• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00577 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either Robertson, Gralla, and Gettman or Sauve and Tsuda; claims 1–13 were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “4. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “predictably improved Sauve’s quick pick interface, and would have promoted space efficiency and conveyed order more clearly. Id. at 59–60 (citing Ex. 1003 ¶ 159). Petitioner further argues that the combination would have exploited spatial memory and more efficient use of screen space and, thus, would have been a differentiator among competing web browsers. Id. at 60–61 (citing Ex. 1003 ¶¶ 160–162). Petitioner argues that a skilled artisan would have had a reasonable expectation of success in making the combination because GUIs, web browsers, and simulated 3D environments were all well-known technologies that had been demonstrated successfully in the real world. Id. at 61 (citing Ex. 1003 ¶ 163). Dr. Fuchs’ testimony has rational underpinning, is logical and well-reasoned, and, accordingly, we give it substantial weight.” slip op. at 64

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00242 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either instituted ground; claims 1–13 were not shown unpatentable because the petitioner failed to prove the challenged combinations met the claims.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “3. “the rendered first webpage” Claim limitation 1dii recites “replacing the first and second objects within the 3D space with a window within a two-dimensional (2D) space in response to receiving the interaction, wherein the window includes the rendered first webpage.” Petitioner does not propose a construction for the term “the rendered first webpage” in the Petition. Pet. 13–14. Nevertheless, Patent Owner contends in the Patent Owner Response that “‘the rendered first webpage’ is the webpage that was requested by the user via the ‘first input’ from which the ‘first image’ was captured.” PO Resp. 13. As Petitioner summarizes, “[a]ccording to Patent Owner, ‘the rendered first webpage’ presented in 2D space ‘is the version that was previously received and rendered (e.g., stored in memory) from which the first image was captured. It is not a ‘live’ webpage from the Internet.’” Reply 6. Despite not proposing a construction in the Petition, Petitioner, in the Reply, asks us to construe “the rendered first webpage” to include either the previously received and rendered first webpage or a new (so called “live”) version of the first webpage rendered in response to receiving the user interaction of claim limitation 1dii. Reply 6–7. The plain and ordinary meaning of claim 1 supports Patent Owner’s argument. “To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). Here, claim 1 refers to replacing the first and second objects with “the rendered first webpage,” which implies that the objects are not replaced with just any version of the first webpage. “Rendered” is in the past tense, suggesting a webpage that previously has been rendered. This is a clear reference to limitation 1ci, “rendering the first and second webpages.” Dr. Fuchs’ testimony is instructive. According to Dr. Fuchs, a skilled artisan “would have known that webpage rendering was a ubiquitous process for converting raw HTML code received from a web server into visible content.” Ex. 1003 ¶ 104. According to Dr. Fuchs, “[w]ebpage rendering is a core functionality of virtually all web browsers, and it would have been obvious to a [person of ordinary skill in the art] that rendering is a prerequisite step to obtaining ‘screen snapshots of actual web pages,’ as explained in Robertson’s companion Data Mountain paper.” Id. ¶ 105 (citing Ex. 1030, 5). Dr. Fuchs testifies that a skilled artisan “would have understood that Robertson’s 3D-GUI captures images of the rendered (first/second) webpages to obtain the webpage images on the object thumbnails.” Id. ¶ 107. Similarly, Dr. Fuchs testifies that “Gettman’s technique involves ‘cach[ing]’ ‘bitmap screenshots’ (captured first/second images) of rendered (first/second) webpages in local memory.” Id. ¶ 108. Here, as Dr. Fuchs reads claim limitations 1ci and 1cii, in step 1ci, a” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstituted
  PTAB · Jun 10, 2024 · IPR2024-00300 · APJ Frederick C Laney · IPR · Institution

  The Board instituted IPR on claims 1–38 on all asserted grounds, finding a reasonable likelihood of prevailing based on the Carr grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. Considering the parties’ arguments and evidence, for reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’770 patent’s challenged claims. We institute an inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Here, however, the February 18, 2022 filing date of Krupa (Ex. 1003, code (22)) is indisputably after the priority date for the claims recited in the ’770 patent, which Petitioner concedes is at least May 17, 2021 (Pet. 4, 14, filing date of the Krupa Provisional to qualify Krupa as prior art. See Pet. 4; 35 U.S.C. § 102(d)(2). Under subsection 102(d)(2), to qualify as prior art, a reference patent or published patent application is considered effectively filed as of the filing date of its provisional application only to the extent that the provisional “describes the subject matter” relied on in the reference patent document. 35 U.S.C. § 102(d)(2). We cannot presume that the Krupa Provisional describes the subject matter in Krupa that the Petition relies on, however. See Dynamic Drinkware, 800 F.3d at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”). The burden to make this showing falls squarely on Petitioner. But Petitioner does not explain how the Krupa Provisional supports the relevant subject matter relied on in Krupa. In fact, Petitioner did not introduce the Krupa Provisional into the record, so it would not be possible to do so.9” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “But Patent Owner’s arguments do little to undermine the rational underpinning of Petitioner’s reasoning for combining Carr and Beuterbaugh because they improperly focus on what Carr and Beuterbaugh disclose individually, rather what they disclose in combination; and they appear to improperly rely on the bodily incorporation of Beuterbaugh’s pulsing method into Carr. Petitioner contends the motivation for combining Beuterbaugh and Carr in the manner claimed comes from the fact that valve sequencing generally (rather than Beuterbaugh’s specific pulsing method for “overlap of fluid flows to each well [to] be controlled to optimize the downhole pressure waves and minimize the surface impacts.” Pet. 63, 66 (citing Ex. 1005 ¶ 24; Ex. 1002 ¶¶ 496–512). Patent Owner does not dispute, at this preliminary stage, that Beuterbaugh suggests valve sequencing was a known technique that can enhance well operations; nor does Patent Owner dispute that Carr discloses a control system that can control the sequence of opening and closing valves in response to determining that the fluid communicated via the manifold has satisfied one or more conditions. Thus, after considering what Carr and Beuterbaugh teach as a whole, we are persuaded at this stage that Petitioner’s reasoning for combining those reference in the manner claimed has a rational underpinning, which is supported sufficiently by the cited evidence of record.” slip op. at 27

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “claims in a civil action before the courts under 35 U.S.C. § 282(b), the terms in the challenged claims carry their ordinary and customary meaning, as understood by an ordinarily skilled artisan in the field of art at the time of the invention, in view of the patent’s specification and prosecution history. 37 C.F.R. § 42.100(b). Here, both parties contend that the challenged claims in this proceeding do not need to be construed further. Pet. 12; Prelim. Resp. 25. This is so, according to the parties, because a resolution in this proceeding does not hinge on a dispute about how the parties are interpretating any particular claim term or phrase. Id. Furthermore, neither Id. And we need only construe terms that are in controversy and only to the extent needed to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is for “resolution of disputed meanings”). Therefore, at this stage of the proceeding, the ordinary and customary meaning of each of the challenged claim terms and phrases, viewed in the proper context of the intrinsic record, applies without any further construction.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,560,770
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, LtdAll claims unpatentable
  PTAB · Jan 31, 2024 · IPR2022-01094 · APJ Scott A Daniels · IPR · Final written decision

  Claims 3–12 and 15–18 are unpatentable: claims 3–4, 6–11, 15–16, and 18 as obvious over Sanford and Hsu; claims 5, 12, and 17 under their respective additional-reference grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a person of ordinary skill in the art at the time of the ’039 patent “would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1006 ¶ 26). IPR2022-00600, which is that a person of ordinary skill in the art at the time of the ’039 Patent would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of human-machine interfaces and device access security. Additional education or experience might substitute for the above requirements. PO Resp. 6–7; see also IPR2022-00600, Paper 22 at 12 (PTAB October 13, 2023) (Final Written Decision). In this proceeding, Patent Owner’s and Petitioner’s levels of ordinary skill in the art, in particular education, are not substantively different. Petitioner’s proposal requires at least two years of experience in the field of security and access control, compared to one year as proposed by Patent Owner. We maintain our determination of the level of ordinary skill in the art from IPR2022-00600, including at least one year of experience as Patent Owner urges. On this record, Patent Owner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’039 patent and the asserted prior art references. See Okajima, 261 F.3d at 1355. Indeed, the difference between one and two years of experience in the field is fairly minimal considering that neither party asserts that it is necessary to have a significant amount of experience, e.g., 5–10 years in the field. For consistency, we rely on the same level of ordinary skill in the art that we determined in IPR2022-00600.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “construction with respect to the phrase “memory location defined by the provided card information” and limitation 3[D](1) as a whole, we maintain the claim construction given in IPR2022-00600 for the reasons provided here and in the Final Written Decision in that proceeding. IPR2022-00600, Paper 22, 29–36. We understand that, during an enrollment process, the claimed “biometric signature,” e.g., a fingerprint, is not yet stored in the memory, and no memory location or address has been “defined,” as in “set” or “established,” in the memory for storing the fingerprint, until card information is received. Once the card information and fingerprint are received during enrollment, the card information provides data that establishes where, i.e., at what memory location or address, the system will store the fingerprint data. The memory location or address where the fingerprint data is stored is, therefore, “contingent” on the card information, as Patent Owner’s construction requires.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Because at least Hsu, Sanford, and Tsukamura each discloses an enrollment process, in this case we need not explicitly determine whether the language from which Patent Owner argues infers “enrollment” in claim 3 is limiting. We can agree that from reading the ’039 patent in context there is As we explained in our Institution Decision the enrollment process includes step 401, which stores the biometric signature “at a memory address defined by the card data 604,” whereas in verification process 205 “step 204 reads the contents stored at a single memory address defined by the card data 604” and compares the stored biometric signature with the input biometric signature. Inst. Dec. 7 (citing Ex. 1001, 9:65–66, 8:24–26). The language of the independent claims and the requirement that where the card information has not been previously provided, “storing the inputted biometric signature,” tracks with the specification description of an enrollment phase. See Ex. 1001, 9:63–65 (“The [enrollment] process 207 is entered from the step 206 in FIG. 5, after which a step 401 stores the biometric signature received by the step 203 in the memory 124.”). Therefore, for purposes of this Decision, we will consider the limitations of claims 3, 15, and 18 to include, at least in part, an enrollment process. However, because the terms “enrolling” or “enrollment” do not create any particular dispute between the parties that we need to resolve, we need not determine whether they are, in fact limitations.” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “4. Means-plus-function terms In our Institution Decision we accepted Petitioner’s proposed constructions for the several “means for” and “code for” limitations recited in claims 15 and 18. See Inst. Dec. 42 (The Board explaining that “we find Petitioner’s proposed constructions of these term under 35 U.S.C. § 112(6) consistent with the record in this case.”). These constructions are also consistent with the District Court proceeding. Inst. Dec. 39–43; see also Ex. 1012, 1–4. Patent Owner does not address the means-plus-function terms in the challenged claims. Because patentability on the claims at issue in this case does not turn on construction of the relative structures and functions of these means-plusfunction terms, and because they are not in dispute, we maintain the constructions from our Institution Decision including that “code for” is an equivalent recitation for “means for.” Inst. Dec. 39–43.” slip op. at 18

  Patent outcomesUS 8,620,039 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,620,039
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, LtdAll claims unpatentable
  PTAB · Jan 31, 2024 · IPR2022-01093 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 13, 14, 19, and 20 are unpatentable as obvious over Hsu and Sanford; the Board did not reach the Hsu, Sanford, and Tsukamura ground.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “In AIT, the Federal Circuit explained that the “Board’s determination that Salesforce was not a real party in interest under § 315(b) relied on an impermissibly narrow understanding of the common-law meaning of the term.” Id. at 1357. For one thing, the Court pointed out that “an agent with an ownership interest in the subject matter of the suit, or one who is the trustee of an express trust or a party in whose name a contract has been made for the benefit of another, may qualify as a real party in interest.” Id. In this proceeding, Patent Owner has failed to point to any persuasive evidence, apart from software compatibility with Apple’s iOS platforms as discussed in the Agreement, that Apple has any overt interest, influence, development or design influence over Petitioner’s “Yale Smart Locks” products or App. In addition, Patent Owner has produced no evidence that Apple holds any ownership interest, assets, or expressly administers any property rights as a trustee or agent for the benefit of Petitioner indicative of real party in interest relationships under common law.” slip op. at 48

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In this proceeding, Patent Owner’s and Petitioner’s levels of ordinary skill in the art, in particular education, are not substantively different. Petitioner’s proposal requires at least two years of experience in the field of security and access control, compared to one year in Patent Owner’s case. We maintain our determination of the level of ordinary skill in the art from IPR2022-00600 including at least one year of experience as Patent Owner urges. On this record, Patent Owner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’039 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. Indeed, the difference between one and two years of experience in the field is fairly minimal considering that neither party asserts that it is necessary to have a significant amount of experience, ordinary skill in the art that we determined in IPR2022-00600.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “1. “A method of enrolling” Patent Owner argues that the independent claims are specifically directed to an enrollment process, e.g., “[a] method of enrolling,” recited in the preamble of claim 1, and that the preamble should be considered limiting. PO Resp. 6. Patent Owner argues that “the ‘method of enrolling’ in the preamble of Claim 1 provides antecedent basis for ‘the enrolment method’ in the body of dependent Claim 2.” Id. (citing Ex. 1001, 12:29– 42). Petitioner disagrees, arguing that “a ‘method of enrolling’ is nothing more than a nonlimiting intended use.” Pet. Reply 13. Petitioner also asserts that this term is “not critical to the issues in dispute” and “[e]ven if the phrase is limiting, Hsu, Sanford, and Tsukamura each disclose an enrollment process.” Id. at 14 (citing Pet. 20, 36–37, 78). disclose an enrollment process and Patent Owner does not expressly dispute that they do, in this case we need not explicitly determine whether the term is limiting. We can agree that “[a] method of enrollment” provides antecedent basis for at least dependent claim 2 and that the preamble provides context to the recited method step limitations in the body of independent claim 1. See Ex. 1001 12: 41–42 (dependent claim 2 referring “to the enrollment method of claim 1”). Apart from considering the limitations of claim 1 within the context of an enrollment process, because the term does not create any particular dispute between the parties that we need to resolve, we need not determine whether it is limiting.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Consistent with our prior decision in IPR2022-00600, we determine, also in this proceeding, that Patent Owner’s construction is sufficiently accurate. See Apple, Inc. v. CPC Patent Technologies, Ltd., IPR2022- 00600, Paper 22, 29–39 (Final Written Decision); see also NTP Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (noting that, when construing claims in patents that derive from the same parent application and share common terms, “we must interpret the claims consistently across all asserted patents”). In IPR2033-00600, we explained that [c]onsidering the abstract and the specification of the ’039 patent, what “defining, dependent upon . . .” means as a whole, in the context of claim 1 and “a method of enrolling,” is that during an enrollment process, the claimed “biometric signature,” e.g., a fingerprint, is not yet stored in the memory and no memory location or address has been “set” or “established” for the fingerprint. When the fingerprint, and then the card, is provided to the system during enrollment, the card information provides data that establishes where, e.g., at what memory location or address, the system will store the fingerprint data.8 IPR2022-00600, Paper 22, 30. We also explained that “[i]mportantly . . . we do not understand that ‘defining . . . a memory location,’ or Patent Owner’s alternative wording, ‘establishing’ or ‘setting,’ means ‘[creating] . . . a memory location in a local memory.’” Id. at 32. We explained further that” slip op. at 15

  Patent outcomesUS 8,620,039 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,620,039
• Abbott Diabetes Care Inc. v. Dexcom, Inc.All claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00921 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 5, 7, 8, 66, 67, 89, and 91 are unpatentable as obvious under § 103 based on Heller combinations; Gross-based grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time of the invention would have: 8 Neither party relies on objective evidence in this proceeding. a bachelor’s degree in biomedical engineering, chemical engineering, chemistry (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, including some experience with algorithms for calibrating such devices, or equivalent experience” and that “[s]uch experience could include either formal coursework in signal processing, computer science, or electrical engineering, or could also be obtained during on-the-job experience.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary 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). We read the claims according to the principles set forth above because neither party expressly interprets any language in the independent claims. See generally Pet. and PO Resp. We also address below other portions of the various claims as required by our analysis. B. The Parties’ Post-Institution Arguments” slip op. at 7

  • ExcludeMotion to exclude, deniedDenied

    “In light of the foregoing multiple egregious misrepresentations, Petitioner’s Motion is denied regarding the sufficiency of Dr. Baura’s qualifications because Petitioner did not timely object to the evidence on the basis asserted in the Motion, fails to refute Patent Owner’s showing that Dr. Baura is sufficiently qualified (see Opp. 3–7; Ex. 2010 ¶ 30), and abandons its argument in its Reply to the Motion. B. Petitioner’s Challenge to the Basis of Dr. Baura’s Opinions” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner persuades us that Flaherty suggests entering a code printed on a sensor or its packaging into the control device for that sensor and using that code as an index to access the correct calibration data for the sensor. Pet. 40–41 (cross-referencing Pet. 38–39). Flaherty explains: Depending on the repeatability of the manufacturing process, calibration coefficients could be determined for a batch of sensors or, if necessary, for each individual sensor. The calibration coefficients or code corresponding to a look-up table could then be printed on the sensor packaging so that they can be entered into the analyzer and used for the calculation of the analyte concentration. Ex. 1019, 5:55–62. Petitioner persuasively relies on this portion of Flaherty to demonstrate a motive to modify Heller by using Flaherty’s printed code to access correct calibration data in the control device. Pet. 40 (citing Ex. 1019, 5:53–58), id. at 32 (citing Ex. 1019, 5:58–62, 5:64–6:6 (“sensors could be provided with a calibration code that, when entered into the device, could be used as an index in a lookup table to find the appropriate coefficients. . . . The analyzer could read a bar code printed on the sensor and use that code to look up coefficients.”)). Because Petitioner made its showing in the Petition as just described, we disagree with Patent Owner’s argument that Petitioner “attempts to rewrite the Petition” in the Reply. Surreply 1–2. Based on our review of Petitioner’s argument and cited evidence, we conclude that Petitioner has demonstrated by a preponderance of evidence that an ordinarily skilled artisan would have modified Heller as suggested by Flaherty to meet the requirements of element 1e.” slip op. at 19

  Patent outcomesUS 10,993,642 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,993,642
• Abbott Diabetes Care Inc v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 1, 2023 · IPR2022-00909 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–4, 19, and 23 are unpatentable as obvious; claims 5 and 12 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “including a “predictive glucose value,” nowhere do we find the written description or drawings to have delineated such a second function expressly as “the present invention.” See, generally, Ex. 1001; see also Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022) (“We have repeatedly held that ‘it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.’”) (citation omitted). And, regardless of the exact wording, the concern we have is that without a persuasive, express, indication in the specification that the “second function” is specifically limited to “predicting glucose values,” it is a disfavored path to read limitations into the claims. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import limitations into a claim that are not expressly part of may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The facts and written description here appear to fall more squarely into the category of cases where it is not enough to simply point to embodiments in the specification including the unrecited claim limitation. See Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094 (Fed. Cir. 2003) (Even in cases where a “present invention” statement is provided, the Federal Circuit has explained that ‘[w]hile clear language characterizing ‘the present invention’ may limit the ordinary meaning of claim terms, . . . such language must be read in context of the entire specification and the prosecution history.”) (citation omitted); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41.” slip op. at 35

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “second function.” PO Resp. 19. However, neither did Patent Owner provide an express construction. See generally id. is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41. slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision we determined, in accordance with Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’215 patent [w]ould have had a Bachelor’s degree in biomedical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, including at least some experience in researching, developing, designing and/or evaluating (or supervising the same) methods, systems, or algorithms for providing indicators (e.g., alerts, alarms or other indicators) of analyte levels to users, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Inst. Dec. 8; Pet. 9–10 (citing Ex. 1002 ¶¶ 24–26). Patent Owner states that “DexCom does not challenge Petitioner’s POSA definition (Petition, 9-10) because the Petition fails even if it is adopted.” PO Resp. 9 (citing Ex. 2008 ¶¶ 20–23). ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’215 patent and the asserted prior art, we continue to rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11

  Patent outcomesUS 10,702,215 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,702,215
• Abbott Diabetes Care Inc. v. Dexcom, Inc.All claims unpatentable
  PTAB · Oct 27, 2023 · IPR2022-00908 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–3 and 11–13 are unpatentable as obvious over Feldman; the Board did not reach the anticipation and other obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 21–22 (citing Ex. 1002 ¶¶ 77–79). Patent Owner proposes a similar level of ordinary skill in the art including the same educational requirements but with 2–4 years of experience with medical devices for measuring analyte levels. PO Resp. 17 (citing Ex. 2011 ¶ 26). Because there is no material dispute as to Petitioner’s suggested level of ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’193 patent, Patent Owner’s proposed level of ordinary skill, and the asserted prior art, we continue our reliance on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Having considered the complete record before us, we find the evidence does not support the premise that Dr. Smith lacks appropriate knowledge and experience with in vivo sensors or that his testimony is compromised by his analysis of Dobson. Dr. Smith easily has sufficient experience with blood glucose monitoring and the electrochemical instruments and systems used to measure a patient’s blood glucose level in vivo. Ex. 1002 ¶¶ 5–9. By way of background and education, Dr. Smith holds a Bachelor of Science degree in chemistry from Butler University and a Ph.D. in analytical chemistry from the University of Illinois. Id. ¶ 5. Dr. Smith testified that he has worked for 34 years specifically in the blood glucose monitoring field, explaining that his “work includes development of novel electrochemical instrumentation, development of automated clinical laboratory instrumentation, research and development of blood glucose meters and test strips, development of transcutaneous intravascular glucose measurement systems, and development of noninvasive glucose measurement systems.” Id. ¶ 6 (emphasis added). Among his positions, for 12 years Dr. Smith was Vice President of Research, Development, and Engineering Worldwide and Chief Scientific Officer at LifeScan, Inc., a division of Johnson & Johnson. Id. ¶ 8. Dr. Smith testifies that he is an inventor on eleven “issued patents relat[ing] to glucose monitoring, four” slip op. at 25

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Assuming that the challenged claims are entitled to a priority date as early as April 15, 2005, and we are not entirely persuaded that they are, Feldman predates the earliest possible priority date to which the claims of the ’193 patent are entitled because Feldman was filed on December 7, 2004, more than 4 months prior to the asserted April 15, 2005 priority date. Feldman is a U.S. Application Publication, which published September 29, 2005, and was filed in the U.S. on December 7, 2004. Ex. 1008, Codes (22) (43). As explained in the MPEP “[p]re-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates.” MPEP 2136 (emphases added). Patent Owner argues specifically that Feldman “is a September 29, 2005, publication that published after the ’193 Patent’s priority date.” PO Resp. 41. While true, Patent Owner incorrectly relies upon the publication date of Feldman, as opposed to Feldman’s filing date of December 7, 2004, which sets the effective date on which Feldman is prior art under 102(e).” slip op. at 32

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Figures 2A and 4A, that Petitioner and Dr. Smith have explained persuasively that a person of ordinary skill in the art would have understood that “the three conductive layers associated with the electrodes are located overtop each other in a stacked fashion in a similar manner to that depicted in FIG. 2A with respect to the working electrode 29a and the Ag/AgCl counter/reference electrode 29b.” Ex. 1002 ¶ 205. For example, reproduced below are Dr. Smith’s annotated version of Feldman’s Figure 4A side-by-side with Dr. Tapsak’s alternative figure based on Say.” slip op. at 43

  Patent outcomesUS 10,702,193 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,702,193
• Apple Inc. v. CPC Patent Technologies Pty, LtdAll claims unpatentable
  PTAB · Oct 13, 2023 · IPR2022-00600 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 19, and 20 are unpatentable as obvious over Bradford, Foss, and Yamane.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’039 patent would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of human-machine interfaces and device access security. Additional education or experience might substitute for the above requirements. Inst. Dec. 9 (quoting Pet. 4). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. Because there is no express dispute as to the level of ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’039 patent and the asserted prior art, we maintain our reliance on Petitioner’s proposed level of ordinary skill in the art as set forth above.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “litigation that “dependent upon,” recited in claim 1 and 19, should be given its “[p]lain and ordinary meaning, defined as ‘contingent on or determined by.’” Pet. 6 (citing Ex. 1032, 2). Patent Owner agrees, adding that “a contingent upon or determined by, the received card information is not ‘dependent upon’ under Apple’s claim construction.” PO Resp. 7 (emphasis added). Patent Owner contends, however, that despite this agreed upon meaning, the arguments in the Petition are not consistent with the plain and ordinary meaning. Id. For purposes of understanding claim 1, given the plain and ordinary meaning of “dependent upon,” limitation 1[c] would read: [1c] defining, [contingent upon or determined by] the received card information, a memory location in a local memory external to the card; Because neither party disputes the agreed upon meaning of “dependent upon,” we will consistently apply the plain and ordinary meaning of “dependent upon” as “contingent on or determined by.”” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “2. Biometric card pointer system Petitioner also notes that the District Court construed “biometric card pointer system” recited in both claims 1 and 19 “as a ‘[n]onlimiting preamble term with no patentable weight.’” Id. (citing Ex. 1033, 1). Neither party, on this record, disputes this construction, and therefore, to the extent necessary, we rely on the District Court’s construction.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “preponderance of evidence that a person of ordinary skill in the art, who was aware of all the prior art in the relevant field, would have recognized that Bradford does not expressly disclose how a user’s ID information entry would have been retrieved from a database. Petitioner and Dr. Sears have further shown that, in turn, the person of ordinary skill in the art would have looked to Foss, which more specifically teaches that information on a user’s ID card was a known way to define, that is to “establish” or “set” a memory location, for example with the user’s player ID record entry, where a user’s input of a second authenticator, e.g., a fingerprint, would be stored. Bradford’s failure to teach (alone, or in combination with Foss) “first receiving card information and then defining a memory location based on that received card information.” See PO Resp. 9–17; PO Sur-Reply 3–4, 7– 10. For example, Patent Owner argues that Petitioner’s expert, Dr. Sears, “testif[ied] that Bradford teaches a process in which the steps are reversed - a memory location is defined before any card information is received.” PO Sur-Reply 3 (citing Ex. 2004, 31:12–18). We do not agree that Dr. Sears’ testimony conflicts with claim 1. When claim 1 is properly interpreted, as we have addressed herein, the creation of a player account in Bradford, or Foss, prior to receiving the card information does not preclude subsequently identifying a memory location (among preexisting memory locations/addresses within the preexisting player ID database) and establishing that memory location as the location where new biometric data, e.g., a player’s fingerprint, is going to be stored. See Pet. Reply 23–24; Pet. 26–28. That is, creating a player account in Bradford does not preclude subsequently “defining, dependent upon the received card information, a memory location,” as recited in claim 1. Pet. Reply 23–24; Pet. 26–28. In other words, we do not agree that claim 1 excludes the existence or creation of a player account record in “a memory location” prior to receiving card information. Claim 1 precludes the establishment or setting of a memory location for the “biometric signature” prior to receiving card information, but “defining” does not mean that the memory location is created or somehow brought into existence only after “receiving card information.” Considering our claim interpretation and the parties’ interpretations and constructions of limitation [1c], we have explained why Patent Owner’s evidence, and why we agree with Petitioner that a person of ordinary skill in the art would have understood that the Bradford-Foss combination teaches all the elements in limitation [1c]. Specifically, we are persuaded on the complete record now before us that where Bradford discloses an enrollment process including receiving card information and biometric information, but does not describe specifically how to store the biometric information, Foss teaches how, i.e., using card data to define, that is—to establish or set a memory location, e.g., the player’s user account, for storage of the biometric information in a local memory.” slip op. at 44

  Patent outcomesUS 8,620,039 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,620,039
• Unified Patents, LLC v. Intellectual Ventures II, LLCAll claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00429 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–5, 7–12, and 14–20 over Chowdhary under §§ 102 and 103, and claims 1–20 over Chowdhary and Tobey under § 103.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “On this record, we determine that we need not address whether Toyota was improperly excluded as an RPI because, “even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” See SharkNinja, Paper 11 at 18. Other than asserting that “estoppel provisions are implicated by this case” (PO Sur-reply 2311), there is no allegation or evidence that Toyota or any other RPI is barred or estopped from this proceeding, or that 11 Patent Owner asserts without explaining that the ’475 patent “is currently being asserted by Patent Owner against Toyota, as well as GM (another paying Member of Unified similarly situated to Toyota.). PO Sur-reply 23. However, the record indicates that the Toyota case has been dismissed and the GM case stayed. See Paper 32, 1 (Intellectual Ventures I LLC et al. v. Toyota Motor Corp. et al., 2:21-cv00389 (E.D. Tex. October 19, 2021) stipulated dismissal without prejudice on March 20, 2023); see also id. at 2 (Intellectual Ventures I LLC et al. v. General Motors Company, 6:21- cv01088 (W.D. Tex. October 19, 2021) (stayed pending settlement on April 6, 2023)). And, upon further inquiry, PACER Case Locator indicates that the GM case was dismissed in an order granting joint motion to dismiss entered on June 20, 2023. See GM case, Document 116. Petitioner purposefully omitted any other RPI to gain some advantage in our forum. See Unified Patent, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at 5 (PTAB May 22, 2023) (Director Review Decision) (“The Board can and should make a determination of the real parties in interest or privity in any proceeding in which that determination may impact the underlying proceeding, for example, but not limited to, a time bar under 35 U.S.C. § 315(b) or an estoppel under 35 U.S.C. § 315(e) that might apply. That is not the situation here.”). Because we determine that neither the time bar nor estoppel provisions of 35 U.S.C. § 315 are implicated in this case, “we need not address whether [Toyota] is an unnamed RPI.” See Unified Patent, Paper 76 at 5 (“The Board should not have determined whether [there were additional] RPIs in this proceeding given that determination was not necessary to resolve the proceeding.”).” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that at the time of the invention, one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in vehicle telematics.” Pet. 6–7 (citing Ex. 1002 ¶¶ 37–40). Petitioner asserts that “[a] lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 5–6 years).” Id. Patent Owner essentially agrees with Petitioner’s assertion, but contends that the work experience should more broadly be in “mobile communications.” PO Resp. 16 (citing Ex. 2017 ¶ 27). In our Institution Decision, we determined that there was “not much difference between Petitioner’s and Patent Owner’s assertions, but noted that “we find that Patent Owner’s broader definition of a person of ordinary skill in the art is more consistent with the scope and content of the ’475 [p]atent.” Inst. Dec. 16–17 (citing Ex. 1001, 8:53–54; Ex. 1003, 3:15–18, Fig. 1). In its Reply, “Petitioner accepts the level of skill definition adopted in the Institution Decision,” and notes that “[n]either party contends that the differences in the proposed definitions affect the patentability of the challenged claims.” Pet. Reply 7. Based on this record, we apply Patent Owner’s definition of the level of skill, which also was applied in our Institution Decision, because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We begin our analysis by considering the language of the claims. At the outset, we note that none of independent claims 1, 8, and 15 require “actively notify[ing] the recipient soon after the violation,” as Patent Owner proposes. Independent claim 1 requires that if the computing device located within the vehicle determines that the vehicle committed a violation, the computing device located in the vehicle sends an indication of the violation to a remote computing system. Ex. 1001, 10:55–55. Independent claim 1 further recites “wherein the remote computing device is configured to notify a recipient about the violation committed by the vehicle.” Id. at 10:56–58. Independent claims 8 and 15 includes substantially similar limitations. Id. at 11:14–28, 12:11–25. Thus, the independent claims broadly recite “notify[ing] a recipient about the violation” without reference to any type, i.e., “active” or “passive,” or timing of the notification. Turning to dependent claims 4 and 5, claims 4 and 5 both begin by reciting “[t]he method of claim 1, wherein the remote computing device is configured to notify the recipient about the violation committed by the vehicle by.” Ex. 1001, 10:66–67:1, 11:3–5. Claim 4 further limits independent claim 1 “by permitting the recipient to view the indication of the violation via a browser” (id. at 10:67–11:2) and claim 5 further limits claim 1 “by sending a communication to the recipient in response to receiving the indication of the violation from the computing device” (id. at 11:4–6). Thus, we understand the recitation of “configured to notify a recipient” in claim 1 as being broad enough to cover both the notification recited in claim 4 that “permit[s] the recipient to view . . . via a browser” and the notification recited in claim 5 that “send[s] a communication to the recipient in response to receiving the indication of the violation from the computing device.” Id. at 10:66–11:7.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “At the outset, we agree with Petitioner that Patent Owner’s arguments are all premised upon its proposed construction of the phrase “configured to notify a recipient,” which, we do not adopt. See § III.C.1. As discussed above, we are not persuaded that the phrase “configured to notify a recipient,” as it appears in the context of claim 1, requires any type of active notification, as Patent Owner proposes. Consequently, Patent Owner’s argument that Chowdhary fails to teach the limitation at issue because Chowdhary “is wholly silent with regard to anything that is configured to actively notify someone about a violation” is unavailing. PO Resp. 24 (citing Ex. 2017 ¶ 57); see also id. at 27 (“[N]either the shortcuts to the reports shown in Figure 10 . . . or any other disclosure in Chowd[h]ary, actively notifies the fleet manager that a violation has been committed by the driver of the vehicle.”). Notwithstanding, to address this limitation, Petitioner directs us to Chowdhary’s disclosure that its “VSM application server automatically generates reports when new event data is received based on previously set criteria.” Id. (citing Ex. 1005 ¶¶ 7, 47–51, 96–97, 102–103, 114, Figs. 10–30; Ex. 1002 ¶¶ 84–87). Petitioner provides the following copy of Figure 10 of Chowdhary, annotated to identify, among several items, icon 1102 and icon 1104. Figure 10 illustrates “an example screen display for one embodiment of the VSM user interface” that includes “an ‘Alert/Notifications’ and ‘Messages’ screen.” Ex. 1005 ¶¶ 19, 97. Petitioner explains that Chowdhary discloses VSM application server receives speeding event data and prepares speeding reports based on the received event data. [Ex. 1005 ¶¶ 7, 47–51, 96–97, 114, Figs. 10–30]. An administrator sets alerts and/or notifications for reports that are of particular interest to the administrator so that an Alert/Notification is posted providing the title of the report (orange), the date/time the report was created (green), a link (via icon 1102, blue) to access the report each time a new speed limit violation report is created, and an icon 1104 (red) to remove reports so only new Alerts/Notifications are shown. [Ex. 1005 ¶¶ 97–98, 120, Fig. 10]. Pet. Reply 12–13. Relying on the deposition testimony of Mr. Wilson, Petitioner asserts that “Mr. Wilson testified that a clear notification would occur when a user logs in to a website, and there is an indication that a new message is available for the user to view.” Pet. Reply 13 (citing Ex. 2015,” slip op. at 32

  Patent outcomesUS 9,291,475 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,291,475

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.