- 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 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,944,740 - Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01355 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–13, 15, and 18 are unpatentable under § 103 over the stated combinations of Liebermann, Aronow, O’Toole, and McLaughlin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge directly Mr. Occhiogrosso’s testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s declarant, does not propose a level of ordinary skill in the art to be adopted, but he does testify that the opinions set forth in his declaration would not change if he “assumed that [one of ordinary skill in the art] had the qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24 (citing Ex. 1008 ¶ 27). Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1002–1005), we determine that the level of ordinary skill proposed by Petitioner’s declarant and employed by both declarants is consistent with the challenged patent and the referenced prior art, and we adopt Mr. Occhiogrosso’s definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Turning to the merits of the Motion to Exclude, we find Patent Owner’s assertion that a person of ordinary skill in the art “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4) lacks sufficient factual corroboration or explanation. For example, Patent 10 Mr. Zatkovich is referring to the level of ordinary skill discussed previously and which we adopted for this proceeding. 14 Owner does not address the sentence that immediately precedes the single citation in the challenged patent on which Patent Owner relies: “[t]he present invention relates to the general field of telephone communications.” Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary skill reflected in the prior art of record or other factors that may be considered, including the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Okajima, 261 F.3d at 1355. Even if we were to adopt Patent Owner’s definition of a person of ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s proffered level of ordinary skill: “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4). Mr. Occhiogrosso’s experience providing expert testimony in proceedings regarding assistive technologies for the deal or hard of hearing is uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews); Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating Mr. Occhiogrosso has been deposed between twelve and twenty times concerning Patent Owner’s patents). Furthermore, the five prior art references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all involve telephone technology for the deaf and HOH and support his qualification under the definition of a person of ordinary skill in the art now offers for the first time in its Motion to Exclude (and after it relied on the testimony of its declarant as to a different level). 15” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Mr. Occhiogrosso testifies that one of ordinary skill in the art “would consider the screen in Figure 6 [shown on a cellular phone] as analogous to the screen depicted in Figure 8.” Ex. 1043 ¶ 6; see Pet. Reply 9–10 (citing Ex. 1043 ¶ 4–7). Mr. Occhiogrosso’s testimony relies on, and better comports with, Liebermann’s description of Figure 8 as illustrating “a layout for the visual display to present multiple information to the deaf person.” Ex. 1002, 6:29–36; Ex. 1043 ¶ 6. Mr. Occhiogrosso opines that the layout in Figure 8 “can be applied to different devices with displays of varying dimensions,” including the cellular embodiment of Figure 6, the personal computer embodiment in Figure 5a, and the kiosk embodiment in Figure 5c. Ex. 1043 ¶ 6. Mr. Occhiogrosso explains that Figure 8 depicts a “three-part, logical screen layout [that would be] identical and would be scaled appropriately, depending on display size.” Id. We credit Mr. Occhiogrosso’s testimony over that of Mr. Zatkovich because Mr. Occhiogrosso’s testimony better comports with the express disclosure of Liebermann—Figure 8 is not described as being limited to the embodiments in Figures 5a–5c or otherwise not being applicable to the cellular phone embodiment shown in Figure 6. Rather, Figure 8 is described more generally as being “a layout for the visual display.” Ex. 1002, 6:31– 34 36. In addition, Mr. Zatkovich opines that one of ordinary skill in the art purportedly would not incorporate the display shown in Figure 8—that is, the three-part display. At issue here, however, is only a small portion of that display—the incoming text screen—showing the text communication representing a transcription of the voice of the person speaking to a user of the personal interpreter device.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“skill in the art would combine Aronow’s initiation switch into Liebermann’s device to save power. PO Resp. 35–36. We agree with Patent Owner that, because the initiation switch is not an “on/off switch” that would enable a user to turn off the device and save power, Mr. Occhiogrosso’s power saving rationale (Ex. 1008 ¶¶ 58–59) is an insufficient motivation to combine the initiation switch. PO Resp. 35–36 (citing Ex. 2098 ¶ 62; Ex. 2097, 141:21– 142:12). Similarly, we also agree with Patent Owner’s challenge regarding Mr. Occhiogrosso’s testimony that Aronow’s switch improves Liebermann’s communicator by making it a “low cost, self contained telephonic interface device requiring no programming for operation.” Id. at 36. Relying on Mr. Zatkovich’s testimony, Patent Owner indicates “the communicator/cellular phone embodiment of Fig. 6 of Liebermann[] already appears to be a self-contained device.” Id. (citing Ex. 2098 ¶ 61). Nevertheless, we note that there is no dispute that Liebermann’s communicator and cellular telephone implementations provide for a user initiating a call to the center by dialing the center. See, e.g., PO Resp. 36 (“As a special case of a telephone, Liebermann can initiate a call simply by dialing a stored number to the Center.”). We disagree with Patent Owner that the addition of Aronow’s switch would not simplify the communicator 48 of Liebermann. Id. Common sense suggests that a single initiation switch is a simpler way to initiate a call than by dialing the multiple digits of a telephone number. Furthermore, we credit Mr. Occhiogrosso’s testimony of the simplifying benefits of a user-operated initiation switch, which is based on Aronow’s discussion about the benefits of the initiation switch to simplify operations of the telephonic device, especially for elderly people who are hard of hearing. Ex. 1008 ¶ 58. For these reasons, we determine that Petitioner has provided sufficient” slip op. at 48
Patent outcomesUS 5,974,116 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,974,116 - Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentablePTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision
Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43
Patent outcomesUS 8,908,838 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,908,838 - Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision
Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23
Patent outcomesUS 8,452,646 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,452,646
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.