- Life Spine, Inc. v. Globus Medical, Inc.All claims unpatentablePTAB · Jun 11, 2024 · IPR2022-01602 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–3 and 8–10 are anticipated by Weiman, and claims 4–7 and 11–14 are obvious over Weiman and Mozeleski; the revised motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11 (citing Ex. 1002 (Drewry Decl.) ¶¶ 76–79). Patent Owner does not dispute Petitioner’s proposal. See generally Response. We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the cited prior art and is undisputed on this record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find persuasive, and credit, Mr. Drewry’s testimony that (1) a POSITA would have appreciated that the proposed modification to replace Weiman’s screw/socket with Waugh’s angled version provides benefits including “avoiding selected muscular and abdominal anatomical structures,” and (2) such “benefits would have been desirable for certain applications, such as those where the patient’s anatomy dictates that OLIF would provide the patient with the best medical outcome.” Ex. 1044 (Drewry Second Supp. Decl.) ¶¶ 23–26; see also Ex. 1043 (Waugh), ¶¶ 54, 87–90 (describing use of angled screw holes to, e.g., “receive a fastener via a surgical pathway” and configured “to penetrate endplate tissue of a vertebral body”). We find the weight of evidence supports Petitioner’s articulation of a POSITA’s understanding of how to use angles to avoid anatomical features” slip op. at 61
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no terms require construction “because they are shown to be anticipated and/or obvious regardless of construction.” Pet. 12. Patent Owner did not propose any terms for construction. See generally Response. We determine that no claim terms require express construction to render this Decision.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“j. Conclusion on Claim 1 For the above reasons, we determine that Petitioner has shown by a preponderance of the evidence that Weiman discloses each and every limitation of claim 1, and therefore anticipates claim 1.” slip op. at 28
Patent outcomesUS 9,956,087 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,956,087 - PTAB · May 14, 2024 · IPR2024-00193 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–6 and 9 on all petitioned grounds, finding a reasonable likelihood of prevailing on the obviousness challenges and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. Considering the parties’ arguments and evidence, for reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’868 patent’s challenged claims. We decline to deny the Petition on a discretionary basis. We institute an inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“pending lawsuit involving the challenged patent, the Board considers six non-exclusive factors set forth in Fintiv. Fintiv, Paper 11 at 6. The Director of the USPTO has, however, clarified the Board’s application of the Fintiv factors according to an “Interim Procedure” established June 21, 2022. Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Interim Procedure”).6 The Interim Procedure explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 2– 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure also indicates that a Sotera-type stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“encountered in the art, the art’s solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construction standard used to construe claims in a civil action before the courts under 35 U.S.C. § 282(b), including construing claims’ language in accordance with its ordinary and customary meaning as understood by the POSA, in view of the patent’s specification and considering the patent’s prosecution history. 37 C.F.R. § 42.100(b). We need only construe terms that are in controversy and only to the extent needed to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is for “resolution of disputed meanings”).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,143,868 - PTAB · May 14, 2024 · IPR2024-00192 · APJ Michael A Valek · IPR · Institution
The Board instituted inter partes review of claims 6–12 on both obviousness grounds based on Pilz I, Morgan, and Pilz II.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution because Petitioner has offered “a Sotera stipulation,” i.e., Petitioner stipulates that if review is instituted here, it will not pursue in the Delaware litigation the invalidity grounds raised in the Petition or any other ground that could have reasonably been raised in this proceeding. Pet. 76; Ex. 1015, 1–2. The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation.5” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine the Petition demonstrates “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, inter partes review is instituted.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“denied because the Petition and Puchovsky Declaration often use the same or similar verbiage. It is true that conclusory expert testimony is not entitled to substantial weight. See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358–61 (Fed. Cir. 2019) (collecting cases rejecting “obviousness determinations based on conclusory and unsupported expert testimony”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (conclusory and unsupported declaration testimony entitled to little weight). However, the relevant inquiry is not whether the declaration and Petition use the same verbiage, but instead whether the substance of the expert’s testimony is so conclusory as to be inadequate to support the proposition for which it is cited. See TQ Delta, 942 F.3d at 1362–63 (determining conclusory testimony was “inadequate to support the Board’s factfinding”). Accordingly, Patent Owner’s attempts to show that the Puchovsky Declaration uses the same or similar verbiage as various arguments in the Petition (see, e.g., Prelim. Resp. 13–17) do not demonstrate that either the testimony or Petitioner’s arguments are conclusory.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of June 11, 2013, would have had at least a bachelor’s degree in mechanical engineering, civil engineering, fire protection engineering, applied science or a related field, with three to five years’ experience in building construction, fire safety, or the firestopping field. Pet. 3 (citing Ex. 1003 ¶ 9). Patent Owner does not respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,157,232 - Life Spine, Inc. v. Globus Medical, Inc.All claims unpatentablePTAB · Apr 18, 2024 · IPR2022-01435 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–11 are unpatentable: Chung anticipates claim 10, and the Olmos-based obviousness grounds establish unpatentability of claims 1–11.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 11
- Strike new argumentNew argument consideredDenied
“9 Patent Owner asserts that Petitioner’s Reply brief “presents copious new evidence and theories that exceed the scope of proper reply” and “[t]he Board should refuse to consider” it. Sur-reply 7–9. This generic objection to the entire Reply fails to provide adequate notice regarding which of Petitioner’s theories and arguments Patent Owner contends are allegedly new and improper. See, e.g., Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1383 (Fed. Cir. 2023) (rejecting generic objection to alleged new theories in reply as failing to provide adequate notice of which theories are allegedly new). Accordingly, we reject Patent Owner’s request that we “refuse to consider” the entirety of the Reply. Where Patent Owner’s Sur-reply raises more particularized complaints regarding Petitioner’s allegedly improper new arguments, we address those complaints as appropriate below.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Accordingly, we find Petitioner has not shown that claim 1 is unpatentable as anticipated by Chung.” slip op. at 65
Patent outcomesUS 10,137,001 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,137,001 - Life Spine, Inc. v. Globus Medical, Inc.All claims unpatentablePTAB · Apr 15, 2024 · IPR2022-01599 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1, 7–13, and 16 are unpatentable as obvious over the cited prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Petitioner that Patent Owner’s proposed construction improperly reads in limitations from example embodiments in the Specification. See Inst. Dec. 20. We noted that the Specification uses the term “extension” to refer to a variety of additions to a main structure having a variety of shapes, not all of which “increase the length” of the main structure. Id. at 21. Accordingly, we construed the term “central ramp extension” in accordance with its plain and ordinary meaning, i.e., “an addition to the central ramp.” Id.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“5. Conclusion—Obviousness Based on Chung with Boehm and/or Song On this record, we determine that Petitioner has shown by a” slip op. at 64
Patent outcomesUS 8,845,732 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,845,732 - Dental Recycling North America, Inc. v. Solmetex, LLCInstitution deniedPTAB · Mar 19, 2024 · PGR2023-00055 · APJ Michael A Valek · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any challenged claim was unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of post-grant review is authorized only when “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; 37 C.F.R. § 42.4. Upon considering the present record, we determine that Petitioner has not satisfied its burden to show that it is more likely than not that any of the challenged claims are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of its declarant, Petitioner contends a person of ordinary skill (“POSA”) “would have been an individual with at least a bachelor’s degree in mechanical engineering, or at least 3 years of experience designing or manufacturing vacuums, filters, medical devices, or the related components.” Pet. 22 (citing Ex. 1003 ¶¶ 94–95). Patent Owner does not respond to Petitioner’s contention in its Preliminary Response, but asks its declarant to apply Petitioner’s proposed level of skill in the art in his analysis. See Ex. 2001 ¶ 86. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this decision. C. Claim Construction” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “[a]ll terms of the ’175 patent should be given their plain and ordinary meaning as understood by a POSA,” but does not propose any express claim construction for consideration. See Pet. 22–23. Petitioner further asserts that the preambles of the independent claims are limiting. Id. at 23–25. Patent Owner argues “that claim construction is not necessary at this time,” but urges that “in the event the Board determines that claim construction is necessary, Petitioner’s proposal to construe the preambles of the independent claims as limiting should be rejected.” Prelim. Resp. 65. We need not determine whether the preambles of the independent claims are limiting to reach the outcome in this decision. Accordingly, no express claim construction is necessary here. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). D. Grounds 1–4 and Petitioner’s Related Priority Challenge” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot shown unpatentable
“Based on the record before us, Patent Owner has the better position. It is well settled that the original drawings may themselves be sufficient to provide description for later-filed claims. Vas-Cath, 935 F.2d at 1565 (holding that “drawings alone may provide a ‘written description’ of an invention as required by § 112”). That is the case here with respect to the original figures submitted with the Great-Grandparent application. We agree with Patent Owner and Dr. Garris that original Figures 4A–B and 5B show a flange or “radially protruding structure” configured as in the challenged claims. Ex. 2001 ¶¶ 106–113. Moreover, the original description in the Great-Grandparent application describes “removable retaining pins 13” that “ensure the recycling container,” i.e., container 12 in Figures 4A–B, “does not detach from the air-water separation tank 5 when there is no vacuum in the system.” Ex. 1002, 213 (¶ 92). Based on this description and the depiction of retaining pin 13 in the original Figure 2, a POSA would have understood that the pins engage with the radially protruding structure to hold the container in place as recited in the challenged claims. Ex. 2001 ¶ 114. Petitioner’s argument that the original figures do not depict the radially protruding structure and retaining pins working together to hold the container in place is unpersuasive. Patent Owner has sufficiently demonstrated that a POSA would have understood how the structures in original Figures 2 and 4A interact based on a side-by-side comparison of the same. See Pet. 38–43; Ex. 2001 ¶ 114. Indeed, the applicants made a similar comparison during prosecution, which proved persuasive to the Examiner. Ex. 1002, 87, 98. The Petition provides no reason to doubt that a POSA would understand the original figures and description just as Patent Owner contends. Moreover, contrary to Petitioner’s arguments, the fact that the specification and drawings were amended does not mean that Patent Owner had to add new matter to overcome the Examiner’s rejections. See Pet. 16– 17. In this case, the amendments to the specification during prosecution of the ’175 patent made the operation of the retaining pin and radially protruding structure, as shown by the original figures, even clearer. But that does not mean that the original description was inadequate.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 11,660,175 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Feb 29, 2024 · IPR2022-01357 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 2, 4, 6, 9, 10, 14–17, 21, 22, and 24–26 are unpatentable as obvious over the asserted combinations of Park, Kim, Hileman, Pugliese, and Mault.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“does not equate an “acquisition request” exclusively with a shopping or purchase request. See Ex. 3006, 10–11. Rather, the specification repeatedly uses the phrase “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:25–27 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:56–58 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121.”); id. at 2:24–28 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”) (emphases added). Consumeron’s argument that the specification “uses the word ‘or’ to refer to things that are synonymous to each other” is not persuasive. See PO Resp. 10; see also PO Sur-Reply 3–4 (essentially same). As noted above, the specification uses the phrase “purchase or otherwise acquire.” Ex. 1001, 5:25–27, 7:56–58 (emphasis added); see also id at 2:24–28 (similar). By including the adverb “otherwise,” the specification makes clear that purchase and acquire are not used synonymously, but rather that acquiring is broader and encompasses other ways of obtaining a product. See Ex. 1039, 1 (“otherwise” means “in a different way or manner”). Indeed, the specification unequivocally describes instances where the delivery agent acquires a product without purchasing or shopping for it. For instance, the specification explains that the customer may “pre-purchase[]” goods such that the customer requests simply that the delivery agent “pick-up” of the goods: [T]he customer has the option of paying the retailer or seller directly, in which case the customer will only be billed for the pick-up and delivery services provided. . . . If pre-purchased by the customer, the delivery agent obtains a receipt showing proof of pre-payment by the customer. Id. at 8:15–23 (emphases added). Even more explicitly, the specification states that, “although discussed in the context of a customer who wishes to purchase a product, it should be understood that system 10 may be utilized to schedule both pick-ups and delivery of any type of goods, including free goods. Id. at 10:40–44 (emphasis added). Those disclosures collectively indicate that a delivery agent can fulfill an acquisition request without necessarily shopping for or purchasing goods. Consumeron attempts to distinguish those descriptions, urging that they refer to an “alternative” embodiment that “does not expand the meaning of the term ‘acquisition request’ beyond its ordinary meaning.” PO Sur- Reply 4. But that argument is premised on an incorrect assumption that the ordinary meaning is limited to purchasing or shopping. Here, nothing in the intrinsic record suggests that the term “acquisition request” excludes the specification’s embodiments where “pre-purchased” or “free” goods are only in need of “pick-up.” To the contrary, as noted above, the specification repeatedly states the delivery agent may “otherwise acquire” goods without purchasing them, thereby, indicating that the agent can fulfill an acquisition request without necessarily shopping for the goods on the customer’s behalf. See Ex. 1001, 5:25–27, 7:56–58.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“We previously construed the term “acquisition request” in the related 865 IPR to encompass “not only a request for an agent to shop for and purchase goods for delivery to a customer, but also to encompass a request for a delivery agent to simply pick up and deliver goods that have been prepurchased by the customer.” See Ex. 3006, 9–11 (granting institution in conjunction with construing “acquisition request”). As noted above in Section I.A (“Related Matters”), the 865 IPR centers on the ’465 patent, whose lineage derives from the same application—the ’867 application—as the ’835 patent challenged here. Compare Ex. 1001, 1:7–15 (referencing Appl. No. 12/711,867), with Ex. 3005, code (63) (also referencing Appl. No. 12/711,867). Indeed, the ’835 and ’465 patents share essentially identical specifications and figures. Thus, based on the final record before us (as discussed below) and consistent with our prior construction in the related 865 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the more reasonable one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). More specifically, as we explained in the 865 IPR, the specification does not equate an “acquisition request” exclusively with a shopping or purchase request. See Ex. 3006, 10–11. Rather, the specification repeatedly uses the phrase “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:25–27 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:56–58 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121.”); id. at 2:24–28 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”) (emphases added).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Although the district court considered “intentional delay” in the course of construing the term “real time,” the district court does not appear to have accepted Consumeron’s narrower construction in that regard. More accurately, the district court stated it “sees no reason that a ‘real-time’ transmission of data could not both involve no inherent delay and permit a system that requires multiple ‘clicks’ to operate.” Ex. 1035, 24 (emphasis added). In addition, the district court quoted from a technical dictionary, which provided: The basic definition of real-time data is that it is data that is not kept or stored, but is passed along to the end user as quickly as it is gathered. It is important to note that real-time data does not mean that the data gets to the user instantly. There may be any number of bottlenecks related to the data collection infrastructure, the bandwidth between various parties, or even just the slowness of the end user’s computer. Real-time data does not promise data within a certain number of microseconds. It just means that the data is not designed to be kept back from its eventual use as it is collected. Id. at 25 (citing “Technopedia”). In other words, the district court contemplated that real-time data includes data that is transmitted as it is gathered despite some inherent delay in transmitting and accessing the data, such as bottlenecks in the infrastructure, slowness of the user’s computer, or “multiple clicks” by the user. With that in mind, we reject Consumeron’s attempt to alter our construction of “real-time” to exclude so-called “intentional delay.” Thus, consistent with the district court and our institution decision, we maintain that “real-time” transmission means “data that is passed along as it is gathered.”” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Instacart submits that one skilled in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa. Pet. 14 (citing Ex. 1003 ¶ 24). Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like,” but that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” PO Resp. 9 (citing Ex. 2016 ¶¶ 17–20). 1 WO 01/11523 A1, published Feb. 15, 2001 (Ex. 1005) (“Park”). 2 Certified translation of KR2003-0085802, published Nov. 7, 2003 (Ex. 1006); corrected certified translation of Figure 2 (Ex. 1038); and original Korean language version (Ex. 1007) (collectively, “Kim”). 3 US 2003/0040944 A1, published Feb. 27, 2003 (Ex. 1009) (“Hileman”). 4 US 2002/0072974 A1, published June 13, 2002 (Ex. 1010) (“Pugliese”). 5 US 2002/0027164 A1, published Mar. 7, 2002 (Ex. 1016) (“Mault”). We discern no material difference between the levels of skill in the art espoused by the parties. Nor does Consumeron’s expert. See Ex. 2016 ¶ 20 (“Petitioner’s definition of a POSITA is not materially different from my definition.”). Accordingly, we adopt the level of skill in the art as defined by Instacart.” slip op. at 6
Patent outcomesUS 10,628,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,628,835 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Feb 29, 2024 · IPR2022-01356 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 4, 5, 8, 9, and 13–17 are unpatentable as obvious under § 103(a) over the grounds based on Park and Kim, with Hileman or Pugliese for specified dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We discern no material difference between the levels of skill in the art espoused by the parties. Nor does Consumeron’s expert. See Ex. 2016 ¶ 20 (“Petitioner’s definition of a POSITA is not materially different from my definition.”). Accordingly, we adopt the level of skill in the art as defined by Instacart.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“More specifically, as we explained in the 865 IPR, the specification does not equate an “acquisition request” exclusively with a shopping or purchase request. See Ex. 3006, 10–11. Rather, the specification repeatedly uses the phrase “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 4:58–60 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:7–9 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121.”); id. at 2:9–12 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”) (emphases added).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“course of construing “real time,” the district court does not appear to have accepted Consumeron’s narrower construction in that regard. More accurately, the district court stated it “sees no reason that a ‘real-time’ transmission of data could not both involve no inherent delay and permit a system that requires multiple ‘clicks’ to operate.” Ex. 1035, 24 (emphasis added). In addition, the district court quoted from a technical dictionary, which provided: The basic definition of real-time data is that it is data that is not kept or stored, but is passed along to the end user as quickly as it is gathered. It is important to note that real-time data does not mean that the data gets to the user instantly. There may be any number of bottlenecks related to the data collection infrastructure, the bandwidth between various parties, or even just the slowness of the end user’s computer. Real-time data does not promise data within a certain number of microseconds. It just means that the data is not designed to be kept back from its eventual use as it is collected. Id. at 25 (citing “Technopedia”). In other words, the district court contemplated that real-time data includes data that is transmitted as it is gathered despite some inherent delay in transmitting and accessing the data, such as bottlenecks in the infrastructure, slowness of the user’s computer, or “multiple clicks” by the user. With that in mind, we reject Consumeron’s attempt to alter our construction of “real-time” to exclude so-called “intentional delay.” Thus, consistent with the district court and our institution decision, we maintain that “real-time” transmission means “data that is passed along as it is gathered.” 3. “mobile delivery agent system” In our institution decision, we adopted a construction of “mobile delivery agent system” consistent with the way the term was construed in the Delaware action, namely, “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” See Inst. Dec. 4–5 (citing Ex. 1034, 1; Ex. 1035, 13–17). Neither party disputes that construction. See PO Resp. 12 (adopting our construction); Pet. Reply 1–7 (disputing only the meaning of other claim terms). Thus, we maintain our construction as stated above.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Again, we disagree with Consumeron. As Instacart points out, Park’s system and method is not limited to one-hour delivery. See Pet. Reply 19. To the contrary, Park teaches that items can be “delivered within the hour or within a customer specified delivery window” exceeding an hour. Ex. 1005, Abstract (emphasis added), 20:9–12 (describing “processing orders for deferred delivery (i.e. those not required to be delivered in the next hour)” (emphasis added)); see also Ex. 1044 ¶ 29. Moreover, while Park places some emphasis on delivery time, it also explains that its goal is to promote customer satisfaction. See Ex. 1005, 30:16–18 (increasing “dispatch efficiency and customer satisfaction”), 34:5–7 (resequencing delivery “to ensure 100% customer satisfaction”). In that regard, the reason that Instacart articulates for combining Park and Kim dovetails with Park’s objective of improving customer satisfaction by ensuring the product to be delivered is acceptable to the customer. See Ex. 1044 ¶ 65 (“[A] POSITA would have understood that a customer ordering goods would care little if an unacceptable product was delivered quickly.”).” slip op. at 28
Patent outcomesUS 8,244,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,244,594 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Feb 29, 2024 · IPR2022-01358 · APJ Michael A Valek · IPR · Final written decision
Claims 1–5, 8, 9, 12, 14, 18, 19, and 21–28 are unpatentable as obvious over the four asserted combinations of Park and Kim, with Hileman, Mault, or Pugliese where specified.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers a similar description, asserting that a POSITA “is someone with a background in electrical engineering, computer science or the like” and that either experience or training can make up for a lack of the other. Resp. 9–10 (citing Ex. 2016 ¶¶ 17–20). We adopt Petitioner’s definition of the level of ordinary skill in the art. This definition is supported by the record (Ex. 1003 ¶ 24) and consistent with the disclosure in the ’067 patent and the references cited in the Petition. Patent Owner’s definition is “not materially different” from Petitioner’s definition. See Ex. 2016 ¶ 20 (Patent Owner’s declarant acknowledging such). Thus, our analysis and findings would be the same under either sides’ proposal.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“In the institution decision, we agreed with and applied the same MDAS construction adopted by the district court in the Delaware litigation. Dec. 12–14. That is, a “mobile delivery agent system” is “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” Ex. 1034, 1. To the extent there was any substantive disagreement with this preliminary construction, we invited the parties to present their alternative positions at trial. See Dec. 14. Neither party has done so. See Resp. 13 (applying same MDAS construction); Reply 1–5 (addressing other claim construction issues, but not raising any issue with the MDAS construction). Accordingly, we apply the same construction of “mobile delivery agent system” here. ii. “real-time” The term “real-time” is not recited in the independent claims, but does appear in some of the challenged dependent claims. See Ex. 1001, 10:8– 14:16 (claims 14 and 18). In the institution decision, we agreed with and applied the same construction adopted by the district court in the Delaware litigation. Dec. 14–15. That is, that “real-time” has its ordinary meaning, which is “data that is passed along as it is gathered.” Ex. 1034, 2. Neither party has proposed an alternative construction. See Resp. 13 (applying same “real-time” construction); Pet. 14 (asserting that “the terms of the Challenged Claims should be given their ordinary and customary meaning”). Accordingly, we apply the same construction of “real-time” here.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. Contrary to Patent Owner’s assertions, the Specification does not exclusively equate an “acquisition request” with a shopping or purchase request. See Resp. 10–12. Rather, the Specification repeatedly uses the phrasing “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:4–6 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:24–26 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121 and deliver the product.”); id. at 2:15–18 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”). Patent Owner’s argument that the Specification uses the “word ‘or’ to refer to things that are synonymous to each other” is not persuasive. See Resp. 10; Sur-reply 4 (citing Epic Games, Inc. v. Ingeniosh, LLC, IPR2022- 00202, Paper 29, 18–19 (PTAB May 19, 2023)). As noted above, the Specification uses the phrasing “purchase or otherwise acquire.” Ex. 1001, 5:4–6, 7:24–26 (emphasis added); see also id. at 2:15–18 (similar). By including the adverb “otherwise,” the Specification makes clear that purchase and acquire are not used synonymously, but rather that acquiring is broader and encompasses other ways of obtaining a product. See Ex. 1039, 1 (“otherwise” means “in a different way or manner”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner has also articulated a sufficient rationale for combining these elements of Park and Kim. See Pet. 20–23 (citing exhibits). Kim identifies a problem with purchasing a product from a website, i.e., that the product delivered to the customer may not match the images or videos of that product on the website. Ex. 1006, 2. Kim teaches this problem can be overcome by having the delivery service provider operate a MDAS to transmit an image of the actual product in real time to the customer so that after receiving the image the customer can send instructions back to the delivery service provider confirming that is the product they delivered. Id. We credit Dr. Houh’s testimony that, based on these teachings, a POSITA would have been motivated to incorporate those same steps into Park’s system and methodology to “enhance the reliability of the delivery,” “increase customer satisfaction,” and “save[] resources” by preventing the delivery of goods that, upon viewing, the customer might reject. Ex. 1003 ¶¶ 51–56. Moreover, a POSITA would have had a reasonable expectation of success in combining these teachings because Park’s system was already configured to send live video and images to the customer’s computer. Ex. 1003 ¶ 57. Indeed, while Park primarily discusses transmission of video and images of the delivery process to the customer, it expressly teaches that its objective is to “allow customers to interactively view, in real-time, the progress of his order, from reception to compilation to delivery though the route taken by the delivery agent.” Ex. 1005, 4:26–32 (emphasis added). Incorporating Kim’s teachings regarding elements 1.5–1.7 would further this objective, allowing the customer to interactively view images of the actual products compiled for delivery and send instructions back to the delivery agent regarding those products prior to delivery. See Ex. 1003 ¶ 57 (explaining that the combination allows Park’s system to perform the same intended functionality “in a more reliable way”). Accordingly, Petitioner has shown that it would have been obvious to” slip op. at 24
Patent outcomesUS 10,115,067 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,115,067 - Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Feb 29, 2024 · IPR2022-01359 · APJ Michael A Valek · IPR · Final written decision
Claims 1, 3, 4, and 6–15 are unpatentable as obvious over Park, Kim, and Williams; claims 11–13 are also unpatentable over those references with Hileman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers a similar description, asserting that a POSITA “is someone with a background in electrical engineering, computer science or the like” and that either experience or training can make up for a lack of the other. Resp. 9–10 (citing Ex. 2016 ¶¶ 17–20). We adopt Petitioner’s definition of the level of ordinary skill in the art. This definition is supported by the record (Ex. 1003 ¶ 24) and consistent with the disclosure in the ’191 patent and the references cited in the Petition. Patent Owner’s definition is “not materially different” from Petitioner’s definition. See Ex. 2016 ¶ 20 (Dr. Mitzenmacher acknowledging such). Thus, our analysis and findings would be the same under either sides’ proposal.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“ii. “real-time” In the institution decision, we agreed with and applied the same construction adopted by the district court in the Delaware litigation. Dec. 14–15. That is, that “real-time” has its ordinary meaning, which in this context is “data that is passed along as it is gathered.” Ex. 1034, 2. Notably, this is the same construction Patent Owner advocated for in the Delaware litigation. See Ex. 1035, 4. Nevertheless, Patent Owner now seeks to add to that construction, urging that the district court “accepted” that the term “does not include any ‘intentional delay’ in the transmission.” Resp. 14 (citing Ex. 1035, 22, 26); see also Sur-reply 16–17 (essentially same). Although the district court considered “intentional delay” in the course of construing “real time,” it did not include the additional language Patent Owner proposes in its construction. See Ex. 1035, 2. Moreover, the district court stated it “sees no reason that a ‘real-time’ transmission of data could not both involve no inherent delay and permit a system that requires multiple ‘clicks’ to operate.” Id. at 25 (emphasis added). In addition, the district court quoted from a technical dictionary, which provided: The basic definition of real-time data is that it is data that is not kept or stored, but is passed along to the end user as quickly as it is gathered. It is important to note that real-time data does not mean that the data gets to the user instantly. There may be any number of bottlenecks related to the data collection infrastructure, the bandwidth between various parties, or even just the slowness of the end user’s computer. Real-time data does not promise data within a certain number of microseconds. It just means that the data is not designed to be kept back from its eventual use as it is collected. Id. at 26 (citing “Technopedia”). In other words, the district court contemplated that real-time data” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. Contrary to Patent Owner’s assertions, the Specification does not exclusively equate an “acquisition request” with a shopping or purchase request. See Resp. 10–12. Rather, the Specification repeatedly uses the phrasing “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:4–6 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:24–26 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121 and deliver the product.”); id. at 2:15–18 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”). Patent Owner’s argument that the Specification uses the “word ‘or’ to refer to things that are synonymous to each other” is not persuasive. See Resp. 10; Sur-reply 4 (citing Epic Games, Inc. v. Ingeniosh, LLC, IPR2022- 00202, Paper 29, 18–19 (PTAB May 19, 2023)). As noted above, the Specification uses the phrasing “purchase or otherwise acquire.” Ex. 1001, 5:4–6, 7:24–26 (emphasis added); see also id at 2:15–18 (similar). By including the adverb “otherwise,” the Specification makes clear that purchase and acquire are not used synonymously, but rather that acquiring is broader and encompasses other ways of obtaining a product. See Ex. 1039, 1 (“otherwise” means “in a different way or manner”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner has also articulated a sufficient rationale for combining these elements of Park and Kim. See Pet. 22–25 (citing exhibits). Kim identifies a problem with purchasing a product from a website, i.e., that the product delivered to the customer may not match the images or videos of that product on the website. Ex. 1006, 2. Kim teaches this problem can be overcome by having the delivery service provider operate a MDAS to transmit an image of the actual product in real time to the customer so that after receiving the image the customer can send instructions back to the delivery service provider confirming that is the product they delivered. Id. We credit Dr. Houh’s testimony that, based on these teachings, a POSITA would have been motivated to incorporate those same steps into Park’s system and methodology to “enhance the reliability of the delivery,” “increase customer satisfaction,” and “save[] resources” by preventing the delivery of goods that, upon viewing, the customer might reject. Ex. 1003 ¶¶ 62–67. Moreover, a POSITA would have had a reasonable expectation of success in combining these teachings because Park’s system was already configured to send live video and images to the customer’s computer. Ex. 1003 ¶ 69. Indeed, while Park primarily discusses transmission of video and images of the delivery process to the customer, it expressly teaches that its objective is to “allow customers to interactively view, in real-time, the progress of his order, from reception to compilation to delivery though the route taken by the delivery agent.” Ex. 1005, 4:26–32 (emphasis added). reach Petitioner’s backup argument that this “clause . . . is a non-limiting statement of intended purpose.” See Reply 15–17; Tr. 29:12–30:6 (Petitioner acknowledging this is a “backup position”). Incorporating Kim’s teachings regarding elements 1.3–1.5 would further this objective, allowing the customer to interactively view images of the actual products compiled for delivery and, if acceptable, send approval for the delivery agent to purchase and deliver those goods. See Ex. 1003 ¶ 68 (explaining that the combination allows Park’s system to perform the same intended functionality “in a more reliable way”).” slip op. at 31
Patent outcomesUS 9,202,191 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,202,191
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.