- Google LLC v. Wirelesswerx IP LLCInstitutedPTAB · Dec 11, 2023 · IPR2023-00850 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–30 on all asserted grounds after finding a reasonable likelihood that Google would show at least one claim unpatentable over Wrappe and Belcea.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner has demonstrated a reasonable likelihood of success in demonstrating that at least one claim of the ’203 patent as unpatentable under 35 U.S.C. § 103(a) over the combination of Wrappe and Belcea (Ground I), we institute on all challenged claims and all grounds raised in the Petition. See 37 C.F.R. §42.108(a) (2023). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of claims 6–30 under these remaining grounds based on obviousness.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[f]or purposes of this Response, Patent Owner adopts Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’203 Patent as well as the asserted prior art.” Prelim. Resp. 6. Accordingly, we adopt Petitioner’s definition of a person of ordinary skill in the art for our analysis in this decision.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On this preliminary record, we agree with the Petitioner that the claim 1 limitation “preconfigured geographical zone” is not limited to a “preconfigured geographical zone” defined by a user as Patent Owner contends. See Prelim. Resp. 18–20. Based on a plain reading of the claim, claim 1 puts no limit on the scope of the “preconfigured geographical zone.” Nor do we read the specification as providing a definition of “preconfigured geographical zone” so that when the claim is read in light of the specification its scope is limited to a “preconfigured geographical zone” defined by a user. As Petitioner points out, “the term ‘preconfigured geographical zone’ (or ‘pre-configured geographical zone’) appears in the specification six times, [and in] none of those uses describes the meaning of the term.” Prelim. Reply 2 (citing Ex. 1001, 1:27, 1:62, 3:23, 7:34, 31:56, 37:37). Based on this record, we also agree with Petitioner (Prelim. Reply 2) that claim 30 calls for “applying the plurality of transponders in the network with each other to define the zone,” which means that the recited transponders—not a user—define the zone. Ex. 1001, 44:62–63 (emphasis added); see also, e.g., 5:35–39 (“In another aspect, the transponder or subscriber device can determine whether the transponder or subscriber device is inside or outside the geographical zone in two or three dimensions by obtaining global positioning coordinates, and calculating . . . .)” For the foregoing reasons, at this stage of the proceeding, we construe “preconfigured geographical zone” in claims 1 and 30 broadly and not limited to a “preconfigured geographical zone” defined by a user.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“According to Mr. Andrews, based on these teachings, “a POSITA would have understood that Belcea teaches to first identify the nodes on a specific floor, disregard nodes on other floors, and then perform location determinations using only the nodes on the specific floor desired.” Ex. 1002 ¶ 171; Pet. 38. “Different stores on different floors are less relevant to the user, because even though they may be nearby in the vertical sense (e.g., directly underneath the user on a different floor), if the user is not in the store, then they are less likely to be interested in messages from that store.” Ex. 1002 ¶ 172; Pet. 38. Petitioner contends that a “POSITA would have been motivated to implement these teachings with Wrappe to ensure the user device is connected to the beacon of a store the user is actually in, for example a store on the same floor as the user as opposed to a different store on a different floor.” Pet. 38 (citing Ex. 1002 ¶ 172). “The [combined] system identifies a beacon ‘nearby’ on the same floor because other stores on the floor above or below are not immediately relevant to the user.” Id.” slip op. at 33
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,315,203 - Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentablePTAB · Nov 3, 2023 · IPR2023-00287 · APJ Jeremy M Plenzler · IPR · Final written decision
The Board held claims 1–4, 7–28, and 31–44 unpatentable as obvious over Woycik; it did not reach the Tengler challenge.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert does not know how P[atent ]O[wner]’s proposed definition would impact any opinions in his supporting declaration.’” Id. (citing Ex. 1029, 10:20–11:11); see also Ex. 1034, 10–14. Patent Owner provides no rebuttal to this position in its Sur-Reply, other than alleging that “[a]lthough experienced in ‘point-” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Objective indicia of non-obviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia of non-obviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of non-obviousness to be accorded substantial weight, their proponent must establish a nexus between the evidence and the merits of the claimed” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner
“Long-felt need can be shown by evidence that indicates that the prior art had a recognized need for a solution to the problem and that others had tried and failed to find a solution to that problem. Al-Site Corp. v. VSI Int’1, Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983). Notably, the case law characterizes the need in terms of a long-felt but unresolved need. Al-Site, 174 F.3d at 1325 (discussing “long felt but unresolved needs”). Accordingly, Patent Owner must show that the need was both known and not resolved. Patent Owner fails to provide evidence to support its allegations regarding long-felt need. Instead, Patent Owner cites to conclusory paragraphs from Mr. Cheng’s declaration that simply parrot the statements in the Petition. And, based on Patent Owner’s Response, it is not entirely clear what the prior art allegedly had recognized as a problem needing a solution, let alone that others had tried and failed to find a solution to that problem. There is simply no evidence supporting Patent Owner’s position. Moreover, Patent Owner must also show that if the need was known, it was also unresolved. As best we can decipher what the alleged need was, based on our analysis of the challenges below, that need was already met. Finally, we note that it is unclear how the claimed arrangement provides a solution to the problem that others had tried and failed to solve. Indeed, as noted above, the only reference to any claim is Patent Owner’s allegation that “the web-based POS builder system is built completely on the as recited in claims. EX1001, Claims 1, 27, 42, 43, and 44.” PO Resp. 77. For at least the reasons set for above, Patent Owner’s evidence of non- obviousness is entitled to little, if any, weight.” slip op. at 16
Patent outcomesUS 11,226,793 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,226,793 - Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentablePTAB · Nov 3, 2023 · IPR2022-01143 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–4, 7–28, and 31–44 are unpatentable as obvious over Woycik; the Board did not reach the Tengler ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Nevertheless, we also agree with Petitioner that a person of ordinary skill in the art is not limited to someone experienced building POS screens. Although, as noted above, the ’793 patent characterizes the novelty as eliminating the need for a specialized programmer to build POS screens, we explained above. And that is not even recited in the claims of the ’793 patent. Rather, what is now alleged by Patent Owner to be the novel aspect of the invention relates to the web-based back office system. And even if we accept that experience with POS systems is necessary, as Petitioner notes, and Patent Owner does not dispute, “Mr. Gray explains his work experience ‘had to do with point of sale and point of transaction.’” See Pet. Reply 3–4 (citing Ex. 1030, 53:3–54:2). Patent Owner makes much of purported differences between point of sale and point of transaction, but never provides any meaningful articulation of what those actual differences are or how they affect Mr. Gray’s qualifications to testify in this proceeding. See Pet. Reply 4; PO Sur-Reply 32 (stating without further discussion: “Although experienced in ‘point-of-transaction techniques,’ Petitioner’s expert is not a POSITA with respect to the ’793 Patent under either standard. POR, 13-15.”). For purposes of this decision, we analyze the asserted prior art with respect to the level of skill set forth by Petitioner, but we see no meaningful difference in the outcome of this decision if we were to apply the level of skill in the art set forth by Patent Owner.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). A patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. Here, we have no presumption of nexus. Nor does Patent Owner” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“store server in addition to a web server. See, e.g., PO Resp. 25 (“Unlike the claimed technology, which communicates directly from the webserver to the POS system located in the store, Woycik’s system and software communicates from the central server 22/84 to the in-store local server 16/82 to the kiosk []80.”); see also id. at 28–32. Patent Owner, however, identifies nothing in the claim that precludes the use of an in-store server in addition to the POS builder system being installed on a web server. Nor do we see Rather, the claim expressly recites “a network comprising the Internet,” which means that network can include more than just the Internet. Because the claim does not preclude an in-store server, there is little, if any, dispute remaining. We provide a simplified version of the claim below that concisely illustrates the communication required between the server and POS terminal. According to claim 1, the “server [is] configured to . . . communicate with . . . [a] POS terminal[] over . . . a network comprising the Internet,” “receive . . . information used for creating or modifying the one or more POS screen[ of the POS terminal],” “receive . . . further information [from the POS terminal],” and “configure the . . . POS terminal[] . . . over the network” using the information and further information “to create or modify . . . the . . . POS screen[].”8 Patent Owner, itself, characterizes Woycik’s “local server of the server kiosk act[ing] as the middleman for all communications,” with that local server facilitating communication between Woycik’s web server (central server 22/84) and POS terminals (kiosks 16/82 and/or kiosks 30/36). PO Resp. 31. There is no dispute that Woycik’s local server communicates with its central server over the Internet. Under Patent Owner’s own characterization of Woycik, therefore, central server 22/84 communicates with POS terminals 16/82, 30/36 over a network including the Internet, albeit through the use of an intermediary (i.e., the local server) facilitating that communication.” slip op. at 22
Patent outcomesUS 11,226,793 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,226,793 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Nov 1, 2023 · PGR2023-00023 · APJ Brent M Dougal · PGR · Institution
Instituted PGR of claims 1–20 because at least one challenged claim was more likely than not unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability under the more likely than not standard. 35 U.S.C. § 324(a); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A claim is unpatentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence,” slip op. at 4
- 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 (POSA): would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 15. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). claim terms. Pet. 25; Prelim. Resp 15–16. We determine that no terms need to be construed at this time. 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 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also relies on Pankaj Figure 11 to disclose the preamble and the final limitation, with the exception of the fracturing pump/fracturing equipment being electrical. See Pet. 38–40 (discussing e.g., Pankaj’s control method in Figure 11, teachings of computer implementation), 49–51 (discussing e.g., Pankaj’s controlling of production operations, including a fracturing pump). As previously noted, Petitioner relies on Payne for teaching that the fracturing pump can be electrical. Id. at 31, 49–51. Petitioner also provides reasons why one of skill in the art would combine Payne’s electrical fracturing pump with Pankaj’s fracturing system. Id. at 31–38, 51. Patent Owner does not contest that the combination of Pankaj and Payne teaches the above noted limitations. See generally, Prelim. Resp. 50– 57.” slip op. at 9
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSRPatents in suitUS 11,373,058 - Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentablePTAB · Oct 19, 2023 · IPR2023-00288 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Woycik and over Olson with Woycik; the Board did not show unpatentability over Tengler.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert concedes ‘the difference in levels of ordinary skill proposed by the parties do not change his opinions about the disclosure of the prior art.’” Id. (citing Ex. 1035, 156:25–157:6); see also Ex. 1034, 10–14. Patent Owner provides no rebuttal to this position, other than a single sentence in its Sur-Reply alleging that “[a]lthough experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’012 Patent under either standard.” PO Sur-Reply 23 (citing PO Resp. 8–10). Petitioner’s position has support in the record, not only based on the statements from Patent Owner’s expert noted above, but also with respect to the issues presented in the Patent Owner Response. With respect to the challenges based on Woycik, for example, the disputed issues relate to server considerations. There is no dispute that Woycik teaches POS builder” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Accordingly, we discern no reason that Mr. Gray’s qualifications are insufficient to testify on the disputed issues.6 Nevertheless, we also agree with Petitioner that a person of ordinary skill in the art is not limited to someone experienced building POS screens. Although, as noted above, the ’012 patent characterizes the novelty as” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. We do not need to construe any terms expressly to reach our decision. slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Here, we have no presumption of nexus. Nor does Patent Owner allege such a presumption should apply. See PO Resp. 70–75. Patent Owner contends that “[t]here is a strong nexus between [Patent Owner]’s claimed invention (recited in Claims 1–4) and [Patent Owner]’s secondary consideration evidence.” PO Resp. 71. Patent Owner relies on the jury verdict from the NCR litigation to support its contentions regarding nexus and commercial success. See id. at 72. We reproduce the totality of those contentions (a single paragraph) below to illustrate the lack of evidence regarding nexus and commercial success.” slip op. at 15
Patent outcomesUS 10,083,012 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,083,012 - Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentablePTAB · Oct 19, 2023 · IPR2022-00997 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Woycik and over Olson in view of Woycik; the Board did not find claims 1–20 unpatentable over Tengler.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change a prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert concedes ‘the difference in levels of ordinary skill proposed by the parties do not change his opinions about the disclosure of the prior art.’” Id. (citing Ex. 1035, 156:25–157:6); see also Ex. 1034, 10–14. Patent Owner provides no rebuttal to this position, other than a single sentence in its Sur-Reply alleging that “[a]lthough experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’012 Patent under either standard.” PO Sur-Reply 23 (citing PO Resp. 8–10). Petitioner’s position has support in the record, not only based on the statements from Patent Owner’s expert noted above, but also with respect to the issues presented in the Patent Owner Response. With respect to the challenges based on Woycik, for example, the disputed issues relate to server considerations. There is no dispute that Woycik teaches POS builder” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). A patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. Here, we have no presumption of nexus. Nor does Patent Owner” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner
“Even if Patent Owner had established nexus, there is insufficient evidence to show that the NCR Silver product was a commercial success. The jury verdict form simply asks whether “NCR has infringed the . . . claims of the ’012 patent” (Ex. 2008, 3) and asks for “the amount of damages . . . for NCR’s infringement of the ’640 Patent and/or the ’012 Patent” (id. at 7). There is no evidence, such as market share, establishing that the NCR Silver product was a commercial success. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (discussing the importance of market share compared to sales, alone, to prove commercial success). And, here, we do not even know how the damages relate to the two identified patents individually.” slip op. at 17
Patent outcomesUS 10,083,012 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,083,012 - Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentablePTAB · Oct 18, 2023 · IPR2023-00232 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–28 are unpatentable under § 103 over Woycik, Woycik and Manno, and Olson and Woycik; the Board did not reach the Manno-only ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, we discern no reason that Mr. Gray’s qualifications are insufficient to testify on the disputed issues. Nevertheless, we also agree with Petitioner that a person of ordinary skill in the art is not limited to someone experienced in building POS screens. Although, as noted above, the ’640 patent characterizes the novelty as eliminating the need for a specialized programmer to build POS screens, we know that is not novel, as Patent Owner, itself, now acknowledges as explained above. Rather, what is now alleged by Patent Owner to be the novel aspect of the invention relates to the web-based back office system. And even if we accept that experience with POS systems is necessary, as Petitioner notes, and Patent Owner does not dispute, “Mr. Gray explains that his work experience ‘had to do with point of sale and point of transaction.’” See Pet. Reply 3 (citing Ex. 2022, 53:3–54:2). Patent Owner makes much of purported differences between point of sale and point of actual differences are or how they affect Mr. Gray’s qualifications to testify in this proceeding. See Pet. Reply 3; PO Sur-Reply (stating without further discussion: “Although experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’640 Patent under either standard. POR, 9-10.”). For purposes of this decision, we analyze the asserted prior art with” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Accordingly, we discern no reason that Mr. Gray’s qualifications are insufficient to testify on the disputed issues. Nevertheless, we also agree with Petitioner that a person of ordinary skill in the art is not limited to someone experienced in building POS screens. Although, as noted above, the ’640 patent characterizes the novelty as eliminating the need for a specialized programmer to build POS screens, we know that is not novel, as Patent Owner, itself, now acknowledges as explained above. Rather, what is now alleged by Patent Owner to be the novel aspect of the invention relates to the web-based back office system. And even if we accept that experience with POS systems is necessary, as Petitioner notes, and Patent Owner does not dispute, “Mr. Gray explains that his work experience ‘had to do with point of sale and point of transaction.’” See Pet. Reply 3 (citing Ex. 2022, 53:3–54:2). Patent Owner makes much of purported differences between point of sale and point of actual differences are or how they affect Mr. Gray’s qualifications to testify in this proceeding. See Pet. Reply 3; PO Sur-Reply (stating without further discussion: “Although experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’640 Patent under either standard. POR, 9-10.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“There appears to be an underlying dispute, at least with respect to what is required by POS builder software. PO Resp. 18; Pet. Reply 5–8. But this only appears with respect to the Manno, alone, challenge. We need not expressly construe “POS builder software” because, as explained below, we do not reach the Manno, alone, challenge in this decision. Accordingly, 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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting 6 The parties agree that this issue has been fully briefed. See Tr. 21:2–6, 38:25–39:3. deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. We agree with Petitioner and the Supplemental Claim Construction Order from the District Court in the Lightspeed Litigation that the preamble is unnecessary to understand the claim. Here, the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. The body of claim 1 expressly recites “an internet connection from said one or more point of sale terminals to a web server” and “point of sale builder software that runs on said web server,” which we address below. slip op. at 24
Patent outcomesUS 9,400,640 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,400,640 - Lightspeed Commerce Inc. / Clover Network, LLC v. Cloudofchange, LLCAll claims unpatentablePTAB · Oct 18, 2023 · IPR2022-00779 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–28 are unpatentable under § 103 over Woycik, Woycik and Manno, and Olson and Woycik; the Board did not reach the Manno-alone ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill in the art is a reference point for gauging what would have been obvious based on the reference disclosures. See Okajma, 261 F.3d at 1355. In other words, the lens of the level of ordinary skill in the art does not change the prior art’s disclosure, though it may change one’s understanding of what is disclosed. Patent Owner does not explain how its definition provides a reference point that would alter the Petition’s assertion of obviousness. Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert concedes ‘it would be hard to point out’ any opinions in his supporting declaration that rely on the difference in levels of ordinary skill proposed by the parties.” Id. (citing Ex. 1030, 53:6–14). Patent Owner provides no rebuttal to this position, other than a single sentence in its Sur-Reply alleging that “[a]lthough experienced in ‘point-of-transaction systems,’ Petitioner’s expert is not a POSITA with respect to the ’640 Patent under either standard.” PO Sur-Reply 25 (citing PO Resp. 9–10).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“There appears to be an underlying dispute, at least with respect to what is required by POS builder software. PO Resp. 18; Pet. Reply 5–8. But this only appears with respect to the Manno, alone, challenge. We need not expressly construe “POS builder software” because, as explained below, we do not reach the Manno, alone, challenge in this decision. Accordingly, 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 12
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Owner makes no attempt to identify any features of the “NCR Silver” product, which it identifies as the commercially successful product. We know, based on Mr. Cheng’s testimony, that the NCR Silver product included features that are not found in the claims of the ’640 patent. See Ex. 1030, 139:10–142:3. We credit that testimony, but we do not credit testimony from Mr. Cheng that a nexus existed between the claims and the NCR Silver product because it has no basis in fact. Rather, it is conclusory, merely stating that “based on the damages and the [jury] verdict, that a nexus existed.” Id. at 141:12–13. whether a nexus exists, let alone Patent Owner establishing a nexus between the evidence and the merits of the claimed invention. Accordingly, Patent Owner has failed to establish nexus. Even if Patent Owner had established nexus, there is insufficient evidence to show that the NCR Silver product was a commercial success. The jury verdict form simply asks whether “NCR has infringed the . . . claims of the ’640 patent” (Ex. 2008, 3) and asks for “the amount of damages . . . for NCR’s infringement of the ’640 Patent and/or the ’012 Patent” (id. at 7). There is no evidence, such as market share, establishing that the NCR Silver product was a commercial success. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (discussing the importance of market share compared to sales, alone, to prove commercial success). And, here, we do not even know how the damages relate to the two identified patents individually.” slip op. at 15
Patent outcomesUS 9,400,640 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,400,640 - PTAB · Oct 11, 2023 · IPR2023-00621 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. at 6. The Director has issued additional guidance on the application of in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”). Additionally, we are guided by the precedential decisions of the Director in OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102, 49–50 (Oct. 4, 2022) (precedential), and CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (Feb. 27, 2023) (precedential) (“CommScope”). We are instructed to consider compelling merits under Fintiv factor six only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Thus, we begin by considering the first five Fintiv factors.2” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner states: In the Lenovo ’083 IPR, the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Prelim. Resp. 12–13 (citing Ex. 1012,4 8). Patent Owner agrees with this standard and argues that it is the same as the standard Petitioner proposes. Id. at 13. We agree that there appear to be no significant differences. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same preliminary determinations under Petitioner’s formulation of the level of skill.” slip op. at 17
- BurdenDecided for petitioner
“It is undisputed that the Petition states that “[a]ll claim terms should be construed according to the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.100.” Pet. 2. Standing alone, there is no dispute that the Petition uses the correct claim construction standard in the analysis. It only becomes a question because Petitioner’s declarant (Dr. Schmidt) employs the phrase “broadest reasonable construction in light of the specification of the patent in which it appears” in describing his “understand[ing]” of the claim construction standard. Ex. 1003 ¶ 26. If Dr. Schmidt’s “understand[ing]” of the claim construction standard was that BRI should be used, then it was incorrect. The claim construction standard for claims of challenged unexpired patents in this forum was changed from BRI to the Phillips standard in 2018, long before Dr. Schmidt signed the Declaration (Feb. 22, 2023). See “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,” 83 Fed. Reg. 51340, 51340–51359, 51343 (October 11, 2018) (“This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips and its progeny.”); 37 C.F.R. § 42.100(b). But the Petition articulates, unequivocally, the correct claim construction standard and goes into some detail in explaining what the Phillips standard entails. Pet. 2–5 (citing Ex. 1003 ¶¶ 28–29). Although” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,020,083 - PTAB · Oct 11, 2023 · IPR2023-00756 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–21 on all petitioned grounds, finding a reasonable likelihood that Samsung would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–21 of the ’545 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered” is an IDS statement. Ex. 2003; cited at Prelim Resp. 23. The IDS statement contains two sets of documents. Ex. 2003, 1–12 (first set); 15–22 (second set). The first set lists over 250 references, one of which includes Brown. Id. at 6, reference 4E. The Examiner signed the bottom of the page citing Brown on Sept. 24, 2015. Where the Examiner signed the page, it states that the Examiner “CONSIDERED” on that date (i.e., on Sept. 24, 2015). What precisely the Examiner “considered” on that date is unclear because none of the citations, including to Brown, have been initialed. This evidence which amounts to a single uninitialed citation to Brown among hundreds of other citations does not provide a sufficient basis for the Board to exercise its discretion to deny institution under § 325(d).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Lenovo ’545 IPR [i.e., IPR2019-00988 (see footnote 2)], the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Ex. 2001 at 9. [Patent Owner] agrees that this is the correct standard for a POSITA and [Petitioner] has also adopted this definition. Therefore, there is no dispute about the skill level of a POSITA. Prelim. Resp. 12. Patent Owner does not propose a definition for the level of skill in the art possessed by a POSA that is significantly different from that proposed by the Petitioner. Also, as Patent Owner indicates, Petitioner’s proposal is consistent with the one adopted in IPR2019-00988. See Ex. 2001, 9. We adopt Petitioner’s asserted level of ordinary skill in the art. E. Claim Construction” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,369,545
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.