- United Services Automobile Association v. Auto Telematics Ltd.All claims unpatentablePTAB · Jul 15, 2025 · IPR2024-00779 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–27 are unpatentable as obvious over the listed combinations of Curry, Rabu, and Katayama, with additional references for certain claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- BurdenFwd all claims unpatentableUnpatentable
“Based on the evidence of record and Petitioner’s arguments, Petitioner has shown, by a preponderance of the evidence, that claims 1–27 of the ’878 patent are unpatentable. In summary,” slip op. at 37
Patent outcomesUS 10,198,878 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,198,878 - Askeladden L.L.C. v. Intercurrency Software LLCAll claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00377 · APJ Neil T Powell · IPR · Final written decision
Claims 19–36 are unpatentable under § 103 over the listed combinations of Calo, Rude, Sellberg or Szoc, with Davidowitz or Kedia for dependent claims.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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))). The minor differences between the parties’ proposed constructions of “prevailing exchange rate” do not affect the outcome of this proceeding, as Petitioner has carried its burden of demonstrating unpatentability of the challenged claims by a preponderance of the evidence under Petitioner’s proposed construction or Patent Owner’s proposed construction.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “that a [person of ordinary skill in the art] for the ’107 Patent in the relevant field in 2007 would have a bachelor’s degree in computer science or a related study and two years of experience with financial trading systems or an equivalent combination of education and experience.” Pet. 29 (citing Ex. 1002 ¶¶ 71–74). Patent Owner does not propose an alternative level of skill. See generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal, reiterated by the proposal of Petitioner’s expert, which comports with the teachings of the ’107 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Additionally, we observe Mr. Reid testifies that “Sellberg also describes benefits of adding currency exchange features to a trading system, such as increasing liquidity in the system.” Ex. 1002 ¶ 182 (citing Ex. 1019 ¶ 12). Mr. Reid further explains that “the skilled person would have known that adding currency exchange to a trading system would be a desired improvement.” Id. After reviewing the record, we determine that Petitioner has set forth a sufficient rationale for combining Sellberg’s teachings with Calo’s system. Sellberg discloses a trading system that utilizes an updated exchange rate that is repeatedly and automatically received from the currency market or the market maker, “and the last received updated exchange rate between the different currency and the specified currency at the time of receiving the order is used as the received current exchange rate.” Ex. 1019 ¶ 24. Mr. Reid has explained, with sufficient reasoning and citation to the record, how and why a POSITA would have added Sellberg’s currency exchange features to Calo’s trading system. Ex. 1002 ¶ 182. Thus, based on our review of the complete record, including the testimony of Mr. Reid, we are persuaded that the combination of Calo, Rude, and Sellberg discloses the disputed limitation for the reasons given by Petitioner.” slip op. at 33
Patent outcomesUS 10,062,107 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,062,107 - Askeladden L.L.C. v. Intercurrency Software LLCAll claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00376 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable under §103 over the stated combinations of Calo, Rude, and other references.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that for the term “prevailing exchange rate,” as recited in claims 1, 2, 6, 9, and 10, “[t]he term prevailing commonly means ‘current.’” Pet. 28–29. According to Petitioner, this is consistent with the ’107 patent. Id. Petitioner asserts that “[t]he only rates the Specification describes using are a ‘forward’ rate or a ‘spot’ rate – in other words, a selected current exchange rate.” Id. at 29 (citing Ex. 1002 ¶ 34). Petitioner thus asserts that “‘prevailing exchange rate’ means ‘a selected current exchange rate that is not an FOREX average exchange rate.’” Id. Petitioner further contends that the term “prevailing currency exchange rate,” as recited in claims 2 and 9–11, “is the same as the prevailing exchange rate but limited specifically to currencies.” Id. Patent Owner takes the position that “[f]or purposes of the present IPR, Patent Owner agrees with Petitioner’s proposed definition for both of the terms ‘prevailing exchange rate’ and ‘prevailing currency exchange rate’ in related IPR2024-00375. Namely, ‘a selected current exchange rate.’” PO Resp. 4. For the remaining terms, Patent Owner “submits that they should be given their ordinary and customary meaning as understood by one of ordinary skill in the art in the field of electronic trading as of the date of the invention.” Id. at 5. 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))). The minor differences between the parties’ proposed constructions of “prevailing exchange rate” and “prevailing currency exchange rate” do not affect the outcome of this proceeding, as Petitioner has carried its burden of demonstrating unpatentability of the challenged claims by a preponderance of the evidence under Petitioner’s proposed constructions or Patent Owner’s proposed constructions.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “that a [person of ordinary skill in the art] for the ’107 Patent in the relevant field in 2007 would have a bachelor’s degree in computer science or a related study and two years of experience with financial trading systems or an equivalent combination of education and experience.” Pet. 30 (citing Ex. 1002 ¶¶ 71–74). Patent Owner does not propose an alternative level of skill. See generally PO Resp. For purposes of this Decision, we adopt the proposal of Petitioner’s expert, which comports with the teachings of the ’107 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“After review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of evidence that claim 1 would have been obvious over the combination of Calo, Rude, and Sellberg. 2. Claims 2–7, 9–13, and 16–18 For claims 2–7, 9–13, and 16–18, Petitioner relies on the same or similar arguments and evidence discussed above for the combination of Calo, Rude, and Sellberg. See Pet. 45, 66–71. Petitioner further directs us to the claim chart on pages 61 through 77 of the Petition. Id. at 45. Patent Owner relies on the same arguments for claims 2–7, 9–13, and 16–18 that we have discussed for independent claim 1. PO Resp. 10. Based on the reasoning and evidence provided in the Petition (see Pet.” slip op. at 38
Patent outcomesUS 10,062,107 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,062,107 - Askeladden L.L.C. v. Intercurrency Software LLCAll claims unpatentablePTAB · Jul 1, 2025 · IPR2024-00375 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–12 are unpatentable under §103 over the listed combinations of Calo, Rude, Sellberg or Szoc, with Davidowitz or Kedia for dependent claims.
RulingsFinal written decision- BurdenDecided for petitioner
“Rule 104(b) provides, in relevant part, that the Petition must contain an “[i]dentification of challenge” and “[p]rovide a statement of the precise relief requested for each claim challenged” that includes: (4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and (5) The exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge. 37 C.F.R. § 42.104(b)(4)–(5) (2023) (emphasis added). Rule 22(a)(2) requires a petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2) (2023). Based on the complete record, we determine that the Petition satisfies our rules and do not agree with Patent Owner that the Petition is deficient in this regard. For example, with respect to the obviousness challenge based on Calo, Rude, and Sellberg, the Petition provides a discussion on pages 41–43 with accompanying claim charts identifying where the prior art references disclose each limitation of the challenged claims (Pet. 51–75), and further cites to the supporting testimony of Mr. Reid for the motivation to combine the references (see, e.g., Ex. 1002 ¶ 338). Pet. 43, 51–75. In at least this way, we find that the Petition provides sufficient detailed explanation of the evidence and analysis to satisfy our rules.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that for the term “prevailing exchange rate,” as recited in claims 1, 4, and 6, “[t]he term prevailing commonly means ‘current.’” Pet. 27. According to Petitioner, this is consistent with the ’863 patent. Id. Petitioner asserts that “[t]he only rates the Specification describes using are a ‘forward’ rate or a ‘spot’ rate – in other words, a selected current exchange rate.” Id. (citing Ex. 1002 ¶ 200). Petitioner thus asserts that “‘prevailing exchange rate’ means ‘a selected current exchange rate.’” Id. Petitioner further contends that the term “prevailing currency exchange rate,” as recited in claims 1, 2, 3, 6, 7, 8 and 11, “should be given the same meaning as ‘prevailing exchange rate.’” Id. Patent Owner does not contest Petitioner’s proposed constructions. PO Resp. 3 (“For purposes of the present IPR, Patent Owner agrees with Petitioner’s proposed definition of the terms ‘prevailing exchange rate’ and ‘prevailing currency exchange rate’ means ‘a selected current exchange rate.’”). For the remaining terms, Patent Owner “submits that they should be given their ordinary and customary meaning as understood by one of ordinary skill in the art in the field of electronic trading as of the date of the invention.” Id. 3–4. 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 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “that a [person of ordinary skill in the art] for the ’863 Patent in the relevant field in 2007 would have a bachelor’s degree in computer science or a related study and two years of experience with financial trading systems or an equivalent combination of education and experience.” Pet. 27–28 (citing Ex. 1002 ¶¶ 60–61). Patent Owner does not propose an alternative level of skill. See, generally PO Resp. For purposes of this Decision, we adopt the proposal of Petitioner’s expert, which comports with the teachings of the ’863 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Additionally, we observe Mr. Reid testifies that “Sellberg also describes benefits of adding currency exchange features to a trading system, such as increasing liquidity in the system.” Ex. 1002 ¶ 162 (citing Ex. 1019 12). Mr. Reid further explains that “the skilled person would have known that adding currency exchange to a trading system would be a desired improvement.” Id. After reviewing the record, we determine that Petitioner has set forth a sufficient rationale for combining Sellberg’s teachings with Calo and Rude. It is undisputed on the record before us that Sellberg discloses a trading system that utilizes an updated exchange rate that is repeatedly and automatically received from the currency market or the market maker, “and the last received updated exchange rate between the different currency and the specified currency at the time of receiving the order is used as the received current exchange rate.” Ex. 1019 ¶ 24. Moreover, Mr. Reid has explained, with sufficient reasoning and citation to the record, how and why a POSITA would have added Sellberg’s currency exchange features to a trading system. Ex. 1002 ¶ 162. Thus, based on our review of the complete record, including the testimony of Mr. Reid, we are persuaded that the combination of Calo, Rude, and Sellberg discloses this limitation.” slip op. at 36
Patent outcomesUS 10,776,863 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,776,863 - Askeladden L.L.C. v. Intercurrency Software LLCAll claims unpatentablePTAB · Jul 1, 2025 · IPR2024-00378 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–15 are unpatentable under § 103 over the Calo, Rude, and Sellberg or Szoc combinations, with Davidowitz added for claims 3, 10, 11, and 14.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner does not contest Petitioner’s proposed constructions. PO Resp. 4 (“For purposes of the present IPR, Patent Owner agrees with Petitioner’s proposed definition of the term[s] ‘prevailing exchange rate’ [and prevailing currency exchange rate] means ‘a selected current exchange rate.’”). For the remaining terms, Patent Owner “submits that they should be given their ordinary and customary meaning as understood by one of ordinary skill in the art in the field of electronic trading as of the date of the invention.” Id. 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 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “that a [person of ordinary skill in the art] for the ’930 Patent in the relevant field in 2007 would have a bachelor’s degree in computer science or a related study and two years of experience with financial trading systems or an equivalent combination of education and experience.” Pet. 27 (citing Ex. 1002 ¶¶ 73–74). Patent Owner does not propose an alternative level of skill. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal, reiterated by the proposal of Petitioner’s expert, which comports with the teachings of the ’930 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“After reviewing the record, we determine that Petitioner has set forth a sufficient rationale for combining Sellberg’s teachings with Calo’s system. Sellberg discloses a trading system that utilizes an updated exchange rate that is repeatedly and automatically received from the currency market or the market maker, “and the last received updated exchange rate between the different currency and the specified currency at the time of receiving the order is used as the received current exchange rate.” Ex. 1019 ¶ 24. Mr. Reid has explained, with sufficient reasoning and citation to the record, how and why a POSITA would have added Sellberg’s currency exchange features to Calo’s trading system. Ex. 1002 ¶ 178. Thus, based on our review of the complete record, including the testimony of Mr. Reid, we are persuaded that the combination of Calo, Rude, and Sellberg discloses this limitation for the reasons given by Petitioner.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“transaction immediately after the equity transaction is executed to lock in an exchange rate as close as possible to that previewed.” Id. ¶ 69 (emphasis added). In this way, we find Calo teaches that the exchange rate may be locked in (e.g., a real-time conversion rate that is obtained right before the transaction takes place) and that the currency exchange occurs immediately after the equity transaction to mitigate uncertainty in currency changes in another time. See Ex. 1005 ¶¶ 30, 69.” slip op. at 31
Patent outcomesUS 11,449,930 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,449,930 - Sram, LLC v. Fox Factory, Inc.All claims unpatentablePTAB · Jun 6, 2025 · IPR2024-00216 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–9, 11–15, and 19 are unpatentable, including by anticipation over Gartner and Nakaya and obviousness over Gartner and Kodama and Nakaya and Kodama.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’223 patent “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 5–6, n.1. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. Based on the complete record, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner discerns, claim 1 does not recite “dampening only at the end portion of a compression stroke.” Rather, claim 1 expressly requires “a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion of the chamber during a compression stroke of the damper[.]” Ex. 1001, 7:44–47 (emphasis added). In this way, claim 1 contemplates that the bottom out cup operates “during a compression stroke of the damper,” rather than only at the end portion of a compression stroke or only near an end of a compression stroke. Similarly, independent claims 11 and 19 do not require that the bottom out cup provide damping only at the end or near the end of a compression stroke. See Ex. 1001, 8:8–23, 8:61–9:5. Claim 11 recites “a bottom out cup in fluid communication with the damper chamber” and “an adjustable fluid flow path formed in the cup, the flow path providing fluid communication between the cup and the primary compression chamber in a compression stroke of the damper.” Id. (emphasis added). Claim 19 also recites “in a compression stroke of the damper” and does not limit damping to the end, or near the end of a compression stroke. See id. at 8:61–9:5 (“in to the compression chamber at a first rate with the valve in a first position and at a second rate with the valve in a second position where the first rate is greater than the second rate and the valve includes an adjuster accessible from an exterior of the shock absorber.”) (emphasis added). The ’223 patent as a whole also does not describe the bottom out cup as damping or providing dampening only at the end or near the end of the compression stroke, but more broadly as during the compression stroke. With reference to Figure 3A, the ’223 patent discloses that bottom out piston 250 enters “the bottom out cup 275 during a compression stroke of the shock absorber.” Ex. 1001, 3:38–50 (emphasis added). Additionally, we observe that the ’223 patent discloses “[a]s the piston completely engages the cup 275, dampening is increased.” Id. at 3:64–65 (emphasis added). We understand this to mean that bottom out dampening occurs at the end of the compression stroke, but may also occur “during” the compression stroke and “increase” as the piston completely engages the bottom out cup.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. code (57) (emphases added). Though Gartner does not explicitly employ the term “bottom out cup,” it is not lost upon us that the internal shock absorber, e.g., shock absorber 400, functions during/in a compression stroke (e.g., after the initial portion of the compression stroke), to provide dampening while protecting from bottoming out. Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
Patent outcomesUS 8,550,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,550,223 - PTAB · May 29, 2025 · IPR2025-00091 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted challenges, finding a reasonable likelihood of success on anticipation by the Renegade Manual.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“cited by Petitioner fall under the definition of “hearsay” set forth in Fed. R. Evid. 801(c). However, based on the present preliminary record, we further determine that the residual exception to hearsay applies here. That is, the Internet forum posts are “supported by sufficient guarantees of trustworthiness . . . considering the totality of circumstances under which [they were] made,” and they are “more probative on the point for which [they are] offered than any other evidence that [Petitioner] can obtain through reasonable efforts.” Fed. R. Evid. 807(a). The sufficient guarantees of trustworthiness include: the number of Internet posts at issue; the consistent specificity concerning the website (www.techauthority.com) where the 2016 model year Jeep Renegade service manual could be obtained, which includes the same product identification code printed on the face of the CD submitted as Exhibit 1013 (“81-370-16028-CD”); and the lack of any apparent connection between the declarants and the parties to this proceeding. As to probity on the point for which the statements are offered, the statements appear to be contemporaneous (that is, made in 2016) efforts to help members of various Jeep Renegade enthusiast forums obtain the service manual for the 2016 model Jeep Renegade. Although there may be other evidence that could establish exactly when the service manual was published, contemporaneous statements by interested persons that the service manual was in fact publicly accessible in 2016 are highly probative on the issue of public accessibility in 2016. Furthermore, given that context, we discern little reason to doubt the accuracy of the statements being made based on the present preliminary record.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesOther
“determine that we need to construe only “engagement means” and “retaining means.” See, e.g., 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)). We presently agree with Petitioner’s contention that “engagement means” and “retaining means” are both means-plus-function limitations. See Pet. 37–39. We also agree with Petitioner’s argument that the claimed function of the “engagement means” is “coupling the first member to the second member,” and the corresponding structures of the ’376 patent specification include “fasteners, keys and keyways, male-female couplings, interlocking features, splines, and equivalents thereof.” Id. at 37–38; see Ex. 1002, 8:45–52, 9:46–10:6 (claimed function); id. at 4:40–50, 6:41–44 (corresponding structure). We also agree with Petitioner’s argument that the claimed function of the “retaining means” is “retaining the coupling of the first member and the second member,” and the corresponding structures of the ’376 patent specification include “retaining ring, snap ring, and equivalents thereof.” Pet. 38–39; see Ex. 1002, 8:56–57, 10:10–11 (claimed function); id. at 6:44–47, 7:54–8:25 (corresponding structure). We apply these constructions when comparing claim 1 and Renegade Manual below in Section IV.D.” slip op. at 39
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must further “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). slip op. at 38
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to show a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute the petitioned review.” slip op. at 2
Claim construction§ 102 anticipationPatents in suitUS 11,598,376 - PTAB · May 29, 2025 · IPR2025-00090 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–18 on all petitioned challenges, finding a reasonable likelihood of success on anticipation by Renegade Manual.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to show a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute the petitioned review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artInstituted
“cited by Petitioner fall under the definition of “hearsay” set forth in Fed. R. Evid. 801(c). However, based on the present preliminary record, we further determine that the residual exception to hearsay applies here. That is, the Internet forum posts are “supported by sufficient guarantees of trustworthiness . . . considering the totality of circumstances under which [they were] made,” and they are “more probative on the point for which [they are] offered than any other evidence that [Petitioner] can obtain through reasonable efforts.” Fed. R. Evid. 807(a). The sufficient guarantees of trustworthiness include: the number of Internet posts at issue; the consistent specificity concerning the website (www.techauthority.com) where the 2016 model year Jeep Renegade service manual could be obtained, which includes the same product identification code printed on the face of the CD submitted as Exhibit 1013 (“81-370-16028-CD”); and the lack of any apparent connection between the declarants and the parties to this proceeding. As to probity on the point for which the statements are offered, the statements appear to be contemporaneous (that is, made in 2016) efforts to help members of various Jeep Renegade enthusiast forums obtain the service manual for the 2016 model Jeep Renegade. Although there may be other evidence that could establish exactly when the service manual was published, contemporaneous statements by interested persons that the service manual was in fact publicly accessible in 2016 are highly probative on the issue of public accessibility in 2016. Furthermore, given that context, we discern little reason to doubt the accuracy of the statements being made based on the present preliminary record.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“determine that we need to construe only “engagement means” and “retaining means.” See, e.g., 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)). We presently agree with Petitioner’s contention that “engagement means” and “retaining means” are both means-plus-function limitations. See Pet. 36–38. We also agree with Petitioner’s argument that the claimed function of the “engagement means” is “coupling the first member to the second member,” and the corresponding structures of the ’958 patent specification include “fasteners, keys and keyways, male-female couplings, interlocking features, splines, and equivalents thereof.” Id. at 36, 37; see Ex. 1001, 8:38–45, 10:11‒18 (claimed function); id. at 4:33–43, 6:32–35 (corresponding structure). We also agree with Petitioner’s argument that the claimed function of the “retaining means” is “retaining the coupling of the first member and the second member,” and the corresponding structures of the ’958 patent specification include “retaining ring, snap ring, and equivalents thereof.” Pet. 37, 38; see Ex. 1001, 8:49–50, 10:22‒23 (claimed function); id. at 6:35–38, 7:46–8:18 (corresponding structure). We apply these constructions when comparing claim 1 and Renegade Manual below in Section IV.D.” slip op. at 39
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must further “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,434,958 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 were unpatentable over either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–21 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’342 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that fields are mapped “to one another using normalized variables stored in a normalized variable data database” as required by claim 1.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a POSITA “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner present claim construction in the Petition or Preliminary Response. Pet. 9; see generally Prelim. Resp. Nonetheless, Petitioner contends that Patent Owner’s construction of “universal variable map” is too narrow, but does not appear to offer an alternative construction other than to state that a “universal variable map” includes “a database that links variables from different websites to each other.” See Reply 1-2 (emphasis omitted) (“PO’s arguments for why Halevy’s ‘form database’ is not a universal variable map are all premised on improperly narrowing the term’s scope by adding restrictions that are unsupported by the intrinsic record.”). In the Sur-Reply, Patent Owner reiterates that it has not proposed a construction for “universal variable map.” Sur-Reply 1 (“Patent Owner did not present any claim construction arguments regarding that term, nor does that term’s construction have any bearing on the arguments set forth in the POPR for denying the Petition.”). Based on our review of the preliminary record, 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 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving any of claims 1–26 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’378 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’378 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSA or POSITA) at the time of the invention of the ’378 patent “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 17 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our review of the preliminary record, 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 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that a “plurality of computer-readable field identifiers” are mapped “to one another” as required by claim 1. Petitioner’s declarant, Dr. Fox, testifies that “[t]he ‘SO-classes’ are identified for each form and used to map the fields in the form (i.e., “the plurality of computer-readable field identifiers”) to one another using “SOproperties,” as shown . . . in annotated Figure 3.” Ex. 1003 ¶ 104 (citing Ex. 1006 ¶¶ 39–40, 45, 49, 62, 67). Yet, those cited portions of Halevy do not support Dr. Fox’s testimony. As Patent Owner’s declarant, Dr. Sam Malek, explains: the language highlighted by Petitioner in Figure 3 does not actually show that “[t]he ‘SO-classes’ are . . . used to map the fields in the form . . . to one another using ‘SO-properties,’” as he contends. Id. Rather, the language in Figure 3 that Dr. Fox has highlighted merely shows that, for any given form, there is “mapping between fields” of that form and “class properties.” EX1006, Fig. 3. In other words, fields in a form are mapped to class properties. Figure 3 does not show any mapping of fields to each other, as Dr. Fox argues.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,378
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.