- Stats LLC v. Hockeyline, Inc.All claims unpatentablePTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision
Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18
Patent outcomesUS 6,725,107 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,725,107 - CQG, Inc. / CQGT, LLC v. Trading Technologies International, Inc.Institution deniedPTAB · Jul 10, 2015 · CBM2015-00057 · APJ Sally C Medley · CBM · Institution
The Board denied institution of review of claims 1-40 of the ’304 patent and claims 1-56 of the ’132 patent because § 325(a)(1) barred the petitions.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(1) POST–GRANT REVIEW BARRED BY CIVIL ACTION.—A post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” slip op. at 5
Discretionary denialPatents in suitUS 6,766,304 - CQG, Inc. / CQGT, LLC v. Trading Technologies International, Inc.Institution deniedPTAB · Jul 10, 2015 · CBM2015-00058 · APJ Sally C Medley · CBM · Institution
The Board denied institution of CBM review of claims 1-56 of the ’132 patent and claims 1-40 of the ’304 patent because Petitioner was barred under § 325(a)(1).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“the immediate continuation of the first action into the second action, including the legal positions taken by the parties, that was the dispositive factor for determining that the dismissal without prejudice of the first case did not have the effect as if the first case never existed. Apple, Case IPR2014-00319, slip op. at 3–4 (PTAB July 31, 2014) (Paper 14). In rendering the original decision, the panel relied on Brennan v. Kulick, 407 F.3d 603 (3d Cir. 2005). Apple, Paper 12, slip op. at 6. In Brennan, the court explained that prior cases are treated as if they never existed after dismissal because “[a]n order merely dismissing a complaint without prejudice could result in a significant period of delay prior to the bringing of 7 a new action.” Brennan, 407 F.3d at 607. The court further explained that with a conditional dismissal, a prior case would be treated as if it existed because “[t]he conditions specified in the order prevent a plaintiff from indefinitely extending the limitations period.” Id. Treating a case dismissed without prejudice as if it never existed, therefore, depends on the circumstances surrounding the dismissal.” slip op. at 7
Discretionary denialPatents in suitUS 6,772,132 - Mentor Graphics Corporation v. Synopsys, Inc.All claims unpatentablePTAB · Jun 11, 2015 · IPR2014-00287 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–3, 10–13, and 20 are unpatentable as obvious over Vander Zanden and Shand; the other proposed grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“inferring” in accordance with its plain meaning, including: concluding, deciding, deducing, deriving, extrapolating, gathering, judging, making out, reasoning, understanding, and recognizing. Inst. Dec. 9–10. We did not provide a construction for any other terms. Patent Owner’s position is that the word “deducing” comes closer to the meaning of “inferring” than the words “recognizing” or “identifying” as proposed by Petitioner. PO Resp. 24, see also Pet. 14. Our construction includes from its plain meaning, a variety of words (including: deducing recognizing, and identifying) that, depending on context, provide additional understanding of the word “inferring.” Inst. Dec. 9–10. A plain meaning of the word “incorporating” is “to unite or work into something already existent so as to form an indistinguishable whole.” Incorporate, Merriam-Webster Online Dictionary, http://www.merriam-webster.com/dictionary/incorporate (last visited May 28, 2015). For these words, we do not consider the proffered constructions to provide any clarity over the term itself. Consequently, we simply are not persuaded by either of the parties contentions and interpretations that under the broadest reasonable interpretation, in the context of the Specification and claims, that these words should be construed with respect to only the particular definitions or meanings ascribed to them by either party. slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our claim construction, we are persuaded that Vander Zanden does not disclose a “resetable memory” as recited in independent claim 1. We determined that a “resetable memory” means a memory that outputs a reset value until new data is written into the memory. See section II.B.3. Vander Zanden’s “if then” statement in the code shown in Figure 3 outputs a reset value “0” only when the reset signal is high, in all other modes it outputs either a value from RGF1 or added values from RGF1. See Ex. 1003, Fig. 3; see also PO Resp. 32. In other words OUT1 does not keep, or remember, the reset value until new data is written to RGF1. We find Patent Owner’s position persuasive that the resetable flip-flop DFF6 on the output line of the circuit as described in Vander Zanden’s Figure 3, and shown in Figure 4, does not render the registers at RGF1 a “resetable memory” as properly construed because it fails to maintain OUT1 at a reset value until new data is written to a cell. Petitioner’s argument that no temporal limitation should be read into the claim is unpersuasive because, as discussed above in section II.B.3, the ’420 patent expressly differentiates the “reset” functionality of the described “resetable memory” from known resetable memories where the described, and claimed methodology in each embodiment, “causes the reset value 208 to be provided 302 as the effective memory cell output–until the cell has been written to.” Ex. 1001, 4:56–58. Vander Zanden does not disclose a “resetable memory design” for similar reasons as set forth above with respect to “resetable memory.” We are persuaded that the resetable flip-flop DFF 6 on the output line as shown in Figure 4 does not disclose a “restable memory design” as called for in the claims because Petitioner does not explain how the circuit design in Figure 4 implements the retention of a reset value until new data is written to the cell, where it only toggles between the reset mode, ADDER mode and mode which returns a value from RGF1. For the reasons provided above, Petitioner has not established by a” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“disclose the step of inferring the existence of a memory, and turns to Shand for disclosure of a “resetable memory” and a “resetable memory design” for incorporation into a semiconductor circuit. Pet. 31. Petitioner asserts that one of ordinary skill in the art would have combined Shand with Vander Zanden in order to reduce the size of the circuit design. Id. at 32 (citing Ex. 1002 ¶ 68). Patent Owner argues specifically that Petitioner’s Declarant, Mr. Detjens, admitted that one of ordinary skill in the art would not replace the memory in Vander Zanden with the circuit described in Shand. PO Resp. 55. This argument mischaracterizes Mr. Detjens testimony as well as the question. The question asked Mr. Detjens if he could identify “what memory in Vander Zanden you would replace with the Shand memory?” Ex. 2010 84:2–3 (emphasis added). Read in context, Mr. Detjens’ initial answer “No” differentiates between replacing the “memory” and replacing the “resetable memory.” See id. at 84:1–20. Mr. Detjens continued on, and answered the question with further specificity, stating that “for a resetable memory that is created through the process given in the Vander Zanden paper, you would replace it with the memory in the Shand patent.” Id. at 84:18–20 (emphasis added). Thus, we do not find Patent Owner’s argument on this point to be persuasive. Patent Owner further asserts that Shand’s resetable memory is functionally different and one of ordinary skill in the art would not utilize Shand’s resetable memory with Vander Zanden because it “would render the circuit inoperable (i.e., the synthesized circuit in Vander Zanden Figure 4 would no longer match the HDL and it would not work as the designer intended).” PO Resp. 57 (citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)). Petitioner replies that “A POSA knew how to describe a resetable memory in behavioral or RTL level terms, and how to recognize a resetable memory in such a description.” Reply 2–3 (citing Ex. 1024 ¶¶ 10–15; Ex. 1020 at 17–18, 27–28, 75–77, 84–85, 91–98). Petitioner’s position, and Dr. Detjens’ testimony, are persuasive. Neither Patent Owner’s argument that Shand fails to disclose the inferring step, nor the testimony provided in Dr. Hutchings’s Declaration alleging that Shand discloses only resetable memory circuits and not inferring a memory with reset, explains why it was not within the ordinary skill of one in the art to have modified the respective underlying HDL code, for example as shown in Vander Zanden’s Figure 3, to include code defining the respective resetable memory circuit such as disclosed in Shand. See PO Resp. 57, see also Ex. 2011 ¶¶ 85–88. As discussed above with respect to anticipation, we are persuaded that Vander Zanden discloses the “inferring” step for a memory as recited in independent claims 1 and 13, and that it would have been within the abilities of a person of ordinary skill in the art to combine Shand’s resetable memory circuit design with Vander Zanden and consequently modify the HDL code to address the functional changes imparted by the implementation of a different resetable memory in such a combination.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“We have reviewed Mr. Detjens’ Declaration in Support of Petitioner’s Reply, (Ex. 1024) and find the Declaration, as a whole, complies with our rule, 37 C.F.R.§ 42.23(b), that a reply may only respond to arguments raised in patent owner’s response. For example, Mr. Detjens explains in the Reply Declaration that his testimony is specifically in response to Patent Owner’s argument that Vander Zanden does not disclose inferring resetable memories. Ex. 1024 ¶ 5 (citing PO Resp. 29–30). Within the context of Vander Zanden and his previous testimony, Mr. Detjens’ Reply Declaration provides appropriate elucidating evidence with respect to the level of ordinary skill in the art in addition to that in his original Declaration. Compare id. ¶¶ 6–11, with Ex. 1002 ¶¶ 35–43. The Reply Declaration does, in several paragraphs, refer to certain evidence such as Exhibits 1022 and 1023 not filed with the Petition, but overall, relies substantially upon the prior art and evidence submitted with the Petition. Patent Owner’s Motion does not apprise us that the Reply or Reply Declaration is raising a new issue or injecting improper new evidence into the proceeding. Our review of the Reply Declaration indicates that overall Mr. Detjens’ testimony is proper rebuttal evidence, timely submitted, in reply to Patent Owner’s Response. Therefore, the request to exclude Petitioner’s Reply and Mr. Detjens’ Reply Declaration (Ex. 1024) is denied.” slip op. at 36
Patent outcomesUS 6,836,420 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,836,420 - Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentablePTAB · May 26, 2015 · IPR2014-00367 · APJ Georgianna W Braden · IPR · Final written decision
Petitioner did not prove claims 2–4, 7–10, 14–18, 22, 23, 26, 27, 29, 30, 33–40, 42–45, 48–51, 54–59, 63, and 64 unpatentable under either instituted §103 ground.
RulingsFinal written decision- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“We find that regardless of the construction of the term “spill,” Petitioner has not carried its burden to show that Angros is analogous art, because Petitioner has not shown Angros to be pertinent to the entire problem faced by the inventors of the ’561 patent.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Furthermore, a patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 401. “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citing KSR, 550 U.S. at 421). For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 419. In that regard, Mr. Schechter, witness for Petitioner, testified that Angros and Picken were known in the art and that one of ordinary skill in the art would have been motivated to combine the teachings of the prior art so as to make a design that (i) was more simple or clean or aesthetically pleasing and (ii) had a less obtrusive hydrophobic barrier. Ex. 1121, 180:12–183:23; Ex. 1109 ¶ 31; Ex. 1010 ¶ 28. He then concluded that one of ordinary skill would know how to substitute the spill-contain border in Angros for the plastic guard in Picken. Ex. 1109 ¶ 36. Mr. Schechter, however, does not explain sufficiently why a person of ordinary skill in the art would look to the field of microscope slides to find a hydrophobic coating to act as a less obtrusive spill containment border in place of the plastic rim in Picken. Mr. Schechter’s testimony is impermissible hindsight; he opined that all of the elements of the claims disparately existed in the prior art, but fails to provide sufficient reason for why one of ordinary skill in the art at the time of filing would have combined these references. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explaining what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then–accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference or references of record convey or suggest that knowledge. Rather, Petitioner’s argument that Angros is analogous art and that Angros is combinable with Picken appears to be premised on Petitioner’s knowledge of the ’561 patent disclosure. Petitioner bears the burden of showing by a preponderance of evidence that the asserted prior art references are analogous art and otherwise combinable. On the record before us, we find that Petitioner has not shown that Angros qualifies as prior art under 35 U.S.C. § 103 or that, even if it did, it renders the claims unpatentable in combination with Picken. Therefore, we conclude Petitioner has not demonstrated by a preponderance of evidence that claims 2–4, 7–10, 23, 33–40, 42–45, 48–51, and 64 of the ’561 patent would have been obvious in view of Angros and Picken.” slip op. at 27
- Skill levelSkill level board ownDecided for patent owner
“Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.C.1) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1101, 1:16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1109 ¶¶ 1–3 (describing the background of Mr. Schechter); Ex. 2121 ¶¶ 5–7 (describing the background of Mr. Mills). Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 13
Patent outcomesUS 8,286,561 not shown unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,286,561 - TD Ameritrade Holding Corp. / TD Ameritrade, Inc. et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Feb 2, 2015 · CBM2014-00135 · APJ Philip J Hoffmann · CBM · Rehearing
The Board denied both rehearing requests, leaving intact institution of CBM review of claims 1–56 under § 101 and denial of institution under §§ 102, 103, and 112.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). For the reasons that follow, Petitioner does not show that the Board abused its discretion.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“characterizing Togher’s disclosure, for the following reasons we find that Petitioner relied on Silverman and Gutterman to render obvious claim 1’s limitation “selecting a particular area in the order entry region [corresponding to a price of a static display of prices] through single action of the user input device . . . to set a plurality of parameters for the trade order and send the trade order to the electronic exchange.” Thus, Petitioner’s argument that Togher discloses “selecting a particular area in the order entry region [corresponding to a price of a static display of prices] through single action of the user input device . . . to set a plurality of additional parameters for the trade order and send the trade order to the electronic exchange” is not timely raised, and will not be a basis for instituting covered business method patent review.” slip op. at 3
- BurdenDecided for patent owner
“displaying market information, setting trade order parameters, and sending a trade order to an electronic exchange. As further explained, the only hardware recited in claim 1 is a display and an input device, which both were known technology. Dec. 11–12. Further recitations in claim 1 are directed to use and operation of the GUI – for example, displaying market information in a certain arrangement on the GUI, as well as setting order parameters and sending the order to the exchange with the GUI. Id. Thus, inasmuch as claim 1 recites only known hardware, Patent Owner does not persuade us that claim 1 recites a novel GUI tool.” slip op. at 7
§ 103 obviousnessPatents in suitUS 6,772,132 - TD Ameritrade Holding Corp. / TD Ameritrade, Inc. et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Feb 2, 2015 · CBM2014-00133 · APJ Philip J Hoffmann · CBM · Rehearing
The Board denied both rehearing requests, leaving in place institution on claims 1–28 under § 101 and denial of institution under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). For the reasons that follow, Petitioner does not show that the Board abused its discretion.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) on May 19, 2014, which requested review under the transitional program for covered business method patents of U.S. Patent No. 7,676,411 B2 (Ex. 1001, “the ’411 patent”). Trading Technologies International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 18, “Prelim. Resp.”) on September 3, 2014. The Board instituted covered business method patent review of claims 1–28 of the ’411 patent under 35 U.S.C. § 101, and denied institution of any claims under 35 U.S.C. § 103. Paper 19 (“Decision”). Petitioner and Patent Owner each filed a Request for Rehearing asking that the Board reconsider its Decision – Petitioner requesting that we institute based on grounds 2 and 3 of the Petition because claims 1–28 are obvious based on Silverman, Gutterman, and Togher with or without Paal (Paper 21, “Petitioner’s Req. Reh’g”), and Patent Owner requesting that we deny institution because the ’411 patent does not qualify for covered business method patent review (Paper 22, “Patent Owner’s Req. Reh’g”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“characterizing Togher’s disclosure, for the following reasons we find that Petitioner relied on Silverman and Gutterman to render obvious claim 1’s limitation “selecting a particular graphical area in the order entry region through a single action of the user input device to . . . set a price for the trade order and send the trade order . . . to the electronic exchange,” and relied on Togher to disclose the claim limitation “the trade order having a default quantity.” Thus, Petitioner’s argument that Togher discloses “a single action of the user input device [] both set[ting] a price for the trade order and send[ing] the trade order having a default quantity” is not timely raised, and will not be a basis for instituting covered business method patent review.” slip op. at 3
- BurdenDecided for patent owner
“information in a certain arrangement on the GUI, as well as setting order parameters and sending the order to the exchange with the GUI. Id. Thus, inasmuch as claim 1 recites only known hardware, Patent Owner does not persuade us that claim 1 recites a novel GUI tool.” slip op. at 7
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,676,411 - PTAB · Sep 10, 2014 · IPR2014-00336 · APJ Scott E Kamholz · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00336 as to all parties; it did not decide patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties filed a joint motion to terminate the instant proceeding (Paper 13 (“Mot.”)), and a true copy of their written settlement agreement (Ex. 1005) made in connection with the termination, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested that their settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Mot. 2-3. For the reasons provided below, the joint motion to terminate is granted. The joint request that the settlement agreement be treated as business confidential information is also granted.” slip op. at 2
NonePatents in suitUS 8,622,984 - Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentablePTAB · Aug 20, 2014 · IPR2013-00358 · APJ Georgianna W Braden · IPR · Final written decision
The Board held claims 1, 13, and 25 not shown unpatentable: Angros was not shown to be analogous art, and the proposed combinations did not establish obviousness.
RulingsFinal written decision- Skill levelSkill level board ownPetitioner expert discountedOther
“Mr. Schechter testified that a person of ordinary skill in the art relevant to the ’561 patent “would have at least a bachelor’s degree in mechanical engineering and at least four years of experience designing and manufacturing shelf assemblies or equivalent education and training.” Ex. 1010 ¶ 4. Patent Owner’s witness, Mr. Richard Bruce Mills, defined a person of ordinary skill in the art relevant to the ’561 patent to be a person with at least an associate’s or bachelor’s degree and three years of experience working with shelf assemblies, and having familiarity with “encapsulated spill containing refrigerator shelves.” Ex. 2022 ¶ 8. Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.B.3.a.) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1001, col. 1, ll. 16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1010 ¶¶ 1–2 (describing the background of Mr. Schechter); Ex. 2022 ¶¶ 3–5 (describing the background of Mr. Mills). We note that under this standard, Petitioner’s witness, Mr. Schechter, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter has a Master’s of Science degree in Mechanical Engineering, he has only worked as an engineer designing and manufacturing shelf assemblies since December 2011. Ex. 1010 ¶¶ 1-2. Thus, Mr. Schechter had less than two years of experience when he signed his declaration on June 14, 2013. Id. ¶ 36. Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1011, 26:2–13. In this case, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight because he was not a person of ordinary skill in the art at the time of the invention disclosed in the ’561 patent.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner’s position is unpersuasive. Contrary to Petitioner’s characterization, Example 1 in the ’561 patent discloses only a demonstration of water retention by a shelf with a hydrophobic border. See Ex. 1001, col. 20, ll. 1–9. The patent recounts, in Example 1, a test to determine the amount of water retainable on a shelf, within a hydrophobic border, without leakage. Id. Thus, Example 1 does not show that the term “spill” merely means liquid placed on a surface. Therefore, we construe “spill,” in accordance with its plain meaning and consistent with the specification of the ’561 patent, to mean “an accidental or unintentional release of liquid.” See Ex. 2003; Ex. 1001, col. 11, ll. 28–49 (describing Figure 3 as illustrating “the concept that the hydrophobic surface 1030 will form a spill containment barrier,” and using soda can 1026 turned on its side as an example for “spilled liquid”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“entions. A As discusse ed in detail l below, we e conclude e that the ’2 273 prov visional app plication, w which is th he earlier fi iled of the two provis sional appl ications, su upports the e claim ele ements reci ited in clai ms 1, 13, a and 25. Ther refore, the ’561 paten nt is entitle ed to the Ju une 27, 200 08 filing da ate of the ’273” slip op. at 12
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325-27. It is necessary to apply “common sense” in “deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” Id. at 1326 (citations and quotation marks omitted). As to the “reasonably pertinent” test: A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it. In re Clay, 966 F.2d at 659.” slip op. at 19
Patent outcomesUS 8,286,561 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 8,286,561
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.