- Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray; the Board did not reach the alternative Ray–AAPA and Yi grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’340 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but we agree with Petitioner that these differences are immaterial to this proceeding. See Pet. Reply 29 n.12. Moreover, our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4. According to Patent Owner, the Specification of the ’340 patent defines this term. Id. at 4–5 (citing Ex. 1001,6 1:43–46, 6:33–34, claims 4, 5, 17; Ex. 2004 ¶ 33). In its briefing, Petitioner disagrees with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 1–2; see id. at 1–5 (further contesting Patent Owner’s proposed construction). However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the Challenged Claims are unpatentable even under Patent Owner’s narrower construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit 8 By not challenging Petitioner’s contentions as to motivation to combine and reasonable expectation of success, we also find that Patent Owner has waived any argument contesting these contentions. See Paper 8 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed for the reasons explained by Petitioner, as set forth above.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“are contradictory and we also disagree with Patent Owner that Ray teaches away from “maintain[ing] communication between the exercise apparatus and the remote location while the user is determined by the controller not to be engaged with the operating member” as recited in claim 7. On the former point, we agree with Petitioner that Patent Owner “improperly equates generation and reporting of exercise use data with maintaining a connection with a remote location.” See Pet. Reply 20. Petitioner previously asserted that generation and reporting of the data would stop when Ray does not detect a user, but this does not mean that the connection would also be stopped. On the latter point, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner fails to point to anything in Ray that discourages or would otherwise lead one of ordinary skill in the art away from maintaining a connection with a remote location when exercise use data is not reported at that precise moment. Rather, Petitioner provides a reason with rational underpinning as to why one of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to maintain the connection—“to avoid delays in trying to re-establish the connection once the user had come back.” Pet. 39. That position is supported by the testimony of Mr. Rawls. Ex. 1002 ¶ 186.” slip op. at 53
Patent outcomesUS 11,227,340 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray, with claims 10, 11, 13, and 20 also unpatentable over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same level of ordinary skill in the art, except that Patent Owner states that the industry experience would have been “in analyzing and/or designing exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” PO Resp. 15–16. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’227 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 28 n.10. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the 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 patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4–6. According to Patent Owner, the Specification defines this claim term. Id. at 4–5 (citing Ex. 1001, 51:37– 40:59–6:4). In its briefing, Petitioner disagreed with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 2–4. However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the challenged claims are unpatentable even under Patent Owner’s narrower construction of it.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C); see also id. at 26–27 (asserting that “including multiple sensors in treadmills was a routine and well-known task”) (citing Ex. 1002 ¶¶ 159–162). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ treadmill to add both “Ray’s motivational image that showed a thinner image of the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing that detection of a user’s presence could provide benefits, including motivation (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25)), 41 (arguing that data transmission was “a well-known and routine task” (citing Ex. 1002 ¶¶ 188–189)). Patent Owner does not dispute these contentions. See PO Resp. We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success. See Pet. 16–18, 26–27; Ex. 1002 ¶¶ 135–138, 140–145, 161, 189; see also, e.g., Ex. 1004, 5:27–29, 7:11–22, 9:55–57.” slip op. at 22
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 60–71), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosure. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 32
Patent outcomesUS 10,032,227 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,032,227 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00784 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim across the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“The plain meaning of “an integrated, secure memory storing local, secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28, 59; see also Prelim. Resp. 19–21. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 23. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 22. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition]” (id.), this portion of the Specification merely shows an exemplary embodiment and not a definition. See Ex. 1001, 3:50–57. In particular, the language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” See id. (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local, secured information,” nothing in the Specification limits “local, secured information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Prelim. Resp. 23. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here.” slip op. at 8
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 4. In particular, we disagree that the District Court in the Samsung case provided any construction for the term “enabled.” Id. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26.7 That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, the District Court’s determination that “hybrid device” is not indefinite did not constitute a construction of that term, much less provide a construction of “enabled” recited elsewhere in the claim. In any case, even if assuming arguendo that the referenced portion of the district court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” as being limited to when an application, function, or service “receives information from a PDK in exchange for an access key,” as Patent Owner contends. Prelim. Resp. 8. b) Means-plus function analysis Patent Owner further contends that the term “enabling” “may further be defined by way of a means-plus-function analysis.” Prelim. Resp. 8. According to Patent Owner, “§ 112, para 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting a sufficient structure for performing that function.’” Id. (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). Patent Owner contends that because none of “the ‘local secured information’, ‘wireless communication interface’ [and] ‘enablement signal’ provide sufficiently definite structure,” the term 7 Even if the Court’s explanation that “[a]n application, function, or service is ‘enabled’ by a PDK when it receives information from a PDK in exchange for an access key” is an express construction, the Board is not required to adopt that construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is no dispute that the board is not generally bound by a prior judicial construction of a claim term.”).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“We are unpersuaded by Patent Owner’s contentions. In particular, we are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 8. As Petitioner points out, “none of the claims of the ’960 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although this presumption is rebuttable and can be overcome if the challenger demonstrates that the claim term fails to recite sufficiently definite structure (see Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021)), we are unpersuaded that Patent Owner has demonstrated that claim terms “wireless communication interface,” “local secured information,” and “enablement signal” fail to recite sufficiently definite structure. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. We agree with Petitioner that the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’960 patent to determine whether: 1) claims 1–6, 8–11, and 14–19 are unpatentable under 35 U.S.C. § 103 as obvious over Dua and Giobbi ’157; 2) claims 1–7, 10, 11, and 14–19 are unpatentable under 35” slip op. at 49
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00783 · APJ Thu A Dang · IPR · Institution
Instituted review of claims 1–20 on five obviousness grounds: Dua and Giobbi ’157; that combination with Kotola; Buer; Buer with Giobbi ’157; and Buer with Nishikawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’289 patent to determine whether:” slip op. at 46
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 26– 27; see also Prelim. Resp. 28. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 27. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 28. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition],” this portion of the Specification merely shows an exemplary embodiment and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Prelim. Resp. 28 (citing Ex. 1001, 3:43–50) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local secured information,” nothing in the Specification limits “local, secured information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.7 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The plain language of “hybrid device” does not suggest a requirement that the “hybrid device” comprises an integrated PDK. Further, nothing in the Specification clearly limits or redefines “hybrid device” to a device comprising an integrated PDK, as Patent Owner proposes. Prelim. Resp. 3– 4. Although Patent Owner contends that the District Court construed “hybrid device” as “comprising an integrated personal digital key (PDK)” (id. (citing Ex. 2001, 3)), as Patent Owner points out, the District Court’s construction was predicated on the use of “PDK” in the “hybrid device” recited in the independent claims of a family member of the ’289 patent. Prelim. Resp. 3–4. In view of the plain language of the claims and the Specification, we determine that the term “hybrid device” recited in claims 1–16 and 19 is not limited to “comprising an integrated personal digital key (PDK).” We determine no further explicit construction of this term is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 14. As Petitioner points out, “none of the claims of the ’289 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although, as Patent Owner argues, this presumption is rebuttable and can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure” (Prelim. Sur-reply 1 (citing Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021))), we are unpersuaded that Patent Owner has demonstrated that “PDK,” “RDC,” “enabling signal,” and “local secured information” fail to recite sufficiently definite structure. Prelim. Resp. 14–17. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. We agree with Petitioner that the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00782 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6, 8–15, and 17–20 based on six § 103 grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 17. As Petitioner points out, “none of the independent claims of the ’042 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although, as Patent Owner argues, this presumption is rebuttable and can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure” (Prelim. Sur-reply 1 (citing Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021))), we are unpersuaded that Patent Owner has demonstrated that “PDK,” “RDC,” and “enabling signal,” fail to recite sufficiently definite structure. Prelim. Resp. 17–20. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. According to Petitioner, the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; see also Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368).” slip op. at 12
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 13. In particular, we disagree that the District Court in the Samsung litigation provided any construction for the term “enabled.” Id. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26.8 That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, the District Court’s determination that “hybrid device” is not indefinite did not constitute a construction of that term, much less provide a construction of “enabled” recited elsewhere in the claims. In any case, even if assuming arguendo that the referenced portion of the District Court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” as being limited to “exchanging an access key for information held within a service block of a PDK,” as Patent Owner contends. Prelim. Resp. 28.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00775 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that claims 1, 2, 4–9, 11, 12, and 14–17 are obvious over Burger and claims 3, 10, and 13 over Burger and Robinson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In IPR2024-00232, we made clear that “exclud[ing] any active participant in a transaction” from the construction of third-party trusted authority would exclude preferred embodiments of the ’730 patent and, therefore, is presumptively incorrect. IPR2024-00232, Paper 10 at 11–12 (citing Ex. 1001, 5:42–46, 6:32–64, 7:10–22, Figs. 3–5, 7; Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023)). We also explained that “active participation alone does not make an entity a party to the transaction.” Id. at 22–23. Instead, we evaluate a party’s relationship to the transaction to determine whether it is a principal party to the transaction or a third-party. Id. at 11 (“The ‘witness’ role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in.”), 22 (“We agree with Petitioner that, in this example, the TPCH is separate from, and thus a third party to, the principal parties to the transaction (the user and the vendor) and also a third party to the financial institution that pays the vendor.”). To be clear, below, we evaluate Petitioner’s showing as to obviousness over Burger based on the ordinary meaning of third-party trusted authority, namely, “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Remaining claim terms (including “access message”) Patent Owner acknowledges that “the plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” enabling or announcing access,” allegedly consistent with a district court construction. Prelim. Resp. 2–7. As Petitioner has shown a reasonable likelihood of success under the arguably narrower ordinary meaning of “access message,” it is not necessary, at this stage of the proceeding, to further construe this term. Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,352,730 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00846 · APJ David C Mckone · IPR · Institution
The Board instituted review of claims 1–29, finding a reasonable likelihood that claims 1, 2, 4, 5, 7–13, 15, 16, 18–24, and 26–29 are obvious over Burger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’954 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” we should construe “access message” to mean “a signal or notification enabling or announcing access,” allegedly consistent with a district court construction. Prelim. Resp. 2–7. As Petitioner has shown a reasonable likelihood of success under the arguably narrower ordinary meaning of further construe this term. Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that “it would have been obvious to a [person of ordinary skill in the art] to incorporate the age verification method of Robinson in Burger so that Burger’s system can be used by businesses interested in conducting transactions that require age-verification.” Pet. 93. Petitioner argues that it would have been predictable to include Robinson’s age-verification feature in Burger’s system in light of Robinson’s explanation that merchants and their employees face penalties if they sell age-restricted goods (e.g., alcohol or tobacco) to underage individuals. Id. at 94–95 (citing Ex. 1006 ¶ 5; Ex. 1003 ¶¶ 79–80). Dr. Traynor testifies that there would have been “a reasonable expectation of success because it merely involves combining known elements in a manner that would have been easily implemented and obvious to” a skilled artisan. Ex. 1003 ¶ 80. At this stage of the proceeding, we credit Dr. Traynor’s uncontroverted testimony. As to claims 3, 14, and 17, Petitioner points to Robinson’s description of a user registering a biometric sample, identity-verifying information (SID), and age-verifying information with a database of an age-verification system. Pet. 95–96 (citing Ex. 1006 ¶¶ 14–15, 28, 43, 48; Ex. 1003 ¶¶ 175– 178). Petitioner argues that, in the combination of Burger and Robinson, Robinson’s age-verifying information would be stored in the database of Burger’s network server 114. Id. at 95 (citing Ex. 1003 ¶ 176). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. Prelim. Resp. 26. On the current record, Petitioner has shown sufficiently that Robinson teaches the additional limitations of claims 3, 14, and 17, and that a skilled Burger and Robinson.” slip op. at 29
- Expert testimonyPetitioner expert creditedOther
“Petitioner contends that Burger’s pocket vault 102 is “an integrated device.” Id. at 23 (citing Ex. 1005 ¶¶ 94–95, 118, 134, Fig. 2; Ex. 1003 ¶ 90). Petitioner argues that write-once memory 212, a storage element that is not capable of being subsequently altered, persistently stores biometric data of the user, and that other hard-wired memory stores a pocket vault ID and encryption/decryption information. Id. at 24–27 (citing Ex. 1005 ¶¶ 112, 114, 118, 127, 129, 154, 182, 551–552, Fig. 2; Ex. 1003 ¶¶ 22–23, 91–96). Dr. Traynor testifies that it would have been obvious to implement the hardwired memory as protected, write-once memory so that sensitive information that is not subject to change (e.g., device ID, encryption information) is kept secure and not tampered with. Ex. 1003 ¶ 98. We credit this testimony at this stage of the proceeding.” slip op. at 18
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,954 - PTAB · Aug 29, 2024 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1, 32, 38, 39, 47, 52, and 54 on all asserted grounds after finding a reasonable likelihood of prevailing on the Richardson–Zhao challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“(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.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 22 (citing Ex. 1003 ¶¶ 39– 42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” Prelim. Resp. 20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner responds that “denial of institution [does] not require addressing the construction of claim terms.” Prelim. Resp. 19. However, Patent Owner also notes that “during the related ITC investigation[, Petitioner] proposed a specific construction for ‘USB input circuit’ that excludes USB input circuits having bidirectional capabilities . . . [and is] contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit.” Prelim. Resp. 19–20 (citing Ex. 2009, 25– 33; Pet. 65). Patent Owner contends that the proposed construction in the ITC investigation is “contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit, and is therefore clearly germane to this proceeding.” Id. at 25 (citing Pet. 65). Patent Owner’s argument regarding purported inconsistent positions by Petitioner may have some merit. But, on this record, Patent Owner’s argument is not fully developed. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,447,023 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Aug 13, 2024 · IPR2024-00573 · APJ Thu A Dang · IPR · Institution
The Board instituted inter partes review of claims 1, 5, 6, 8–11, 13, and 14 on all three §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“does not suggest a requirement that information be received from a PDK in exchange for an access key. Nothing in the Specification clearly limits the integrated, secure memory “enabl[ing] one or more of an application a function, and a service” to “receiv[ing] information from a PDK in exchange for an access key,” as Patent Owner proposes. Prelim. Resp. 21–28. Thus, we determine that “enabl[ing] one or more of an application a function, and a service” does not require receiving information from a PDK in exchange for an access key. Id. We are unpersuaded by Patent Owner’s contention that the Specification implicitly defines “enabl[ing] one or more of an application a function, and a service” as requiring receiving information from a PDK in exchange for an access key. Prelim. Resp. 21–28. As Patent Owner argues, “the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” Id. at 20 (citing Trustees of Columbia Univ. v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016) (emphasis added)). However, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue as requiring “receiving information from a PDK in exchange for an access key.” Id. at 21–28; In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“We find Patent Owner’s arguments unavailing. In particular, Patent Owner is relying on a claim construction of “enabling,” requiring “providing an access key in exchange for information held locally in the PDK’s service blocks” (Prelim. Resp. 29–31) that is not consistent with our construction discussed above. As discussed above, we determine that the term “enabl[ing] an application, a function or a service” is not limited to, and does not require, “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, an RDC requesting profile data stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein upon its completion “‘enabl[es] access to secure physical or digital assets’ (‘enabling one or more of an application, a function, and service’).” See Pet. 37. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of the integrated RDC and integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- 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 is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
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.