- PTAB · Jul 24, 2024 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–24 on all petition grounds, finding a reasonable likelihood that Irwin renders at least one challenged claim obvious.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than the patents at issue in PGR2020-00084 and IPR2023- 01235. Challenging claims of different patents significantly distinguishes the facts here from those in General Plastic, and we decline Patent Owner’s invitation to extend General Plastic in this regard. Accordingly, we do not exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that Irwin would have rendered the subject matter of claims 1–9 and 11–24 of the ’451 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - Unified Patents, LLC v. Dynapass IP Holdings LLCSome claims unpatentablePTAB · Jul 12, 2024 · IPR2023-00425 · APJ Lynne H Browne · IPR · Final written decision
Claim 5 is unpatentable as obvious over Veneklase and Jonsson; claims 1, 3, 4, and 6 were not shown unpatentable over Kew and Sormunen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “all terms should be given their plain meaning.” Pet. 6. Yet, Petitioner proposes claim construction for “cell phone network” and “[n]ot known to the user.” Pet. 9–13.7 As these terms are not in controversy, we do not construe them.” slip op. at 13
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that it is too late for Petitioner to file a copy of the infringement contentions and argue that Patent Owner’s position in this Proceeding is inconsistent with its position in that proceeding. Petitioner had ample opportunity to raise its arguments about the infringement contentions well before the oral hearing. PO Resp. to Supp. 2. Patent Owner complied with our mandatory notice provision. Further, we agree with Patent Owner that its position in the infringement contentions is not inconsistent with its position in this proceeding. Paper 3, 1. For these reasons, we decline to exercise our authority under 37 C.F.R. § 42.5(b) to consider the infringement contentions and the new arguments during an oral hearing.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Ex. 1005, 7:16–28. We do not agree with Patent Owner that these statements unequivocally support its position that Veneklase’s two-step authentication process is a principle of operation of its system. Rather, the quoted statements indicate that Veneklase’s use of two distinct communication channels and a random number generator are key features of Veneklase’s system that provide multiple levels of security and enhance security of that system. As modified Veneklase’s system still uses two distinct communication channels and a random number generator. Thus, to the extent that Veneklase’s enhanced security measures (i.e. two distinct communication channels and a random number generator) are a principle of operation of Veneklase’s system, the proposed modification does not destroy this principle of operation or render Veneklase’s system inoperable. Moreover, incorporating Jonsson’s teachings related to using an algorithm to create a new password would not destroy the principle of operation of Veneklase’s security system because it only changes how Veneklase accomplishes its goal of preventing unauthorized access to a computer system, rather than defeating its goal of preventing such access. See In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012). Further, we do not agree that Plas-Pak (a routine decision11) supports Patent Owner’s contention that the proposed combination impermissibly changes Veneklase’s principle of operation as Patent Owner has not identified differences between the two authentication processes that would be “unlikely to motivate a person of ordinary skill to pursue” the proposed combination. Plas-Plak, 600 F. App'x at 757-59.” slip op. at 25
Patent outcomesUS 6,993,658 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,993,658 - Hyundai Motor Company v. Mel Navip LLCInstitutedPTAB · May 22, 2024 · IPR2024-00172 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted inter partes review of claims 1–3 and 5 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition, Preliminary Response, and the present record, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–3 and 5 of the ’465 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had an undergraduate degree in electrical engineering, computer engineering, computer science, or an equivalent degree, as well as at least three years of experience in the design and implementation of navigation systems.” Pet. 5 (citing Ex. 1003 ¶ 6). Patent Owner, on the other hand, contends that a person of ordinary skill in the art: would have (a) a Bachelor’s of Science degree in a technical field and at least four years of experience in the field of geospatial information sciences; (b) a Master's of Science degree in a technical field and at least two years of experience in the field of geospatial information sciences; or (c) a PhD in a technical field relating to the geospatial information sciences. Prelim. Resp. 5–6. Patent Owner also asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education” and that the ordinary artisan “is presumed to have knowledge of all relevant prior art, and therefore would have been familiar with each of the references cited in this declaration and the full range of teachings they contain.” Id. at 6 (citing Ex. 2001 ¶¶ 29–31). At this stage of the proceeding, we adopt Petitioner’s definition for purposes of this Decision. We note, however, that our decision would be the same if we applied Patent Owner’s definition. We also look to the cited prior art references as evidence of the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Neither Patent Owner nor its declarant, Dr. Qui, points to any portion of McDonough that supports the notion that McDonough’s system, and particularly its smooth-scrolling feature and use of first and second buffers, is “incompatible” with displaying an entire guide route. It is also unclear what Patent Owner means by McDonough not “need[ing] or want[ing]” to display the entire guide route. To the extent Patent Owner is arguing that McDonough’s smooth scrolling would render superfluous the ability to zoom out to see an entire guide route, Patent Owner has not explained why this would be the case. Patent Owner’s only supporting evidence is the testimony of its declarant, Dr. Qui, which merely repeats verbatim the assertion which it is supposed to support, without any additional evidence or reasoning. Ex. 2001 ¶ 76. We give such testimony little weight where, as here, we find the language in the filing that the declaration intends to support unpersuasive on its own. See Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (according little weight to declarant testimony that is “conclusory and unsupported,” and “that merely repeats, verbatim, the conclusory assertion for which it is offered to support”). Conversely, Petitioner has provided evidence that the ability to zoom out to see an entire proposed route was a known functionality in navigation systems at the time of the invention, and that one of ordinary skill in the art would have understood that doing so was advantageous for drivers. Pet. 57 (citing Ex. 1003 ¶ 196). Patent Owner does not dispute this evidence at this preliminary stage of the proceeding, or explain why the ability to smooth-scroll would render such functionality undesirable.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“teaching that roads that are part of a guide route are given the highest display priority so that they would be displayed regardless of the map scale. Id. at 55–56 (citing Ex. 1009 ¶¶ 28–31, 54–56, 58–59, 72, 77, Figs. 2A–C, 3A–C, 7, 8; Ex. 1003 ¶ 193). Petitioner contends that one of ordinary skill in the art would have modified McDonough’s map display system in accordance with this teaching to avoid discontinuities in the displayed guide route, which discontinuities “would undesirably confuse the driver who is expecting to see a continuous route.” Id. at 56–57 (citing Ex. 1003 ¶ 195). According to Petitioner, Tanizaki’s teachings beneficially increase driver safety in the use of the navigation system by avoiding distraction where the driver, due to route discontinuities, is uncertain regarding his or her current whereabouts, where he or she is relative to the guide route, and/or where he or she is relative to the destination. Id. at 57. Petitioner also asserts that before the invention, “it was common for navigation system users to ‘zoom out’ before starting a journey to see the entire guide route,” which “allowed the driver to visualize the entire route and plan potential stops along the way,” or to instruct the system to calculate a new route if the original proposed route was not acceptable. Pet. 57 (citing Ex. 1003 ¶ 196). Petitioner submits that “a POSITA would have recognized that, by preventing discontinuities in the displayed guide route even when the driver zooms out to see the entire guide route, the proposed modification would have made it easier for drivers to plan their trip and decide whether to request a new route.” Id.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,244,465 - Hyundai Motor Company v. Mel Navip LLCInstitutedPTAB · May 16, 2024 · IPR2024-00174 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR of claims 1, 2, and 4–8 on both asserted obviousness grounds, finding a reasonable likelihood of success based on Fujiwara.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion Based on the foregoing, we determine that Petitioner establishes adequately that Fujiwara discloses the disputed limitations. We have also reviewed Petitioner’s arguments and evidence as to the remaining limitations of claim 1. Based on our review of the current record, Petitioner establishes sufficiently that Fujiwara discloses or renders obvious all of the limitations of claim 1 for the reasons provided by Petitioner. See Pet. 8–32. Accordingly, Petitioner establishes a reasonable likelihood that independent claim 1 would have been obvious based on Fujiwara. We have also reviewed Petitioner’s arguments and evidence as to dependent claims 2 and 4–8. See Pet. 32–43. Patent Owner does not separately address the dependent claims. Prelim. Resp. 9. Because we institute inter partes review as to independent claim 1, we also institute inter partes review as to dependent claims 2 and 4–8. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have (a) a Bachelor's of Science degree in a technical field and at least four years of experience in the field of design and/or manufacture of navigation systems; (b) a Master's of Science degree in a technical field and at least two years of experience in the field of design and/or manufacture of navigation systems; or (c) a PhD in a technical field relating to the design and/or manufacture of navigation systems. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Prelim. Resp. 3 (citing Ex. 2001 ¶ 29). Patent Owner does not identify any deficiencies in Petitioner’s proposal, and we view the parties’ proposals as overlapping to a large extent. See Pet. 4; Prelim Resp. 3. For purposes of this Decision, we adopt and apply Petitioner’s proposed level of ordinary skill in the art, which we view as consistent with the level of skill reflected in the ’230 patent and the asserted prior art. None of our determinations in this Decision would have been different if we applied Patent Owner’s proposal. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should explain the differences and the relevance to the patentability issues in this case.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (citations omitted)). “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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that no claim construction is required for us to reach a decision on institution (Pet. 4), and Patent Owner does not address claim construction in its Preliminary Response. We determine that no express claim construction is necessary for the purposes of this Decision and therefore apply the plain and ordinary meanings of the claim limitations before us. If either party believes that the patentability of any challenged claim turns on a claim construction issue, they should set forth any proposed constructions in a separate section of their briefing during trial rather than implicitly relying on a construction in arguments addressing the prior art.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on the current record, we find Petitioner’s arguments persuasive and Patent Owner’s arguments unavailing. While we agree with Patent Owner that Fujiwara’s information offering server may offer service information for multiple facilities, we disagree that this necessarily takes it outside of the scope of the claim limitation at issue, based on the current record. For example, in the situation where Fujiwara’s information offering server offers service information for a single facility, Fujiwara’s information offering server would pertain to a particular registration destination facility. We understand Petitioner’s argument as based on Fujiwara’s ability to provide information as to specific hotels, such as vacancies at a specific hotel, not hotels generally. See Pet. 9–14; Ex. 1005, Figs. 14–18, 20–23 (showing vacancy information for specific hotels). Fujiwara’s reference to vacancy information would seem to make little sense if not tied to a particular facility. Patent Owner does not address this aspect of Petitioner’s arguments, which renders Fujiwara’s ability to provide service information for more than one facility inapposite. Cf. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“[A] prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). As to Patent Owner’s argument that an ordinary artisan would not understand Fujiwara as rendering obvious this limitation because “the system of Fujiwara differs from that of the ’230 patent fundamentally,” we find the argument lacking in explanation and support. See Prelim. Resp. 7 (quoting Ex. 2001 ¶ 43). The cited declarant testimony does not aid Patent Owner here, as it merely repeats the arguments from the Preliminary Response without further explanation or citation to supporting evidence. Based on the current record, Petitioner establishes adequately that Fujiwara discloses “a service information reception processing unit for receiving service information at an external registration destination facility with which member registration is made, the service information being distributed from the external registration destination facility.”” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,812,230 - Hyundai Motor Company v. Mel Navip LLCInstitution deniedPTAB · May 16, 2024 · IPR2024-00173 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because the prior-art combinations did not make the required determination for claims 1–4, 7–12, 14, 16–17, and 19.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenges in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not identify any deficiencies in Petitioner’s proposal, and we view the parties’ proposals as overlapping to a large extent. See Pet. 4–5; Prelim. Resp. 6. For purposes of this Decision, we adopt and apply Petitioner’s proposed level of ordinary skill in the art, which we view as consistent with the level of skill reflected in the ’971 patent and the asserted prior art. None of our determinations in this Decision would have been different if we applied Patent Owner’s proposal.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (citations omitted)). “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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, both parties contend that no claim construction is required for us to reach a decision on institution. Pet. 5; Prelim. Resp. 6–7. We agree, and apply the plain and ordinary meanings of the claim limitations before us.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“which requires that the route guidance unit output a message “when” the unit “determines” that two conditions are satisfied: (1) the vehicle has deviated from the route to a predetermined distance or more, and (2) the vehicle is traveling along a route after said first next waypoint. See Ex. 1001, claim 1. We agree with Patent Owner that Petitioner has not demonstrated that the combination of Khavakh or Lefebvre renders obvious the second aspect of the limitation—i.e., outputting a message when the “route guidance unit determines that the vehicle . . . is traveling along a route after said first next waypoint,” as required by claims 1 and 19. Prelim. Resp. 12. Petitioner’s assertions on this point have some support in Khavakh. For example, we agree with Petitioner in part that “Khavakh’s prompt would also be output” in the situation in Petitioner’s illustrated example, where a driver has missed a turn and deviates from a desired route after a first next waypoint. Pet. 34–35 (citing Ex. 1003 ¶¶ 164–166). These assertions, however, fail to track the claim language, which does not merely require a system that outputs a message when a driver misses a required turn or otherwise deviates from a chosen path. Instead, the limitation requires, in pertinent part, outputting the message “when” a specific determination has been made by the system—that the vehicle “is traveling along a route after said first next waypoint.” Ex. 1001, claim 1. Petitioner fails to point to any disclosure in Khavakh (or Lefebvre) that makes this determination and outputs a message when it occurs. See Pet. 30–41. Based on our review of the current record, it appears that Khavakh outputs a message indicating a driver has deviated from a desired route regardless of whether the driver is traveling along a route before or after the first next waypoint. Because Khavakh’s system appears to output messages to the driver without making a separate determination as to the relationship of the driver to the first next waypoint (whether it is “after” that waypoint as the claim requires), Petitioner has not persuaded us that it is reasonably likely to prevail on this issue.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,649,971 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00129 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 1–30 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstitution denied
“Petitioner, however, does not explain how Agrawal’s web advertising system for identifying illegitimate advertising link request activity would have enhanced the reach of Oliver’s promotions. Oliver’s lead generation tool presents promotions to users via passive entities such as QR codes and enables users to respond to these promotions via text message. As Petitioner notes, Oliver discloses that its “passive entities can be incorporated into advertising” and “can be incorporated into ‘electronic visual media’ on the Internet.” Pet. 29 (citing Ex. 1011 ¶ 34). Petitioner does not adequately explain why Agrawal’s web advertising system is better that Oliver’s use of passive entities. Pet 28 (citing Ex. 1005, 5:45–63; Ex. 1002 ¶ 92). Petitioner argues that Agrawal “allows ads to be targeted at users likely to find the subject matter appealing.” Id. at 28–29. Yet the fact that Agrawal discloses retrieving advertising links relevant to a user’s search query, does not explain how or why that user is more “targeted” than another user who scans a passive entity such as a QR code as in Oliver. See Ex. 1005, 5:57– 58 (Agrawal discloses “using the keyword to select the appropriate advertising links.”), see also Ex. 1011 (Oliver teaching to “create a passive entity, such as a QR code or NFC tag associated with a promotion.”). In addition, Petitioner does not adequately explain how Agrawal’s method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are responding to passive entities in advertisements for those products by opting in.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundInstitution denied
“d) Conclusion Re Petitioner’s Reasoning in Support of the Proposed Combination For the reasons discussed above, we determine that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Khanna as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,553,074 - Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution deniedPTAB · May 8, 2024 · IPR2024-00069 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 15–30 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Molinet as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . result[ing] in inaccurate fees being charged for advertising services.”). Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the server-based software techniques of Oliver and Molinet at Agrawal’s Advertising System 120” “to obtain the benefits of each system.” Pet. 31 (citing Ex. 1002 ¶ 95). Petitioner’s reasoning does not adequately explain why a person of ordinary skill in the art would make the proposed modifications and instead appears to be based on improper hindsight reasoning. Specifically, Petitioner does not adequately address which benefits of each system a person of skill in the art would be motivated to combine and what the advantages of combining functionalities of the references into a single server would be.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,897 - PTAB · Apr 2, 2024 · IPR2023-01469 · APJ Jason M Repko · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all petitioned grounds, finding a reasonable likelihood that Petitioner would prevail, including over Ho.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience.” Pet. 6 (citing Ex. 10021 ¶¶ 53–56). According to the Petition, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would be a person with a bachelor’s degree in a technical field such as electrical engineering, computer engineering, computer science, or physics, and/or 2–3 years of relevant practical experience in wireless communication, data” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Construction 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner offers two alternative constructions for “default frequency band”: (1) “a preferred frequency band” and (2) “a preset frequency band used automatically in the absence of a choice made by the user.” Pet. 6 (citing Ex. 1017, Attachment A, 4). Patent Owner asserts that the Administrative Law Judge in the parallel ITC action construed “default frequency band” to mean “a first selected frequency band.” Prelim. Resp. 9 (citing Ex. 1003, 32). In this decision, we do not see a need to construe this term to resolve any issues because Petitioner has shown a reasonable likelihood of prevailing on its challenge under any of the offered constructions. See infra § II.D.2.b.i.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“b. The Second Part The second part of the framework asks whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8–9 n.9. Patent Owner argues that Ho was expressly used by the Examiner to reject the claims, which shows that the Examiner considered and evaluated Ho. Prelim. Resp. 22. Patent Owner argues that Petitioner did not identify any errors in the Examiner’s evaluation of Ho, Gatewood, or Farid, and Petitioner’s arguments about reconsideration of the prior art are unsupported and conclusory. Id. at 22–23. We disagree. Petitioner shows that the Examiner overlooked specific teachings of the relevant prior art: Ho’s RSSI threshold. See Pet. 55 (quoting Ex. 1009, 14:38–41). Although Ho was the basis for a rejection, the Examiner cited Ho” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“iii. Analysis We disagree, at this stage, that Petitioner needs to show that every possible combination of personalities of Ho’s hybrid device meets the claim limitation. Rather, “a prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation.” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018). Here, the Petition sufficiently sets forth a particular mode of operation that is the basis for its challenge: hybrid device 120 is a 1002 ¶ 143). For the reasons discussed below, Petitioner has shown at this stage that this configuration meets the claim limitations. See infra § II.D.2.b. Thus, we disagree with Patent Owner’s arguments on this record. See Prelim. Resp. 39–40.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,681,698 - Experian Information Solutions, Inc. v. Dynapass IP Holdings LLCInstitution deniedPTAB · Mar 28, 2024 · IPR2023-01406 · APJ Lynne H Browne · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would be unpatentable over Sormunen and Perlman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner shows that Sormunen discloses receiving a request from the user for a password and that a person of skill in the art would understand Sormunen’s password to be a passcode as claimed. Pet. 32–33. Petitioner further shows that Sormunen discloses that its method can be applied to obtain a PIN for a bank or credit card. Id. at 19. Petitioner, however, does not adequately explain why one skilled in the art would understand Sormunen’s PIN to be a token. Id.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At this stage of this proceeding, we determine that no claim terms require express construction in order to determine whether or not to institute inter partes review because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- BurdenNot shown unpatentable
“We agree with Patent Owner that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning because combining Sormunen’s password and PIN (both of which are known to the user) would not result in greater security. Moreover, for the reasons discussed above, we do not agree with Petitioner that Sormunen’s PIN is a token. Sormunen’s PIN is nothing more than a numerical passcode provided to a user when a charge card is ordered or when a new PIN is required because a prior PIN has been compromised. Ex. 1004, 9:28, 9:34–10:2. Given that both Sormunen’s password and its PIN are passcodes known to the user, Petitioner’s reasoning that a person of skill in the art would know from Sormunen to combine its password and PIN lacks rational underpinning. Further, Petitioner’s reasoning that a person of skill in the art “would understand that a PIN would commonly be generated by known techniques to produce a randomized string” is not supported by Sormunen, because Sormunen does not disclose a PIN produced by a randomized string. Petitioner’s reliance on Perlman does not cure these deficiencies in Petitioner’s reasoning. Pet. 35–37. Although, we agree with Petitioner that Perlman discloses a token, the Petition does not rely on Perlman’s teachings of a token to replace Sormunen’s PIN.4 Id.” slip op. at 21
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 6,993,658 - PTAB · Mar 26, 2024 · IPR2024-00008 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–5, 7–14, and 16 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and the Preliminary Response, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–5, 7–14, and 16 of the ’121 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Conclusion Based on our review of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Section 325(d) requires us to “take into account whether, and reject the petition . . . because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (setting forth six factors the Board may weigh in evaluating whether to exercise discretion under § 325(d)). The Board applies the following two-part framework in evaluating a request for discretionary denial under this section: (1) whether the same or substantially the same art or arguments were previously presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that, for the ’121 patent: [A] POSA as of November 12, 2010, would have had at least a bachelor’s degree in mechanical or agricultural engineering and 2–4 years experience in the design or manufacture of agriculture equipment. A POSA would have been familiar with the design and operation of known seed distribution meters and with the use of bearings and other plate-like technologies to receive and distribute axial loads by providing bearing surfaces for the transfer of forces. Pet. 21 (citations omitted). Patent Owner “defers its position on this issue until such time as the Board decides to institute a trial.” Prelim. Resp. 28–29. At this stage of the proceeding, we adopt Petitioner’s unopposed definition for purposes of this Decision. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,770,121
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.