- Meridian Wildlife Service, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCInstitution deniedPTAB · Jan 10, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Institution
The Board denied institution on all challenged claims 1–8 because Petitioner did not show a reasonable likelihood that any claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III. ANALYSIS A. DISCRETION TO DENY UNDER 35 U.S.C. § 325(D) Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution because Petitioner presents the same 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103, effective March 16, 2013. Because the’683patent has an effective filing date after the effective date of the applicable AIA amendments, we refer to the AIA version of § 103. 3 Brugh, U.S. Patent Application Publication No. 2017/0238524, published Aug. 24, 2017 (Ex. 1005, “Brugh”), issued as US Patent No. 9,943,073 B2 on Apr. 17, 2018. 4 ECOLOGICAL AND BEHAVIORAL METHOD FOR THE STUDY OF BATS (Thomas H. Kunz, 1998). EX. 1010. 5 Bird Barrier, Mist Kit Assembly and Use, YouTube (Aug. 19, 2014). Ex. 1009 (“Bird Barrier Video”). 6 Petitioner also submits a screenshot from a Bird Barrier webpage advertising “mist nets” (Ex. 1011), a transcript from the Bird Barrier Video (Ex. 1014), and a “Bird Barrier Product Catalog 2013” (Ex. 1015). or substantially the same prior art or arguments that were previously presented to the Office during the prior prosecution of the ’683 patent. Prelim. Resp. 21–23. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 325(d).” slip op. at 11
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. The evidence does not support Petitioner’s proposed definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a person of ordinary skill in the art if that artisan had several years of experience trapping flying animals. See Pet. 7. Further, the evidence does not support Patent Owner’s proposed definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 13. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definitions of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’683 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Figure 2 of the ’683 patent (as shown above in Section II.C) depicts a preferred net set up depicting two perimeter nets 12 “set up around the perimeter of the enclosure 36” and three trapping nets 14, one located proximate to the perimeter and two located in the interior. Ex. 1003, 3:56–57, 4:29–42. Although the ’683 patent does not provide a specific definition for a “perimeter net” and describes that the “perimeter net” is only “preferably . . . set up around the perimeter of the enclosure” (id. at 4:29–30), the term “perimeter” qualifies the term “net” and connotes structure, namely, the location of the “net” in relation to the “structure” recited in the preamble of independent claim 1, i.e., the enclosure. Here, the term “perimeter” before net connotes a relationship between the “structure” of the preamble and the location of the net. In other words, “perimeter” is a meaningful modifier for the location of the net as being at or proximate to the perimeter of the enclosure, i.e., the “structure” recited in the preamble of claim 1. Thus, we agree with Patent Owner and determine that the term “perimeter net” is a net located at or proximate to the perimeter.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,064,683 - Meridian Wildlife Service, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCInstitution deniedPTAB · Jan 10, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were obvious over Brugh, Brugh and Kunz, or Bird Barrier Video and Kunz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“LEGAL STANDARDS B. In an inter partes review, the petitioner has the burden of showing there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. ANALYSIS A. DISCRETION TO DENY UNDER 35 U.S.C. §§ 314(A) AND 325(D) Patent Owner argues that we should exercise discretion under 35 U.S.C. § 314(a) and deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Prelim. Resp. 25–26. Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’108 patent. Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’108 patent. Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 12
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. The evidence does not support Petitioner’s proposed definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a person of ordinary skill in the art if that artisan had several years of experience trapping flying animals. See Pet. 6. Further, the evidence does not support Patent Owner’s proposed definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 14. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definitions of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’108 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,729,108 - PTAB · Jan 9, 2023 · IPR2022-01142 · APJ Ryan H Flax · IPR · Institution
Instituted IPR of claims 1–14 on all asserted grounds: anticipation by or obviousness over Roy or Chang, and obviousness over Simonoff and Naef.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’124 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–14) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (citing Ex. 1003 ¶¶ 28–30).9 Patent Owner states that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” Prelim. Resp. 5. Patent Owner adds that “[t]he expert witnesses of the parties are persons of (at least) ordinary skill in the art of the ’124 Patent and its claims.” Id. We accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“In re Merck for this point). And, further, when considering obviousness, the prior art must be considered for all of its teachings, including unpreferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). With this precedent in mind, we restate that Simonoff’s disclosure appears to fully include Naef’s disclosure. Ex. 1006, 3:24–29. Further, both references apparently identify the existence and general functionality of central-server systems for remote computer collaboration where the server is in charge of updating all networked computers’ displays, even if Naef’s disclosed invention is not such a system, but instead puts a client computer in control. See generally Ex. 1006; Ex. 1007. Finally, Petitioner’s witness, Dr. Terveen, testifies that the person of ordinary skill in the art would have had good reason to “improve Simonoff’s similar collaboration system” by having its server return update/annotation messages back to the source client along with the other clients during its “multi-casting,” as suggested by Naef, because this would “avoid[] conflicts between user inputs and [would] allow[] the source client to see the edits as the other clients would see them. Ex. 1003 ¶73 (citing Ex. 1015, 12:56–67; Ex. 1008, 45; Ex. 1006, 24:22–27). At this stage of the proceedings, we credit Dr. Terveen’s testimony and find Petitioner’s position reasonable. We are not persuaded by Patent Owner’s arguments or evidence at this stage (we are not entirely sure what qualifies Mr. Sunatori’s as a reliable witness at this point) so as to dissuade us from instituting trial on this ground.” slip op. at 52
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Owner’s positions on claim construction, both identifying that claim construction is unnecessary and then proposing the above-indicated claim construction. Prelim. Reply 1. Petitioner argues that neither the disputed claim language itself nor the Specification supports Patent Owner’s proposed claim construction because the claims simply state “that the output message includes information defining the content to be shared, not the input message itself or a copy of it.” Id. Petitioner cites two portions of the ’124 patent’s written description that contradict Patent Owner’s narrow definition of the claim language––the first indicating that input messages and output messages may be in different formats and have different data and that the output messages can be generated once the input messages are read (Ex. 1001, 14:27–33), and the second indicating that the output messages could combine multiple input messages, and that output messages represent input messages that themselves represent computer input such as a mouse drag (id.at 33:1–9). We agree with Petitioner that the record does not support narrowing the meaning of the disputed claim language as argued by Patent Owner and, based on the present record, we do not expressly construe this claim language.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,963,124
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.