- Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01006 · APJ Barry L Grossman · IPR · Remand
The Board revised the construction of “biometric signal” on remand, then held that Petitioner did not prove claims 1–17 unpatentable under the asserted obviousness grounds.
RulingsRemand decision- RemandOther
“vacated following review by the Director and remanded to us: (1) for additional briefing by the parties on the construction of the claim term “biometric signal;” and (2) our further consideration of the construction of this claim term. Paper 49 (“Director’s Decision” or “Dir. Dec.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56
Patent outcomesUS 9,665,705 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,665,705 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01089 · APJ Barry L Grossman · IPR · Remand
On remand, the Board held claims 1–13 not shown unpatentable because the cited combinations did not teach or suggest limitations D(1), D(2), and D(3).
RulingsRemand decision- RemandOther
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Sturgell, 553 U.S. at 894–95 to determine whether Apple is a privy of Petitioner. After doing so, we reach the conclusion that there is no persuasive evidence that Apple is a privy of Petitioner because:” slip op. at 50
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The Graham analysis includes a factual determination of the level of ordinary skill in the art. Without that information, a court, or this Board, cannot properly assess obviousness “because the critical question is whether a claimed invention would have been obvious at the time it was made to one with ordinary skill in the art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Thus, the level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the Supreme Court informs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Petitioner states “[a] person having ordinary skill in the art” slip op. at 55
- Expert testimonyPetitioner expert discountedOther
“access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01045 · APJ Barry L Grossman · IPR · Remand
The Board revised “biometric signal” to include physical or behavioral attributes and held claims 1–13 not shown unpatentable under the asserted obviousness grounds.
RulingsRemand decision- RemandOther
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2
- Skill levelSkill level board ownOther
- Expert testimonyPetitioner expert discountedOther
“access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Aug 9, 2024 · IPR2024-00460 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–21 on all petition grounds, finding a reasonable likelihood that claims 1–8 and 12–18 are anticipated by Nishida.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons set forth above, we conclude that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. At this stage of the proceeding, the Board has not made a final determination on the construction of any claim term or the patentability of any challenged claim V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–21 of the ’749 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments that Nishida-US does not disclose the “simultaneously knitting” limitation of the claims of the ’749 patent constitutes “error.” Pet. 86. In our view, whether error or not, there is clear inconsistency on the record before us as to assessment of Nishida’s and Nishida-US’s teachings pertaining to the pertinent “simultaneously knitting” requirement. In that regard, as discussed above, in accounting for that requirement, the Petition unambiguously relies on disclosure in Nishida specifically stating that “when the strip of material (1) is manufactured, the patterns (2) of the uppers are produced, at the same time as the strip of material.” Pet. 25 (citing Ex. 1005, Abstract (emphasis added by Petitioner)). At the very least, there is a reasonable case to be made that such disclosure conveys that the material (1) and the patterns (2) are created simultaneously. The record is devoid of any indication that the Examiner considered or apprehended the extent of that disclosure.15 “[M]isapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims,” as seemingly occurred here, does not lend itself to a conclusion that the exercise of discretion to deny institution is appropriate. See Advanced Bionics, IPR2019-01469, Paper 6 at 8–9 n.9.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“account for limitation 1[a], on this record, is difficult to follow. Nishida makes clear that its shoe making method involves production of material web 1 by knitting and which is “provided with a single or a plurality of unwound web part(s) 2.” Ex. 1005, 5. Nishida’s disclosure also, at this time, appears unequivocal in describing that “patterns (2)” and web material 1 (or “strip of material (1)”) are manufactured or produced “at the same time.” Id. at code (57) (Abstract). Nishida also unambiguously describes its material web 1 as including “surface areas 1.1.” Id. at 7. As is evident from, for instance, Nishida’s Figure 2, surface areas 1.1 surround unwound web parts (or patterns) 2.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Proposed Ground of Obviousness Based on Nishida (Grounds 2 and 6) Petitioner contends that claims 9, 10, 19, and 20 would have been obvious to a person of ordinary skill in the art based on Nishida’s teachings taken with the general knowledge of a skilled artisan. Pet. 50–54. Petitioner supports its contention with citation to Dr. Brookstein’s testimony (Ex. 1003) as well as various record exhibits (e.g., Exs. 109, 1010, 1012, 1023). Id. Patent Owner does not challenge Petitioner recourse to a person of ordinary skill in the art’s general knowledge in accounting for claims 9, 10, 19, and 20. Rather, Patent Owner simply contends that the arguments it advanced in connection with Ground 1 also applies to Ground 2. As discussed above, at this time, we do not agree with Patent Owner’s arguments. Petitioner also contends that claims 11 and 21 would have been unpatentable over Nishida and Zuckerman (Ground 6). Pet. 81–84. Patent Owner also contends that the arguments it advances in conjunction with Ground 1 apply to Ground 6. Prelim. Resp. 37. We do not find those arguments availing. On the record before us, we determine that Petitioner has shown a reasonable likelihood of success in its patentability challenge to claims 9, 10, 19, and 20 based on Nishida (ground 2), and its challenge to claims 11 and 21 based on Nishida and Zuckerman (ground 6).” slip op. at 19
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - Bowmar Archery LLC v. Matthew FuttereInstitutedPTAB · Jul 2, 2024 · IPR2024-00401 · APJ Carl M Defranco · IPR · Institution
The Board instituted inter partes review on all challenged claims based on a reasonable likelihood that claim 11 is anticipated by Vandewater.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“first and second blade members towards the extended positions.” Ex. 1001, 6:40–41. For this claim limitation, Bowmar relies on Vandewater’s disclosure of “a retaining mechanism . . . such as a biasing element with a ball bearing or a spring wheel” that is used to “retain the blades in a centered position when in their deployed position.” Pet. 45 (citing Ex. 1003, 7:55–8:2). Bowmar also provides supporting testimony from its expert to show how one of ordinary skill in the art would have understood Vandewater’s teaching of the biasing element in conjunction with the blade members depicted in Figure 16. See id. at 46. Futtere responds by acknowledging Bowmar’s reference to “a generic paragraph in Vandewater in which a biasing member is discussed to deploy the blade members.” Prelim. Resp. 19 (emphasis added). Nonetheless, Futtere disputes Vandewater’s so-called “generic” disclosure because “Vandewater fails to provide any enablement of such an idea as the text fails to clarify and the figures . . . fail to disclose such an embodiment.” Id. We reject Futtere’s reasoning, as it amounts to conclusory attorney argument lacking in meaningful evidentiary support. On the other hand, Bowmar provides unrebutted expert testimony to support finding that Vandewater’s biasing member is part of the embodiments of Figures 7–10 and Figures 15–20 relied upon by Bowmar and that such biasing member is used “to deploy the blade members,” as admitted by Futtere. Thus, in the absence of rebuttal evidence from Futtere, we find that Bowmar adequately explains how Vandewater’s biasing element biases the blade members to a deployed, i.e., extended, position, thereby satisfying the “biasing” limitation of claim 11. c. Conclusion For at least the foregoing reasons, Bowmar demonstrates a reasonable likelihood of prevailing in showing that at least independent claim 11 is anticipated by Vandewater.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Bowmar does appear to dispute Futtere’s proposed construction of “blade member,” asserting that the plain and ordinary meaning of the term does not require that it have a sharp edge, as proposed by Futtere. See Pet. 49. As discussed below, the challenge on which we institute indisputably includes a “blade member” under Futtere’s proposed construction. Thus, we do not need to provide an express construction of “blade member” at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”)). The parties are free to further explore the meaning of this term at trial.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Bowmar proposes that the claim term “ferrule” should be construed as a “generally cylindrical body.” Pet. 19. Futtere responds with proposed constructions for two other claims terms, namely, that “blade member” be construed as “hav[ing] a cutting edge or flat sharp part” and that “biasing member” be construed as “a structure that pushes against another structure.” Prelim. Resp. 11 (citing Ex. 1001, 1:9–10, 3:35–44, 4:5–6, 4:21–24, 4:58–62; Ex. 1003, 3:37–38, 3:63–66; Ex. 2006). At the outset, we note that Futtere does not dispute Bowmar’s proposed construction of “ferrule” and, in turn, Bowmar does not dispute Futtere’s proposed construction of “biasing member.” See Prelim. Resp. 11; Pet. 46. Thus, for purposes of institution, we adopt the parties’ proposed constructions of those claim terms.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree with Futtere’s assertions. At the outset, we note that the claims merely require that the pivotal connection be located at the “forward end” of the blade members, not their forwardmost end. Vandewater’s Figures 7 and 10 clearly depict pivot connection 216 at the forward end of blade members 212 and 213. Under no circumstances do we discern how one skilled in the art would view those figures as depicting the pivot connection at a midpoint of the blades, as Futtere contends. And, without question, Bowmar relies on the embodiment of arrowhead 210, as shown in Figures 7–11, by referencing Vandewater’s disclosure of “[t]he pivot connection between blades 212 and 213 and body 214.” Pet. 39 (citing Ex. 1003, 7:33–39, Figs. 7–11). Moreover, Bowmar notes Vandewater’s disclosure that similar components of arrowhead 210 (the embodiment in Figures 7–11) may be applied to arrowhead 310 (the embodiment in Figures 15–20). See id. at 40 (citing 8:49–52). With that in mind, we find that Vandewater clearly contemplates embodiments of the arrowhead wherein a pivotal connection is located at the forward end of the blade members. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1343–44 (Fed. Cir. 2016) (holding that, although the anticipating prior art reference did not describe a specific example of a computer program that used two differently described functions, i.e., tools, together, “[the reference] did contemplate combining the disclosed functionalities.”). Futtere’s failure to address Vandewater’s express teaching of locating the pivot connection at the forward end of the blade members is fatal to its argument.” slip op. at 9
Claim construction§ 102 anticipationPatents in suitUS 8,043,177 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00129 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 1–30 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstitution denied
“Petitioner, however, does not explain how Agrawal’s web advertising system for identifying illegitimate advertising link request activity would have enhanced the reach of Oliver’s promotions. Oliver’s lead generation tool presents promotions to users via passive entities such as QR codes and enables users to respond to these promotions via text message. As Petitioner notes, Oliver discloses that its “passive entities can be incorporated into advertising” and “can be incorporated into ‘electronic visual media’ on the Internet.” Pet. 29 (citing Ex. 1011 ¶ 34). Petitioner does not adequately explain why Agrawal’s web advertising system is better that Oliver’s use of passive entities. Pet 28 (citing Ex. 1005, 5:45–63; Ex. 1002 ¶ 92). Petitioner argues that Agrawal “allows ads to be targeted at users likely to find the subject matter appealing.” Id. at 28–29. Yet the fact that Agrawal discloses retrieving advertising links relevant to a user’s search query, does not explain how or why that user is more “targeted” than another user who scans a passive entity such as a QR code as in Oliver. See Ex. 1005, 5:57– 58 (Agrawal discloses “using the keyword to select the appropriate advertising links.”), see also Ex. 1011 (Oliver teaching to “create a passive entity, such as a QR code or NFC tag associated with a promotion.”). In addition, Petitioner does not adequately explain how Agrawal’s method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are responding to passive entities in advertisements for those products by opting in.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundInstitution denied
“d) Conclusion Re Petitioner’s Reasoning in Support of the Proposed Combination For the reasons discussed above, we determine that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Khanna as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,553,074 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00069 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 15–30 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Molinet as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . result[ing] in inaccurate fees being charged for advertising services.”). Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the server-based software techniques of Oliver and Molinet at Agrawal’s Advertising System 120” “to obtain the benefits of each system.” Pet. 31 (citing Ex. 1002 ¶ 95). Petitioner’s reasoning does not adequately explain why a person of ordinary skill in the art would make the proposed modifications and instead appears to be based on improper hindsight reasoning. Specifically, Petitioner does not adequately address which benefits of each system a person of skill in the art would be motivated to combine and what the advantages of combining functionalities of the references into a single server would be.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,897 - Samsung Electronics Co., Ltd.InstitutedPTAB · May 7, 2024 · IPR2024-00155 · APJ Lisa L Tsang · IPR · Institution
The Board instituted IPR on claims 1, 4, 5, 8, 14, 15, 18, 19, 22, 24, 25, and 28, finding a reasonable likelihood that claims 1 and 15 are obvious over Spain-I, Hunzinger, and Nanda.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary Response, we conclude that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’811 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 3 (citing Ex. 1002 ¶¶ 31–32). At this juncture, Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 1–2. 10 The current record does not include allegations or evidence of objective indicia of nonobviousness. For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’811 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits that “no special constructions are necessary” beyond the plain meaning of the claims. Pet. 5. For the limitations “proximity,” “number based on signal strengths,” and “device-specific target location,” Petitioner asserts the Petition shows how these features “are met in context of their plain language and also in context of the specification, and where applicable, the file history.” Id. at 5–6. On this preliminary record, Patent Owner “agrees that no formal claim construction is necessary.” Prelim. Resp. 2. After reviewing the evidence and argument presented by the parties, we determine that it is not necessary to construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g,” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“conclusory or achieved only through hindsight, Petitioner has sufficiently demonstrated why the ordinarily skilled artisan would have found it obvious to combine the teachings of Spain-I, Hunzinger, and Nanda to achieve the claimed device-specific target location and performing actions on the portable device as a result of determining that that device is in proximity of the device-specific target location.” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,341,811 - Samsung Electronics Co., Ltd.InstitutedPTAB · May 7, 2024 · IPR2024-00154 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–7, 9–13, 15, 16, and 21 on all grounds, finding a reasonable likelihood that claims 1–3, 5, 9–10, 12–13, and 21 are obvious over Spain-I, Hunzinger, and Nanda.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . [m]ore education can supplement practical experience and vice versa. Pet. 4 (citing Ex. 1002 ¶¶ 31–32). At this juncture, Patent Owner does not challenge Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 1–2. For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’698 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Spain-I, Hunzinger, and Nanda, on the record before us, and as discussed below, we determine that Petitioner has sufficiently demonstrated why the ordinarily skilled artisan would have found it obvious to combine the teachings of Spain-I, Hunzinger, and Nanda, to achieve the claimed “location chosen by a user,” in this proceeding, and a “device-specific target location” in the ’155 IPR, and performing actions on the mobile device as a result of determining that that device is in proximity of the device-specific target location.” slip op. at 23
§ 103 obviousnessPatents in suitUS 8,594,698 - PTAB · May 7, 2024 · IPR2024-00153 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–10, 17–20, and 24–26 on all petitioned grounds, finding a reasonable likelihood of prevailing on obviousness over Spain-I, Hunzinger, and Nanda for at least claims 1–10 and 26.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 3 (citing Ex. 1002 ¶¶ 31–32). At this juncture, Patent Owner does not argue the level of ordinary skill in the art. Prelim. Resp. 1–2. For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’583 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we expressly construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner submits that “no special constructions are necessary” beyond the plain meaning of the claims. Pet. 4. Similarly, for purposes of their Response, Patent Owner states that “no formal claim construction is necessary.” Prelim. Resp. 2. Currently, where neither party proposes any claim language, we need not explicitly construe any claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner’s reasoning above lacks a rational underpinning or is gleaned only from the ’583 patent’s Specification. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as [a conclusion of obviousness] takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). As another example, Petitioner relies on the prior art teachings, Dr. Almeroth’s testimony, and the knowledge and skills of the ordinarily skilled artisan to support its conclusions that the modifications Petitioner proposes would have been implemented by the ordinarily skilled artisan using known techniques and with a reasonable expectation of success. See Pet. 25 (Petitioner arguing that “[g]iven the familiar features/technologies taught by Spain-I-Hunzinger (and Nanda) and state of art . . . a POSITA would [have] had the skills/knowledge/rationale to consider/implement such modifications with a reasonable expectation of success.”) (citing Ex. 1002 ¶¶ 145–146). With respect to Petitioner’s overall rationale to combine, we acknowledge that Hunzinger and Nanda may provide different specific improvements over Spain-I, yet we understand Petitioner’s position to be that Hunzinger and Nanda show that features such as user selected target locations and numerical and algorithmic ID signal strength comparisons were well-known in the art. See Pet. 19 n.10. (“Indeed, an invention is likely obvious where it merely combines familiar elements according to at 416). Furthermore, Dr. Almeroth’s testimony as to the level and knowledge of skill in the art is unrebutted at this early stage and we do not discern any persuasive evidence on this preliminary record that modifying Spain-I’s mobile device to achieve the user selected specific target location or location-based actions of Hunzinger and Nanda would be “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). Accordingly, for purposes of institution, we find persuasive Petitioner’s position that a person of ordinary skill in the art would have, for at least the above discussed reasons, been motivated to combine the teachings of Spain- I, Hunzinger, and Nanda, and would have done so with a reasonable expectation of success.” slip op. at 25
Claim construction§ 103 obviousnessPatents in suitUS 8,170,583
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.