- Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00453 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–7 and 9–18 are unpatentable as obvious over Duggan; the Board did not reach anticipation over Duggan or obviousness over Duggan and Pate.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner indicates that it does not necessarily agree with Petitioner’s proposed level of ordinary skill in the art, but states that “Patent Owner does not believe any differences would impact the conclusions in this inter partes review.” PO Resp. 5 (citing Ex. 2016 ¶¶ 32–36. Because there is no express dispute as to Petitioner’s suggested level of ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’395 patent and asserted prior art, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“It is well settled that limitations that do not use the word “means” create a rebuttable presumption that 35 U.S.C. § 112(6) does not apply. See Williamson, 792 F.3d at 1348 (Fed. Cir. 2015) (The Federal Circuit explaining that “the failure to use the word “means” also creates a rebuttable presumption—this time that § 112, para. 6 does not apply.”). We initially consider a plain reading of claims 1 and 14, which as Patent Owner points out, in addition to “controller,” includes specific “means for receiving” and “means for determining” limitations. Ex. 1001, 9:31–38, 11:5–12, see also Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (When construing claims, our “focus must begin and remain centered on the language of the claims themselves.”). Even a cursory review of the claims indicates that the claim drafter clearly understood how to craft a limitation in terms of mean-plus-function language, in that this convention was used for instance in limitations [1a] and [1b]. Id. The claim drafter made a conscious decision however, in limitation [1c], not to use the same convention, but to recite specifically “a controller.” Id. Given this explicit change of convention, we do not discern persuasive evidence in the claim language itself that suggests the drafter intended to use “controller” as simply a nonce word to signify a means-plus-function limitation. In fact, because the drafter expressly did not use “means for” language, it more likely reveals that the drafter did not intend to define “controller” as a means-plus-function limitation, but as a specific structural element of the claimed flight control system. Also, based on the antecedent basis of “a controller,” the claims subsequently recite “the controller.” Id. at 9:39–42. A reasonable reading of the claims is that “the controller” is not a nonce word, but references structure, namely a flight control computer, which physically receives signals and, based on those signals, actively controls other flight control devices on the aircraft. For instance, claim one recites “the controller also being configured to receive the command signals and the location signal.” Id. Claim 1 further recites the requirement that “the controller uses the command signals and location signal to operate the flight control devices to control the flight of the aircraft. Id. at 42–44. Indeed, the Microsoft Computer Dictionary defines “controller” as “[a] device that other devices rely on for access to a computer subsystem.” Ex. 3001, Microsoft Computer Dictionary, Microsoft Press, 2002. It may be, as Dr. Singhose points out, that a controller can be, technologically speaking, “electrical,” “mechanical,” “electromechanical,” “chemical,” or “biological,” but this does not mean that a person of ordinary skill in the art would not understand a “controller” as a structural article or physical device, i.e., a flight control computer, “to operate the flight control devices to control the flight of the aircraft” as called for in claims 1 and 14. See Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1354 (Fed. Cir. 2020) (“The question whether the term ‘digital processing unit’ invokes section 112, paragraph 6, depends on whether persons skilled in the art would understand the claim language to refer to structure, assessed in light of the presumption that flows from the drafter's choice not to employ the word ‘means.’”).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Dr. Singhose testifies that, even if we accept Patent Owner’s argument that “waypoint speed” is not expressly commensurate with the “commanded value of a circle velocity . . . it would have at least been obvious for a [person of ordinary skill in the art] to use the ‘Waypoint Speed’ parameter to define the speed of the aircraft during the circular flight.” Ex. 1004 ¶ 112. Dr. Singhose reasons that “[t]he ‘Waypoint Speed’ is already used for controlling the speed of the aircraft, and as Table 1 of Duggan describes, those parameters (including the ‘Waypoint Speed’) are defined for various orbit patterns, including circle, racetrack, and ellipse.” Id. Dr. Singhose testifies, persuasively, that for an orbit pattern “commanding the aircraft using the ‘Waypoint Speed’ parameter would have been a simple use or combination of familiar elements according to known methods to yield predictable results.” Id. Dr. Singhose bases his testimony also on Duggan’s written description which explains that an operator can “[g]raphically edit the existing route on the mission situation display by adding a waypoint or orbit pattern.” Ex. 1005 ¶ 407. Relying on Duggan’s explanations, Dr. Singhose testifies further that in the VACS system, for either a waypoint or orbit pattern, the operator can “then ‘[p]rogram in a fixed heading, altitude, and speed using the control options provided in the route tab of the selection pane [of GUI display].’” Ex. 1004 ¶ 108 (quoting Ex. 1005 ¶ 411). Although it may not be uniquely satisfying when an expert such as Dr. Singhose contends that a prior art modification is predictable, in cases where the modification is not a great leap in technology or logic, predictability based on evidentiary underpinnings as it is here, still answers the question why. See KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”), see also B/E Aerospace, Inc. v. C&D Zodiac, Inc, 962 F.3d 1373, 1379 (Fed. Cir. 2020) (The Court affirming the Board where “[t]he prior art yields a predictable result, the ‘second recess,’ because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so.”). Overall, when reasonably interpreting Duggan’s Table 1, there are sufficient reasons why a person of ordinary skill in the art would have known to use the commanded “Waypoint Speed” for a waypoint, and also for an aircraft conducting a loiter pattern centered around a waypoint acting as a loiter pattern center. See Ex. 1005, ¶ 188, Table 1. From a purely logical perspective, any in-flight function, autonomous, semi-autonomous, or manual or pre-programmed maneuver, an aircraft would require a “commanded” velocity or speed, otherwise the aircraft would simply not fly or alternatively disastrous consequences would result. Dr. Singhose explains that “[t]he’Waypoint Speed’ is already used for controlling the speed of the aircraft, and as Table 1 of Duggan describes, those parameters (including the “Waypoint Speed”) are defined for various orbit patterns, including circle, racetrack, and ellipse.” Ex. 1004 ¶ 112. Dr. Singhose testifies persuasively, that “commanding the aircraft using the ‘Waypoint Speed’ parameter would have been a simple use or combination of familiar elements according to known methods to yield predictable results.” Id. Dr. Singhose has provided sufficient reasoning supported by underlying evidence that a person of ordinary skill in the art would have understood Duggan’s “Waypoint Speed” as corresponding to the claimed “commanded value of a circle velocity,” and consequently that Duggan teaches, if not outright discloses, setting a speed, i.e. a velocity for an aircraft along a waypoint leg as well as a racetrack loiter program about an “orbit pattern center.” Ex. 1004 ¶¶ 108–112. Based on Dr. Singhose’s reasoning and the underlying evidence in Duggan on the record before us, Petitioner has shown sufficiently that the limitations of claim 2, and also of claim 17 which contains the same limitations, namely, “a commanded value of a circle velocity,” would have been obvious over Duggan. This is because we see no reason why Petitioner’s asserted modification, such as it is, is anything more than the predictable use of speed setting at a waypoint occurring in the context of an orbit center, and according to the established velocity function for controlling the speed of an aircraft.” slip op. at 43
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1004 ¶ 108. Considering Table 1, Dr. Singhose further testifies that “[t]he list includes ‘Waypoint Speed,’ which corresponds to the claimed ‘commanded value of a circle velocity’ because the circular flightpath corresponds to a waypoint.” Id. Dr. Singhose does not, in our opinion, come to these conclusions without facts. Dr. Singhose points to additional evidence in Duggan for instance, that the disclosed VACS system performs various autonomous and semi-autonomous functions, and “[e]xamples of such functions include implementation of inertial trajectories, pre-programmed maneuvers such as racetrack loiter patterns.” Id. (quoting Ex. 1005 ¶ 64). Dr. Singhose further explains that as shown in Duggan’s annotated Figure 39, reproduced below with highlighting by the Board, the VACS architecture supports a mission control path including within the “programmed maneuver” at block 3942, sub-functions including “set speed” function. Id. ¶ 109. Duggan’s Figure 39 illustrates “potential control paths through a mission,” including manual programming of a maneuver having set vertical profile, set heading and set speed (highlighted yellow). Ex. 1005, Fig. 39. Dr. Singhose concludes that that Duggan’s disclosure for setting a speed for a loiter pattern, including a circular pattern, thus corresponds to the claimed “commanded value of a circle velocity.” Ex. 1004 ¶ 109. And based on Duggan’s disclosures, Dr. Singhose testifies persuasively that a person of ordinary skill in the art “would [have understood] that, to perform a pre-programmed maneuver (such as loiter pattern), Duggan’s VACS allows the operator to set a desired speed for the loiter/circle mode.” Id.” slip op. at 37
Patent outcomesUS 8,078,395 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,078,395 - Amazon.Com, Inc. v. M2m Solutions LLCAll claims unpatentablePTAB · Jul 25, 2023 · IPR2022-00260 · APJ David C Mckone · IPR · Final written decision
Claims 1–30 are unpatentable as obvious: claims 1–6 and 13 over Kloba, Multer, and Hoyle; claims 7–30 over combinations adding Loughran and, for certain claims, Fong.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not believe that any term of the ’442 patent need be construed; the claims should be given their plain meaning.” Pet. 8. Patent Owner concurs with that approach for present purposes, but expressly reserves its future rights to offer counter arguments and evidence in any instances where Petitioner or the Board may act to expressly or implicitly construe any claim term in a manner inconsistent with its plain and ordinary meaning, and/or where they may elect to propose or adopt specific claim constructions of any claim terms. PO Resp. 2–3. No explicit construction of any claim term is required for the purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“PO Resp. 18–19 (citing Ex. 2013 ¶ 27). Patent Owner’s proposed level of skill is not materially different from that proposed by Petitioner, and Patent Owner does not argue that the level of skill we adopted in the Institution Decision is erroneous. The parties do not argue that any issue in the case turns on any difference between the proposals. We maintain our finding that Petitioner’s proposal reflects the correct level of skill in the art. However, our findings and conclusions in this proceeding would be the same under Patent Owner’s proposal.” slip op. at 13
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“teaches the additional limitation of claims 16 and 19. Collateral estoppel precludes a party from re-litigating an issue if (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX, 909 F.3d at 1377 (quoting Stephen Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). In the ’1205 FWD, the Board found that Kloba teaches the additional limitation of claims 16 and 19 of the ’989 patent. Ex. 2011, 83–85. The additional limitation of claims 16 and 19 of the ’989 patent is identical to the additional limitation of claims 16 and 19 of the ’442 patent (including the unique identifier). Ex. 1011 (claim chart comparing claims 16 and 19 of the ’989 patent to claims 16 and 19 of the ’442 patent). Thus, the ’1205 FWD presented the identical issue and actually litigated and adjudicated the issue. We address Patent Owner’s argument as to the identity of the issue below. Resolving this issue was necessarily required to determine whether claims 16 and 19 of the ’989 patent were unpatentable. Ex. 2011, 83–85. Patent Owner was fully represented in the ’1205 IPR and Patent Owner does not contend otherwise.” slip op. at 63
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“that combining the teachings of Kloba and Hoyle in the manner limitation 1[f] recites would have been an obvious adaptation of the disclosed technology at the time of the invention. The Supreme Court has held that “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417. We “must ask whether the improvement is more than the predicable use of prior art elements according to their established functions” because “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. And when making this analysis, we are not confined to “seek[ing] out precise teachings directed to the specific subject matter of the challenged claims;” instead we look more broadly to what the evidence as a whole shows was known and “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. Notably, here, that skilled artisan is someone who has a substantial amount of education and training in the relatively complex technology at issue. See § I.C above.” slip op. at 48
Patent outcomesUS 10,791,442 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,791,442 - Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentablePTAB · May 31, 2023 · IPR2022-00162 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–7, 10, and 12 are unpatentable: Harding anticipates and renders claims 1–7 and 12 obvious; the listed combinations render claims 3, 4, 10, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “detent position” In its Petition, DJI argued that the claim term “detent position,” as recited in independent claim 1 of the ’752 patent, should be construed to mean “zero-force position.” Pet. 9. In its Patent Owner Response, Textron cited documentation from the parallel district court case that the parties “agree to construe ‘detent position’ to have its plain and ordinary meaning,” and stated that “there is no dispute between the parties as to the meaning of the term and . . . no explicit construction is necessary.” PO Resp. 8–9 (citing Ex. 2016, 5). Based on the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Based on the fully developed trial record, we agree with DJI that the claim phrase “engaging . . . when both the longitudinal controller and the lateral controller are released” should not be limited to controllers on two separate control sticks. That is, we adopt the plain and ordinary meaning for the phrase “when both the longitudinal controller and the lateral controller are released” and construe this term as encompassing either single control stick or multi-stick control configurations. We begin with a review of the specification of the ’752 patent. See Phillips, 415 F.3d at 1315 (stating that “the specification is ‘the single best guide to the meaning of a disputed term’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The “single stick” aspect of our construction finds support in the specification, which consistently reinforces that the lateral and longitudinal controllers may be embodied by a single control stick. Ex. 1001, 2:55–61, 3:18–29, 5:21–27, 8:27–30, 8:49–57, 9:6–10, 10:44–47. As two examples, the specification refers to when the “pilot moves the control stick,” and in another, the specification references where, “[i]n the preferred embodiment, the first 0.1– 0.2 inch of aircraft stick movement is used to determine whether the stick is in the detent position.” Ex. 1001, 8:49–57, 10:44–47 (emphases added). Textron does not identify explicitly, nor could we find a single instance, where the specification of the ’752 patent references using two control sticks. Furthermore, we agree with DJI that the word “both” recited in dependent claims 6 and 7 does not require two separate control sticks, but rather refers to releasing both the longitudinal and lateral controllers. The crux of Textron’s argument appears to be that, because dependent claims 6 and 7, unlike independent claim 1, require releasing both the longitudinal and lateral controllers to activate a state, they cannot be embodied by a single stick, stating “if the controllers were not separate, how could they be independently released?” PO Resp. 10. Textron’s argument, however, conflates “controllers” and “sticks.” As we discuss above, the specification of the ’752 patent repeatedly teaches having both the longitudinal and lateral controllers be actuated by a single control stick. Textron does not support its argument with evidence from the specification, nor does it support its position that, when dependent claim 6 and 7 refer to “the longitudinal controller” and “the lateral controller,” they are referring to the separate control sticks to actuate these two different controllers. Instead, dependent claims 6 and 7 are agnostic as to whether the longitudinal and lateral controllers are set up to actuate on a single control stick or on multiple control sticks. In summary, we accord the claim phrase “engaging . . . when both the” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1002 ¶¶ 61–62). In its Patent Owner Response, Textron agrees with the level of skill in the art as proposed by DJI, arguing the following: a person of ordinary skill in the art . . . at the time of the invention of the ’752 Patent would have been someone with at least the equivalent of a Bachelor’s degree in mechanical engineering, aerospace engineering, electrical engineering, robotics or similar discipline covering principles of the design or operation of flight controls for helicopters, drones, or other rotary aircraft, as well as one year of experience working on the design, development, implementation, or operation of such technologies. [Textron] also agrees that significant experience could substitute for formal education, and significant education could substitute for work experience. PO. Resp. 4–5. Based on the fully developed record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’752 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Final Written decision, we adopt DJI’s proposed level skill in the art and apply it in our anticipation/obviousness analysis below.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“h. Summary In summary, we have reviewed DJI’s arguments and supporting evidence as to how the teachings of Harding account for all the limitations of independent claim 1, and we agree with and adopt DJI’s analysis. See Pet. 16–28. Accordingly, DJI has demonstrated by a preponderance of the evidence that the subject matter of claim 1 is anticipated by and would have been obvious over the teachings of Harding. 5. Claims 2–5 and 12 DJI also contends that dependent claims 2–5 and 12 of the ’752 patent are unpatentable under §§ 102(b) or 103(a) as anticipated by or rendered obvious over the teachings of Harding. Pet. 28–38. DJI explains how the teachings of Harding account for the subject matter of each dependent claim, and provides reasoning as to why a person of ordinary skill in the art would have been prompted to modify the teachings of this reference. Id. During trial, Textron does not address separately DJI’s arguments and supporting evidence as to how the teachings of Harding account for the additional limitations of dependent claims 2–5 and 12. See PO Resp. 10–32. As one example, claim 2 directly depends from independent claim 1, and further recites “maneuvering the rotary aircraft within the first envelope with a translational rate command, the translational rate command being adapted to control longitudinal flight of the rotary aircraft with movement of the longitudinal controller and lateral flight of the rotary aircraft with movement of the lateral controller.” Ex. 1001, 11:47–53. DJI contends that Harding teaches this limitation because it discloses a translational rate command where ground speed follows the cyclic stick, and that while in TRC, longitudinal movement of the cyclic stick controls longitudinal ground speed and lateral movement of the cyclic stick controls lateral ground speed. Pet. 28–30. DJI cites Harding’s Figure 6, reproduced below.” slip op. at 31
Patent outcomesUS 9,162,752 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,162,752 - Unified Patents, LLC v. Mcom IP, LLCAll claims unpatentablePTAB · Feb 8, 2023 · IPR2022-00055 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1, 3–7, 9–13, 15, 16, and 18–20 are unpatentable as obvious over the four combinations of prior art listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the invention “would have had at least (i) a Bachelor of Science in Computer Science, Computer Engineering, Information Systems, or the equivalent, and (ii) approximately two years of experience with data/content selection and transmission-related fields.” Pet. 14–15 (citing Jestice Decl. ¶¶ 31–32). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appears consistent with the record at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 12. In the Response, Patent Owner also adopts Petitioner’s proposed level. See PO Resp. 11. We maintain the definition of the level of ordinary skill in the art adopted at institution.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that, “[f]or purposes of this Petition, no specific claim construction (beyond plain and ordinary meaning) is necessary.” Pet. 15. Patent Owner responds that the terms of the challenged claims “are clear on their face.” PO Resp. 6 (citing Landers Decl. ¶¶ 21–22). Based on the complete record, we do not discern a need to construe explicitly any claim terms because doing so would not change the result of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We do, however, address certain claim construction issues in the discussion of elements 1.A and 1.I below.” slip op. at 9
- Expert testimonyPetitioner expert creditedOther
“In the cited testimony, Mr. Jestice explains why the system of Lawlor would be “inoperable” without “at least one computer system configured with at least one control console” at member banks 64 and bank 74. See Jestice Decl. ¶ 87 (“[One of ordinary skill in the art] would have understood that with at least one computer system configured with at least one control console, as without one neither banks nor the operator of Lawlor’s system would have any access to the Lawlor’s system and, thus, it would be inoperable. After all, if the transaction cannot be processed and the advertisement cannot be loaded into Lawlor’s system, the system will not be able to operate as described.”). We find this assertion supported by the record. For example, we are persuaded by Petitioner’s position that it would be illogical for a bank to not have a computer and control console at the location of the bank itself to input necessary data for its operations. See Pet. Reply 6 (“It is nonsensical that banking institutions would not be able to have access to its own customer data to perform its basic functions, and would instead be required to share a control console at a common server.”). Further, as noted by Petitioner (see Pet. Reply 6), the testimony of Mr.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner discusses why the proposed combination of Lawlor, Bouve, De Leo, and Looney discloses each limitation and discusses why one of ordinary skill in the art at the time of the invention would have had reason to combine the relied-upon aspects of Lawlor, Bouve, De Leo, and Looney as proposed. See Pet. 15–16, 24–49; Jestice Decl. ¶¶ 79–83, 104–194. The record evidence, as presented, supports Petitioner’s position as to the additional limitations in independent claim 1. Patent Owner does not present arguments addressing these limitations. We find, based on the complete record, that Petitioner has demonstrated by a preponderance of the evidence that the proposed combination of Lawlor, Bouve, De Leo, and Looney discloses the remaining limitations in claim 1.12 We also determine that Petitioner has adequately explained why one of ordinary skill in the art would have had reason to combine the relied-upon aspects of Lawlor, Bouve, De Leo, and Looney as proposed and that there would have been a reasonable expectation of success.” slip op. at 28
Patent outcomesUS 8,862,508 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,862,508 - PTAB · Feb 2, 2023 · IPR2022-01094 · APJ Scott A Daniels · IPR · Institution
Instituted IPR on claims 3–12 and 15–18 on all petition grounds; the Board found a reasonable likelihood of success on at least one claim and rejected the § 315(b) time-bar challenge.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Apple and Petitioner. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. Accordingly, based on the totality of the evidence of record and our analysis above, we conclude for purposes of this Decision that Apple is not an RPI or in privity with Petitioner, and thus Petitioner is not time-barred under Section 315(b).” slip op. at 35
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“circumstances discussed above, and further considering the controlling legal authority discussed above, we determine for purposes of this Decision that the evidence establishes that Apple is not a real party-in-interest. Apple initiated and is presently involved in an IPR proceeding challenging claims of the ’039 patent. We have not been directed to any persuasive evidence that Apple needs, wants, funds, controls, or benefits from a second, later-filed petition, such as the one before us. Apple has its own, earlier filed, IPR proceeding pending before the Patent Trial and Appeal Board. Based on the record before us there is no evidence that this IPR proceeding was filed at Apple’s behest. We recognize that Apple will derive some benefit if the claims of the ’039 patent are determined to be unpatentable in a post-grant proceeding at the PTO, or found invalid by a district court. This derived benefit does not, however, make Apple an RPI to this proceeding. See WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1321 (Fed. Cir. 2018) (stating in the context of the broader concept of privity that “[a]s a general proposition, we agree with the Board that a common desire among multiple parties to see a patent invalidated, without more, does not establish privity”). determination in Uniloc 217, “[w]ithout such evidence of control, in addition to no evidence of joint funding, or even any evidence of substantial coordination between the parties as to their respective decisions to bring these proceedings, a finding that [a non-party to this IPR proceeding] is an RPI of or in privity with [Petitioner] here would be improper.” Uniloc 2017, 989 F.3d at 1029.” slip op. at 29
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION We determine Petitioner has established a reasonable likelihood of prevailing in showing that one or more claims are unpatentable over the cited prior art. That said, Petitioner’s remaining obviousness challenges McCalley, are best left for trial after full development of the record. 37 C.F.R. § 42.108(c); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (“Equal treatment of claims and grounds for institution purposes has pervasive support in SAS.”). We therefore institute trial on all claims and all challenges included in the Petition. Our factual findings and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review of the ’039 patent is hereby instituted as to claims 3–12 and 15–18 on all grounds set forth in the Petition; and” slip op. at 58
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’039 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 36
Claim construction§ 103 obviousnessPatents in suitUS 8,620,039 - PTAB · Feb 2, 2023 · IPR2022-01093 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1, 2, 13, 14, 19, and 20 on all petition grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Game & Tech. Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1349 (Fed. Cir. 2019) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)). Thus, Petitioner bears the burden of establishing that no RPI or privy was served with a complaint alleging infringement more than one year prior to the May 31, 2022, filing date (see Paper 3) of the Petition in this proceeding. slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“circumstances discussed above, and further considering the controlling legal authority discussed above, we determine for purposes of this Decision that the evidence establishes that Apple is not a real party-in-interest. Apple initiated and is presently involved in an IPR proceeding challenging claims of the ’039 patent. We have not been directed to any persuasive evidence that Apple needs, wants, funds, controls, or benefits from a second, later-filed petition, such as the one before us. Apple has its own, earlier filed, IPR proceeding pending before the Patent Trial and Appeal Board.” slip op. at 28
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“As to analogous art, we consider two criteria when evaluating whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In support, Petitioner’s declarant, Mr. Lipoff, testifies that a person of ordinary skill in the art would have implemented Sanford’s check to determine whether a user is enrolled, or not, in Hsu’s system for several reasons. Ex. 1006 ¶¶ 111–114. First, Mr. Lipoff explains, “in most instances, a POSITA would not want to enroll a user who already enrolled . . . [r]e-enrollment also consumes unnecessary system resources, takes time, and is generally undesirable.” Id. ¶ 112. Second, Mr. Lipoff explains that “checking whether a user is enrolled helps prevent fraud whereby an unauthorized user is able to overwrite the fingerprint of an authorized user by using the authorized user’s user number or account number.” Id. ¶ 113. Also, Mr. Lipoff testifies that “checking whether a user is enrolled also makes the system more user-friendly. If the user is enrolled, the user can seamlessly proceed with biometric verification.” Id. ¶ 114. On this record, we find persuasive Petitioner’s explanations for a motivation to combine Hsu and Sanford. Sanford, as Mr. Lipoff testifies persuasively, describes how a person of ordinary skill in the art would construct a system to check to see if a user is enrolled, or not, in a biometric identity verification system before determining a further course of action. Id. ¶¶ 98–100. In addition, Mr. Lipoff provides several reasons why a person of ordinary skill in the art would look to Sanford for “the simple and straightforward way to determine whether such user has been enrolled [and] to check if the user’s data is already stored in Hsu’s database.” Id. ¶ 115; see also KSR, 550 U.S. at 420 (explaining that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”).” slip op. at 57
Claim construction§ 103 obviousnessPatents in suitUS 8,620,039 - PTAB · Jan 5, 2023 · IPR2022-01314 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on all asserted grounds against all claims 1–20, including the First-Allowed and Second-Allowed Claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing that at least one claim of the ’268 Patent is unpatentable. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 6. The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner does not seek express construction of any claim terms. See Pet. 6. We determine that we do not need to provide an express construction for any claim terms for purposes of this Decision. slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,796,268 - PTAB · Jan 5, 2023 · IPR2022-01261 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–10 and 12–20 on all asserted grounds, finding a reasonable likelihood that FedEx would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–10 and 12–20 of the ’109 Patent is unpatentable. Accordingly, we institute an inter partes review of all challenged claims on all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). See Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018);7 see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). IV. ORDER It is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims of claims 1–10 and 12–20 of the ’109 Patent is instituted commencing on the entry date of this Decision; and” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 4. The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner does not seek express construction of any claim terms. See Pet. 5. We determine that we do not need to provide an express construction for any claim terms for purposes of this Decision.” slip op. at 9
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,181,109 - PTAB · Jan 5, 2023 · IPR2022-01252 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on claims 1–15, 17–30, and 32–34 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner does not seek express construction of any claim terms. See Pet. 5. We determine that we do not need to provide an express construction for any claim terms for purposes of this Decision.” slip op. at 9
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,847,029 - PTAB · Jan 5, 2023 · IPR2022-01219 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on all challenged claims and asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’920 patent on the grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 4–5 (citing Ex. 1003 ¶ 21). The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“reciting the types of information stored in the “memory device” of claim 1, Petitioner provides alternative mappings based on Keillor either alone or in combination with Morimoto. Pet. 17–21 (citing Ex. 1004, 7:18–43, 11:12– 39, 15:40–54; Ex. 1005, 2:7–67, 5:1–40, 9:31–10:8, 10:65–11:7, Fig. 4). According to Petitioner, “[t]he POSITA would have recognized that this combination would enhance the information provided to users of Keillor’s system looking to track and ensure delivery of shipments.” Pet. 8 (citing Ex. 1003 ¶ 82). The Petition provides several reasons that Petitioner contends would have motivated a POSITA to make the Keillor-Morimoto combination and cites teachings from both references and its declarant’s testimony as support for those reasons. Pet. 8–11; Ex. 1003 ¶¶ 85–94.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,482,920
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.