- DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Jun 15, 2023 · IPR2023-00261 · APJ William V Saindon · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–30 were unpatentable over DeWaal alone or with Schugar and Scott.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314(b) and 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 provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’439 patent is unpatentable, we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“wager.” First, the wager is received “in response to the . . . players desiring to participate in the multi-outcome wagering event” (“receiving” limitation). The claim here further specifies that the wager must “coincide[] with each of the number of legs.”1 Second, the claim then identifies one or more winners “based on the wager” (“identifying” limitation). The claim here also” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“adequately address the specific “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. In either case, putative wager in DeWaal serves to allow entry into the event. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choices in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to the . . . players desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claim 1 requires the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, we determine that Petitioner has not addressed sufficiently each limitation of claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The other claims and ground addressed in the Petition are deficient for the same reasons. Petitioner’s position regarding independent claim 26 is effectively identical to that of claim 1. Pet. 55 (“DeWaal therefore discloses each limitation of Claim 26 for the reasons discussed above with regard to Claim 1.”). Similarly, Petitioner’s obviousness grounds bring in references for limitations regarding buy-outs and partial buy-outs, not for the wager limitations. See id. at 55–64.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,721,439 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00166 · APJ Robert L Kinder · IPR · Institution
The Board denied institution for claims 1–10 because Petitioner did not show a reasonable likelihood that the Nadison 610, Johnson, and ISO11783 combination rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’017 patent would have had: a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and have at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Pet. 11. Patent Owner does not dispute this level of skill. See Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “[n]o terms need construction for this IPR” but “reserves the right to identify terms for construction as may become necessary in . . . ‘the District Court case’[] and to respond to any constructions that Patent Owner submits.” Pet. 20. Patent Owner “agrees with Petitioner that no terms require construction” and also “reserves the right to identify terms for construction as may become necessary in the parallel district court litigation . . . and to respond to any construction that Petitioner may submit.” Prelim. Resp. 15. On this record, we determine that no claim term requires an express construction for the purpose of determining whether to institute inter partes review. 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Petitioner that the ISO11783 requires a device to have a NAME field in order for the task controller to identify the device. See Ex. 1013, 12. However, we are not persuaded by Mr. Ault’s testimony or Petitioner’s arguments that the communication protocol must be defined in an implement profile such as the NAME field even if manufacturers use systems beyond those directly supported in the ISO11783. See Pet. 27–48; Ex. 1013, 28, 33; Ex. 1002 ¶¶ 64, 114–125, 162–167; Ex. 1014, 5, 9. The NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why any communication protocol would identify the function or place of an ECU in a network, which is the purpose of the NAME field. See Pet. 37–38 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”). Petitioner has not explained sufficiently otherwise. We further observe that Mr. Ault alludes that ISO11783 provides a standardized, and thus known, communication protocol that supports the use of proprietary communications simultaneous with standardized messages. Id. ¶ 64. Mr. Ault later surmises that “it would have been obvious to a POSITA to store proprietary message formats for manufacturers that use proprietary message format.” Id. ¶ 167. We observe that in paragraphs 63 and 64 of his declaration, Mr. Ault relies on Exhibit 1014, titled “An Electronic Communication Protocol for Agricultural Equipment,” for the proposition that ISO11783 “supports the use of proprietary communications simultaneous with standardized messages” and “[m]anufacturers are free to implement enhanced control and information systems beyond those directly supported in the standard.” Id. ¶ 64 (citing Ex. 1014, 7)7 (alteration in original). We understand this cited disclosure in Exhibit 1014 acknowledges that proprietary communications are beyond those directly supported in the ISO11783 and that enhanced control and information systems are required for proprietary communications. Id. Said another way, these statements are consistent with our understanding that ISO11783 does not, by default, teach proprietary communication protocols defined in the device description fields, e.g., NAME field. Ex. 1014, 7 (“ISO11783 does not provide a complete design that can be implemented without further considerations on agricultural equipment.”). That being the case, we agree with Patent Owner’s position that the ISO11783 does not itself “identify different proprietary formats (i.e., the communication protocol) used by a given implement from a stored collection of implement profiles.” Prelim. Resp. 21. 7 Petitioner cites to page 9, however, we use the stamped page numbers for the exhibit. Even assuming for the moment that proprietary message formats “indicate” communication protocols, Petitioner has still not explained sufficiently why a POSITA would store those proprietary message formats in the NAME field. As noted above, the NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why proprietary message formats would identify the function or place of an ECU in a network. See id.; see also Pet. 37 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”).” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,107,017 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00164 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would have been obvious over Nadison 610, Johnson, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Claim 1 requires that “a plurality of implement profiles on the server system, each of which is associated with a respective known farming implement, the implement profiles each defining a known manufacturer code, a known device class, a known version and a known communication protocol for the respective known farming implement associated therewith.” Ex. 1001, 25:46–52 (emphases added).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. at 28. Table A.1 labeled “DeviceObject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 28. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The testimony from Petitioner’s expert, Mr. Ault, is not persuasive in this regard. See Ex. 1002 ¶¶ 151–159. For example, in paragraph 152 of his declaration, he repeats the same citations of ISO11783 presented in the Petition. Ex. 1002 ¶ 152. Mr. Ault testifies that the POSITA would have understood that ISO11783 Part 10 directly teaches the POSITA to identify a device description object pool (a “communication protocol” in the language of the ’116 patent) using the NAME field (as WorkingSetMasterNAME) as well as other items such as a “Device Software Version” in table A-1. Ex. 1002 ¶ 152 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’116 patent would have had: a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and have at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Pet. 11. Patent Owner does not dispute this level of skill. See Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,164,116 - Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00158 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 would have been obvious over Nadison 610, Nadison 630, and ISO11783.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Table A.1 labeled “DeviceOject definition” lists attribute names in a far-left column with descriptions for each attribute name in a far-right column. Id. at 27. While Annex A provides several definitions for the DeviceObject, Petitioner has not explained persuasively how any of these fields is or includes a “communication protocol.” Indeed, Petitioner has not explained sufficiently how the ISO11783 teaches that a communication protocol is defined as part of the DeviceObject, device descriptions, or NAME field. As shown, Annex A does not discuss or mention a communication protocol for any of these definitions.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 156 (emphases added). Initially, we note that a citation to the entirety of ISO11783, Part 10 is hardly helpful. We decline to speculate on the specific disclosure the Petitioner relies upon in these 100 pages. Still, we observe that ISO11783 teaches that the NAME field describes the NAME of Working-set master, but does not describe a communication protocol. See Ex. 1013, 33. Similarly, the Device Software Version is described as “Software version indicating text;” not a communication protocol. Id. In other words, neither field includes a communication protocol.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and [] at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Additional education would compensate for less experience, and vice-versa. Pet. 11. Patent Owner accepts Petitioner’s level of skill at this stage. Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,126,937 - Intel Corporation v. 3d Surfaces, LLCInstitutedPTAB · Apr 19, 2023 · IPR2022-01591 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 10–20 because Petitioner showed a reasonable likelihood that claims 10–20 would have been obvious over Sfarti and Foley.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years work towards a masters or doctorate degree in these proceeding, Patent Owner “applies Petitioner’s definition.” Prelim. Resp. 10. We agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“On this record, we agree with Petitioner that “unit” does not connote any particular structure, and that the terms “tessellation unit,” “transform unit,” “lighting unit,” and “rendering unit” recite function without reciting sufficient structure for performing that function. Therefore, these terms should be construed as means plus function terms. “Construing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (en banc) (citation omitted). In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit requires “that the specification disclose an algorithm for performing the claimed function.” Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015). “A description of the function in words may disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011). “The law is clear that patent documents need not include subject matter that is known in the field of the invention and is in the prior art, for patents are written for persons experienced in the field of the invention.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001). Claim 10 recites “a transform unit that transforms the graphic objects into transformed objects.” Claim 15 recites a similar limitation. Claim 12 recites “said transform unit transforms the spatial coordinates of said graphic objects.” The specification discloses that the function of “transform[ing] the graphic objects into transformed objects” and “transform[ing] the spatial coordinates of said graphic objects” is performed by a graphics processing unit (GPU) including a dedicated processor programmed to execute the transform step of the disclosed microcode. Ex. 1001, 5:63–6:3; 7:10–15, 7:19–20, 12:49––52; Ex. 1003 ¶¶ 106–107. We construe “transform unit” as a means plus function limitation with the function of transforming graphic objects into transformed objects (claims 10 and 15), or the function of transforming the spatial coordinates of said graphic objects (claim 12), and with the corresponding structure of a GPU including a dedicated processor programmed to execute the transform step of the microcode disclosed in the specification. b) Tessellation unit Claim 10 recites “a tessellation unit for tessellating the transformed objects.” Claims 11 and 15 recite a similar limitation. The specification discloses that the function of “tessellating the transformed objects” is performed by a GPU that includes a dedicated processor coupled between the transform unit and a lighting unit, where the dedicated processor is programmed to execute the tessellating steps of the disclosed microcode. Ex. 1001, 6:4–59, 7:10–15, 7:20–24, 12:49–52; Ex. 1003 ¶¶ 108–109. We construe “tessellation unit” as a means plus function limitation with the function of tessellating the transformed objects and with the corresponding structure of a GPU including a dedicated processor coupled between the programmed to execute the tessellating steps of the disclosed microcode. c) Lighting unit Claim 10 recites a “lighting unit comprising means for lighting triangles resulting from said tessellation unit.” Claim 13 recites “a lighting unit . . . for lighting the tessellated transformed objects.” Claim 15 recites “lighting vertices of triangles resultant from said tessellating using said lighting unit.” The specification discloses that the function of “lighting triangles resulting from said tessellation unit,” “lighting the tessellated transformed objects,” and “lighting vertices of triangles resultant from said tessellating” is performed by a GPU that includes a dedicated processor programmed to execute code to light the vertices of the triangles. Ex. 1001, 6:60–65, 7:10–15, 7:24–26, 12:49–52; Ex. 1003 ¶¶ 110–111. We construe “lighting unit” as a means plus function limitation with the function of lighting triangles resulting from said tessellation unit (claim 10), lighting the tessellated transformed objects (claim 13), or lighting vertices of triangles resultant from said tessellating (claim 15), and with the corresponding structure of a GPU that includes a dedicated processor programmed to execute code to light the tessellated objects. d) Rendering unit Claim 14 recites “a rendering unit operatively coupled to the lighting unit for rendering the lighted, tessellated, transformed objects.” The specification discloses that the function of rendering the lighted, tessellated, transformed objects is performed by a GPU that includes a dedicated processor programmed to execute the rendering steps of the disclosed microcode. Ex. 1001, 6:65–7:3, 7:10–15, 7:24–26, 12:49–52; Ex. 1003 ¶¶ 112–113. We construe “rendering unit” as a means plus function objects, and with the corresponding structure of a GPU that includes a dedicated processor to execute the rendering steps of the disclosed microcode.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“e) Remaining claim terms No other terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We agree with Petitioner. Pages 511–527 of Foley were previously presented to the Office. See Ex. 1001, code (56). In contrast, Petitioner relies on pages 17, 279–281, 508, 521, 721, 736–737, 807, 855, 866–871, 873–879, 888, and 890–892 of Foley. See Pet. 30–77. Out of all of the pages of Foley cited in the Petition, only one, page 521, was previously presented to the Office. On the record before us, there is no indication that any of the remaining pages of Foley cited in the Petition were presented to, or considered by, the Office. Notably, the IDS disclosure cited just 17 pages out of Foley’s over 1200 pages of content, but did not cite the pages that teach the feature that the Examiner found was patentable over the prior art. Compare Ex. 1017, at 177 (In the statement of allowable subject matter, the Examiner concluded that “the prior [art] fails to teach a tessellate unit coupled between the transform unit and the lighting unit.”), with Ex. 1007, at 807 (Foley teaches that “tessellation should occur after transformation into a coordinate system in which screen size can be determined” for the benefits of “enabl[ing] tessellation size to be determined adaptively, and limit[ing] the amount of data that is transformed.”); see also id. at 866–877. Thus, the 2 U.S. Patent No. 7,532,213, which was reissued as the ’534 patent at issue here. See Ex. 1001, code (64). previously presented to the Office. Patent Owner contends that even if Petitioner cites to portions of Foley not considered by the Office, the Examiner considered other references that are cumulative to and substantially the same as the portions of Foley cited by Petitioner. Prelim. Resp. 22. In particular, Patent Owner contends that the ’534 patent recognizes that pipeline graphics architecture was well-known at the time of invention, and that other references that teach pipeline graphics architecture were considered by the Office. Prelim. Resp. 23–24 (citing Ex. 1001, Fig. 2, 2:42–58; Ex. 1032, Fig. 2b, 5:18–22; Ex. 1033, Fig. 1A, 6:28–31, 21:1–3). We disagree with Patent Owner. Foley’s disclosure of a pipeline graphics architecture that teaches the benefits of employing dedicated processors for tessellating after transforming is explicit and, so far as we can tell from the record presented, is not found in any reference previously cited to the Office. See Ex. 1007, 807, 866–877. Thus, the same or substantially the same art was not previously presented to the Office.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - Intel Corporation v. 3d Surfaces, LLCInstitutedPTAB · Apr 19, 2023 · IPR2022-01589 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR on claims 1–4, 9–11, 17, and 18 on all grounds, finding a reasonable likelihood that claim 1 would be shown obvious over Sfarti and Foley.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“of the ’299 patent considered the same argument presented in the Petition’s obviousness combination of Sfarti and Foley, and correspondingly “determined that it would not have been obvious to modify the teachings of [Sfarti] to implement the ordered steps in a GPU” based on Foley. Prelim. Resp. 26–27 (citing Ex. 1002, 64–69, 112–114, 172–180). Specifically, we disagree that the Examiner’s double patenting rejection presents the same argument as the Petition’s obviousness combination. The Examiner stated “it would have been obvious to one of ordinary skill to substitute the computer readable medium of claim 21 [of the ’501 patent] with the graphics processing unit of [original claim 1].” Ex. 1002, 67. The Examiner, in making this obviousness-type double patenting rejection3, did not find a prior art reference that showed a graphics processing unit with separately dedicated processors. Rather, the Examiner attempted to use the graphics processing unit recited in original claim 1 as prior art against itself. The applicant successfully argued against the Examiner’s improper use of the pending claims as prior art by stating that the ’501 patent did not disclose the graphics processing unit incorporating the tessellation unit as claimed. See id. at 138, 175.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“that upon institution Dell will not pursue any grounds in the [District Court Litigation] that were raised or reasonably could have been raised in its IPR petition for the challenged claims.” Reply 1 (citing IPR2023-00004, Paper 134). More precisely, however, Dell has actually stated in IPR2023-00004 that Dell “will stipulate, consistent with Sotera Wireless, that if this IPR [i.e., IPR2023-00004] is instituted, [Dell] will not pursue in the parallel district court proceeding any grounds raised or that reasonably could have been raised in this IPR for the challenged claims.” IPR2023-00004, Paper 13, 1 (emphases added). Contemporaneously with the present Decision, we are issuing a decision in IPR2023-00004 instituting review of the ’299 patent on the same two grounds being instituted here, and we also are joining the two proceedings together for purposes of trial. Thus, Dell’s stipulation has taken effect.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we agree with Petitioner that a person of ordinary skill would have implemented the steps of transforming, tessellating, lighting, and rendering as taught by Sfarti in a graphics pipeline of dedicated processors as taught by Foley to yield the benefits of providing more processing power than a single CPU can provide, and significantly improving performance speed. See Pet. 31–38; Ex. 1003 ¶¶ 132–147. On this record we agree with Petitioner that a person of ordinary skill in the art would have performed tessellating after transforming using the graphics pipeline of dedicated processors of Foley to yield the benefits of adaptively determining tessellation size and limiting the amount of data that needs to be transformed as taught by Foley.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’299 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner “applies Petitioner’s definition” in the Preliminary Response. Prelim. Resp. 9.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,245,299 - Revcontent, LLC v. Integrated Advertising Labs, LLCInstitution deniedPTAB · Mar 22, 2023 · IPR2022-01511 · APJ Ken B Barrett · IPR · Institution
Institution was denied for claims 1–9 because the Petition did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’121 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner has the better claim construction position. The “non-” in “non-sponsored posts” indicates that the phrase means “not” or “other than” “sponsored posts.” See Ex. 3001 (https://www.merriam-webster.com/ dictionary/non- (accessed March 21, 2023) (defining “non-” as “not: other than: reverse of: absence of”)). In terms of Petitioner’s proposed construction for “sponsored posts,” “non-sponsored posts” are content not from an advertiser. Construing the phrases in terms of the content source rather than whether it is “regular” content, as Petitioner implies, is consistent with the Specification’s description of Figure 6. See Ex. 1001, 13:44–55. The Specification distinguishes post types based on source—posts by members of the forum and press release posts from the advertisers. See id. On this record and for purposes of this decision, we determine that “non-sponsored posts” means content not from an advertiser.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s contentions are based in large part on the assertion that “[Koeppel’s] provider content represents the ‘non-sponsored posts,’ e.g., the regular content provided on the site.” Id. at 35 (citing Ex. 1003 ¶¶ 125– 126). As discussed above in the claim construction section, we do not adopt Petitioner’s implied claim construction position, and construe “non-sponsored posts” as content not from an advertiser, rather than simply regular content provided on the site. Both Koeppel references describe the “provider” as one that markets goods and services. See, e.g., Ex. 1005 (Koeppel), 2:34–36 (“Providers associate the users ‘browsing’ these Web pages as potential consumers for the products and services they provide.”); Ex. 1006 (Koeppel-II), 9:46–47 (“The provider governing the Web server determines the types of content it wishes to market.”); see also Prelim. Resp. 26–27 (noting the Petition at page 35, in quoting Koeppel, utilizes ellipses to omit the explanation that the “content selected by a provider” “[m]ay represent alternate products or renderings of existing products or services offered by the provider” (Ex. 1005, 8:41–45)). Figure 4A is consistent with this understanding by depicting Capital One credit card marketing information in the boxes labeled 410, 420, and 425. See Ex. 1006, 9:60–65 (Koeppel-II describing elements 410, 420, and 425 as offers for credit cards offered by “the provider”). Thus, the provider content in Figure 4A—that which Petitioner characterizes as “regular content”—is marketing content, and Petitioner has not explained adequately how that is not content from an advertiser, i.e., “non-sponsored posts.” Petitioner’s contention that elements 420 and 425 are sponsored posts and element 410 is a non-sponsored post also is based on the discussion in Koeppel-II of third party advertising fees. See Pet. 40 (citing Ex. 1006, 22:7–12; Ex. 1003 ¶¶ 144–147); see also id. at 36 (addressing the preamble). Koeppel-II utilizes windows 420 and 425 in Figure 4A as examples of different ad formats for determining how much to charge third party advertisers. Ex. 1006, 22:5–14 (“[The] fee may be altered based on whether the third party content was fully in-view or partially in-view. . . . Assume for purposes of this example that windows 420 and 425 are advertisement content provided by a third party entity 180.”). Koeppel-II is not distinguishing third party ads and non-sponsored content, as Petitioner implies. Pet. 36–37, 39–40; cf. id. at 35 (contending that “Koeppel discloses that ‘sponsored posts,’ or information from an advertiser, is included with the non-sponsored posts” but only identifying a sponsored post (in the form of a third party banner ad), and not identifying a non-sponsored post). Rather, Koeppel-II is distinguishing the amount of content viewable in the two windows for fee-setting purposes. Ex. 1006, 22:8–9 (“Window 425 is in partial view, while window 420 is in full view.”). Even if the Koeppel references were deemed to disclose third party advertisements inserted alongside Capital One’s “regular” marketing content, the pre-existing nature of that “regular” marketing content does not convert it into non-sponsored posts. We determine that Petitioner has not adequately explained how Koeppel, Koeppel-II, or the combination thereof discloses or suggests displaying a sponsored post among non-sponsored posts on a web page. Accordingly, Petitioner has not demonstrated a reasonable likelihood in” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“by Google and were filed within months of each other, and contends that a person of ordinary skill in the art “reviewing Haveliwala would have naturally looked to other work done by Google engineers, such as Bharat, for further guidance and insight as to the work Google was doing around personalized Web advertising.” Pet. 76 (citing Ex. 1003 ¶ 259). Petitioner’s reasoning is too generalized. The existence of a common assignee or that a person of ordinary skill in the art might look to another reference in the same broadly characterized field does not provide adequate reasoning as to why such a person would combine the specific relied-on teachings of the two references so as to arrive at the claimed subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine elements in the way the claimed new invention does.”).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,147,121 - PTAB · Mar 3, 2023 · IPR2022-01359 · APJ Michael A Valek · IPR · Institution
The Board instituted inter partes review of claims 1, 3, 4, and 6–15 on all asserted obviousness grounds based on Park, Kim, Williams, and, for claims 11–13, Hileman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETION UNDER 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise discretion to deny institution under Fintiv6 “due to the advanced state of the parallel District 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective after the filing of the applications to which the ’191 patent claims priority. Therefore, we apply the pre-AIA version of the statute. 2 WO 01/11523 A1, published Feb. 15, 2001 (Ex. 1005) (“Park”). 3 KR2003-0085802, published Nov. 7, 2003 (Ex. 1007). The Petition relies on a certified translation of this Korean language reference (Ex. 1006), which we refer to herein as “Kim.” 4 WO 2008/052013 A2, published May 2, 2008 (Ex. 1008) (“Williams”). 5 US 2003/0040944 A1, published Feb. 27, 2003 (Ex. 1009) (“Hileman”). 6 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). Court proceeding.” See Prelim. Resp. 4–15. Petitioner contends that the Fintiv factors do not favor discretionary denial here. See Pet. 71–74. After considering the parties’ arguments and the circumstances of this case, we decline to exercise discretion to deny institution under 35 U.S.C. § 314(a). In particular, Petitioner has stipulated that if inter partes review is instituted it will not pursue the invalidity grounds raised in the Petition or any other ground that reasonably could have been raised in the Delaware litigation. Ex. 1033, 1. The Director has provided guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1013, 3, 7.7 That guidance applies here.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner’s argument is not persuasive. Even assuming the Examiner considered the particular disclosures Patent Owner cites in Angert, Petitioner has sufficiently shown that Park and Kim provide additional teachings that are material to the challenged claims. For example, the Petition relies on Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed of the delivery of their order” that they can “interactively view, in real-time.” See, e.g., Pet. 18, 34–35 (quoting Ex. 1005, 4:27–32, 48:18–20). Moreover, the Petition relies on Kim’s teaching that in addition to providing images of the delivery, a delivery agent can utilize a digital camera in mobile communication terminal to send images of the product to the customer so they “can confirm whether the product ordered is identical to the product being delivered.” Id. at 19 (citing Ex. 1006, 1–2). As explained in our analysis of Ground 1 below, such teachings are material to Petitioner’s patentability challenges. We see no corollary to these teachings in Angert nor does Patent Owner otherwise identify any similar teachings or arguments the Examiner previously considered. See generally Prelim. Resp. 44–46. For these reasons, the Petition does not present the same or substantially the same art or arguments as that previously presented to the Office. Because the first part of the Advanced Bionics framework has not been met, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s showing is sufficient to establish a reasonable likelihood that it will prevail in demonstrating that claims 1 and 14 are obvious over Park, Kim, and Williams. Patent Owner’s arguments against institution in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) in August 2009 (the earliest alleged priority date) would have been someone knowledgeable and familiar with the electronic commerce arts that are pertinent to the ’191 patent. That person would have 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. Lack of work experience can be remedied by additional education, and vice versa. Pet. 13 (citing Ex. 1003 ¶ 24). Patent Owner offers a similar description of a POSITA. Prelim. Resp. 19. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision. Moreover, we do not perceive any meaningful difference between the parties’ respective descriptions of the level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,202,191 - PTAB · Mar 3, 2023 · IPR2022-01358 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 12, 14, 18, 19, and 21–28 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“After considering the parties’ arguments and the circumstances of this case, we decline to exercise discretion to deny institution under 35 U.S.C. § 314(a). In particular, Petitioner has stipulated that if inter partes review is instituted it will not pursue the invalidity grounds raised in the Petition or any other ground that reasonably could have been raised in the Delaware litigation. Ex. 1033, 1. The Director has provided guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1013, 3, 7.8 That guidance applies here.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner’s argument is not persuasive. Even assuming the Examiner considered the particular disclosures Patent Owner cites in Angert, Petitioner has sufficiently shown that Park and Kim provide additional teachings that are material to the challenged claims. For example, the Petition relies on Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed of the delivery of their order” that they can “interactively view, in real-time.” See, e.g., Pet. 18, 34–35 (quoting Ex. 1005, 4:27–32, 48:18–20). Moreover, the Petition relies on Kim’s teaching that in addition to providing images of the delivery, a delivery agent can utilize a digital camera in mobile communication terminal to send images of the product to the customer so they “can confirm whether the product ordered is identical to the product being delivered.” Id. at 19 (citing Ex. 1006, 1–2). As explained in our analysis of Ground 1 below, such teachings are material to Petitioner’s patentability challenges. We see no corollary to these teachings in Angert nor does Patent Owner otherwise identify any similar teachings or arguments the Examiner previously considered. See generally Prelim. Resp. 44–46. For these reasons, the Petition does not present the same or substantially the same art or arguments as that previously presented to the Office. Because the first part of the Advanced Bionics framework has not been met, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On the current record, we disagree with Patent Owner and find that Petitioner has articulated a sufficient rationale for combining the references. Petitioner asserts, supported by the testimony of its declarant and teachings in Park and Kim, that the combination would “enhance the reliability of the delivery” and “increase customer satisfaction” by providing a “a sensory cue of a visual comparison between the product to be delivered and the desired product.” See Pet. 20–23 (citing exhibits). Petitioner also explains that the problem Kim’s product confirmation functionality is intended to address is “particularly acute” for perishable items such as food, which Park teaches its system is designed to deliver. Id. at 21. Petitioner acknowledges that adding Kim’s functionality would add time to the delivery process, but argues that “[a]ny additional time . . . could be absorbed into the desired hour delivery time of Park” or “alternatively, a POSITA would have recognized that the confirmation teachings of Kim could be provided as an option to the user with an advisory message to the user that such confirmation may add time to his or her order.” Id. at 23–24. Petitioner’s rationale is reasonable on the current record. While Park is focused on providing fast delivery, it would seem that a POSITA would also understand that delivering the wrong product is likely to cause an even greater delay then the additional time necessary to for the delivery agent to send a product image and receive customer confirmation. See Pet. 23 (urging that incorporating Kim’s functionality “would reduce the likelihood in Park that the delivery agent made an incorrect delivery, thereby saving resources in the Park system (e.g., by preventing the delivery of goods that would need to be returned and/or refunded”) (citing Ex. 1003 ¶ 56; Ex. 1021, 3:4–53). Moreover, Petitioner’s argument that the product confirmation functionality could be presented as an option so as to balance the competing desire for fast delivery would seem to be a reasonable exercise of a POSITA’s ordinary creativity. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill in also a person of ordinary creativity, not an automaton.”).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 13–14 (citing Ex. 1003 ¶ 24). Patent Owner offers a similar description of a POSITA. Prelim. Resp. 18–19. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision. Moreover, we do not perceive any meaningful difference between the parties’ respective descriptions of the level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,115,067 - PTAB · Mar 3, 2023 · IPR2022-01357 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6, 9, 10, 14–17, 21, 22, and 24–26 based on a reasonable likelihood that claims 1, 24, and 26 are obvious over Park and Kim.
RulingsInstitution decision- 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 and two years of working with platforms for the acquisition and delivery of products.” Prelim. Resp. 18. At this stage, we discern no meaningful difference between the levels of skill in the art espoused by the parties, given that working in the field of electronic commerce necessarily entails working with platforms for the acquisition and delivery of products. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 4
- Prior constructionPrior construction adoptedDecided for patent owner
“Notably, however, the district court did not adopt Consumeron’s proposed construction for this term. Instead, in a claim construction order dated January 18, 2023,6 the district court construed “mobile delivery agent system” to mean “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. In doing so, the district court expressly rejected Consumeron’s argument that an MDAS requires a “mobile computing device” and “the use of the internet.” Ex. 1035, 17. At this stage, we see no reason to depart from the district court’s careful and comprehensive analysis of this term. See id. at 13–17. Thus, for purposes of this proceeding, we adopt the district court’s construction of “mobile delivery agent system.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree with Consumeron that Instacart fails to articulate a sufficient reason for combining Park and Kim. Instacart asserts, with support from its declarant, that combining the teachings of Park and Kim would “enhance the reliability of the delivery” and “increase customer satisfaction” by “provid[ing] the sensory cue of a visual comparison between the product to be delivered and the desired product.” See Pet. 23 (citing Ex. 1003 ¶¶ 55; Ex. 1006, 1). Instacart also explains that the problem Kim’s product confirmation functionality is intended to address is “particularly acute” for perishable food items, which Park’s system is designed to deliver. Id. at 22 (citing Ex. 1003 ¶ 54; Ex. 1005, 1:11–21; Ex. 1006, 1–2; Ex. 1014, 2; Ex. 1022, 2–3). And although adding Kim’s functionality would add time to Park’s delivery process, Instacart notes that “[a]ny additional time . . . could be absorbed into the desired hour delivery time of Park” or “alternatively, a POSITA would have recognized that the confirmation teachings of Kim could be provided as an option to the user with an advisory message to the user that such confirmation may add time to his or her order.” Id. at 25 (citing Ex. 1003 ¶ 57). We find Instacart’s rationale for the asserted combination to be reasonable on the current record. Although Park is focused on providing fast delivery, one skilled in the art would have understood that delivery of an unacceptable product to the customer is of greater concern in terms of “cost and efficiency” than any additional time needed for the delivery agent to receive customer confirmation of an acceptable product. See, e.g., Ex. 1003 ¶ 56.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We have considered the parties’ arguments and determine that the circumstances of this case do not warrant discretionary denial of the Petition. In particular, because Instacart has submitted a Sotera stipulation (Ex. 1033), we will not discretionarily deny institution under § 314(a) in view of the parallel district court action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7 (addressing impact of Sotera stipulation on the exercise of § 314(a) discretion). In addition, contrary to Consumeron’s assertion, neither Park nor Kim are sufficiently cumulative of Angert to warrant discretionary denial under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 2020 WL 740292, *3–4 (PTAB Feb. 13, 2020) (precedential). That is because Park and Kim provide additional material teachings not disclosed by Angert that include, for example, Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed” of their order that they can “interactively view, in real-time” (Ex. 1005, 4:27–32, 48:18–20) and Kim’s teaching that a delivery agent can utilize a digital camera in a mobile communication terminal to send images to the customer so they “can confirm” that the product ordered is identical to the product being delivered (Ex. 1006, 1–2). Consumeron does not identify any similar teachings in Angert. See Prelim. Resp. 46–47. Thus, we decline to exercise our discretion under § 325(d).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,628,835
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.