- Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00696 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 2, 6, 8–12, and 15–20 were held unpatentable as obvious over Smith; claims 1, 10, 11, 16, and 17 were also held unpatentable over Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both Everi and Sightline agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial 3 Although occasionally we may focus on Sightline’s arguments, we do not shift the ultimate burden from Everi. We focus on Sightline’s arguments merely to identify issues in dispute, many if not all of which we find unpersuasive in view of the record as a whole. regulations—whether such familiarity is implied per Everi or stated outright per Sightline. Thus, we adopt Everi’s definition of the level of skill in the art with Sightline’s additional modification of that definition. C. Claim Construction” slip op. at 5
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“At the outset, we note that Sightline’s arguments relate to the weight, rather than the admissibility, of Mr. Crevelt’s testimony.4 We also note that Sightline does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Sightline contends we should disregard Mr. Crevelt’s declarations for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. As stated in the “[q]ualifications” section of his declaration, Mr. Crevelt formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”5 Id. ¶ 9. Mr. Crevelt’s declaration also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. 4 Sightline acknowledged as much during the oral hearing. See Hrg. Tr. 40:16–23. 5 Sightline’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. Importantly, Mr. Crevelt explains in his declaration that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s disclosure.6 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s declarations should be accorded no weight and disregarded, as Sightline mistakenly believes. E. Everi’s Reliance on the “Immediately Envisage” Standard” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Pet. Reply 2 (citing Ex. 1002, 8:26–30) (second emphasis added). As such, Everi argues, “that definition controls,” and Sightline’s proposed construction improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Everi contends that Sightline’s proposed construction improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 3. And, while Sightline may rely on Figure 8 and its description to show one objective of the ’708 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Everi notes that “these are mere examples, not requirements.” Id. at 3. Indeed, as Everi also notes, neither Figure 8 nor its description ever mentions using the gaming account to accomplish that objective. Id. at 4 (citing Ex. 1002, 14:22–16:3). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the specification of the ’708 patent— “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 8:26–30. Sightline does not identify any portion of the specification that evidences an express intent to limit the scope of the term “gaming account” to an account that requires the capability of being used in both gaming and non-gaming environments, and we reject Sightline’s attempt to import concepts from the embodiment of Figure 8 into the meaning of “gaming account.” D. The Credibility of Everi’s Expert” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Those disclosures, when read in the context of Figure 1, clearly support that Smith’s player account 132 holds funds for wagering by the player at a gaming establishment. As such, we find that player account 132 is a “gaming account” as properly construed—“financial account . . . that is associated with a player . . . and maintained by a casino.” To the extent Sightline’s declarant opines otherwise, we do not find that testimony credible or persuasive, as it is clearly inconsistent with Smith’s express teachings. See, e.g., Ex. 2001 ¶¶ 32–41. More persuasive is the testimony of Everi’s declarant, Mr. Crevelt, that player card account 132 is a financial account that holds funds for use by a player in wagering at a casino or other gaming establishment. See, e.g., Ex. 1001 ¶¶ 102, 106, 109, 115; Ex. 1039 ¶¶ 14–16. Also, to the extent Sightline faults Smith for not disclosing that player account 132 or player casino account 604 “are used in a non-gaming environment” of a casino (PO Resp. 31–33), we are not persuaded for the simple reason that it is premised on an improper claim construction, namely, a construction proposed by Sightline but rejected by us, as discussed above in Section II.C. Having considered the evidence of record and the parties’ arguments, we find that Smith teaches the “gaming account” limitation of claim 1. Sightline raises the same argument with respect to the “gaming account” limitation in independent claim 18 as it does for claim 1. See PO Resp. 41– 42. Thus, for the same reasons as claim 1, we find that Smith meets the “gaming account” limitation of claim 18. See Pet. 40–41.” slip op. at 18
Patent outcomesUS 8,998,708 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,998,708 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00663 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 2, 4–9, 11–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.
RulingsFinal written decision- 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. 10 (citing Ex. 1001 ¶ 37). Sightline does not dispute Everi’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28).” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“rather than the admissibility, of Mr. Crevelt’s testimony.4 We also note that Sightline does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Sightline contends we should disregard Mr. Crevelt’s declarations for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Pet. Reply 2 (citing Ex. 1002, 7:28–32) (second emphasis added). As such, Everi argues, “that definition controls,” and Sightline’s proposed construction improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Everi contends that Sightlines’s proposed construction improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Sightline may rely on Figure 8 and its description to show one objective of the ’123 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Everi notes that “these are mere examples, not requirements.” Id. at 3. Indeed, as Everi also notes, neither Figure 8 nor its” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Conclusion As discussed above, Everi persuasively shows that Smith teaches or suggests the disputed limitations of independent claims 1, 8, and 14, as well as those of dependent claims 4, 11, and 19. Sightline does not otherwise dispute Everi’s showing of how Smith teaches the remaining limitations of the independent claims. See PO Resp. 27–33. Nor does Sightline dispute Everi’s showing that Smith teaches the limitations of dependent claims 2, 5, 7, 9, 12, 13, 15–17, and 20. See id. at 33–34 (arguing separately only dependent claims 4, 11, and 19, while asserting that the remaining dependent claims are not obvious for the “same reasons” as claims 1, 8, and 14). Thus, we need not address the sufficiency of Everi’s showing as to any undisputed limitations. See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“The Board, having found the only disputed limitations together in one reference, was not required to address undisputed matters.”); see also Paper 9 at 8 (emphasizing that “any arguments not raised in the response may be deemed waived”). In any event, based on our review, we find that the record fully supports Everi’s showing that Smith teaches or suggests all the limitations of claims 1, 8, and 14, as well as all the limitations of the dependent claims 2, 4, 5, 7, 9, 11–13, 15–17, 19, and 20. See Pet. 14–47. In sum, after weighing all relevant factual findings, including the level of ordinary skill in the art, the scope and content of Smith, and any differences between Smith and the claimed invention,7 we conclude that Everi demonstrates by a preponderance of the evidence that claims 1, 2, 4, 5, 7–9, 11–17, 19, and 20 of the ’123 patent are unpatentable as obvious over Smith under 35 U.S.C. § 103(a).” slip op. at 26
Patent outcomesUS 9,196,123 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,196,123 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00614 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 6–11, 14–20, and 22–26 are unpatentable as obvious over Smith and Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person of ordinary skill in the art (a “POSA”) “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 asserts that the level of skill of the ordinary artisan should additionally include “familiarity with gaming and financial regulations.” Resp. 4 (emphasis omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“defines the term “gaming account,” stating, “As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Reply 2 (citing Ex. 1002, 8:26–30) (emphasis omitted). Petitioner contends that “Patent Owner’s construction improperly captures financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino.” Id. at 2. Second, Petitioner contends that even though Patent Owner’s construction uses the disjunctive “or,” Patent Owner asserts that its construction would require that a “gaming account” be usable in both gaming and non-gaming environments. According to Petitioner, Patent Owner’s construction thus improperly limits the claim term “gaming account” to an account having “the capability of being used in both a gaming and a non-gaming environment of a casino,” and does not include accounts that can be used only in a gaming environment. Id. at 3. Third, Petitioner contends “while Patent Owner cites to FIG. 8 as solving a purported problem of ‘capturing patron spending behavior,’ (Response, pp.10–11), FIG. 8 and its description is completely devoid of using the gaming account to do so.” Id. (citing Ex. 1002, 14:22–16:3). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the Specification: “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 8:26– 30. Patent Owner does not identify any portion of the Specification that evidences an intent to further limit the scope of the claim term “gaming account” to an account that must be usable in both gaming and non-gaming environments, and we decline the invitation to import limits from the preferred embodiment cited by Patent Owner into the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). D. Overview of the Asserted References” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nothing prohibits a prior art reference from “be[ing] considered for everything it teaches by way of technology,” rather than being limited to a particular embodiment or invention. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015); see also Hayward Industries, Inc. v. Pentair Water Pool and Spa, Inc., 814 Fed. Appx. 592, 596 (Fed. Cir. 2020) (essentially same). Thus, we reject the notion that player account 132 in Figure 1 cannot be a casino-level account in the same manner as the player casino account 604 in Figure 6. The above-cited portions of Smith teach that player account 128 may be located within the gaming environment (and thus constitute the player’s casino account), and may also perform the same functions that Smith attributes to player’s casino account 604. Thus, this evidence supports the testimony of Mr. Crevelt that player account 132 and player’s casino account 604 can be the same account (see, e.g., Ex. 1001 ¶¶ 93, 111–112), and is inconsistent with the testimony of Dr. Shamos that these accounts must necessarily be separate and that player account 132 cannot be a financial account (see, e.g., Ex. 2001 ¶¶ 32–33). On the entirety of the record before us, and for the specific reasons discussed above, we find Mr. Crevelt’s testimony on the “gaming account” limitation to be more consistent with the disclosures of Smith, and more persuasive than the testimony of Dr. Shamos. See Ex. 1001 ¶¶ 93, 111–112; Ex. 1039 ¶¶ 14–16. We, thus, credit Mr. Crevelt’s testimony, and are persuaded that Smith teaches, or at least suggests, that player account 132 (which may be located within a casino) and player’s casino account 604 may be the same account. We are persuaded on this record that player account 132/player’s casino account 604 would constitute a “financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino,” i.e., a “gaming account” of the type recited in the claims.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the reasons discussed below, we find Petitioner’s contentions more persuasive. As discussed above, we have construed the claim term “gaming account” as “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Thus, as a preliminary matter, even if player account 132 and player’s casino account 604 were implemented as separate financial accounts, this fact would not preclude them from together constituting a “gaming account” of the type required by the challenged claims.” slip op. at 21
Patent outcomesUS 8,708,809 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,809 - PTAB · Jun 15, 2023 · IPR2023-00273 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 5, 7, 8, 14–19, 24, and 25, finding a reasonable likelihood that at least one challenged claim would be unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On this record, it is unclear the extent to which issues in the instant proceeding overlap with those in the parallel district court proceeding. Accordingly, this factor is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Conclusion for Claim 5 Based on the current record, Petitioner’s contentions (see Pet. 40–42) and the supporting testimony of Dr. Lequesne (see Ex. 1002 ¶¶ 174–182) demonstrate, in a manner that is sufficiently persuasive for purposes of institution, that the subject matter of claim 5 would have been obvious over the combination of Poertzgen and Boucheret. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 5 is unpatentable under 35 U.S.C. § 103(a). We, therefore, institute an inter partes review as to all grounds and all challenged claims. 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached
“In this case, Petitioner asserts that “[n]o construction of any terms is necessary for the purposes of this proceeding.” Pet. 16. Patent Owner argues that, in the asserted grounds based on Weiler, Petitioner improperly construes the claim term “actuator housing” to encompass Weiler’s brake caliper. Prelim. Resp. 12. Patent Owner asserts that this “interpretation conflicts with how the two terms are used in Patent Owner’s specification and claims, and also conflicts with the way the prior art uses the two terms.” Id. at 12–13. This argument is not persuasive for reasons described below in our discussion of Ground 4. Patent Owner also states that it “does not agree with the manner in which Petitioner reads ‘sub-frame’ on the prior art,” but, “[f]or purposes of this Patent Owner Preliminary Response only, Patent Owner does not traverse Petitioners’ reading of ‘sub-frame.’” Prelim. Resp. 13. On this preliminary record, we decline to adopt specific constructions of any claim terms.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this record, Patent Owner’s arguments are unavailing. It is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR, 550 U.S. at 418. Here, Petitioner has offered declaration evidence that Boucheret’s teaching of adding an isolator between an electric motor and a component to which it is mounted in order to reduce NVH would have led motor 42 and the sub-frame of unit 40. Pet. 36–38. Patent Owner does not argue that the proposed modification would have been beyond level of ordinary skill in the art. See KSR, 550 U.S. at 417 (noting that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner’s argument regarding the expectation of success in using Boucheret’s grooved radially-mounted dampers at the axial end of Poertzgen’s motor (see Prelim. Resp. 24, 26) suggests that obviousness could only be shown if Boucheret’s dampers could be bodily incorporated into Poertzgen to arrive at the claimed invention. An obviousness analysis is not so constrained. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference[.]”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). We are also unpersuaded by Patent Owner’s assertion that Boucheret would only teach one of ordinary skill in the art to mount Poertzgen’s motor using radial lugs and dampers. See Prelim. Resp. 20. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Here, Petitioner has offered declaration testimony that one of ordinary skill in the art would have had reason to add vibration dampers at the location where Poertzgen’s motor is mounted to a frame (i.e., the” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,021,415 - Ford Motor Company v. Safe Driving Technologies LLCAll claims unpatentablePTAB · Feb 7, 2023 · IPR2021-01341 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–4 and 7–10 are unpatentable as obvious over Tan, Boies, Tan with Shuman and Behr, or Hardouin; Petitioner’s motion to exclude is granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“example, the types of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). 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 Resp. We adopt Petitioner’s unopposed 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. 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)).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We find Patent Owner’s reliance on the ’994 patent’s FIELD OF THE INVENTION Section misplaced. To quote it in its entirety, it states: The present invention relates to the field of telematics, namely to the field of integrating information, communication, computing and entertainment technologies into vehicles for civilian or military use. The invention particularly relates to safety control systems for vehicles to reduce driver distraction, avoiding potentially dangerous conditions tending to produce accidents. Ex. 1001, 1:21–27 (emphasis added). Thus, even were we to consider this portion of the Specification informative of the meaning of “telematic device,” it does not limit such to “a central multifunction device,” as argued by Patent Owner, but states that the field of telematics relates to integrating information, communication, computing, and entertainment technologies into vehicles, generally. Id. Nothing about this statement requires all these features to be integrated into a single device, unless the vehicle is considered the single device (which neither party suggests). See Reply 4 (discussing this section of the ’994 patent). Further, we find nothing in the ’994 patent supporting Patent Owner’s contention that the claim term “telematic device” should be restricted to a central multifunction device that integrates together the features of information, communication, computing, and entertainment technologies. The ’994 patent never states this. See Ex. 1001. Moreover, we find the ’994 patent to be much more inclusive than exclusive when describing what a telematic device can be, i.e., the scope of the term. Upon reviewing the written description of the ’994 patent, we find it makes the following statements (all emphasis added):” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the disputed claim language is, indeed, somewhat confusing. It appears to us from reading the language of claim 2 as a whole that Patent Owner understood that the phrase “include at least one of” could have been used rather than the language “including at least” because Patent Owner used these different phrases at different portions of claim 2. Compare Ex. 1001, 23:2, with id. at 23:14–15. Had Patent Owner intended that the disputed claim language require only one of the listed devices, it appears that Patent Owner understood how to claim that. Further, the full disputed phrase of claim 2 recites a “communication device including at least a pager, a telephone, a global location sensor, a temporal sensor, an optical sensor, a heading sensor, a bearing sensor, and an altitude sensor.” Id. at 23:14–17. However, adding to the ambiguity of the claim, this list of communication device components is tacked onto the end of a clause listing software applications (e.g., a telephone application and a wireless communication application), not devices. And, moreover, the term “communication device” is not preceded by an associated “a” or “the,” and there is no other “communication device” recited earlier in claim 2 (or claim 1 from which it depends), which further adds to the claim’s ambiguity. Patent Owner asserts that “at least” means “at least one” and Petitioner, at least in an alternative argument, appears to potentially agree and presented a case for unpatentability based on such an interpretation. See Pet. 9 (compare Grounds 1 and 2 with Ground 3). Furthermore, following Patent Owner’s stated position on this claim language in its Response (at page 19), Petitioner does not argue the matter in its Reply, other than stating at one point (not at the claim construction section) that “at least” means “all.” See Reply 1–7; but see id. at 14 (stating that the plain language of claim 2 requires all of the devices). Thus, we could adopt Patent Owner’s interpretation of claim 2’s” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to combine Shuman with Tan because Shuman’s teachings on its GPS would illuminate the capabilities of and data provided by Tan’s GPS; these are the same or similar devices and may have the same or similar capabilities. Id. at 63 (citing Ex. 1003 ¶ 261). Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to also combine Behr with Tan because Behr’s disclosure of monitoring the time of day to ensure its GPS provides relevant, safe, and legal instructions would also similarly support Tan’s GPS functioning, and also because there would have been a benefit to including Behr’s pager’s functionality in Tan’s system because such was a relevant communication technology. Id. at 64–65 (citing Ex. 1003 ¶¶ 263, 265). We agree with Petitioner’s assertions and reasoning regarding combining these prior art references with a reasonable expectation of success, and Patent Owner does not argue otherwise. See generally Resp.” slip op. at 50
Patent outcomesUS 9,713,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,713,994 - Siemens Industry Software Inc. v. Synopsys, Inc.Some claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01215 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–5, 7, 8, 11–15, 17, 18, and 21–24 are unpatentable over Yoshimura-based grounds; claims 6, 9, 10, 16, 19, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of the time the ’655 patent was filed. Pet. 9. For purposes of this proceeding, Petitioner and Petitioner’s declarant “adopt the [following] definition for the person of ordinary skill in the art”: “a Bachelor of Science degree in Electrical Engineering or Computer Engineering, and has either received academic credits for an ASIC design course or completed at least one year of work experience in the VLSI design, electronic design automation for VLSI, or ASIC design fields.” Id. at 9–10; Ex. 1003 ¶ 78 (Robins Declaration). Patent Owner applies the same definition. Resp. 5. To the extent necessary, we accept this definition because it is supported by the Robins Declaration and consistent with the ’655 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although the phrase “separate from,” is not found in the claims, we look to the language of the claims, the description in the patent disclosure, and the prosecution history to determine what type of separateness is required by the claims. We start with the relied-upon Figure 4 of the ’655 patent, which illustrates a box labeled “Multi-Scenario ECO Database 426” that is near, but not overlapping with or surrounding, boxes labeled “Image 424” through “Image 422” and “Image 420.” Ex. 1001, Fig. 4. The ’655 patent also describes a storage device 408 as “storing scenario images 420– 424 that correspond to different scenarios,” and “can additionally store multi-scenario ECO database 426,” which “can include circuit information for multiple scenarios that can be used to estimate the impact of ECOs in multiple scenarios.” Ex. 1001, 5:9–11, 5:18–21.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“determin[e/ing . . . ] an ECO to fix one or more design requirement violations, wherein said determining includes identifying an ECO to fix a design requirement violation in the scenario and checking that ECO against at least some of the multiple scenarios by estimating parameter values based on parameter values stored in the scenario image and the multi-scenario ECO database. Resp. 10 (citing Ex. 2001, 21-24). In reviewing the term, the District Court explained that the multi- scenario ECO database “stores parameters and allows for a quick estimation of an ECO’s impact across multiple scenarios.” Ex. 2001, 19. The District Court further summarized the ’655 patent as describing that a scenario image is “[f]irst” loaded, and if there is a design requirement violation, an ECO is determined for that scenario, and then subsequent scenarios are loaded to check whether the ECO from the first scenario will create new, or exacerbate existing, design violations. Id. (citing Ex. 1001, 4:21–33). However, as recognized by the Court, the process at the cited section is described in the ’655 patent as an “approach [that] may take an impracticably long time to fix design requirement violations in multiple scenarios” due to the long time that is required to load a scenario image. Id. at 24; Ex. 1001, 4:43–47. The Court reasoned that in order to determine an ECO to fix a violation, “determine” must involve “identifying” a possible fix and “checking” whether that fix is suitable. Id. at 23. Thus, the District Court’s construction requires both identifying and checking as part of the claimed determining step. Id. at 23–24. We agree with the District Court’s reasoning, and apply their construction in this proceeding.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner assertion that Yoshimura’s estimation in step S5 is performed to check an identified ECO is supported by the record. In determining the change to be made (the ECO), Yoshimura uses estimated parameters for the third and fourth corner conditions, calculated in step S5 through the “Hold Margin” equation. Ex. 1007, 6:63–67. Those third and fourth corner conditions are then used to check potential layouts identified in step S6. Id. at 7:18–20 (“In step S6, the automatic EC device 16 searches for a layout that does not cause a timing error under any one of the first to fourth comer conditions from the analysis results of step S4 and step S5.”). In this manner, step S5 sets an initial third corner condition having estimated parameter values that is included, as the initial step, in checking an identified ECO at steps S6–S8. Thus, Yoshimura’s determination of a change to satisfy the corner conditions is, to use Dr. Edward’s phrase, “based on” its third and fourth corner conditions having parameters estimated in step S5. For this reason, we determine that Petitioner has sufficiently shown that Yoshimura discloses the claimed limitation.” slip op. at 20
Patent outcomesUS 8,407,655 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,407,655 - Siemens Industry Software Inc. v. Synopsys, Inc.No claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01213 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–4, 12, 13, and 16–19 were not shown unpatentable because neither asserted combination taught routing each net in a subset in isolation of the other nets.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the time the ’614 patent was filed. Pet. 11. For purposes of this proceeding, Petitioner and Petitioner’s expert “adopt the [following] definition for the person of ordinary skill in the art”: a person with “a bachelor’s degree in electrical engineering, computer engineering or electrical and computer engineering or equivalent and two or more years of experience with CMOS VLSI (very large-scale integration) circuit design, electronic design 2 Patent Owner does not identify any secondary considerations to be considered. Accordingly, we do not consider this aspect of the obviousness analysis at this stage of the proceeding. automation for VLSI, or ASIC (application-specific integrated circuit) design fields.” Id. at 11; Ex. 1003 ¶ 70 (Robins Declaration). Petitioner notes that this assessment was presented to the district court by Patent Owner, but that Petitioner has also argued for a higher level of skill in the art. Id. Patent Owner and its declarant, Dr. Friedman, adopt this assessment. Resp. 8 (citing Ex. 2020 ¶¶ 25–26). We accept the assessment offered by the parties as it is supported by both declarants and is consistent with the ’614 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The term “global nets” is construed as “nets not contained wholly within any single tile on the chip.” Pet. 4 (citing Ex. 1009, 2); Resp. 8; Ex. 2015, 3. The phrase “[e]ach of said global nets within said second subset routed by one of said threads in isolation of said second subset’s other global nets but in respect of the routes of said subset of global nets” is construed as “[e]ach global net of the second subset is independently routed by a respective thread, without reference to the routing of any other net within the second subset, and the resulting routing does not conflict with routings of the first subset of global nets.” Resp. 7; Ex. 2001, 13; Ex. 2020 ¶ 26; Reply 3–4. We apply the same standard that is used to construe a patent claim in a civil action under 35 U.S.C. § 282(b), and construe each claim in accordance with the ordinary and customary meaning of such claim, as understood by one of ordinary skill in the art in the context of the patent, and the prosecution history pertaining to the patent, as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019)). “[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)). We do not expressly construe any claim terms beyond the extent necessary in our discussion of the parties’ arguments below.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s citations to Mehrotra illustrate that the nets in a first area are processed in isolation from a second area that is processed in parallel with the first area, but do not teach that each net within a given area is processed in isolation of others within that same area. Petitioner’s reasoning is based on the parallel processing of distinct areas. Petitioner attributes the lack of any need for communication between processors as resulting from the “separation distance” between “areas 92 and 96.” Thus, the benefits flowing from Mehrotra’s parallel processing; i.e., improving the speed of routing, are limited to processing areas in parallel, and are not taught to apply to nets within a single processing area. Furthermore, Dr. Robins’ testimony illustrates that the nets within a given area are processed sequentially, not in parallel. Dr. Robins states that the global nets are assigned to the processor for that area when that processor is available, i.e., sequential processing of global nets within an area. Ex. 1003 ¶ 154 (“Mehrotra therefore discloses issuing each global net of a subset to [a] thread (i.e., a processor) because the thread is available”); Ex. 1019 ¶ 26 (“Area 92 contains two traces [that are] assigned to a single processor[, which] would perform routing for a first one of the nets and would then become available to route the second trace”). Dr. Robins clearly states that the second trace is processed “after routing the preceding trace.” Id. Thus, Dr. Robins’ testimony concerning how traces (nets) within a subset are processed in Mehrotra (sequentially) contradicts Petitioner’s reasoning why Mehrotra’s traces would be routed in isolation (to gain the advantages of parallel processing). We further note that Petitioner characterizes Mehrotra’s subset as “those traces and subtraces contained in 92 and 96.” Pet. 35–36. Each of areas 92 and 96 are shown to have multiple traces or subtraces therein. Ex. 1004, Fig. 9. Thus, Petitioner’s subset requires plural traces (nets) within each area, and it is not sufficient that those traces in 92 are routed in isolation from those in 96 if the traces within each area are not routed in isolation from those in the same area (nor does Petitioner argue otherwise). In view of the foregoing, Petitioner’s argument based on Mehrotra’s” slip op. at 18
Patent outcomesUS 8,234,614 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,234,614 - Siemens Industry Software Inc. v. Synopsys, Inc.All claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01212 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–8, 11–20, and 23–25 are unpatentable as obvious over Sano; the Board found the Cheng grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Thus, we look to the language of the claims, the description in the patent disclosure, and the prosecution history to determine to what extent the claims require the registers to be at a fixed location. We begin with the language of the claims. Using claim 1 as an example, the only mention of “fixed locations” occurs in its first step, which recites, “receiving a placement for a chip layout, where the placement includes a set of registers at fixed locations in the chip layout.” Ex. 1001, 10:57–59. The remaining limitations of claim 1 do not address the locations of the registers, instead setting forth generating a timing criticality profile (Ex. 1001, 10:60–63) and clustering the registers based on that profile (Ex. 1001, 10:64–11:7). Thus, the fixed location of the registers is limited, by the plain language of the claim, to the placement for the chip layout that is being received in the first step.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“persuaded by Petitioner’s arguments and disagree with Patent Owner’s. Our claim construction requires that the registers be fixed only during the step of receiving a placement for a chip layout that includes fixed registers, and Patent Owner does not contest that Sano receives a placement of registers at fixed locations in a chip layout. Moreover, even if claim 1 was interpreted to inherently require fixed register locations throughout its recited steps, Petitioner has shown by a preponderance of the evidence that a person having ordinary skill would have found it obvious to perform each of claim 1’s steps of receiving a register placement, generating a timing criticality profile, and clustering the registers based on the timing criticality profile, without physically moving the registers, based on the teachings of Sano. We credit the statement of Dr. Robins that, “[t]he timing information used to create the setup evaluation value depended on the locations of the FFs. Thus, if the FFs were moved during this process then the evaluation values would become inaccurate.” Ex. 1003 ¶ 85. Dr. Robins further clarified that “if registers were allowed to move . . . during the clock synthesis phase. . . . “any timing-based information would then become inaccurate . . . because it was based on the old positions of these registers and not their purportedly new positions,” and therefore, a person having ordinary skill in the art would know that “you should keep the registers in fixed locations and not move them because otherwise you are creating moving targets with respect to timing behavior and possible timing violations.” Ex. 2022, 43–44. This reasoning is consistent with Dr. Friedman’s explanation of how setup timing evaluation is determined. Dr. Friedman stated that it involves determining “the delay of the data signal to propagate through” the data path between two registers. Ex. 1018, 11–12. Dr. Friedman separately characterized Figure 3 of the ’567 patent as an abstraction of a clock-tree structure that is “about data paths and there’s a long path and a short path and you treat them differently.” Ex. 1018, 74. Dr. Friedman contests the obviousness of keeping the registers in fixed locations in Sano’s first embodiment because the locations could be changed for reasons such as satisfying a power dissipation or speed criterion. Ex. 2019 ¶¶ 62, 66. However, Dr. Friedman does not contest Dr. Robins’ statement that such a change in locations would create inaccuracies in Sano’s timing-based clustering process. Thus, considering the arguments of the parties and the entirety of the evidence, we determine that Petitioner has sufficiently shown that a person of ordinary skill in the art reading Sano would have found it obvious to maintain the physical locations of the registers during clustering, particularly in situations not requiring consideration other possible factors such as satisfying a power dissipation or speed criterion. Furthermore, we agree that Petitioner’s citations to the first embodiment alone, located at Sano column 17, line 20 through column 26, line 3, provide teachings for each claim element. Thus, Patent Owner’s arguments that registers move in the fourth embodiment (Resp. 38–39) do not show that Sano’s first embodiment requires register movement. Moreover, we agree with Petitioner’s arguments that claim 1’s generation of a clock tree ends with the clustering steps, and any movement of registers after that step, such as Sano’s subsequent optimization method (Resp. 39– 41) or Sano’s moving clusters of registers into a placement restriction area (Response 41; Sur-reply 5–7), does not bear on whether Sano teaches the steps set forth in claim 1. Reply 8; Ex. 2001 (“the location of the registers [in the ’567 patent] do not change during clock-tree generation but may change during post processing optimization”). Patent Owner argues that these arguments are newly presented because Petitioner did not argue that Sano’s silence discloses the “fixed location limitation,” and should not be considered. Sur-reply 1. We do not agree. The Petition advanced the assertion that the claimed “fixed registers” were met by Sano’s receiving a network placement having registers in fixed locations, without setting forth any separate description in Sano to show that those registers were fixed. Thus, Petitioner’s assertion of Sano’s silence on this issue is not a different theory of obviousness, but a further explanation provided to address arguments presented in Patent Owner’s Response. In view of the foregoing, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 would have been obvious over Sano.” slip op. at 31
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We agree that Petitioner has made the requisite showing. Patent Owner admits that Sano’s evaluation values are based on data path delays. Sur-reply 9. Dr. Friedman states that a person of ordinary skill in the art in the computer science world would be familiar with timing slack with respect to a setup requirement. Ex. 1018, 14–16. Dr. Friedman further states that a person of ordinary skill in the art in the electrical engineering world would also “definitely understand” the concept, which is the “idea that you’ve got clock period minus the path delay plus any effective skew.” Id. at 27–28. Dr. Friedman further states that such a timing slack calculation would involve not only subtraction of data path delays, but also any effect of clock skew and “all the delays from getting out of that initial register . . . to set up into that register,” including the “setup time into the final register.” Id. at 17, 26, 29–30. Dr. Robins states that Sano’s Figure 9A–E illustrate that setup error depends on the length of time it takes data to travel from the output Q of launcher FF 502A to the input D of capturer FF 502B (i.e., the data path delay), a time Ts by which the changing data must precede the rising clock edge at the capturer FF 502B (i.e., setup time or setup requirement of the FF), the relationship between the rising clock edge CK1 at the launcher FF 502A and the rising clock edge CK2 at the capturer FF 502B (i.e., the clock skew), and the time between rising edges of the clock CK (i.e., the clock period). Ex. 1003 ¶ 104 (citing Ex. 1004, 22:48-65, 23:8-17). Based on the cited description of Sano, which describes setup error, Dr. Robins’ statements explaining how Sano’s Figure 9 illustrates each of the claimed variables to be considered in determining setup error, and Dr. Friedman’s statements explaining how timing slack, including the claimed calculation, would have been known to the person of ordinary skill in the art, we determine that Petitioner has shown, by a preponderance of the evidence that claims 2 and 14 would have been obvious to one having ordinary skill in the art.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner argues, and we agree, that Cheng teaches only a binary (true/false) determination of whether a violation exists for each pair. Resp. 59–60; Sur-reply 22–23. There is no teaching in Cheng that such values should be stored for later use for the claimed purpose of clustering a pair of registers having a higher timing criticality and clustering a second pair of registers having a lower timing criticality. Resp. 60; Ex. 1001, 10:64–11:3. As Patent Owner points out, “Cheng does not disclose clustering a pair of registers that does not violate a timing condition.” Id., n.4. Petitioner counters that Cheng must store such values in order to perform its step 490, clustering the registers “as needed in order to correct any setup time and/or hold time violations.” Reply 23–24 (citing Ex. 1005, 8:278–30; Ex. 1019 ¶ 55). Petitioner argues that Cheng performs all violation analysis at step 480, and that information from the analysis is used at step 490 to generate a clock-tree. However, Patent Owner argues, and we agree, that Cheng does not describe how the presence of a violation is used in a comparison of timing calculations. Sur-reply 23–24. Although Cheng “attempts to correct the violations by changing positions of registers in the clock tree . . . registers can be swapped from cluster to cluster in the clock tree,” or “change the order in which a pair of dependent registers are clustered,” Petitioner does not explain how this correction relies on any comparison of timing value calculations between register pairs, either in Cheng or in the knowledge of a person having ordinary skill in the art.” slip op. at 51
Patent outcomesUS 7,546,567 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,546,567 - Delta T, LLC v. Macroair Technologies, Inc.All claims unpatentablePTAB · Dec 12, 2022 · IPR2021-01214 · APJ Tina E Hulse · IPR · Final written decision
The Board held claim 15 unpatentable as obvious over Madsen, finding the mounting shaft could be detachably secured in the hub openings and have a constant cross section.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a substantive difference between the parties’ respective definitions of the level of ordinary skill in the art, nor do the parties assert that there exists any such difference. Although Petitioner’s definition includes specific knowledge of fans or other rotary machines, we understand Patent Owner’s broader definition to include such knowledge. We, therefore, adopt Petitioner’s definition of the level of ordinary skill in the art as reasonable and consistent with the level of skill reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the prior art itself may reflect an appropriate level of skill in the art). We also find Drs. Sheard and Paulus are qualified to opine on the perspective and understanding of a person of ordinary skill in the art, as they have at least ordinary skill in the art. See Ex. 1002 ¶¶ 3–11; Ex. 1003; Ex. 2001 ¶¶ 4–11; Ex. 2002; see also Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F. 4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case— like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”).” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“2. District Court Constructions In the related district court proceeding, the district court construed certain claim terms of the ’588 patent. Ex. 1014. Petitioner proposes claim constructions that are consistent with the district court’s constructions. Pet. 10–17. Patent Owner states that it “adopts the district court’s claim constructions for the purposes of this Response.” PO Resp. 10 (citing Ex. 1014). The district court has construed the following ’588 patent claim terms: Term Construction “hub assembly” “a hub with multiple parts that are assembled together” (Ex. 1014, 13– 14) “openings” “one or more locations where the arm members may be detachably secured” (Ex. 1014, 12–13) “detachably secured”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Rather than rely on the definitions of “secure” from a general dictionary, we focus on the Specification as the “single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation omitted). The Specification describes the use of nuts and bolts that can be used to fix or attach the arms into the slots of the hub. Ex. 1001, 4:47–51 (stating “nuts 212 can then be used to secure the arms 144 in the slots 202”) (emphasis added). But that is not the only use of “secure” in the Specification. As Petitioner notes, the Specification also describes a “securing assembly 152 that inhibits the hub from falling when the motor shaft breaks or the hub otherwise disengages from the shaft.” Id. at 3:42–45 (emphasis added). We also credit Dr. Sheard’s explanation of the operation of the ’588 patent’s securing assembly as allowing for rotational movement while preventing loss: [T]he hub 110 of the ‘588 Patent is “secured” to the motor mount 106 by way of the “securing assembly 152.” This securing assembly prevents the hub from “falling away from the motor mount” (i.e., prevents the hub from becoming lost or coming loose), but the relative engagement between the first member 154 and the second member 170 of the securing assembly continues to allow for relative rotation between the hub 110 and the motor mount 106. This relative rotation between the hub 110 and the motor mount 106 of the ‘588 Patent is not only allowed, but is absolutely necessary if the hub is going to rotate so that the fan blades may turn. Ex. 1024 ¶ 67. Patent Owner argues that the securing assembly is irrelevant to the construction of “secured” because it does not refer specifically to the arm members being detachably secured in the openings. PO Sur-reply 13. We disagree. Claim terms must be read in light of the specification and must not import limitations from the specification into the claims. Phillips, 415 F.3d at 1323. Moreover, we presume the specification uses a word consistently throughout the patent, even if describing a different embodiment. See Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012) (relying on the specification’s use of the word “programmable” to describe a different embodiment to construe the same term in the claim, as “there is no reason to construe the term ‘programmable’ differently when used to describe [the embodiment of the claimed invention]”); see also Phillips, 415 F.3d at 1314 (noting “claim terms are normally used consistently throughout the patent”). Thus, we decline to limit the construction of “secured” to the preferred embodiment, as proposed by Patent Owner, and consider the Specification’s description of the “securing assembly” to inform the meaning of “secured” as encompassing rotational movement and preventing loss. Accordingly, we construe the term “secured” to mean the arm members are “fixed or attached (while allowing for rotational movement) so that the arm members cannot be lost.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“presented at trial, we find Petitioner has the better position. We are persuaded that a person of ordinary skill in the art, seeing the unlabeled fasteners identified by Petitioner, would have found it obvious to use removable fasteners such as screws or bolts to detachably secure the mounting shafts in the openings formed by the bearing housings. See Ex. 1006, Figs. 3 and 5 (reproduced and annotated at Pet. 41). We credit the testimony of Dr. Sheard that a person of ordinary skill in the art would have been motivated to make the fan blade mounting shaft of Madsen detachably secured in the openings of the hub to “allow for the replacement of worn or broken parts, or for replacement of parts according to an ordinary course of maintenance.” Ex. 1002 ¶ 119. Dr. Sheard explains that the bearings of Madsen facilitate the rotation of the fan blade mounting arms within the bearing housing and are subject to wear and tear by the nature of the friction to which they are exposed during normal use. Id. ¶ 120. Thus, we are persuaded that a person of ordinary skill in the art would understand that the bearings of Madsen may need to be repaired, replaced, or maintained over time, which would require a user to access the inside of the bearing housing. Id. According to Dr. Sheard, “the [person of ordinary skill in the art’s] general knowledge of the need to repair, replace, or maintain fan parts such as bearings would motivate the [ordinary artisan] to combine this knowledge with Madsen in order to make the bearing housing 54 detachable from the hub.” Id. Moreover, as Dr. Sheard further explains, we find that the ordinary artisan “would be motivated to make the unlabeled fasteners illustrated in Figure 3 of Madsen . . . to be removable fasteners (e.g. screws, bolts, or other threaded fasteners). This use of removable fasteners provides a well known and easy manner for the user to access these parts in need of replacement.” Id. Dr. Sheard opines that because fans of different sizes may require blades of different lengths and fan blade mounting shafts of different designs, a person of ordinary skill in the art would have been motivated to make a single hub that accommodates different mounting shafts and blade lengths using a detachably secured mounting shaft. Id. ¶ 123. In doing so, manufacturers could avoid the cost of making multiple different hubs for different sized mounting shafts and would allow the end user the advantage of choosing different blades lengths and types for a given hub. Id. Thus, we are persuaded that these known problems in the art would have motivated a person of ordinary skill to modify Madsen to use a detachably secured mounting shaft. See ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350, 1360 (Fed. Cir. 2015) (“It is well settled that, even where references do not explicitly convey a motivation to combine, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”) (internal quotations and citation omitted). Finally, we find a preponderance of the evidence supports Petitioner’s assertion that because detachably secured connections between an intermediate arm member and hub were well known to a person of ordinary skill in the art, it would have been obvious to combine those known connections with the design of Madsen “as an art equivalent type of connection, yielding the predictable result of restraining movement of the intermediate arm member with respect to the hub.” Id. ¶ 124; see also KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 25
Patent outcomesUS 8,579,588 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,579,588 - 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
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.