- Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Nov 20, 2024 · IPR2023-00865 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–19 are unpatentable under § 103 over Carr and Lauka, with additional references for the dependent-claim grounds, because the challenged claims lack priority support in the ’848 application.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Instacart submits that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 27 (citing Ex. 1003 ¶¶ 22–25). Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” PO Resp. 7 (citing Ex. 2016 ¶¶ 19–23). But, as Consumeron’s expert acknowledges, Consumeron’s proposed definition “is not materially different” from Instacart’s. See Ex. 2016 ¶ 22. Accordingly, while we adopt the level of skill in the art as defined by Instacart our findings and analysis would be the same under Consumeron’s proposal.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“8 Consumeron argues Dr. Houh’s testimony should be given little weight because he “admitted he did not evaluate what the ’848 Application reasonably conveys to a skilled artisan.” Resp. 26 (citing Ex. 2011, 74:8– 76:6, 83:4–84:1, 92:22–95:5). We disagree. Dr. Houh’s testimony indicates that he properly considered what the ’848 application reasonably conveys to a POSITA. See Ex. 1003 ¶¶ 52, 56, 58, 61, 65. The portions of his cross-examination testimony cited by Consumeron do not suggest otherwise. For the reasons explained below, we credit Dr. Houh’s testimony over the competing interpretations offered by Consumeron and Dr. Mitzenmacher. 9 The dissent criticizes the majority’s analysis as “overly narrow” and too focused on the preferred embodiment. See Dissent 7–8. We disagree. Our analysis considers the entirety of the ’848 application, including all of the passages cited by Consumeron and the dissent.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“But it does not follow that an agent encountering a stock-out would necessarily respond according to the specific steps recited in claims 1 and 14.10 For example, instead of sending information about a replacement product, the agent could travel to another location to look for the same product, or notify the customer that the desired product could not be found and terminate the transaction. Because the ’848 application only contemplates scenarios where a product can be located, it does not describe the agent’s response in the event the identified product cannot be located or is unavailable, much less reasonably convey possession of a method comprising the specific, responsive steps in claims 1 and 14.11” slip op. at 17
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“construed the terms “acquisition request” and “acquiring” in our final written decision in the related 1357 IPR to encompass “not only a request for a delivery agent to shop for and purchase goods, but also a request for the agent to pick up or obtain pre-paid goods.” See 1357 IPR, Paper 35 at 11. It is undisputed that the ’465 patent at issue here and the ’835 patent at issue in the 1357 IPR are related and share essentially identical specifications, figures, and claim terms. See Pet. Reply 16; PO Resp. 38 n.6. Thus, for the same reasons as in our final written decision in the related 1357 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the correct one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). Consumeron provides no persuasive justification for us to depart from our prior reasoning in the related 1357 IPR.” slip op. at 23
Patent outcomesUS 11,238,465 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,238,465 - Tiktok Inc. v. Cellspin Soft, Inc.InstitutedPTAB · Oct 1, 2024 · IPR2024-00767 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that the claims are obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See 10 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 11 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11
- Other 314aDecided for petitioner
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than December 4, 2021 and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion – Ground 1 After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that the combination of Hiroishi, Kahn, and Bluetooth teaches or suggests each limitation of claims 1–16, and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 16–60. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Ground 1, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a).” slip op. at 49
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,659,381 - Tiktok Inc. v. Cellspin Soft, Inc.InstitutedPTAB · Oct 1, 2024 · IPR2024-00768 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–10 because Petitioner showed a reasonable likelihood of prevailing on both obviousness grounds: Hiroishi, Kahn, Endsley, and Bluetooth; and Singh129 with Singh906.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 9 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 10 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 10
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than August 6, 2019, and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”) would have had: at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field consumer electronics, with exposure to digital camera technology and wireless communications. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6–7 (citations omitted) (citing Ex. 1030 (Lett Decl.) ¶¶ 94–95). Patent Owner does not provide an explicit definition of a POSITA. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,234,121 - Tiktok Inc. v. Cellspinsoft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00770 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, and 9–18 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 8 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 9 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) 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, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 10
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“iii. Conclusion – Grounds 1A–B After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that both the combination of Hiroishi, Takahashi and Bluetooth in Ground 1A and the combination of Hiroishi, Kahn, and Bluetooth in Ground 1B teach or suggest each limitation of claims 1, 2, 4–7 and 9–18,20 and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 11– 68. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Grounds 1A–B, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a). 19 While the term “WMTP” appears in these figures, it does not seem to be defined or discussed elsewhere in Kahn. 20 At this stage, Patent Owner does not make any additional arguments against Petitioner’s showing for the dependent claims.” slip op. at 42
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,904,030 - Tiktok Inc. v. Cellspinsoft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00759 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR of claims 1–26 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 would have “had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein said user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 11:66–67. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify uniquely a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,862,757 - Tiktok Inc. v. Cellspinsoft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00757 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1–5 because the Petition showed a reasonable likelihood of prevailing on obviousness over Aaltonen and Drescher.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 “would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein each user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 12:10–13. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.10 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,756,336 - PTAB · Sep 30, 2024 · IPR2024-00769 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d) provides discretion to “reject the petition” if “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) 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 9 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 12
- Other 314aDecided for petitioner
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns Patent Owner alleges.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field of consumer electronics, with exposure to digital camera technology and wireless communications. . . . Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6 (citing Ex. 1030 ¶¶ 94–95). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the Lett Declaration and is consistent with the ’766 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,900,766 - Tiktok Inc. v. Cellspin Soft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00760 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that at least claim 1 is obvious over Aaltonen and Drescher.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1023,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 14
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we discern no discretion under § 316(b) to deny the Petition based on the policy considerations and concerns Patent Owner alleges.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof. []. Superior education could compensate for a deficiency in work experience, and vice-versa. []. Pet. 3–4 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Traynor and is consistent with the ’260 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On the current record, Patent Owner’s claim construction arguments are unpersuasive. First, Patent Owner has not shown that the authentication requirement in its construction is supported by the intrinsic record. Patent Owner’s proposed construction requires that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service.” Prelim. Resp. 35. Patent Owner’s authentication requirement is not a part of the claim language, nor has Patent Owner attempted to show that a person of ordinary skill in the art would have understood the ordinary meaning of “user identifier” to require such. Authentication does appear in the ’260 patent in the context of BT. Specifically, BT “can crypto graphically authenticate the identity of another BT device.” Ex. 1001, 3:61– 63. Authentication of the user does not appear in the specification. The only intrinsic evidence support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 The disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been made, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,898,260 - Orthocision, Inc. v. PTL Opco LLCNo claims unpatentablePTAB · Sep 18, 2024 · IPR2023-00625 · APJ Ryan H Flax · IPR · Final written decision
Claims 1, 2, 9, and 10 were not shown unpatentable under any asserted § 103 ground because Petitioner did not adequately explain how or why the prior art would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not specifically address Petitioner’s proposed definition. See generally Resp. Patent Owner’s witness, Dr. Bovinet, uses a slightly different, but not materially so, definition of the ordinarily skilled artisan than Petitioner. See Ex. 2005 ¶ 13. Thus, the parties appear to agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience. We accept and adopt Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’129 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Summary on Claim Construction We maintain our earlier constructions of “open tip” and “releasing means . . . .” See DI 16–24. We determine that no other express construction of any claim term is necessary for purposes of rendering this Decision. See Nidec Motor Corp., 868 F.3d at 1017. Although we maintain here our constructions of “open tip” and “releasing means . . . ,” we do so only for the sake of completeness. These claim constructions, ultimately, are not determinative of the outcome of this proceeding because, regardless of the meaning of any claim term, including these disputed terms, we find that Petitioner fails to adequately explain why any claim would have been obvious under the asserted grounds. We explain this in detail below. C.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 6:28–38 (emphasis added). However, the language of claim 1 is very clear on the functionality of the “open tip,” expressly reciting that “the open tip cuts bone tissue away from the sacrum or the ilium.” Id. at 13:19– 20. Thus, the claim language itself provides the required functionality of the “open tip,” and we do not agree with Petitioner that additional functionality relating to where bone tissue might go once cut, as discussed in the Specification, should be read into the claims as a limitation. Patent Owner’s newly proposed interpretation is similar to Petitioner’s in that it requests addition of functionality discussed as an example in the Specification, but not recited in the claim’s expressly recited functional language relating to the “open tip.” We disagree with Patent Owner that the concept of dislodged tissue entering a void defined by the open tip is necessary to understanding the claim element. And, once more, Patent Owner reads too much structure from the written description into the claim language as a limitation because it is not apparent that the recited “open tip” language requires that we further clarify that any interior void defined by the open tip is on the interior of the abrading head, and behind the exterior abrading surfaces, or between interior surfaces of a first pair of opposing sides, as proposed by Patent Owner. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988).” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112 ¶ 6) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties agree that this is a means plus function limitation. See Pet. 19–20; Resp. 9. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a part of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17. Construing a claim term under 35 U.S.C. § 112(f) involves two steps: (1) identifying the claimed function; and then (2) determining what structure, if any, disclosed in the Specification corresponds to the claimed function. Williamson, 792 F.3d at 1351. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function. See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).” slip op. at 20
Patent outcomesUS 11,020,129 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,020,129 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203
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.