• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00189 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–4, 7, 8, and 11–16 are unpatentable over Arrasvuori; claims 5, 6, 9, 10, and 17–20 are not unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’256 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Lynch (Ex. 1003 ¶¶ 43, 44).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “simultaneously communicate in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met.” Ex. 1001, 40:64–67 (emphasis added). The claim language itself suggests that “continuously generat[ing]” an interface in “real-time” allows the interface to indicate whether a challenge “has been met,” and doing so “in real-time” suggests that updates to the interface are generated as developments occur that may affect whether the challenge “has been met.” Notably, the subject claim limitation explicitly recites “continuously” generating the interface “in real-time”; it does not recite— but easily could have if intended—“periodically” generating the interface (i.e., at predetermined time intervals independent of the occurrence of developments that may affect whether the challenge has been met).3” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Petitioner contends Arrasvuori qualifies as prior art under 35 U.S.C. §§ 102(a) and 102(e) based on its filing and publication dates. Pet. 24. Patent Owner does not contest the prior art status of Arrasvuori. Also, on this record, we have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. Thus, for purposes of this Decision, we determine that Arrasvuori qualifies as prior art under 35 U.S.C. § 102(a) because Arrasvuori’s publication date of October 11, 2007, is before the earliest possible effective filing date of the challenged claims, which is March 3, 2008, and under § 102(e) because Arrasvuori’s filing date of March 29, 2006, is before the earliest possible effective filing date of the challenged claims (March 3, 2008). Ex. 1001, codes (22), (60), (63); Ex. 1005, code (22), (43).” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Arrasvuori discloses (a) “[m]onitoring” of “users performing real- world fitness tasks” (Ex. 1005 ¶ 38), using (b) “monitoring equipment . . . integrated into . . . wireless nodes and/or other computers of users, and/or [] attached to bodies of users” (id. at ¶ 39 (emphasis added)), where (c) “[u]sers might . . . wear their wireless nodes and/or other computers” (id. (emphasis added)), and where (d) “[t]he phrase[] ‘computer’ . . . refer[s] but [is] not limited to . . . a computerized watch” (id. at ¶ 90 (emphasis added); see id. at ¶ 40 (disclosing that “employed monitoring equipment might include one or more sensors”)). We find that these descriptions in Arrasvuori provide an anticipatory disclosure, particularly to the skilled artisan, of the limitation “wirelessly-connected sensor worn on an appendage of a first user.” See Ex. 1017 ¶ 45; Ex. 2006, 84:10-85:22. Although Arrasvuori does not recite in a single sentence the substance of disclosures (a) through (d) above, such as explicitly stating that its “wireless node is a computerized watch,” this is not necessary for the skilled artisan to understand that Arrasvuori discloses such a feature. See In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). Moreover, as argued by Petitioner, Arrasvuori’s disclosure of sensors “attached to bodies of users” and of users “wear[ing]” sensors itself discloses the subject limitation as broadly recited, even without considering the additional disclosure of a computerized watch. See Pet. Reply 17 (“Arrasvuori teaches wrist-worn sensors by stating that its users can ‘wear their wireless nodes and/or other computers.’” (citing Ex. 1005 ¶39)).” slip op. at 21

  Patent outcomesUS 9,278,256 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,278,256
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00180 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 11–14, 19, and 20 are unpatentable: Johnson anticipates claims 11–13 and 19; Sutton anticipates claims 11, 19, and 20; and Sutton with Fry renders claim 12 obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute [Petitioner’s] proposed level of skill in the art” in this case. PO Resp. 9–10; see also Ex. 2001 ¶ 37 (Patent Owner’s declarant, Dr. Stone, accepting and applying Petitioner’s proposed level of ordinary skill). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’220 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “then save.” PO Resp. 10 (citing Ex. 2001 ¶¶ 48–56). According to Patent Owner, “[m]erely saving data is not enough.” Id. Petitioner disagrees, contending that Patent Owner’s proffered interpretation of “record” is inconsistent with the Specification, which “repeatedly distinguishes between ‘record’ and ‘measure’” and uses “‘record’ in connection with saving/storing and ‘measure’ in connection with sensing.” Reply 2–3 (citing Ex. 1001, 2:28–34, 8:51–53, 11:61–62, 11:65–67, 13:5–6, 15:18–24, 15:41–45, 20:2– 6; Ex. 1017 ¶¶ 13–19). Based on our review of the parties’ argument and cited evidence, we find that “record” means “save” and does not encompass “measure or capture” as Patent Owner argues. The Specification describes the act of measuring as being performed by various sensors or other devices. See, e.g., Ex. 1001, 8:51–53 (“sensors for measuring”), 11:65–67 (“accelerometers . . . for measuring”), 15:18–24 (“Global Positioning Satellite (GPS) navigation device” for measuring distance traveled and an “EKG monitor” for “measuring the electrical activity of the user”). The Specification also expressly distinguishes the act of measuring from the act of recording when discussing how the location of a user is measured and recorded. The Specification states: The inclusion of GPS device 713 and accelerometer 715 in a single mobile device 700 allows device 700 to record athletic activity data in multiple workout settings. . . . If, . . . the individual is running outdoors such that the individual moves from one location to another, the GPS device 713 or recording of data therefrom (e.g., GPS device is always active, but recording is turned on and off) may be activated and used instead [of the data measured by accelerometer 715]. Id. at 19:59–20:6 (emphasis added). Even though GPS “is always active” and measuring the location of the user, “recording is turned on and off.” Accordingly, the Specification expressly distinguishes that act of measuring from the act of recording.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Petitioner persuasively contends that the Specification discloses at least six additional ways for a user to select an option to share athletic information that would be excluded under Patent Owner’s proposed interpretation. Reply 11–12 (citing Ex. 1001, Figs. 53F, 53S, 53V, 54C, 77, 82, and accompanying text at 45:22–44, 46:23–28, 47:42–44, 47:63–48:15, 53:27–52). Petitioner also persuasively argues that portion of the Specification cited by Patent Owner fails to sufficiently express intent to limit the scope of “sharing option selection” to “a user command or confirmation.” Id. at 13 (citing Thorner v. Sony Comp. Entm’t Amer. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012) (lexicography requires “clear” expression of intent to redefine the term (emphasis omitted))). Patent Owner’s attempt in the Sur-reply to cite cases for the proposition that claims need not cover all embodiments is unavailing because we discern no clear intent in the Specification to limit the claim to one specific embodiment. For all these reasons, we reject Patent Owner’s proposed interpretation of “the sharing option selection” 8 and instead read it according to its plain meaning, which encompasses, for example, the 8 The phrase “sharing option selection” is introduced in element 11D, and we conclude that phrase carries the same meaning as it does in element 11E. selection of an option to automatically share athletic information in advance of a workout.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner argues that Johnson’s device 601 “does not ‘record’ (i.e., measure or capture, and then save) athletic activity.” PO Resp. 23. Patent Owner contends that “Johnson’s device 601 merely receives and displays pre-recorded athletic activity data that it ‘receives’ from a separate ‘collection’ device” [501], which is the device that “records” the athletic activity. Id. at 24. Patent Owner argues that “writing” data to memory is not “recording” data because it “does not include capturing or measuring the athletic activity itself, only saving it.” Id. Patent Owner concedes that Johnson’s device 601 stores the user’s athletic activity. PO Resp. 24; Sur-reply 8. Patent Owner’s argument that Johnson fails to describe element 11C depends upon us ruling in its favor on the meaning of element 11C. As explained in Part V.A above, we reject Patent Owner’s argument that “record” as used in element 11C also requires the apparatus to “measure or capture” athletic activity. Accordingly, based on Petitioner’s argument regarding element 11C, which we adopt as our own, and the evidence cited in support, we find that Petitioner has shown by a preponderance of evidence that Johnson describes the limitations of element 11C.” slip op. at 19

  Patent outcomesUS 10,232,220 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,232,220
• Tesla, Inc. v. Charge Fusion Technologies, LLCAll claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00062 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious: claims 1–3, 5–8, 10, and 13–15 over Ferro and Lowenthal; claim 9 with Evans; and claims 4, 11, and 12 with Boll.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner’s challenges are based on obviousness. A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious at the time of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in the record, objective evidence of non-obviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).” slip op. at 5

  • Expert testimonyOther

    “2. Reduction to Practice “The diligence requirement implements the principle that, to antedate a reference,” an inventor “must not only have conceived the invention before the reference date, but must have reasonably continued activity to reduce the invention to practice.” ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1369 (Fed. Cir. 2019). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show 1009 (emphasis by the court). An inventor’s testimony does not alone suffice to prove diligence. Id. at 1007. A “variety of activities” may corroborate an inventor’s testimony about diligence, and any corroborating evidence is considered “as a whole.” Id. at 1007–08.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. MacCarley, testifies that one skilled in the art during the relevant timeframe “would have had at least a bachelor’s degree in electrical engineering, mechanical engineering, or physics (or an equivalent field) and at least two years of work experience involving automotive systems, including vehicle information systems, vehicle sensors, and vehicle controllers,” but “[m]ore education can supplement practical experience and vice versa.” Pet. 10 (citing Ex. 1002 ¶ 26). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. See PO Resp. 14 (“Because [the proposed level of ordinary skill] does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.”). We analyze the asserted prior art with respect to the level of skill set forth by Petitioner because it is consistent with the prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “According to Petitioner, “[n]o terms here require construction and so all claim terms should be given their plain and ordinary meaning.” Pet. 10–11. Similarly, “Patent Owner submits that the Board need not expressly construe any claim term.” PO Resp. 18. We do not need to construe any terms expressly to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 7

  Patent outcomesUS 9,853,488 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,853,488
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Lululemon USA Inc. v. Nike, Inc.Instituted
  PTAB · Mar 26, 2024 · IPR2023-01460 · APJ Carl M Defranco · IPR · Institution

  The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1, 10, and 11 are obvious over Dua, Hong, and Lockwood.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1002 ¶¶ 43–45); see also Prelim. Resp. 9 (“Nike applies lululemon’s proposed level of skill in the art.”). lululemon’s proposed definition is consistent with the problems and solutions in the ’484 patent and prior art of record. Accordingly, for purposes of institution, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees with lululemon’s construction of the claims, i.e., “that the flat-knitted element, including the ‘domed, three dimensional structure,’ ‘must be formed from a flat-knitting process.’” Prelim. Resp. 9–10 (quoting Petition 13–14). In doing so, Nike explains that the claims do not cover “a flat knitted element with a three-dimensional structure formed only after the knitting process is complete.” Id. at 10. Thus, consistent with the parties’ reasoning, we construe the claims to require that the “central portion having a domed, three-dimensional structure” be formed during the flat-knitting process, and not afterward.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Based on the current record, we credit the testimony of lululemon’s expert over that of Nike’s expert. lululemon’s expert points to Hong’s explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (citing Ex. 1005, 5) (emphasis added). That disclosure clearly teaches or suggests that the 3D shape is accomplished as part of Hong’s flat-knitting process, and not as part of a post-knitting step. Hong makes this clear not only by its title, “The development of 3D shaped knitted fabrics . . . on a flat knitting machine,” but also throughout its description of the flat-knitting process: - “The use of a new electronic flat knitting machine (Shima Seiki SES 122FF) for producing three-dimensional shaped fabrics for technical purposes is described.” Ex. 1005, Abstract (emphasis added). - “This work describes the use of the new flat knitting machines to knit 3D structures.” Id. at 1 (emphasis added). - “It is not difficult to knit a spherical form in the SES 122FF flat knitting machine.” Id. at 4 (emphasis added). - “By exploiting the capacity of this [flat-knitting] machine, it is possible to knit more types of three-dimensional knitted fabrics.” Id. at 6 (emphasis added). Moreover, we find unpersuasive the testimony of Nike’s expert that Hong’s use of a 2D pattern in the knitting process necessarily means that the article being knitted is a 2D article as opposed to a 3D article. See Ex. 2002 ¶¶ 43–45. To the extent Hong uses a 2D pattern, it appears to be merely to establish the number of needles and courses to be used in the flat-knitting process that produces the actual 3D article. See, e.g., Ex. 1005, 4 (“it is necessary to start by transferring the three-dimensional concept to a two-dimensional pattern, . . . and then establishing the relation between the number of operating needles and the number of knitted courses.”). Nowhere does Hong appear to mention using the 2D pattern to make a 2D article. Rather, as discussed above, Hong is devoted entirely to describing a flat knitting machine that produces three-dimensional shaped fabric articles. We also find unpersuasive the testimony of Nike’s expert that “[t]he pattern shown in [Hong’s] Figure 5(2) . . . is not sufficient to produce the fully formed shape shown in Figure 5(3),” and, thus, one skilled in the art “would not know how to close the tubes shown in Figure 5(3).” Ex. 2002 ¶¶ 46–47. Hong explicitly states that “[d]uring knitting, the two smaller tubes are separately knitted with two cam systems.” Ex. 1005, 4. That disclosure, at this stage, persuades us that Hong teaches or suggests how its flat-knitting process closes the tubular knitted fabrics depicted in the figures. The parties are free to explore this issue further at trial.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “In sum, based on the preliminary record, lululemon sufficiently demonstrates that the asserted Dua-Hong-Lockwood combination teaches or suggests a “domed, three-dimensional structure” that is formed during the “flat knitting process,” as required by claims 1 and 11. Nike does not dispute lululemon’s showing as to the other elements of claims 1 and 11, nor does Nike dispute lululemon’s reason to combine the asserted references. See Prelim. Resp. 26–30. After reviewing lululemon’s showing, we conclude that the record evidence demonstrates a reasonable likelihood that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood. Thus, lululemon meets the threshold for institution.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,730,484
• Provisur Technologies, Inc. v. Textor Maschinenbau GmbHInstituted
  PTAB · Mar 20, 2024 · IPR2024-00224 · APJ Carl M Defranco · IPR · Institution

  The Board instituted review of claims 1–4, 6, 9, 10, 14–16, and 22, finding compelling evidence for anticipation and obviousness challenges and a reasonable likelihood for another obviousness challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “III. CONCLUSION For the above reasons, we determine that compelling evidence shows that at least claim 1 is unpatentable as anticipated by Konishi and at least claims 1 and 22 are unpatentable as obvious over Konishi in view of either Linde or McLaughlin. We also determine that a reasonable likelihood exists that claims 1 and 22 are unpatentable as obvious over McLaughlin. And because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute on all the claims as challenged in the Petition. See 37 C.F.R. § 42.108(a), (c); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). IV. ORDER Accordingly, it is: ORDERED that an inter partes review of claims 1–4, 6, 9, 10, 14–16, and 22 of the ’487 patent is instituted; and” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “(1) the district court’s scheduled trial date of November 18, 2024, which falls approximately four-months before the projected deadline for a final decision here (Ex. 2003, 4); (2) the overlap of invalidity issues and the lack of a Sotera stipulation by Provisur (Ex. 2004, 3, 7; Pet. 81); and (3) the district court’s familiarity with the parties and the technology at issue due to the parallel action being the third in a line of cases between the parties dating back four years or so (Ex. 3002, 1). On the other hand, several factors weigh heavily against discretionary denial, such as: (1) the district court’s likelihood of granting a stay given it already did so for another patent, i.e., the ’109 patent, asserted by Provisur in the same action (as noted above in Section I.A) (Ex. 3001, Dkt. #95, #102); (2) the fact that the ’487 patent was only recently added to the parallel action via a counterclaim (Ex. 3002, 2) and the district court recently extended several deadlines such that fact discovery is still ongoing and expert discovery is yet to begin (Ex. 3001, Dkt. #355, #364, #365); and (3) the fact that moving forward here on the ’487 patent may greatly simplify the issues and ease the district court’s burden on what has evidently become an increasingly frustrating and complex case for the district court (see, e.g., Ex. 2001, 18:24–22:15). In the end, we find that the sum of these factors is a wash, effectively cancelling each other out and leaving us with no answer on the question of discretionary denial. Nonetheless, out of an abundance of caution and because Textor believes it is warranted, we will proceed with a “compelling merits” analysis of at least the Konishi-based challenges.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “conclusive, evidence that Konishi anticipates all elements of claim 1, including the “relaxing,” “tautening,” and “relative movement” limitations of disputed element 1[C2]. Contrary to Textor’s assertion, Provisur does not “completely ignor[e]” the claimed installation, i.e., “tautening,” limitation. Rather, it is Textor who ignores, and blatantly disregards, Provisur’s clear and overwhelming evidence of Konishi’s disclosure of that particular limitation, not to mention Konishi’s clear and undisputed disclosure of the other undisputed elements of claim 1. Most blatantly, Textor ignores Provisur’s detailed claim chart (as reproduced above), which clearly and concisely maps the recited “relaxing,” “tautening,” and “relative movement” limitations of claim 1 to paragraphs 33–41 of Konishi, as well as to Konishi’s Figures 8 and 9. Pet. 19. Although Textor acknowledges Provisur’s citation to Konishi’s paragraphs 33–35 for teaching the removal, i.e., “relaxing,” limitation of element 1[C2], Textor fails to acknowledge Provisur’s citation to Konishi’s other paragraphs, such as paragraphs 38–41, for teaching the “tautening” and “relative movement” limitations. See Prelim. Resp. 17 (addressing only Provisur’s citation to paragraphs 33–35 of Konishi). Those paragraphs in Konishi describe, in no uncertain terms, the process of “reassembl[ing]” the conveyor belt unit onto the subframe once “cleaning is completed.” Ex. 1004 ¶¶ 33–41. Textor’s complete and utter disregard of key aspects of Provisur’s reliance on Konishi is fatal to its argument that Provisur’s challenge “falls far short” of the “compelling merits” standard. Prelim. Resp. 19. The cited evidence plainly proves otherwise, indeed, to the point that Provisur is highly likely to prevail on its Konishi-based challenges. In particular, Konishi’s paragraphs 33–37 explain the removal process where “the timing belt 49 . . . becomes loose” so that the base 12 “still equipped with the conveyor belt 14 . . . can be separated from the frame 9” and “processed with predetermined cleaning,” while Konishi’s paragraphs 38–41 explain the installation process where the base 12 “is assembled to the frame 9” so that “a predetermined tension is applied to the timing belt 49.” Id.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted

    “In other words, Textor’s sole basis for attacking the Konishi-based obviousness challenges is that the asserted combination lacks claim element 1[C2]. But, as discussed above in Section II.C.1, we reject Textor’s argument that Konishi lacks any teaching or suggestion of that claim element, instead, finding that Konishi discloses it explicitly. Thus, in the absence of any further rebuttal evidence from Textor, we find that Provisur’s Konishi-based obviousness challenges are more than strong enough on their merits to compel our review of at least claims 1 and 22.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,457,487
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,628,835
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,244,594
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,115,067
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents 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.