- PTAB · Apr 10, 2024 · PGR2024-00004 · APJ Scott A Daniels · PGR · Institution
The Board instituted PGR on claims 1–24 and all petition grounds, finding it more likely than not that claims 1–3, 5–6, 8–11, 13–17, and 20–24 are obvious over Emma, Butt, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4–5. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’746 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“level of smoke” Neither Patent Owner nor Petitioner expressly indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrase “level of smoke,” recited in claims 1, 15, and 22, “Patent Owner interprets ‘level of smoke’ as merely detecting smoke.” Pet. 14 (citing Ex. 1009, 6). Patent Owner argues that it “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. in light of the specification, we understand “level of smoke” as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’746 patent explains. Ex. 1001, 15:43–44, see also id. at 15:63–65 (The ’746 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may address this issue more directly in subsequent briefing. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“POSITA to reasonably combine Emma with a smoke sensor reference.” Prelim. Resp. 44. We agree that Emma does not disclose a smoke sensor, but Petitioner has provided other prior art references, namely Butt and Smith, and presented several reasons, namely safety reasons, that a person of ordinary skill in the art would consider adding a smoke detector from Butt and Smith to Emma’s microwave oven. Pet. 24, 74–75. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015, 1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added). each directed towards shutting down a component of the device in response to a sensor output indicative of an unwanted condition.” Id. ¶ 127. Dr. Horenstein testifies further that a person of ordinary skill in the art “would have combined the elements as disclosed by known methods for the purposes of modifying Emma’s microwave / refrigerator combination to include Smith’s smoke sensor to be operatively connected with its cooking area and to include Butt’s smoke sensor and reset functionality.” Id. ¶ 126. Dr. Horenstein explains that inclusion of Butt’s reset functionality with Smith’s smoke sensor operatively connected with the cooking area into Emma would result in such elements merely performing the same function as they do separately, i.e., sensing smoke to withdraw electrical power from an electrical cooking appliance and then re-enabling the electrical cooking appliance. Id. Moreover, Dr. Horenstein testifies that the prior art, for example, Butt, specifically recognized the need to solve the problem of fires in the home started by cooking appliances. Id. ¶ 128 (citing Ex. 1015, 1:22–44). Butt explains, that “[h]ome fires are a serious problem in the United States. The National Fire Protection Association reports that between the years 1999- 2002, for example, there were 114,000 reported home fires associated with cooking alone.” Ex. 1015, 122–25. Similarly, Smith expressly teaches “[a] method and apparatus for anticipating the occurrence of a fire in the cooking cavity of a microwave oven.” Ex. 1014, Abstract.” slip op. at 36
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,674,746 - PTAB · Apr 10, 2024 · PGR2024-00003 · APJ Scott A Daniels · PGR · Institution
Instituted PGR on claims 1–28 and all petition grounds; the Board found a reasonable likelihood that claims 1, 13, 15, 20, 22, and 24–25 are obvious over Emma, Butt, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. Pet. 14 (citing Ex. 1002 ¶ 50; Ex. 1023 ¶ 6). Patent Owner provides a similar level of ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’745 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“level of smoke” Neither Patent Owner nor Petitioner indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrases “level of smoke” and “amount of smoke,” recited in claims 1, 15, and 24, it has “applie[d] what it understands Patent Owner contends is the meaning of this term in this Petition[,] and shows below the claims are invalid under Patent Owner’s construction.” Pet. 13–14 (citing Ex. 1009, 6). Patent Owner argues that it has “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. For purposes of this Decision, reading the plain language of the claims in light of the specification, we understand “level of smoke,” or amount of smoke, in the claims generally as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’745 patent explains. Ex. 1001, 15:48–49, see also id. at 16:1–2 (The ’745 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may expressly address this issue more directly in subsequent briefing. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“from Butt and Smith to Emma’s microwave oven. Pet. 24. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015,1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added).” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,674,745 - Alivecor, Inc. v. Apple Inc.Institution deniedPTAB · Apr 3, 2024 · IPR2023-01434 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’898 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have been a person with a working knowledge of physiological monitoring technologies and human interface design. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies and human interface design (Ex. 1003, ¶45). Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline (Ex. 1003, ¶45). More education can supplement practical experience and vice versa (Ex. 1003, ¶45). Pet. 5–6. Patent Owner does not address the level of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The general rule is that “the indefinite article ‘a’ means ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (2023); see also Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (“An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.”). And, the use of “the” (as in “the detailed view”) indicates that the recited part of the claim is a reference back to the corresponding part of a previous recitation (i.e., “a detailed view”). Finjan LLC v. SonicWall, Inc., 84 F.4th 963, 974 (Fed. Cir. 2023) (“Similar to this court’s holding that ‘said’ indicates part of a claim limitation refers to the corresponding part of a previously claimed limitation, . . . , the use of ‘the’ also indicates the claimed term refers to an antecedent term.”). However, whether “a detailed view” means “one or more detailed views” is a separate issue from whether the claims require the same detailed view to have both of the recited components. See Finjan, 84 F.4th at 974 (“[T]hat is a separate issue from whether the claims require the same component to perform multiple functions or satisfy multiple limitations of a claim.”). The plain language of “a detailed view” followed by the recitation of “the detailed view” comprising two components suggests that the “detailed view” must be tied to both of those components. See id. (“In [Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1143–44 (Fed. Cir. 2021)], we explained that ‘[a]s a matter of plain language, reciting ‘a computer’ (or a ‘first computer’) that performs a function, and then further reciting that ‘the computer’ (or ‘said first computer’) performs multiple additional functions, suggests that such ‘computer’ must be tied to all those functions.’ . . . This same rationale is relevant in analyzing the claims here.”); see also id. (The court agreeing with SonicWall’s argument “that even if the reference to ‘a computer’ may mean ‘one or more computers,’ the subsequent references to ‘the computer’ can only be satisfied by the same ‘one or more computers’ that satisfied the first limitation.”); Salazar, 64 F.4th at 1317 (“We agree with the district court that while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.”). We determine that, even if plural detailed views are allowed, the claim requires a single one of those views to have both a graph representation and a selectable data sharing option.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. For the reasons discussed above, we construe independent claims 1 and 23 as requiring the “detailed view” to have both a graph representation and a selectable data sharing option. See supra Section II.C. Petitioner does not identify adequately any disclosure in Molettiere of displaying a single view having both components. Thus, Petitioner has not shown adequately that Molettiere is anticipatory. Additionally, we agree with Patent Owner’s argument that Petitioner does not articulate adequately any obviousness contentions regarding how or why a person of ordinary skill in the art would have combined the relied-on figures of Molettiere to arrive at the recited detailed view having both components. See Prelim. Resp. 9–10; Pet. 10–14. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and independent claim 23 as anticipated by or obvious over Molettiere. For the same reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to dependent claims 2– 11, 18, 20–22, 25–34, 41, and 43–45 as anticipated by or obvious over Molettiere. E. The Alleged Unpatentability of Claims 1, 3, 9, 10, 16, 18, 23, 26, 32, 33,” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,270,898 - PTAB · Mar 22, 2024 · PGR2023-00049 · APJ Stephen E Belisle · PGR · Institution
Instituted PGR on claims 1, 9–15, 21, 29–38, 53, 61–67, 73, and 81–91 on all petition grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“petitioner previously filed a petition directed to the same claims of the same patent.” General Plastic, Paper 19 at 16. Petitioner argues, and we agree, that “the three Petitions are not directed to all the same claims and are not cumulative” (Paper 2, 4), as shown, for example, in Petitioner’s table of exemplary distinct features in each set of claims challenged in the three Petitions (see supra Section III.A). As Petitioner explains, the –00047 Petition challenges 34 claims not covered in the remaining Petitions; the –00048 Petition challenges 32 claims not covered in the remaining Petitions; and the –00049 Petition challenges 37 claims not covered in the remaining Petitions. Paper 2, 4. Further, prior to the day that Petitioner concurrently filed all three Petitions, Petitioner had not previously filed a petition against the ’626 patent. Accordingly, we determine that the first General Plastic factor does not weigh against institution.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d) provides that, in determining whether to institute a post-grant review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute a post-grant review “unless . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.208(a). Applying those standards, and upon consideration of the information presented in the Petition (as noted above, Patent Owner did not file a Preliminary Response), we determine that Petitioner has established that it is more likely than not that at least one claim of the ’626 patent is 1 A Certificate of Correction issued on June 13, 2023, concerning claims 42, 52, 84, 95, and 105 of the ’626 patent. Ex. 1001 (last page). 2 Petitioner concurrently filed three Petitions collectively requesting post-grant review of claims 1–105 (i.e., all claims) of the ’626 patent, namely, PGR2023-00047, PGR2023-00048, and PGR2023-00049. See Paper 2. We decline to exercise our discretion to deny institution of post-grant review as to any of these three Petitions due to the multiple petitions themselves, as discussed below in Section III. unpatentable. Accordingly, we institute a post-grant review as to the Challenged Claims of the ’626 patent on all grounds raised in the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 12 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not present an alternative definition at this stage of the proceeding. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,649,626 - PTAB · Mar 22, 2024 · PGR2023-00048 · APJ Stephen E Belisle · PGR · Institution
Instituted PGR on claims 1, 22–27, 39–45, 50–53, 74–79, 92–98, and 103–105 on all grounds; the Board found the petition showed at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“2. Factors Two Through Five Under the second, third, fourth, and fifth General Plastic factors, we consider, in general, whether the timing of the filing of multiple petitions presents the potential for unfairness, inefficiency, or prejudice. See General Plastic, Paper 19 at 16. In this case, Petitioner concurrently filed all three Petitions—there is no staggering, follow-on, or other delay in filing of the Petitions relative to one another. See Paper 1, 4–5. Moreover, no entity has filed a previous petition against the ’626 patent, and all asserted prior art in the three Petitions was put in play on the same day. Id. Thus, we agree with Petitioner that “no time has elapsed between the Petitions, and [Petitioner] has not gained any advantage by using earlier preliminary responses or institution decisions as a ‘roadmap’ for its Petitions” (id.). Accordingly, we determine that the second, third, fourth, and fifth General Plastic factors do not weigh against institution.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“post-grant review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying the two-part framework, we consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute a post-grant review “unless . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.208(a). Applying those standards, and upon consideration of the information presented in the Petition (as noted above, Patent Owner did not file a Preliminary Response), we determine that Petitioner has established that it is more likely than not that at least one claim of the ’626 patent is 1 A Certificate of Correction issued on June 13, 2023, concerning claims 42, 52, 84, 95, and 105 of the ’626 patent. Ex. 1001 (last page). 2 Petitioner concurrently filed three Petitions collectively requesting post-grant review of claims 1–105 (i.e., all claims) of the ’626 patent, namely, PGR2023-00047, PGR2023-00048, and PGR2023-00049. See Paper 1. We decline to exercise our discretion to deny institution of post-grant review as to any of these three Petitions due to the multiple petitions themselves, as discussed below in Section III. unpatentable. Accordingly, we institute a post-grant review as to the Challenged Claims of the ’626 patent on all grounds raised in the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,649,626 - PTAB · Mar 22, 2024 · PGR2023-00047 · APJ Stephen E Belisle · PGR · Institution
The Board instituted PGR on claims 1–8, 16–20, 28, 46–49, 53–60, 68–72, 80, and 99–102 on all asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Instituted
“1. Factor One Under the first General Plastic factor, we consider “whether the same petitioner previously filed a petition directed to the same claims of the same patent.” General Plastic, Paper 19 at 16. Petitioner argues, and we agree, that “the three Petitions are not directed to all the same claims and are not cumulative” (Paper 2, 4), as shown, for example, in Petitioner’s table of exemplary distinct features in each set of claims challenged in the three Petitions (see supra Section III.A). As Petitioner explains, the –00047 Petition challenges 34 claims not covered in the remaining Petitions; the –00048 Petition challenges 32 claims not covered in the remaining Petitions; and the –00049 Petition challenges 37 claims not covered in the remaining Petitions. Paper 2, 4. Further, prior to the day that Petitioner concurrently filed all three Petitions, Petitioner had not previously filed a petition against the ’626 patent. Accordingly, we determine that the first General Plastic factor does not weigh against institution. 2. Factors Two Through Five Under the second, third, fourth, and fifth General Plastic factors, we consider, in general, whether the timing of the filing of multiple petitions presents the potential for unfairness, inefficiency, or prejudice. See General Plastic, Paper 19 at 16. In this case, Petitioner concurrently filed all three Petitions—there is no staggering, follow-on, or other delay in filing of the Petitions relative to one another. See Paper 2, 4–5. Moreover, no entity has filed a previous petition against the ’626 patent, and all asserted prior art in the three Petitions was put in play on the same day. Id. Thus, we agree with Petitioner that “no time has elapsed between the Petitions, and [Petitioner] has not gained any advantage by using earlier preliminary responses or institution decisions as a ‘roadmap’ for its Petitions” (id.). Accordingly, we determine that the second, third, fourth, and fifth General Plastic factors do not weigh against institution. 3. Factors Six and Seven Under the sixth and seventh General Plastic factors, we consider “the finite resources of the Board” and “the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.” General Plastic, Paper 19 at 16. “The sixth and seventh factors are efficiency considerations.” See CTPG 56 (noting that the Director’s discretion under § 314(a) is informed by 35 U.S.C. § 316(b), which requires “the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter”). Petitioner argues that “there would be no excessive burden on the Board’s finite resources or Patent Owner in instituting all three Petitions”: Simpson is filing three Petitions against a patent containing 105 claims. Each Petition applies the same analysis for the two independent claims, 1 and 53, so as not to gain any advantages for these claims from the separate Petitions. While this similarity does not make the Petitions redundant due to the different claims each Petition addresses, it does minimize the burden on the Board and Patent Owner. Paper 2, 5. Petitioner also argues that, because the three Petitions were filed on the same day, “their respective [trial] schedules may be aligned and will not hinder the Board’s ability to issue a final determination within one year of institution,” particularly as these proceedings may lend themselves to consolidation. Id. We agree with Petitioner’s above arguments. In the context of these cases, and at this juncture, we foresee no unreasonable burden on the Board in managing these three cases and timely issuing Final Written Decision(s). Accordingly, we determine that the sixth and seventh General Plastic” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstituted
“Under the first part of the § 325(d) framework, we find the evidence of record demonstrates that Yamaguchi, Cullen, and Adams previously were not presented to the Office in this case. See Ex. 1001, code (56); see generally Ex. 1002. In addition, Petitioner argues persuasively that “[t]hese new references disclose a feature—a back flange extending from an edge of a top flange—that was deemed by the Examiner to be missing in the cited art and was the basis for the ’867 patent claims remaining patentable after the FWD in the -00109 proceeding.” Pet. 14. Petitioner also argues persuasively that, “[a]lthough Bundy was previously considered by the Office, Bundy is used as a secondary reference to disclose limitations— spacing a channel-shaped portion of a hanger from the wall frame to receive two layers of 5/8-inch-thick drywall and providing the channel-shaped portion with a stop—that were not material to the alleged patentability of the claims during prosecution.” Id. Petitioner further argues persuasively that Patent Owner “made no arguments during examination against the combinations of prior-art applied” in the three Petitions (id.). Based on the record before us, we determine that the evidence does not demonstrate that the same or substantially the same art previously was presented to the Office or the same or substantially the same arguments previously were presented to the Office. Because of this determination, we need not and do not consider the second prong of the Advanced Bionics framework. See Advanced Bionics, Paper 6 at 8. Accordingly, we decline to deny institution under § 325(d).” slip op. at 26
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute a post-grant review “unless . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.208(a). Applying those standards, and upon consideration of the information presented in the Petition (as noted above, Patent Owner did not file a Preliminary Response), we determine that Petitioner has established that it is more likely than not that at least one claim of the ’626 patent is 1 A Certificate of Correction issued on June 13, 2023, concerning claims 42, 52, 84, 95, and 105 of the ’626 patent. Ex. 1001 (last page). 2 Petitioner concurrently filed three Petitions collectively requesting post-grant review of claims 1–105 (i.e., all claims) of the ’626 patent, namely, PGR2023-00047, PGR2023-00048, and PGR2023-00049. See Paper 2. We decline to exercise our discretion to deny institution of post-grant review as to any of these three Petitions due to the multiple petitions themselves, as discussed below in Section III. unpatentable. Accordingly, we institute a post-grant review as to the Challenged Claims of the ’626 patent on all grounds raised in the Petition.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,649,626 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · Feb 26, 2024 · IPR2023-01338 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). B. Level of Ordinary Skill in the Art slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we adopt that definition for our analysis in this decision. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. We determine that the level reflected in the prior art is consistent with Petitioner’s definition. C. Claim Construction” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find that the evidence on this record does not sufficiently support the reasons Petitioner presents as demonstrating that a person of ordinary skill in the art would have had a reason to combine Haggerty, Demsey, and Khanna in the manner claimed in claim 1.” slip op. at 18
- Expert testimonyPetitioner expert discountedOther
“But how Demsey’s Internet ad techniques would increase the reach of Haggerty’s marketing efforts is not explained. Petitioner relies on Dr. Houh’s testimony but that testimony simply repeats a desired result as in the Petition without further elaboration. Cf. Pet. 30, Ex. 1002 ¶ 86. Petitioner does not adequately explain how Demsey’s web-based ad-serving technology, when incorporated into Haggerty, would increase the reach of Haggerty’s marketing efforts and/or help Haggerty better target advertisements to particular users such that one of ordinary skill would have been motivated to incorporate Demsey’s technique in Haggerty.” slip op. at 19
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,416,887 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01107 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on claims 9–14 and 16 under either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01106 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because DJI did not show a reasonable likelihood of proving claims 1–5, 7, and 8 obvious, due to deficient and inconsistent treatment of “pilot identification information.”
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden to show a likelihood of prevailing in its challenge to independent claim 1 as presented in the Warner-Wakutsu-Shavit grounds, nor dependent claims 2– 5, 7, and 8, which include the same deficiencies.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” The Petition does not address the scope and meaning of this claim term, but Patent Owner argues (Prelim. Resp. 44– 46, 57–59; Prelim. Sur-Reply 3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. Highlighting the Petition’s inconsistencies, for limitations [1E] and [1J], Petitioner states “in Shavit . . . the pilot ‘types in or selects his name, the name of the co-pilot if any, and the aircraft’s serial number.” Pet. 32 (citing Ex. 1008 ¶ 108). For limitation [1H], however, Petitioner states Shavit’s “user credential for a pilot includes ‘pilot identification information.’” Pet. 39 (citing Ex. 1008 ¶ 87; Ex. 1003 ¶ 116). Responding to Patent Owner’s arguments that those positions are inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - International Business Machines Corporation v. Ebates Performance Marketing, Inc. Dba Rakuten RewardsSome claims unpatentablePTAB · Feb 2, 2024 · IPR2022-01250 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–5 and 7–22 are unpatentable as obvious; claim 23 was not shown unpatentable because the petition did not identify corresponding structure for limitation 23A.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art “would have been someone knowledgeable in information technology and networking” and “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately 2 years of experience working in information technology and networking.” Pet. 17–18 (citing Ex. 1002 ¶ 111). Without agreeing that it is proper, Patent Owner and its expert apply Petitioner’s proposal. See PO Resp. 8 (citing Ex. 2002 ¶¶ 33–34.). For the purposes of this Decision, we continue to use the same assessment offered by Petitioner that we adopted in our preliminary assessment of a person of ordinary skill in the art in the Institution Decision, as it is consistent with the ’960 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“exception to a security rule” and/or “exceptions to security rules.” See e.g., Ex. 1001, 15:18, 15:29. In its Response, Patent Owner asserts that the plain meaning of the phrase “exception to a security rule” is “an instance in which a security rule does not apply.” Id. at 9. Patent Owner asserts that “[t]he ’960 patent does not set out any special definition of ‘exception,’ ‘exception to a security rule,’ or ‘exceptions to security rules.’” Id. (citing Ex. 2005 ¶¶ 41–43). Patent Owner also indicates that “the ’960 patent describes that exceptions to security rules may represent an ‘anomaly’ from general circumstances, or a situation in which a security rule may be permissibly violated such as once an administrator or manager grants approval for a violation.” PO Resp. 9 (citing Ex. 1001, 5:58–6:15, 7:22–39, 9:51–10:18). Patent Owner asserts that “[a]n exception to a security rule can be associated with adjusting risk indicated by the security rule,” and that “exceptions may indicate instances in which risk should be scored differently than what is specified by the general security rule and to which the security rule does not apply.” PO Resp. 10. In its Reply, Petitioner agrees with Patent Owner that the plain and ordinary meaning of the term “exception to a security rule” is “an instance in which a security rule does not apply,” and that this agreed upon meaning is consistent with the ’960 patent in that that “minimum security baseline rules may include minimum security policies.” Pet. Reply 2–3. Given the absence of a special definition of these phrases in the ’960 patent, the ’960 patent’s indication that minimum security baseline rules may include minimum security policies, the lack of any testimony by the parties’ experts contesting a general understanding of the term in the art, and the agreement by the parties as to the plain meaning of the term, we adopt for purposes of this Decision that the plain and ordinary meaning of the phrases “exception to a security rule” or “exceptions to security rules” mean “an instance in which a security rule does not apply.” See PO Resp. 8–16; Pet. Reply 2–5; Ex. 2005 ¶¶ 41–57; Ex. 1002 ¶¶ 66, 114–115, 134, 185; Ex. 2006, 62:2–24. slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means plus function limitations. Ex. 1001, 18:22–37. 35 U.S.C. § 112 “allows a patentee to express a claim limitation by reciting a function to be performed rather than by reciting structure or materials for performing that function.” Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003). A term written in means-plus-function form is construed to cover “the corresponding structure, material, or acts described in the specification and equivalents thereof” for performing the recited functions. 35 U.S.C. § 112, para. 6. Use of the term “means” creates a rebuttable presumption that a claim term is a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption may be rebutted if the claim recites structure sufficient to perform the described functions in their entirety. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–1260; see Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011) (noting that one may still consider the written description to “inform the analysis of whether the claim recites sufficiently definite structure to overcome the presumption that § 112 ¶ 6 governs the construction of the claim”) (overruled on other grounds by Williamson, 792 F.3d at 1339). In our Institution Decision, we preliminarily adopted Petitioner’s construction of the means-plus-function limitations in the challenged claims. Dec. 15. Each of claim 23’s limitations is presumptively written in means-plus-function form, and prior to institution, Patent Owner did not attempt to rebut this presumption and did not point to anything in claim 23’s limitations that articulated structure sufficient to perform the described functions in their entirety. Id. (citing TriMed v. Stryker, 514 F.3d at 1259–1260). Post institution, Patent Owner agrees the terms should be interpreted under 35 U.S.C. §112 ¶ 6 as means-plus-function terms, that the specification describes appropriate corresponding structure for each of these terms, and that each of these terms is not indefinite. PO Resp. 17 (citing Pet. 18–20; Ex. 1002 ¶¶ 116–133). For some of the claim terms, Patent Owner identifies “a more complete listing of corresponding structure.” Id. In its Reply, Petitioner does not object to Patent Owner’s identification of corresponding structure. See generally Pet. Reply.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have been motivated to modify Andres’s system in view of Dodd’s teachings to provide the option to consider the difficulty in fixing a particular vulnerability.” Pet. 22. Petitioner points out that “Andres teaches a vulnerability remediation module 127 which ‘provides automated ticketing and workflow that manages remediation activities’ (Ex. 1003, 19:39–41) and that risk scores should inform the remediation process, such that administrators can ‘first take the remediation steps that will most significantly improve the overall security of the network.’” Pet. 22–23 (citing Ex. 1003, 18:21–23). Petitioner asserts that “Dodd similarly teaches ‘when multiple vulnerabilities have the same computed risk, a user of the security audit system can address those that are easier to fix first.’” Pet. 23 (citing Ex. 1004 ¶ 37). “Such remediation prioritization,” Petitioner argues, “allows an administrator to be more effective in his or her responsibilities even with the limited time and resources of many administrators.” Pet. 23 (citing Ex. 1003, 18:23–25; Ex. 1002 ¶¶ 138–140). Petitioner asserts that “Dodd provides the option to use a ‘fix difficulty value’ for the vulnerability to adjust a risk value associated with that particular vulnerability.” Pet. 23 (citing Ex. 1004 ¶ 36). Petitioner asserts that a person of ordinary skill in the art “would have understood Dodd’s optional adjustment of risk values based on the vulnerability fix difficulty to be an obvious addition to Andres.” Pet. 23. “Indeed,” Petitioner argues, “the same problem of effectively prioritizing remediation actions described in Andres underlies the adjustment process of Dodd.” Id. (citing Ex. 1004 ¶¶ 10, 23; Ex. 1002 ¶¶ 141–142). Petitioner also argues that a person of ordinary skill in the art “would have been motivated by the common goals of Andres and Dodd (utilizing risk scoring to inform/prioritize vulnerability remediation) to incorporate Dodd’s adjustment process into Andres’s system.” Pet. 24. “By adding Dodd’s option to adjust the risk score by a fix difficulty value to Andres’s system,” Petitioner argues, “a user of the combined system could more effectively prioritize the easiest to fix vulnerabilities, and therefore decrease the number of vulnerabilities threatening the network.” Id. (citing Ex. 1004 ¶ 37). “This would facilitate the early resolution of easier vulnerabilities,” Petitioner argues, “before they can be exploited in an attack and allow the ‘limited time and resources’ of administrators to be focused on the more difficult vulnerabilities.” Id. (citing Ex. 1003, 18:23–25). Petitioner argues that the enhanced prioritization “would also allow administrators to incorporate business factors such as cost into decisions about remediation.” Id. (citing Ex. 1002 ¶¶ 143–144).” slip op. at 30
Patent outcomesUS 7,962,960 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,962,960
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.