• Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentable
  PTAB · Mar 25, 2024 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–7 and 24–31 are unpatentable as anticipated by Lauper and, alternatively, as obvious over Lauper, ISO 7816-4, and ISO 14443.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner presents the following assessment as to the level of skill in the art: As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “Cir. 2005) (en banc). Petitioner offers claim constructions for the following terms: “smartlink module” (claims 1 and 24); “the module” (claims 2–7 and 25–31); “smartcard chip” (claims 1, 5, 24, and 26–31); and “said smartcard processor chip” (claims 2, 5, and 7). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. Upon review of the record, we adopt Petitioner’s proposed constructions as a part of this Final Written Decision. See Ex. 1002 ¶¶ 67– 78–88; Pet. 12–15. For convenience, we reproduce them in table format below: Claim Terms Petitioner’s Proposed Constructions “smartlink module” and “the “a device that includes (1) a module” processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70). “smartcard chip” and “said “a device including a processor and smartcard processor chip”” slip op. at 11

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

    “integrated circuit (communication controller 21’ . . . includes a processor and memory and processor executable code for providing data processing capability” and that a skilled artisan would understand that integrated circuit “includes all of the components called out in the claims the ’792 Patent which would be included in a ‘smartcard chip.’” Pet. 30 (citing Ex. 1005, Fig. 1, ¶¶ 18, 22, 23, 25; Ex. 1002 ¶¶ 169–172, 179–190). On the record, we are satisfied that Lauper’s integrated circuit constitutes the claimed smartcard chip. slip op. at 15

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

    “does not constitute a smartcard chip, “it would have been obvious to a POSITA (as Ground 2) to modify Lauper to replace the ‘integrated circuit (communication controller 21)’ with a smartcard chip that conforms to the ISO standards.” Pet. 32 (citing Ex. 1002 ¶¶ 178–190) (emphasis omitted).8 In so contending, Petitioner points to disclosure in Lauper that it is “an aim of the present invention to propose a mobile telephone that is suited for the transmission of data with external devices according to a plurality of different standards.” Id. (quoting Ex. 1005 ¶ 5) (emphasis omitted). Petitioner also relies on the testimony of Mr. Zatkovich discussing the use of smartcard chips as a part of the ISO standards, such as ISO 7816-4 and ISO 14443, for the type of operations and functions disclosed in Lauper. Id. at 8 Petitioner makes the same alternative argument in connection with the “smartcard chip” recitation in independent claim 24. See Pet. 60–61. 32–34 (citing, e.g., Ex. 1002 ¶¶ 39–41, 42–45 124–125, 152, 174, 175, 177, 191, 192, 193; Ex. 1005 ¶¶ 23, 25, 32). Petitioner further explains that a skilled artisan would have had adequate reason to combine the teachings of Lauper, ISO 7816-4, and ISO 14443, with a reasonable likelihood of success in so combining those teachings. See id. We also are satisfied that Petitioner also accounts for the smartcard chip requirement of the claims as a part of the ground based on Lauper, ISO 7816-4, and ISO 14443.” slip op. at 15

  Patent outcomesUS 7,110,792 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,792
• Askeladden, L.L.C. v. Ohva, Inc.Rehearing granted
  PTAB · Mar 15, 2024 · IPR2023-00921 · APJ Amee A Shah · IPR · Rehearing

  Granted petitioner’s rehearing request and instituted IPR of claims 1–4 on all asserted grounds, finding a reasonable likelihood of prevailing based on the preliminary construction of “transaction data.”

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c).” slip op. at 5

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

    “Although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s embedded token, i.e., the output interface of the transaction card. See Ex. 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. Such claimed “transaction data” is distinct from the “transaction data” described in connection with the Figure 11 embodiment. We therefore do not limit the claimed “transaction data” and instead preliminarily construe that term as encompassing any data involved in a transaction, including account data. As described above, the claimed transaction data must come from the output interface of a transaction card. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateInstituted

    “The dispute relates to whether the ’030 application describes the claimed “smart telephone” accepting transaction data and executing coded instructions to convert the analog signal to digital data representing transaction data as digital data. See Pet. 14–15, 19–27. In Petitioner’s view, that term is supported only by language added to the “Brief Summary of the Invention” during prosecution of the application resulting in the ’286 patent. Id. at 17. In contrast, argues Petitioner, the corresponding section of the ’030 application instead describes transmitting sound to a PC, not a smart telephone. Id. at 19–26. Patent Owner submits that the ’030 application describes generating sounds from a smart phone and using a “key jack sound pass generator” to communicate sounds. Prelim. Resp. 16. Patent Owner contends that the claim language is supported by disclosure of receiving the audio signal at a microphone port and converting the signal to transaction data. Id. at 16–18. Patent Owner points also to description of direct communication between a “client device” and server. Id. at 19. On the present record, we find that Petitioner, at this stage in the proceeding, has shown sufficiently how it contends that the earliest possible effective filing date for claims 1–4 of the ’286 patent is March, 3, 2015, such that the Cho, Aaron, Carpenter, and de Geer references qualify as prior art. Patent Owner has identified a factual dispute regarding the significance of the ’030 application’s disclosures, and we view that dispute as best resolved through trial.” slip op. at 9

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

    “35 U.S.C. § 312(a)(2) provides that one of the “Requirements of Petition” is that “the petition identifies all real parties in interest.” “Whether a non-party is a RPI is a ‘highly fact-dependent question’ and must be considered on a case-by-case basis.” SharkNinja Operating LLC. v. IROBOT Corp., No. IPR2020-00735, 2020 WL 6050687, at *4 (PTAB Oct. 13, 2020) (precedential) (citing Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper 148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). Here, addressing whether TCH is an unnamed RPI would not create a time bar or estoppel under 35 U.S.C. § 315. There is no allegation or evidence that TCH is “barred or estopped from this proceeding or that Petitioner purposefully omitted [TCH] to gain some advantage.” SharkNinja at *4. Rather, Patent Owner argues that for “once again willfully fail[ing] to identify TCH as a real party in interest, . . . the Petition should be denied on that basis.” Prelim. Resp. 7. In other words, Patent Owner contends only that we deny institution because of “the alleged failure of a procedural requirement that can be corrected under our precedent.” SharkNinja at *4. We understand that” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,679,286
• Draftkings Inc., A Delaware Corporation v. AG 18, LLCAll claims unpatentable
  PTAB · Mar 13, 2024 · IPR2022-01447 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–17 and 18–20 were shown unpatentable on addressed §103 grounds, while the Board declined to reach Grounds Four and Six.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “C. Petitioner’s Motion to Exclude Evidence Petitioner moves to exclude Exhibit 2005, the declaration testimony of” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 10

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

    “gaming service provider, shown in Figure 3 (#36) and in Figure 9 (#914). See Pet. 31–32 (preamble 1[pre]), 33 (limitation 1[a]), 37 (limitation 1[b]), 44–45 (limitation 1[k]). Accordingly, to provide context for the parties’ arguments, we initially summarize Amaitis’s description of its gaming service provider. Then we summarize the parties’ arguments, before resolving them in Petitioner’s favor.” slip op. at 30

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

    “(iii) Discussion and Conclusion We determine the combination of Amaitis and Bryson would have led” slip op. at 39

  Patent outcomesUS 9,613,498 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,613,498
• Draftkings Inc., A Delaware Corporation v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01446 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–17 and 19–30 are unpatentable based on the listed anticipation and obviousness grounds; claim 18 was not shown unpatentable.

  RulingsFinal written decision

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

    “Module Terms each recite a “module” that is configured to perform or to oversee certain recited functionality, without reciting sufficient structure for performing that functionality. See Pet. 32. Further, as in Williamson, the word “module” in the context of the ’205 patent claims and specification is a “nonce” word, used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51. We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112 ¶ 6 is overcome in this case, because the Module Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.2d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Dr. Lane’s apparent disagreement with this conclusion in the context of the ’205 patent is unaccompanied by any argument seeking to establish that the Module Terms might be understood to recite a sufficiently definite meaning as the name for structure. See PO Resp. 6; Ex. 2005 ¶ 28.” slip op. at 55

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner filed a Motion to Exclude Evidence proffered by Patent Owner (Paper 31). Patent Owner filed an Opposition (Paper 32), and Petitioner filed a Reply (Paper 33). We deny Petitioner’s Motion to Exclude Evidence, for reasons provided below.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “k) Conclusion Regarding Claim 12 Thus, based on the record presented, we conclude Petitioner has” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner relies on Bryson as disclosing the subject matter recited in claim 1, except for limitations 1[g] and 1[h], in substantially similar fashion as discussed above in Ground One in relation to other claims. See Pet. 68–73. Patent Owner’s sole opposition in this regard is whether Bryson discloses the betting range limitation 1[j]. See PO Resp. 49–53 (Patent Owner’s opposition to Ground Four as to claim 1). We conclude a preponderance of the evidence establishes Bryson supports Petitioner’s unopposed contentions in this regard, for the reasons set forth in the Petition which we adopt as our own in this Decision. We accordingly find Bryson discloses the preamble 1[pre] and limitations 1[a]–1[f], 1[i], and 1[k]–1[m].” slip op. at 74

  Patent outcomesUS 9,978,205 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,205
• Draftkings Inc. v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01448 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–10 and 12–29 are unpatentable over the asserted anticipation and obviousness grounds; claim 11 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “C. Claim Construction In an inter partes review, we construe each 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). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11

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

    “generally takes issue with whether Petitioner has sufficiently explained its construction of means-plus-function limitations. See PO Resp. 24–35. Nonetheless, based on the complete record, we find that the Petition “identif[ies] the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” of this means-plus-function limitation in claim 26. 37 C.F.R. § 42.104(b)(3); see Pet. 22 (citing Ex. 1001, 3:60–66). Moreover, we apply Petitioner’s construction for our prior-art analysis because it is consistent with and supported by the complete record.” slip op. at 38

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “9–11, 20 102(e) Bryson 9, 10 11” slip op. at 110

  Patent outcomesUS 10,614,657 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,614,657
• Draftkings Inc. v. AG 18, LLCAll claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01445 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–29 are unpatentable: claims 1–9, 13–16, 18, and 29 are anticipated by Bryson; claims 10–12, 17, and 19–28 are obvious over the stated combinations.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPatent owner expert discountedDecided for patent owner

    “We have considered Petitioner’s arguments and determine that these go to the weight we should give Dr. Lane’s testimony, not its admissibility. See Microfinancial, Inc. v. Premier Holidays Int’l., 385 F.3d 72, 81 (1st Cir. 2004) (“When the factual underpinning of an expert’s opinion is weak, it is a matter affecting the weight and credibility of the testimony—a question to be resolved by the [factfinder].”). As Petitioner notes, we have adopted Petitioner’s proffered level of ordinary skill in the art, which is a “bachelor’s degree in computer engineering, electrical engineering, computer science, applied mathematics, or a similar field, and at least two years of experience” slip op. at 68

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 9

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

    “b) Discussion Patent Owner’s position that “dynamically” creating a list means that the list is somehow in the process of “ongoing” or “continuous” creation does not add clarity to understanding of the scope of claims 1 and 8. In that regard, it is not apparent what is meant by “ongoing” or “continuous” list creation. Does that mean the list is never static and must be in a constant state of change? Patent Owner does not point to any record content providing context as to the frequency of list creation that would give rise to such creation being “ongoing” or “continuous.” We also do not discern that the portions of the record cited by Patent Owner, including the Specification of the ’131 patent and the prosecution history, provide cogent support for Patent Owner’s proposed meaning of the term “dynamically.”” 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

    “We additionally observed that Patent Owner agreed that the relevant Means For Terms and Module Terms were understood to be presented in a mean-plus-function format that invokes § 112 ¶ 6, but that Patent Owner generally disagreed with Petitioner’s proposed constructions. Id. at 17–18. For purposes of institution, we were not persuaded that Patent Owner’s argument directed only to an exemplary one of the Module Terms, i.e., “gaming operation creation module,” was adequate to deny institution, and noted that issues pertaining to the Means For and Module Terms may be more thoroughly developed by the parties during trial. Id. at 17–20.” slip op. at 19

  Patent outcomesUS 11,024,131 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,024,131
• Draftkings Inc. v. AG 18, LLCAll claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01442 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–30 are unpatentable: claims 8, 9, 14–16, and 19 as obvious over Bryson; the remaining challenged claims under the other stated obviousness grounds.

  RulingsFinal written decision

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

    “b) Discussion Patent Owner’s position that “dynamically” creating a list means that the list is somehow in the process of “ongoing” or “continuous” creation does not add clarity to understanding of the scope of claims 1, 8, and 30. In that regard, it is not apparent what is meant by “ongoing” or “continuous” list creation. Does that mean the list is never static and must be in a constant state of change? Patent Owner does not point to any record content providing context as to the frequency of list creation that would give rise to such creation being “ongoing” or “continuous.” We also do not discern that the portions of the record cited by Patent Owner, including the Specification of the ’220 patent and the prosecution history, provide cogent support for Patent Owner’s proposed meaning of the term “dynamically.”” slip op. at 13

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

    “We note that the parties’ competing arguments concerning construction of the Module Terms, including “tournament administration module,” in this proceeding are certainly not a model of clarity. In considering the record before us, however, we discern that Petitioner, in the the ’220 patent in connection with each of the Module Terms, including a “tournament administration module,” that are recognizable as identifying an algorithm that a skilled artisan would understand performs the claimed function(s). Further, those algorithm(s) are implemented by a special purpose hardware programmed to perform the disclosed algorithm(s), such as an ASIC, a PLD, an FPGA, or the like, thereby providing corresponding structure for the various modules recited in claims 11, 12, 18, 21, and 24. We note that Mr. Nicely testifies the following as to the “tournament administration module”: [P]ursuant to § 112 ¶ 6, the foregoing structure of each claimed “module” (i.e., the “programmable circuitry”) must include an algorithm that performs the corresponding function described in the specification of the ’220 Patent.[footnote omitted] I therefore provide the claim chart below identifying the portions of the specification of the ’131 Patent that describe the claimed functions of each recited “means for” and “module”:” slip op. at 23

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

    “more detail below, we note that Bryson clearly provides that content, such as available games, is displayed to a player, e.g., on a player’s mobile gaming device, based on a player’s location. See, e.g., Ex. 1004, 8:30–39. Because of that circumstance, Bryson clearly states that “the location of a mobile gaming device may need to be determined on an ongoing basis.” Id. at 8:38–39 (emphasis added). That game content displayed to a player, such as game listing, is altered based on a player’s location, and that the location is determined “on an ongoing basis” lends itself readily to a conclusion that the creation or presentation of the list is also “on an ongoing basis” per Patent Owner’s claim construction. In that respect, we agree with Petitioner. See Pet. Reply 22–23. Accordingly, having considered the respective positions of the parties, we conclude that Petitioner presents the better case that a person of ordinary skill in the art would have appreciated Bryson’s disclosure as accounting for the dynamic creation of a list of gaming options that is recited in claim 1 (and also the similar recitations in each of claims 8 and 30).” slip op. at 50

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

    “Patent Owner’s arguments are unpersuasive. Petitioner relies on components or aspects of each of Frenkel’s and Amaitis’s gaming system to simply operate as they are intended to in conjunction with Bryson’s gaming system. Although during oral argument Patent Owner expressed that it was not making a “bodily incorporation argument” (see, e.g., Tr. 93:4–6), that is for not specifically identifying where particular components would be situated in a system based on the combined teachings of the prior art. There is no requirement, however, in an obviousness inquiry of a showing of how any particular feature may be directly or bodily incorporated into any particular system or device. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference[.]”) We further reject Patent Owner’s argument that a skilled artisan would not have reasonably expected success in implementing components or aspects of Frenkel and Amaitis into Bryson’s system so as to function for their intended purpose. We note that there is no disagreement between the parties as to the level of ordinary skill in the art. In that respect, there is no dispute that a skilled artisan in this case has a background in computer engineering, or similar discipline, and experience in the development of gambling game hardware and software functionality. See supra § II.B. Patent Owner does not explain credibly why a skilled artisan with that relevant education and experience would have been unable to address routine implementation issues or technical difficulties that may arise in combining the teachings of the pertinent prior art, all of which are directed to similar matters of network based interactive gaming.” slip op. at 61

  Patent outcomesUS 10,497,220 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,497,220
• Nokia Of America Corporation v. Alexander Soto And Walter SotoInstituted
  PTAB · Feb 23, 2024 · IPR2023-00960 · APJ Kevin C Trock · IPR · Institution

  Instituted IPR of claims 1–16 and 18–30 on both §103 grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Shraga and Togami.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other

    “The problem with the parties’ briefing on the trial date issue is that it appears that in the District Court: 1) a stay (Ex. 3006) has been issued in the Fujitsu case (the “pending” May trial date (See Ex. 1032)); 2) NextGen Innovations has filed another patent infringement suit against Nokia (Nokia II) (Paper 17, 2); and 3) Nokia has jointly moved (Ex. 3007) to deconsolidate Nokia I from the Fujitsu case and to consolidate Nokia I with Nokia II, which the District Court has granted (Ex. 3008). Based upon our review of these documents, none of which were provided to the Board by the parties, it appears that there no longer is a pending District Court trial date in May 2004 involving Nokia. Given the lack of notice of these developments by the parties to the Board on an issue that is material to the Board’s Fintiv analysis and the decision in this case, the Board no longer has confidence that the parties have provided the Board with accurate, timely factual information that the Board needs in order to render a fair, just determination of the Fintiv issue and this case. Accordingly, pursuant to 37 C.F.R § 42.11 (d)(3), the parties are Ordered to Show Cause why they should not be sanctioned under 37 C.F.R. § 42.12 (a) (2), (3) and to file briefs addressing this issue, not to exceed 10 pages, within 10 days of this Decision. G.” slip op. at 25

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner describes a person of ordinary skill in the art (“POSITA”) as a person having at least “(1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 15 (citing Ex. 1003 ¶¶ 30–31). Petitioner’s declarant, Dr. Paul Prucnal, testifies to substantially the same level of ordinary skill in the art (Ex. 1003 ¶ 30) but adds that a person of ordinary skill in the art “would have been familiar with MSA optical modules, including SFP, XFP, and XENPAK, . . . networking protocols such as Ethernet, and the technologies that enable it, as well as the miniaturization of those technologies into what are commonly known as Small Form-Factor Pluggable (SFP) module” (Ex. 1003 ¶ 31). In its Preliminary Response, Patent Owner does not dispute the Petitioner’s description of a person of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’754 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Prucnal. See Ex. 1003 ¶¶ 30–31. We agree Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,238,754
• Apple Inc. v. Rfcyber Corp.All claims unpatentable
  PTAB · Jan 19, 2024 · IPR2022-01239 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–5, 12–14, 17, and 18 are unpatentable under § 103 over Laracey and Jogu, with Tang or Dorsey added for claims 17 and 18, respectively.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, or equivalent with at least one year of experience in the field of mobile payments,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 6–7 (citing Ex. 1003 ¶¶ 34–35). Patent Owner does not address the level of ordinary skill in its Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior” slip op. at 11

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

    “agreed to construe the claim term “payment gateway” as a “server or collection of servers for settling a payment.” Pet. 9 (citing Ex. 1016, 2). Petitioner further contends that the parties are disputing the constructions of the claim terms “e-purse,” e-purse applet,” and “application” in the District Court Case, but the differences between the proposed constructions need not be resolved for this proceeding because its asserted grounds of unpatentability satisfy both Patent Owner’s and Petitioner’s proposed constructions.9 Id. at 9–10 (citing Ex. 1016, 4–5). Petitioner, however, applies its proposed construction in its arguments. See Pet. 29. 9 In the District Court Case, Petitioner proposed that “e-purse” should be construed as “software that stores electronic financial information, including electronic value, in a local portable device,” while Patent Owner proposed was adopted in the District Court Case, as well as in another proceeding in the Eastern District of Texas. PO Resp. 11 (citing RFCyber Corp. v. Google LLC, No. 2:20-cv-274-JRG, 2021 WL 5357465, at *6-*9 (E.D. Tex. Nov. 17, 2021); RFCyber Corp. v. Apple Inc., No. 6:21-cv-00916-ADA, Dkt. 100 (W.D. Tex. Sep. 13, 2022)). Patent Owner argues that because the parties agree that an e-purse must be “software” that “stores financial information in a local device,” “[t]he Board need not resolve the distinction between the parties’ proposals for this proceeding because Petitioner fails to show that Laracey discloses ‘an electronic purse (e-purse) maintained locally in the mobile device’ under the agreed portions of the construction.” Id. at 11–12. We agree that the differences between the two proposed constructions are minimal. On the full record before us, however, Petitioner does not explain sufficiently why the proper construction of “e-purse” requires that the stored financial information include electronic value and that the software is in a local portable device. Therefore, we adopt the district court’s construction of “e-purse” as “software that stores electronic financial information in a local device” for purposes of this Decision.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “does rely on Laracey’s stored value account alone as the claimed e-purse, we disagree that Petitioner has not shown sufficiently that Laracey’s stored value account is software. As noted above, Mr. Smith testifies that “a stored value account was well known prior to the ’046 patent and was commonly stored in a form of secured memory and contained data representing an transaction” and “Laracey’s stored value account would have been understood to be software located in memory within a mobile device that contained financial information including data representing an amount of money (e.g., a balance) useable for purchases.” Ex. 1003 ¶ 100. In contrast, Dr. Weaver testifies that “an ‘account’ like the PetPlace Gift account is not software. Instead, it is simply a visualization of a collection of information. Laracey simply displays the gift card account balance 884n on the mobile phone 102 after that account balance has been received from the Transaction Management System (TMS) 130.” Ex. 2001 ¶ 56. Weighing the competing testimony of Mr. Smith and Dr. Weaver, we credit Mr. Smith’s testimony as more persuasive evidence. Dr. Weaver does not explain adequately why “a visualization of a collection of information” is not software, or, more importantly, why displaying an account balance on the mobile phone does not involve software.” slip op. at 20

  • BurdenFwd all claims unpatentableUnpatentable

    “Based on the full record before us, we determine that Petitioner has met its burden of establishing that the combination of Laracey and Jogu discloses the “verifying” limitations of claims 1 and 12. c) The Remaining Aspects of Petitioner’s Contentions Patent Owner does not offer any arguments specifically addressing the remaining limitations of claims 1 and 12. PO Resp. 13–32. We need not set forth formal findings as to the undisputed assertions by Petitioner that the combination of Laracey and Jogu discloses or suggests these limitations. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (“The Board is ‘not required to address undisputed matters’ or arguments about limitations with which it was never presented.” (quoting In re Nuvasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016))). Also, we cautioned Patent Owner “that any arguments not raised in the response may be deemed waived.” Paper 8, 9; cf. 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”). Nevertheless, we have reviewed Petitioner’s contentions with respect to the remaining limitations of claims 1 and 12 and find that the combination of Laracey and Jogu discloses these limitations as set forth by Petitioner. See Pet. 14–29, 32–33, 42–47, 52–54. d) Conclusion For the above reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 12 are unpatentable over the combination of Laracey and Jogu.” slip op. at 36

  Patent outcomesUS 10,600,046 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,600,046
• Apple Inc. v. Rfcyber Corp.All claims unpatentable
  PTAB · Jan 19, 2024 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over Buhot, GPC, and Zhu.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “‘It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.’” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. We agree with Petitioner there does not appear to be support for limitation [1(j)] in the ’653 application. We find that the disclosure of the ’653 application—limited to general teachings of a smart card, an operating system, and a smart card manager—is insufficient to show possession of limitation [1(j)]. See Ex. 2001 (’218 patent), 4:47–56. As we explained above, “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood, 107 F.3d at 1571−72. The ’653 Application contains no disclosure of replacing applications, even if the disclosure might render such replacing obvious, it is not sufficient to show the possession required to establish entitlement to a priority date. Accordingly, we agree with Petitioner that the challenged claims of the ’724 patent are entitled to a priority date no earlier than March 4, 2012.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Mr. Smith, Petitioner contends that an ordinarily skilled artisan for the ’724 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 mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that “[t]he parties agree on the level of skill in the art.” PO Resp. 11. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

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

    “Petitioner contends that it applies “the plain and ordinary meaning as understood by a [person of ordinary skill in the art] for all terms not expressly construed below,” and indicates that in parallel District Court litigation, the parties agreed to claim construction for the term “emulator device” to mean “hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.” Pet. 8. Petitioner proposes that the term “application” should be construed to mean “‘software program suitable for being executed on a portable device,’” but that the “distinction between the parties’ respective proposals need not be resolved for this proceeding.” Id. at 8–9. Petitioner finally contends that the phrase “a portion of or in entirety” in each independent claim means “in its entirety or partially,” but not both. Id. at 9. Patent Owner submits that “[t]he parties agree that the Board should construe ‘emulator device’ as ‘hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.’” PO Resp. 11. Patent Owner “does not believe that any other terms require construction to resolve the issues presented in this proceeding.” Id. We apply the agreed upon constructions above, but otherwise find that no express constructions are necessary for this decision.” slip op. at 12

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

    “We agree with Petitioner that, even if the applications were stored in “generic memory” as Patent Owner contends, Zhu provides adequate security and would not undermine Petitioner’s motivation to combine. See Intel, 61 F.4th at 1380 (“It’s not necessary to show that a combination is the best option, only that it be a suitable option.”). Indeed, Zhu addresses the problem Patent Owner contends it would cause in the combination.3 As Zhu 3 Patent Owner argues that Petitioner should be precluded from discussing Zhu’s encryption embodiment because it was not raised in the Petition. See Sur-Reply 6–7. We disagree. The claims do not recite anything about how the data should be stored. Thus, it is not surprising that the Petition did not address it. Patent Owner raised the teaching away argument regarding the security of the data. See PO Resp. 12–16. Petitioner relies on the exact same mapping, same motivation, and same arguments why Zhu accounted for certain limitations. See Reply 4–11. Petitioner’s Reply merely explained that Zhu did address the problem Patent Owner contended would “teach away” from the combination. Indeed, Patent Owner was aware of Zhu’s teachings and addressed them in their Patent Owner Response. The Federal recognizes, “[l]oading one of the smart card applications already resident on the smart card to another memory location on the mobile device can provide sufficient memory for the selected smart card application, but can also create a security problem.” Ex. 1006 (Zhu), 3:25–34. To address this problem, Zhu proposes encrypting these applications in generic memory which “reduces the possibility of unauthorized access to the information.” Id. at 3:59–61, 8:30–55, 9:28–33; Ex. 1033 (Smith Supp. Decl.) ¶¶ 5–6. Although acknowledging this disclosure, Patent Owner’s expert, Dr. Weaver, testifies that Zhu’s encryption is inadequate and that encryption would have certain drawbacks. See Ex. 2002 (Weaver Decl.) ¶ 69. We find this testimony, which directly contradicts the teachings of Zhu that encryption is an adequate solution, lacks sufficient support to be entitled to much weight. Dr. Weaver provides no citations to support his contention that a person of ordinary skill at the time of the invention would find encryption so inadequate or problematic as he now contends. Moreover, we find that Dr. Weaver’s testimony on cross examination provides an additional, independent basis to give this testimony little weight. On cross examination, Dr. Weaver contended that there was nothing uniquely inadequate about the particular encryption scheme disclosed in Zhu, but rather that his “opinion was more general, that encryption schemes known in the 2012 time frame were all breakable with computing power and time,” and thus, inadequate Circuit has explained that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018). That is the case here, so we find that Petitioner’s arguments and evidence regarding Zhu’s encryption are proper. for storing payment applications in a mobile device’s general memory. Ex. 1027 (Weaver Tr.), 26:11–23; see also id. at 23:3–8 (“[D]oes encryption ever provide a sufficiently high security to permit storing payment application on a mobile device’s general memory? A. No”); 24:15–25:23 (testifying all publicly known encryption schemes in 2012 were breakable). However, when confronted with the fact that the ’724 patent discloses storing payment application on general baseband memory using an encryption method that was breakable, id. at 26:24–29:7, Dr. Weaver testified that this encryption method was sufficient to allow storing payment applications in general baseband memory even though it was “not perfectly secure,” id. at 29:8–14. Dr. Weaver provides no explanation or rationale why the encryption method in the ’724 patent, which he admits suffers from the same drawbacks he identified with respect to Zhu, is sufficient, but other encryption methods would not be sufficient. In its Sur-reply, Patent Owner attempts to rehabilitate Dr. Weaver’s testimony with justifications and qualifications not found in his original testimony. Sur-Reply 7–8. Yet, Dr. Weaver’s testimony discussed above was clear and unequivocal. See Ex. 1027 (Weaver Tr.), 24:15–29:14. Patent Owner made no effort to redirect his testimony at his deposition, so it cannot now do so through mere attorney argument. We find the inconsistency between Dr. Weaver’s treatment of Zhu and his treatment of similar disclosure in the ’724 patent exposes the insufficient reasoning supporting his opinions regarding the adequacy of Zhu’s use of encryption in the combination. Accordingly, we give no weight to his testimony that a skilled artisan would not have combined Zhu with a Buhot/GPC system due to security concerns. In contrast, we find the testimony of Mr. Smith regarding the use of encryption and the tradeoffs with the benefits of adopting Zhu’s memory management technique, which he offers in his Supplemental Declaration, to be well-reasoned, consistent with the disclosure of Zhu and the ’724 patent4, and entitled to substantial weight. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. As Petitioner recognizes, “‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). As Mr. Smith and Dr. Weaver testified, decryption without access to the security keys is an extremely computationally intensive and time-consuming process. Ex. 1033 (Smith Supp. Decl.) ¶¶ 6–8; Ex. 1027 (Weaver Tr.), 23:17–25:2; see also Ex. 10175, 132. Mr. Smith testifies that the benefits of using encryption would be sufficient to resolve the security concerns Patent Owner raises, and that any burden of generating a certificate would be outweighed by the benefits of using encryption and the memory advantages Zhu’s technique would offer. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. Accordingly, we find that Patent Owner’s security concerns would be” slip op. at 25

  Patent outcomesUS 11,018,724 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,018,724

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.