall and Webb describe similar and compatible systems in the same field of art—systems for tracking employee and sales information in the hospitality business. And Petitioner provides evidence that it would have been obvious to a POSITA to combine these teachings in the claimed manner. See Ex. 1002 ¶¶ 207–212. Patent Owner argues that Webb “does not cure the deficiencies” of Marshall. PO Resp. 41. However, as discussed above, we disagree with Patent Owner regarding Marshall’s deficiencies. Thus, Webb need not cure these alleged deficiencies in Marshall.10 Patent Owner does not otherwise contest Petitioner’s contention with respect to this asserted ground of unpatentability. Consequently, we conclude that, on the record before us, Petitioner has proven that claims 4–7, 9, and 11–13 would have been would have been obvious over Marshall and Webb. 10 Patent Owner also mentions that there is “simply no motivation to combine Marshall and Webb.” PO Sur-Reply 7; see also PO Resp. 42. But Patent Owner does not address the arguments and evidence set forth by Petitioner.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s client-side-only arguments are overly focussed on the setup disclosed in Marshall’s Figure 3, and, in any event, do not coincide with Petitioner’s citations to Marshall. Petitioner points out in its Reply that Patent Owner (and its expert) fail to address Marshall’s multi-employer 8 The ’050 Patent lists a provisional application filed on September 4, 2012 as a related application. Ex. 1004, code (60). 9 Marshall discloses that “data transfer” can be “data transfer is performed via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Ex. 1004 ¶ 110. embodiment. See Pet. Reply 6. Petitioner also points out in its Reply that Patent Owner (and its expert) fail to address Marshall’s disclosure that the server executing the GrataSoft software can be separate (i.e., not co-located) with the POS server executing the Aloha software. Id. at 10. In Patent Owner’s Sur-Reply, these topics remained undiscussed. See PO Sur-Reply 1–6. Both aspects of Petitioner’s contentions support that Marshall’s system does disclose a gratuity management system that is separate and distinct from the client POS servers. Patent Owner argues that there would be problems “associated with calculations of gratuities based on client-specific information extracted from disparate, ad hoc client business systems.” PO Resp. 27–28; Ex. 2006 69–73. Patent Owner also argues that there would be “problems associated with scale-up and transitioning to a cloud-based system, and associated cost and security issue. PO Resp. 27; Ex. 2006 ¶¶ 87–91. However, as discussed above, the ’050 Patent portrays that a POSITA would have the education and experience enabling him/her to effectively handle the conversion of a singlerestaurant system to a multi-restaurant system; and to transition to a safe and secure cloud system in a cost/time effective manner. Thus, these problems would not detract from the obviousness of a multi-restaurant and/or cloud-based version of Marshall’s invention. Patent Owner does not otherwise contest Petitioner’s contention with respect to this asserted ground of unpatentability. Consequently, we conclude that, on the record before us, Petitioner has proven that claims 1–3, 8, and 10 would have been would have been obvious over Marshall.” slip op. at 16
Patent outcomesUS 9,741,050 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,741,050 - PTAB · Mar 18, 2025 · IPR2024-01380 · APJ Richard H Marschall · IPR · Institution
The Board instituted inter partes review of claims 1–10 based on a reasonable likelihood that the Polinski and Piepho combination renders claims 1–8 obvious.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art relating to the ’568 patent would have had “a bachelor’s degree in mechanical engineering or a related field, and at least 2 years of experience with industrial equipment design and development.” Pet. 5 (citing Ex. 1002 ¶ 30). Petitioner also contends that one of ordinary skill “may also have a combination of more formal education and less work experience or a combination of less or different formal education and more work experience.” Id. We view Petitioner’s definition as consistent with the problems and solutions disclosed in the ’568 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See 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)). Petitioner argues that “[n]o terms need construction because the claims read on the prior art identified below under any construction consistent with Phillips.” Pet. 14–15. Based on the record before us, we need not expressly construe any claim terms to resolve the issues presented at this stage of the proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Piepho and Polinski in the manner Petitioner proposes and further demonstrates that the combination discloses all of the limitations of claim 1. 3. Conclusion Based on the foregoing, Petitioner establishes a reasonable likelihood of proving that the combination of Piepho and Polinski renders claim 1 obvious. We have also reviewed Petitioner’s arguments addressing claims 2–8. See Pet. 31–40. Based on our review of the current record, Petitioner also establishes a reasonable likelihood of proving that claims 2–8 would have been obvious over Piepho and Polinski.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“and Piepho renders claim 1 obvious. For each limitation in claim 1, Petitioner points to specific portions of the references that support its position that the combination discloses the limitations in question. See Pet. 16–31. Petitioner also cites to declarant testimony addressing the limitations. Id. (citing Ex. 1002). In support of its combination of Polinski and Piepho, Petitioner argues that both references disclose “gyratory rock crusher[s],” “Piepho further teaches the interchangeability between a cylindrical joint and a tapered joint,” and one of ordinary skill in the art (a “POSITA”) would have been motivated to combine Piepho’s tapered joint with Polinski. Id. at 16–17 (citing Ex. 1002 ¶¶ 80–81; Ex. 1015, 1010; Ex. 1016, 3:24–35). According to Petitioner, “Piepho teaches the interchangeability between a cylindrical joint and a tapered joint” and “a POSITA would understand the advantages afforded by the use of a tapered joint as compared with a cylindrical joint,” including the fact that “tapered interference joints, while more expensive to manufacture, provide[] advantages in assembly, alignment, and fit-up.” Id. at 17 (citing Ex. 1002 ¶¶ 80–81).” slip op. at 11
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,827,568 - PTAB · Mar 18, 2025 · IPR2024-01381 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–14 based on a reasonable likelihood that the Polinski, Piepho, and Harless combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the challenged claims in the petition.” 35 U.S.C. § 314(a). Because we determine that Petitioner demonstrates a reasonable likelihood that at least one challenged claim is unpatentable, we institute an inter partes review of all claims as challenged in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (“POSITA”) relating to the ’090 patent would have had “a bachelor’s degree in mechanical engineering or a related field, and at least 2 years of experience with industrial equipment design and development.” Pet. 3 (citing Ex. 1002 ¶ 29). Petitioner also contends that one of ordinary skill “may also have a combination of more formal education and less work experience or a combination of less/different formal education and more work experience.” Id. Patent Owner states that, for purposes of its Preliminary Response, it “does not object to Petitioner’s position on the level of ordinary skill in the art.” Prelim. Resp. 21 (citing Ex. 2001 ¶ 27). At this stage, and based on Petitioner’s undisputed contentions, we view Petitioner’s definition as consistent with the problems and solutions disclosed in the ’090 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See 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)). Petitioner argues that “[n]o terms need construction because the claims read on the prior art identified below under any construction consistent with Phillips.” Pet. 10–11. Patent Owner “submits that the Board need not construe any claim terms as the claims are patentable under any reasonable construction.” Prelim. Resp. 20. Based on the record before us, we need not expressly construe any claim terms to resolve the issues presented at this stage of the proceeding.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner does not contest Petitioner’s combination of Polinski and Piepho, but instead argues that no motivation to combine exists because Harless “would render both Polinski and Piepho inoperable for their intended purpose of preventing shaft failure.” Prelim. Resp. 22–31 (citing, inter alia, Ex. 2001 ¶¶ 48–59). When addressing intended purpose, Patent Owner argues that “Polinski mitigates shaft fatigue failure . . . specifically by omitting threads that are typically cut into gyratory shafts to attach a crusher mantle.” Id. at 23 (citing Ex. 1017, 1:61–67). Patent Owner asserts that Polinski instead teaches that shaft stress can be reduced “by cutting threads into a bearing sleeve.” Id. at 24 (citing Ex. 1017, 1:1–67). Piepho, according to Patent Owner, seeks a similar goal: “to prevent fretting wear and corresponding fatigue,” by “coating a portion of the shaft fit into a yoke bushing (which Petitioner alleges is a sleeve) with a ceramic coating.” Id. at 24 (citing Ex. 1007, 2:15–25; Ex. 2001 ¶¶ 42–43). Patent Owner argues that introducing Harless’s groove onto the main shaft would undermine the purposes of Piepho and Polinski because these would “introduce stress concentrations,” “lead to increased fretting wear,” and “increase the likelihood of fatigue failure.” Id. at 24–29. Patent Owner also argues that Petitioner’s approach relies on impermissible hindsight because one of ordinary skill would not seek to rely on Harless’s grooved shaft for use in “mounting of gears and similar components” rather than “for crushing applications, much less in a gyratory crusher, as claimed.” Id. at 30. According to Patent Owner, Harless fails to disclose “that its shaft is subjected to the same substantial stresses generated by the cyclic loading as the shafts disclosed by Polinski and Piepho.” Id. As to Petitioner’s argument that a POSITA would be motivated to make the combination to simplify the equipment and process for interference fits, Patent Owner contends that “Petitioner impermissibly picks and chooses aspects of the three references” and ignores what they teach to a POSITA, namely that “Polinski and Piepho are both directed to mitigating shaft fatigue” and adding Harless’s oil groove introduces several problems, as noted above. Id. at 31 (citing Ex. 2001 ¶¶ 48–59). Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Piepho, Polinski, and Harless in the manner Petitioner proposes. Notably, Patent Owner does not directly contest Petitioner’s stated reasons why a POSITA would be motivated to make the proposed combination, i.e., that the combination would save money and simplify the equipment and process for making and breaking interference fits. See Pet. 19–21; Prelim. Resp. 22–31. Patent Owner instead suggests that Petitioner improperly ignores disadvantages when adding Harless’s groove to Polinski and Piepho, which at best suggests a weighing between the advantages Petitioner contends the addition of Harless’s groove provides and the alleged disadvantages. See Prelim. Resp. 22–31. While Patent Owner’s arguments may ultimately prevail, given the highly factual nature of the competing expert testimony and the weighing necessary to resolve this issue, we view the issues as best resolved after further development during trial and after Petitioner has the opportunity to respond to Patent Owner’s arguments and evidence. On this record and at this stage of the proceeding, Petitioner’s arguments and supportive declarant testimony adequately establishes a motivation to combine the references.” slip op. at 17
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,014,090 - Cimbria Srl v. 3u Vision SrlInstitutedPTAB · Sep 20, 2024 · PGR2024-00018 · APJ Kevin W Cherry · PGR · Institution
The Board instituted PGR on claims 1–15 and all petitioned grounds, finding a reasonable likelihood that claims 1–3, 6, and 10 are obvious over ElMasry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’947 patent is eligible for post-grant review, and has shown it is more likely than not that at least one challenged claim of the ’947 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’947 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Physics, Chemistry, or an equivalent field, and at least 2-3 years of academic or industry experience in engineering related to optical sorting systems.” Pet. 17 (citing Ex. 1009 ¶ 21). Patent Owner did not file a Preliminary Response to the Petition and, therefore, at this point, does not contest Petitioner’s definition for one of ordinary skill in the art. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Having considered the record, we determine that no express claim construction is necessary for any claim terms for the purposes of rendering a decision 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 controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage, we find it unnecessary to resolve whether “electronic control unit” and “processing module” should be construed as mean plus function limitations under § 112(f), because it is possible to address the obviousness grounds presented whether or not these limitations are so construed, and even if the claims were indefinite in the manner Petitioner contends. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (noting indefiniteness of a means-plus-function limitation does not always render it impossible to adjudicate a prior-art challenge). We direct the parties to address the construction of these claim terms and Petitioner’s interpretation during trial.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed Petitioner evidence and citations and, on the current record, we find that Petitioner has shown that it is more likely than not that ElMasry teaches all the limitations of claim 1, without need for any modification. Thus, we find that Petitioner has shown that it is more likely than not that claim 1 would have been unpatentable as obvious over ElMasry.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,666,947 - Viking Drill & Tool, Inc. v. Hongjia WangAll claims unpatentablePTAB · Jul 5, 2024 · IPR2023-00474 · APJ William V Saindon · IPR · Final written decision
Claims 1, 2, 5, 7, 8, 12–15, 18, 19, and 22 are unpatentable as obvious over Zhou, Bannister, Gentry, and Durfee; the Board did not reach the additional Welty-based grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“known that a spiral flute helps to lift swarf away from the cutting surface. Pet. 67 (citing Ex. 1004 ¶¶ 201–202). The testimony of Petitioner’s expert states that a person of ordinary skill in the art would have known that “the spiral shape of the flute side walls was desirable since it helps to lift chips, or swarf, away from the cutting surface and evacuate it from the hole being cut.” Ex. 1004 ¶ 202. This makes intuitive sense, as a wall perpendicular to the surface would push accumulated chips along, whereas the wedge shape of the spiral will lift them away from the cutting surface. According to Petitioner, a person of ordinary skill in the art would have been motivated to modify Zhou’s flute to arrange the cutting edges such that they, as a whole, have a spiral shape in order to achieve these chip-lifting benefits. Thus, we find that a person of ordinary skill in the art at the time of the invention had a reason to include the known feature of cutting tips that spiraled around the cone portion, in order to achieve the benefit of providing better chip removal.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person of ordinary skill in the art (POSA)] with respect to the ’583 patent would have been an individual educated in mechanical engineering with a bachelor’s degree and at least one or two years of experience in the development of drill bits, or an associate’s degree and at least five years of experience in the development of drill bits. A POSA would typically work in a team with machinists and would be aware of developments in the field of machine tools, particularly drill bits, for example by attending trade shows, and by reading patents and trade journals.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“formed sequentially and spirally on a cone portion exterior” of the twist drill. The parties agreed to construe the cutting blade groups being “formed spirally” as meaning that the cutting blade groups are slanted with respect to the rotational axis, i.e., are not perpendicular to the rotational axis. The parties have agreed that being “formed spirally” is met by axial relief. Pet. 23; Tr. 77:9–12. We adopted this construction. slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Construction of Remaining Terms We determine that no further terms require construction. 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 19
Patent outcomesUS 11,007,583 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,007,583 - Viking Drill & Tool, Inc. v. Hongjia WangAll claims unpatentablePTAB · Jul 5, 2024 · IPR2023-00473 · APJ William V Saindon · IPR · Final written decision
Claims 1, 2, 5, 7, 8, 12–15, 18, 19, and 22 are unpatentable as obvious over the asserted prior art.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“(noting the header). Petitioner argues that Patent Owner specifically cites to this document as evidence of beliefs held by a third party (different from Astro). Mot. Excl. 7. Patent Owner asserts that these are “observations of testing.” Opp. Mot. Excl. 10. We note that this document was produced by Astro, a party with ties to Patent Owner. Notwithstanding, Patent Owner attempts to attribute the statements in this document to another third party (not Astro). We agree with Petitioner that Patent Owner is attempting to use these statements for the truth of the matter asserted. See, e.g., Resp. 50–51 (alleging that the third party “was [] impressed with their performance” and citing to Exhibit 2059 as evidence of “initial testing documents”). Accordingly, Patent Owner is not only attempting to use these documents for the truth of the matter asserted, but Patent Owner is attempting to attribute them to a party different from the party that made the statements. We do not find any exceptions to the hearsay rule to be applicable here. In addition, Exhibit 2059, as offered, is misleading and confusing. We exclude Exhibit 2059. 5. Exhibit 2060 Exhibit 2060 appears to contain a series of slides and notes, as would be used in a presentation. The document appears to be that of a third party. Patent Owner asserts that the content in this exhibit demonstrates the third party’s “strong desire to copy” the claimed invention. See, e.g., Resp. 51, 59. Assuming they are what they are alleged to be, then these are out-of- court statements by a third party being used to prove the truth of the matter asserted—that an employee of the third party thought highly of Patent Owner’s licensed drill bits. We are not persuaded by Patent Owner’s passing arguments that these represent “real-time observations, impressions of, and reactions to” the claimed invention. Opp. Mot. Excl. 9–10. We exclude Exhibit 2060.” slip op. at 77
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner asserts the following level of ordinary skill in the art: A [person of ordinary skill in the art (POSA)] with respect to the ’583 patent would have been an individual educated in mechanical engineering with a bachelor’s degree and at least one or two years of experience in the development of drill bits, or an associate’s degree and at least five years of experience in the development of drill bits. A POSA would typically work in a team with machinists and would be aware of developments in the field of machine tools, particularly drill bits, for example by attending trade shows, and by reading patents and trade journals. Pet. 25; see also Ex. 1004 ¶ 14. Patent Owner does not appear to challenge this proposed level of skill or offer its own. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the ’583 patent and prior art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“which are easy to be removed.” Ex. 1001, 9:19–22 (emphasis added). Another portion of the specification discusses chip size in terms of the size of an individual composite cutting blade group. Id. at 3:5–25. Accordingly, we find that Petitioner’s proposed construction is consistent with the specification of the ’583 patent. We construe the “finer chips” limitation as reciting a natural consequence of having a plurality of cutting surfaces, relative to having one large cutting surface. 3. Construction of Remaining Terms We determine that no further terms require construction. Realtime” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusNot shown unpatentable
“3. Objective Indicia of Non-Obviousness Patent Owner asserts that objective indicia of non-obviousness overcomes any prima facie obviousness case. Resp. 44–60; Sur-reply 15– 26. Patent Owner first asserts that there is a nexus between the challenged claims and its alleged objective indicia. Resp. 46–49; Sur-reply 15–19. Patent Owner also alleges that its evidence shows copying (Resp. 49–55; Sur-reply 20–21), industry praise (Resp. 55–56; Sur-reply 21–22), commercial success (Resp. 56–58; Sur-reply 22–26), and satisfaction of a long-felt need (Resp. 58–60). Petitioner disputes these allegations. Reply 18–28. a) Nexus Patent Owner bears the burden of establishing nexus. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A presumption of nexus is only appropriate if “the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (cleaned up). The coextensiveness requirement is not met simply by showing that “the patent claims broadly cover the product that is the subject of the evidence of secondary considerations.” Id. at 1377. Coextensiveness can be thought of as “the degree of correspondence between a product and a patent claim.” Id. at 1374. “[T]he existence of one or more unclaimed features, standing alone,” does not necessarily defeat coextensiveness. Id. Instead, “the concept of unclaimed features is best viewed as part of a spectrum.” Teva Phrama. Int’l GmbH v. Eli Lilly and Co., 8 F.4th 1349, 1361 (Fed. Cir. 2021). “The presumption analysis requires the fact finder to consider the unclaimed features of the stated products to determine their level of significance and their impact on the correspondence between the claim and the products.” Id. (citing Fox Factory, 944 F.3d at 1375). The nexus analysis should focus on and consider the difference between the prior art and the claimed invention, and the extent to which the objective indicia speaks to these gaps. Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1278 (Fed. Cir. 2021) (“[T]o establish a nexus, [the patent owner] needed to present evidence that the commercial success and praise of the [product] derived from those ‘unique characteristics.’”) (citing Fox Factory, 944 F.3d at 1373–74). Simply providing evidence tied to features already present in the prior art does not satisfy the inquiry. Id. (“objective indicia must be linked to a [] patent claim’s unique characteristics”); Fox Factory, 944 F.3d at 1378 (stating that for patents claiming combinations of prior art features, a patentee must show that the secondary considerations evidence is “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features”). Patent Owner’s assertions regarding nexus are conclusory and extensively incorporate by reference other documents. See generally Resp. 46–49; Sur-reply 15–19. Patent Owner begins by citing to sixteen claim charts. Resp. 46 (citing Exs. 2074–2089). Patent Owner then alleges that the products it has licensed “are coextensive with the patented invention” because all of them are drill bits. Id. at 47. Patent Owner asserts that there are no unclaimed features, but in support of that allegation merely cites to its expert, who in turn says the same words without providing any support for his opinion. Id. at 47–48 (citing Ex. 2034 ¶ 150). We acknowledge that the claims of the ’583 patent are directed to a” slip op. at 56
Patent outcomesUS 11,007,583 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,007,583 - Toast, Inc. v. Gratuity, LLCInstitutedPTAB · Mar 27, 2024 · IPR2023-01408 · APJ Cynthia L Murphy · IPR · Institution
Instituted IPR of claims 1–13 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Marshall.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 2– 4 weigh against denial of institution and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 2–4. Factor 1 is neutral. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Marshall (alone and with Phillips and Webb) when addressing the claims added during prosecution that ultimately issued as the Challenged Claims.” Pet. 68. As pointed out by Petitioner, “Marshall was never considered by the Examiner” against the claims that ultimately issued as claims 1–13 of the ‘050 Patent. Pet. 67, see also Ex. 1008, 263–289, 323–353. As also pointed out by Petitioner, “even when the Examiner considered Marshall” against claims that were subsequently cancelled, “he considered Marshall only as a secondary reference.” Pet. 67, see also Ex. 1008, 203–236, 263–289, 323–353. Patent Owner argues that Petitioner “fails to provide an adequate explanation as to how the examiner erred.” Prelim. Resp. 22. Patent Owner contends that Petitioner’s explanation “makes no sense,” and is “both conclusory and uncompelling.” Id. We disagree with Patent Owner’s characterization of the Petitioner’s position, especially because it is supported by prosecution history of the ’050 Patent. (See Ex. 1008, 203–236, 263–289, 323–353.) Patent Owner also argues that the prosecution history of the ‘050 Patent “establishes that the Examiner reviewed Marshall thoroughly and applied it against the claims, some of which he rejected and other he later allowed.” Id. at 21. To support this argument, Patent Owner points to findings made by the Examiner during prosecution of the ‘050 Patent. See id. at 20. These findings, however, related to the Examiner’s rejections against claims that were subsequently cancelled. See Ex. 1008, 203–224. And these findings were made in conjunction with Marshall being applied as a secondary reference to reject those claims. See id. The Examiner rejected those claims over a combination of three prior art references (Kessler, Delany, and Tidwell), and added Marshall, in lieu of using official notice, to show that it was known in the art to configure a processor to execute computer executable instruction stored in a memory. See id. at 211–214. Thus, these findings do not contradict Petitioner’s position that overlooking Marshall as primary obviousness reference in connection with the Challenged Claims was a material error. The prosecution history does not sufficiently show that the Examiner considered Marshall, Philips, Web, or the combinations of these references asserted in the Petition, with respect to the claims that issued as the ’050 Patent. In particular, the Examiner asserted as Reasons for Allowance that the prior art did not teach” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,741,050
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.