- Aroma360, LLC v. Air Esscentials, Inc.All claims unpatentablePTAB · Oct 6, 2026 · IPR2025-00705 · APJ Eric C Jeschke · IPR · Final written decision
Claims 7–9 and 11 are unpatentable as obvious over Goubet; proposed substitute claim 21 is denied as indefinite.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Response, Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner, but Patent Owner “reserves the right to address [the definition] should new issues materialize.” PO Resp. 5. Patent Owner did not address this issue in the Sur-reply. As noted in the Decision on Institution, Petitioner’s proposed definition appears generally consistent with the record, including the prior art. See Dec. Inst. 8 (citing In re GPAC Inc., 57 F.3d at 1579). We remove the phrase “at least” in both listed options, however, as that phrase adds ambiguity. Further, Patent Owner has not argued at trial that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art. In the analysis below, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution, as proposed by Petitioner.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for patent owner
“The record here does not support any sound basis to disregard the entirety of Dr. Micklow’s Declaration, as asserted in Petitioner’s overall argument. See Pet. Reply 1–2. Contrary to Petitioner’s argument, in the cited general discussion, Dr. Micklow does not indicate that he applied an incorrect understanding of a claim term. Cf. Cordis Corp. v. Bos. Sci. Corp., 658 F.3d 1347, 1357–58 (Fed. Cir. 2011) (disregarding testimony “based on an incorrect understanding of the claim construction”), cited at Pet. Reply 1; see also Pet. Reply 2 (arguing that “Dr. Micklow’s declaration is premised on understandings of claim scope that are inconsistent with the constructions advanced by both of the parties” (emphasis added)). Instead, we read the cited portions of Dr. Micklow’s testimony as clarifying that he was not involved in claim construction at all and that, as stated, he “made [his] opinions based on what [he] read in the patents.” Ex. 1046, 112:11–12; see also Pet. Reply 1 (citing Ex. 1046, 112:4–12, 113:13–20, 115:15–18). Next, we turn to each of the four specific claim terms that Petitioner highlights in its further arguments.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“B. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be 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. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner propose explicit constructions for any claim terms. Pet. 10–11; PO Resp. 5. Based on the complete record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 POSITATerm construed board ownDecided for patent owner
“Florida Litigation a Joint Claim Construction statement that included stipulated claim constructions and disputed claim constructions for terms in the challenged patent as well as the ’449 patent and the ’918 patent. See Ex. 1018, Exhibit A (Stipulated Claim Constructions), Exhibit B (Disputed Claim Constructions). The parties stipulated to the construction of the terms “fluid dispersion” and “baffle” as recited in the challenged claim. See id., Exhibit A.10 10 When staying the Florida Litigation, the District Court cancelled the scheduled claim construction hearing. See ECF No. 67 (April 8, 2025) (granting joint motion to stay); ECF No. 68 (April 8, 2025) (cancelling the The stipulated construction of “fluid dispersion” merely restates the express definition of “fluid dispersion” from the challenged patent (although the definition is not cited or discussed in the parties’ filing). Compare Ex. 1018, Exhibit A, with Ex. 1001, 3:8–20. Similarly, the stipulated construction of “baffle” essentially parrots one sentence in the challenged patent (again, not cited or discussed in the parties’ filing). Compare Ex. 1018, Exhibit A, with Ex. 1001, 7:57–59. To the extent necessary, we determine that the complete record supports the parties’ stipulated constructions of “fluid dispersion” and “baffle,” and we apply those constructions below.” slip op. at 10
Patent outcomesUS 9,527,094 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 9,527,094 - PTAB · Jan 29, 2025 · IPR2024-00842 · APJ Michael L Woods · IPR · Institution
The Board instituted review of claims 1–29 based on a reasonable likelihood of prevailing and granted EndyMed’s motion to join the ’386 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, the underlying premise of Serendia’s arguments here and in the ’386 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the ’386 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 1–29 of the ’836 patent. See ’386 IPR, Paper 18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“evidences nonobviousness for four different patents. In this situation, a presumption of nexus is appropriate only if patent owner demonstrates that the claims of all four patents “generally cover the same invention.” See Fox Factory, 944 F.3d at 1377 (“Where a product embodies claims from two patents, a presumption of nexus can be appropriate only if the claims of both patents generally cover the same invention.”). “The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.” Id. at 1378 (citation omitted). “In such situations, the patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Id. (citation omitted). Here, Serendia does not demonstrate that the four different patents cover the same invention. See Prelim. Resp. 59–74. Indeed, Serendia does not address U.S. Patents 9,775,774, 9,320,536, and 10,869,812 at all. See id. That Serendia separately sought patent protection for each of these four patents suggests that these patents do not generally cover the same invention. Cf Fox Factory, 944 F.3d at 1378 (“The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.”). We made a similar determination in the ’386 IPR. See, e.g., ’386 IPR, Paper 18 at 38 (“Patent Owner fails to set forth which patents ‘generally cover’ the Sylfirm X device.” (citations omitted)).” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We disagree with Serendia. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely. Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. A Sotera stipulation mitigates concerns of duplicative efforts, and we decline to discretionarily decline institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or motion for joinder on the basis of the parallel Delaware litigation.8” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,480,836 - PTAB · Jun 8, 2023 · IPR2023-00232 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted IPR on claims 1–28 on all petition grounds, finding a reasonable likelihood that claim 1 is obvious over Woycik, and granted Clover’s motion to join IPR2022-00779.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 39–53.7 Indeed, based on the record before us, we do not see any less disclosure in Woycik regarding its administration tool than that disclosed in the ’640 patent for its point of sale builder software.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office regarding discretionary denials5 requires that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3. In this proceeding, Petitioner stipulates that “if this IPR is instituted and Fintiv[6] remains precedential at the time of institution, [Petitioner] stipulates not to pursue in the district court any ground raised or that could have reasonably been raised in IPR (i.e., under §§ 102 or 103 based on prior art patents or printed publications alone).” Paper 14, 2. Moreover, any timing issues or inefficiencies are moot in view of our decision on Petitioner’s Joinder Motion. Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner represents that the current Petition and that from the 779 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant than the one used in the 779 IPR, there is no briefing remaining for the petitioner in the 779 IPR, as Petitioner’s Reply in that proceeding was entered on May 10, 2023. See IPR2022-00779, Paper 20. Moreover, Petitioner agrees to use the declarant from the 779 IPR if joinder is granted. See Paper 14, 2; Ex. 1033, 11:8–15:24; Ex. 1034, 16:13–17:7. Given the advanced stage of the 779 IPR proceeding, if Petitioner is joined as a party to the 779 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 779 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 779 IPR. Paper 8, 6–13. But those concerns are unfounded, particularly in view of the advanced stage of the 779 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 779 IPR. See, e.g., Ex. 1033, 18:2–20. We see no increase in complexity and costs, or any schedule delay in the 779 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 779 IPR.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“(POSITA) at the time of the effective filing date of the ’640 patent would have been someone with a working knowledge of designing and developing web-based software and systems” and “would have a Bachelor of Science in computer science or a related field, and approximately two years of professional experience or equivalent study in the design and development of web-based software and systems, including web-based POS systems.” Pet. 8. Petitioner contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner responds: “Petitioner’s proposed definition of a POSITA does not require any experience with retail POS systems—let alone building POS screens—that are the field of the ’640 Patent.” Prelim. Resp. 10. According to Patent Owner, “Petitioner’s proposed definition of a POSITA makes experience in retail POS systems optional.” Id. at 11. Patent Owner contends that its “proposed definition of a POSITA remedies this deficiency by including experience or equivalent study in the field of the 4 Our discussion below focuses on claim 1. ’640 Patent, retail point of sale (“POS”) systems, including experience with building POS screens.” Id. We fail to see how the alleged differences in the level of ordinary skill in the art advanced by Patent Owner affects our decision to institute in this proceeding. Accordingly, for purposes of this decision, we apply the level of skill set forth by Patent Owner.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,400,640 - PTAB · Jun 8, 2023 · IPR2023-00288 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted review of claims 1–20 on all petition grounds and joined Clover Network, LLC as a petitioner in IPR2022-00997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 30–46.7 Indeed, based on the record before us, we do not see any less disclosure in Woycik regarding its administration tool than that disclosed in the ’012 patent for its point of sale builder software.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The recent guidance from the Director of the United States Patent and Trademark Office regarding discretionary denials5 requires that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3. 5 USPTO, Memorandum on Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). and Fintiv[6] remains precedential at the time of institution, [Petitioner] stipulates not to pursue in the district court any ground raised or that could have reasonably been raised in IPR (i.e., under §§102 or 103 based on prior art patents or printed publications alone).” Paper 14, 2. Moreover, any timing issues or inefficiencies are moot in view of our decision on Petitioner’s Joinder Motion. Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current Petition and that from the 997 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant that the one used in the 997 IPR, there is no briefing remaining for the petitioner in the 997 IPR, as Petitioner’s Reply in that proceeding was entered on May 12, 2023. See IPR2022-00997, Paper 19. Moreover, Petitioner agrees to use the declarant from the 997 IPR if joinder is granted. See Paper 14, 2; Ex. 1037, 11:8–15:24; Ex. 1038, 16:13–17:7. Given the advanced stage of the 997 IPR proceeding, if Petitioner is joined as a party to the 997 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 997 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 997 IPR. Paper 8, 6–12. But those concerns are unfounded, particularly in view of the advanced stage of the 997 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 997 IPR. See, e.g., Ex. 1037, 18:2–20. We see no increase in complexity and costs, or any schedule delay in the 997 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 997 IPR.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“POSITA does not require any experience with retail POS systems—let alone building POS screens—that are the field of the ’012 Patent.” Prelim. Resp. 10. According to Patent Owner, “Petitioner’s proposed definition of a POSITA makes experience in retail POS systems optional.” Id. Patent Owner contends that its “proposed definition of a POSITA remedies this deficiency by including experience or equivalent study in the field of the ’012 Patent, retail point of sale (“POS”) systems, including experience with building POS screens.” Id. We fail to see how the alleged differences in the level of ordinary skill in the art advanced by Patent Owner affects our decision to institute in this proceeding. Accordingly, for purposes of this decision, we apply the level of skill set forth by Patent Owner.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 10,083,012 - PTAB · Jun 8, 2023 · IPR2023-00287 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted IPR on claims 1–4, 7–28, and 31–44 on all petition grounds, finding a reasonable likelihood of success on claim 1 over Woycik, and granted Clover’s motion to join IPR2022-01143.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 45–64.6 Indeed, based on 6 Patent Owner acknowledges that Woycik’s “administrative tool can ‘perform various administrate functions such as configuring kiosks, creating and editing menus and available food items, and specifying tax and payment features of the system.’” Prelim. Resp. 50 (citing Ex. 1004 ¶ 73). its administration tool than that disclosed in the ’793 patent for its point of sale builder software. Patent Owner presents a number of contentions that do not appear tied to any particular claim requirement. For example, Patent Owner presents contentions regarding the use of a local server in addition to the web server in Woycik, without clearly explaining how those contentions relate to any particular claim requirement. See, e.g., Prelim. Resp. 59–60 (alleging that Woycik’s “local server as the middleman for all communications”). The actual dispute with respect to Woycik’s teachings as related to claim 1, appears to be based on whether Woycik teaches its administration tool running on a web server. Id. at 47–61. We have reviewed Petitioner’s contentions regarding the other limitations recited in claim 1, which Patent Owner does not dispute at this time, and determine that Petitioner has established sufficiently that Woycik teaches those limitations. Our discussion below is directed to the disputed limitations.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner’s request has already been considered and determined unpersuasive in the 1143 IPR. Moreover, we also question the merit of simply seeks to have Petitioner joined as a party to an already instituted proceeding where the same art and arguments asserted in this proceeding are already being evaluated in the 1143 IPR. For the reasons explained in the 1143 IPR we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 325(d) to deny the petition in this proceeding. See IPR2022-01143, Paper 8 at 9–12.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current Petition and that from the 1143 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant that the one used in the 1143 IPR, there is no briefing remaining for the petitioner in the 1143 IPR, as Petitioner’s Reply in that proceeding was entered on May 16, 2023. See IPR2022-01143, Paper 16. Moreover, Petitioner agrees to use the declarant from the 1143 IPR if joinder is granted. See Paper 14, 2; Ex. 1030, 11:8–15:24; Ex. 1031, 16:13–17:7. Given the advanced stage of the 1143 IPR proceeding, if Petitioner is joined as a party to the 1143 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 1143 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 1143 IPR. Paper 8, 6–12. But those concerns are unfounded, particularly in view of the advanced stage of the 1143 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 1143 IPR. See, e.g., Ex. 1030, 18:2–20. the 1143 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 1143 IPR.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,226,793 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing
Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,515,825 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01012 · APJ Patrick M Boucher · IPR · Rehearing
Granted Petitioner’s rehearing request and held claims 1–3, 5, 7–8, 11–13, 15, 17, and 18 unpatentable, including claims 4, 5, 12, and 13 over the Digital River Publications.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.”” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 4 is met by the Digital River Publications.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,043,228 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01011 · APJ Patrick M Boucher · IPR · Rehearing
Petitioner’s rehearing request was granted; claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 were held unpatentable over the listed grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. LEGAL STANDARD A 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 a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- Expert testimonyPetitioner expert creditedOther
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’876 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,639,876 - Coastal Industries, Inc. v. Shower Enclosures America, Inc.Some claims unpatentablePTAB · Nov 19, 2018 · IPR2017-00573 · APJ Michael W Kim · IPR · Final written decision
Claims 1–3, 5, 7–9, 11–14, and 16–26 are unpatentable; claims 4, 6, 10, and 15 are not shown unpatentable. Substitute claims 33 and 34 are granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention. Pet. 26. Patent Owner sets forth many assertions related to the level of ordinary skill in the art at the time of the invention. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet. Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of those assertions, as a substantive matter, Petitioner asserts that “PO does not dispute the definition of a PHOSITA, offer a contrary definition, explain how a different definition might affect the Board’s analysis, nor contest the Board’s specific interpretation of the prior art references to put the PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15– 16. We agree with that assessment. Moreover, we note that the level of ordinary skill in the art is often reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, as an initial matter, we address Petitioner’s unopposed substantive assertion with respect to the level of ordinary skill in the art at the time of the invention.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“1. “track members” Independent claims 1, 12, 19, and 22 each recite “track members.”” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“B. Patentability of Substitute Claims 33 and 34 Petitioner asserts that various claim limitations are disclosed in the” slip op. at 100
- ExcludeMotion to exclude, deniedDenied
“701, 702 and 37 C.F.R. § 42.65(a). Specifically, Patent Owner asserts that Mr. Poenariu’s testimony is entirely based on his finding as to the level of ordinary skill in the art, and because Mr. Poenariu did not articulate a sufficient factual basis for his conclusion as to the level of ordinary skill in the art, his entire testimony us unreliable and should be excluded. PO Mot. 5–6. Petitioner responds that Mr. Poenariu discloses more than a sufficient amount of underlying facts on which to base his testimony, and, thus, Patent Owner’s assertions go to weight and not admissibility. Pet. Opp. 6–9. We agree with Petitioner.” slip op. at 105
Patent outcomesUS 7,174,944 mixedClaim constructioncites Phillips · KSRPatents in suitUS 7,174,944 - FMC Technologies, Inc. v. Onesubsea IP UK LimitedRehearing grantedPTAB · Apr 19, 2018 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Rehearing
On rehearing, the Board held claims 36 and 37 unpatentable as obvious over Kelly and Fenton, Kelly, Bednar, and Fenton, and Clair and Fenton.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. STANDARD OF REVIEW According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests that we review.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sensors, as described by Fenton, are expressly enumerated as being processing apparatus in dependent claim 29.” Id. at 28 (cited by Req. Reh’g 5). The ’306 patent indeed teaches that a processing apparatus may include a temperature, pressure, or flow sensor. Ex. 1001, claim 29 (“the processing apparatus is chosen from at least one of: . . . measurement apparatus; temperature measurement apparatus; flow rate measurement apparatus . . .”); accord id. at claim 37. Accordingly, we also agree that Fenton’s sensors correspond to the recited “processing apparatus.” Petitioner further explained that “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Pet. 27 (emphases added) (cited by Req. Reh’g 1). In light of our current understanding of Petitioner’s argument, based on the record, we find that the combination of Kelly and Fenton teaches a “diverter assembly,” a “choke,” and a “processing apparatus,” and that Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters in order to allow for more precise control of the choke is sufficient to support the legal conclusion of obviousness. See Pet. 27–28.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,573,306
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.