• Obm, Inc. / Cholla Energy LLC v. Lancium LLCInstitution denied
  PTAB · Mar 13, 2024 · IPR2023-01407 · APJ Amber L Hagy · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’433 patent. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes an alternative definition, asserting that a person of ordinary skill in the art “at the time of the claimed invention would have had a degree in mechanical engineering, electrical engineering, or a similar field with at least 1–2 years of experience with power control systems or other comparable professional experience.” Prelim. Resp. 26 (citing Ex. 2001 ¶ 32). Patent Owner disagrees with Petitioner’s proposed definition because “the Challenged Claims pertain to power control systems instead of ‘power generation systems,’ as asserted in the Petition.” Id. at 25 (citing Pet. 11). Based on the present record including the disclosure in the ʼ433 patent, we apply Petitioner’s definition of the level of ordinary skill in the art. See Pet. 11. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ433 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). We also note that our decision herein would be the same under either party’s proposed definition.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “’433 patent in Bearbox LLC v. Lancium LLC, 1:21-cv-00534-GBW-CJB (D. Del.). Pet. 11. In particular, the district court construed “power option agreement” as follows: an agreement between a power entity associated with the delivery of power to a load and the load, wherein the load provides the power entity with the option to reduce the amount of power delivered to the load up to an agreed amount of power during an agreed upon time interval such that the load must use at least the amount of power subject to the option during the time interval unless the power entity exercises the option. See id. (quoting Ex. 1008, 1). The district court also construed “minimum power threshold” as “a minimum amount of power a load must use during an associated time interval.” Id. (quoting Ex. 1008, 1). Petitioner states that “[f]or this proceeding only, Petitioner[] do[es] not contest these constructions.” Id. Patent Owner also states that it does not contest these constructions at this stage. Prelim. Resp. 26. For purposes of this decision, we adopt these constructions. We otherwise determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. 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 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). On this record, we agree with Patent Owner that Petitioner fails to provide evidence sufficient to show, even for purposes of institution, that APC-Tariff was publicly accessible before the critical date and, as a result, we determine that Petitioner fails to sufficiently establish that APC-Tariff qualifies as a printed publication. See Hulu at 13.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,608,433
• Verizon Connect Inc. v. Omega Patents, LLCInstituted
  PTAB · Feb 21, 2024 · IPR2023-01162 · APJ Amber L Hagy · IPR · Institution

  Instituted IPR of claims 1–22 on all asserted grounds; the Board found a reasonable likelihood that Flick ’885 combined with Flick ’561 renders at least one challenged claim unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “First, we note that, under some circumstances, § 325(d) may provide a basis for discretionary denial based on prior art and arguments presented in a previous inter partes review.5 Although the Becton Dickinson factors are focused on the question of whether the same or substantially the same art or arguments were previously presented during initial examination of the challenged patent,6 Advanced Bionics explains that these factors “more broadly provide guidance as to whether the art presented in the petition is the ‘same or substantially the same’ as the prior art previously presented to the 5 See, e.g., Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper 8 at 5–7 (PTAB Sept. 11, 2014) (informative) (exercising discretion under section 325(d) to deny institution of third petition filed by same petitioner that raised same prior art as a petition for which review was already denied); Unified Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-0072, Paper 13 at 7–9 (PTAB July 24, 2014) (informative) (exercising discretion under section 325(d) to deny institution where petition challenged overlapping claims, over same prior art, as presented in two prior petitions, one of which had progressed to a final written decision). 6 Becton Dickinson involved prior art references that had previously been considered by the Examiner during prosecution. See Becton Dickinson, Paper 8 at 18 (“Woehr, relied upon by Petitioner as the base reference here, was also the base reference in the Examiner’s Woehr/Rogers obviousness rejection during examination.”). Thus, in Becton Dickinson, the Board weighed “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Id. at 17. Office during any proceeding, including prior AIA proceedings.” Advanced Bionics, Paper 6, at 9–10. Nevertheless, Advanced Bionics counsels that the existence of a co- pending review of a patent over the same or similar prior art may not be sufficient to warrant denial. “At bottom,” noted the panel in Advanced Bionics, the two-part framework utilized for 35 U.S.C. § 325(d) “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9 (emphasis added). Although the art in the 504 IPR at least overlaps with the art presented here, that art has not yet been fully considered or evaluated. There has been no final determination in that proceeding as to the scope of the prior art nor any final determination as to whether the submitted evidence is sufficient to show that any claims of the ’278 patent are unpatentable. As such, there is no reference point under the Advanced Bionics framework to determine whether the Office erred; there has simply been no final determination to analyze or reconsider. Accordingly, under the facts before us, we conclude that the preliminary consideration by the Board in the 504 IPR, determining to institute a trial based on a petition filed by an unrelated petitioner,7 is not a” slip op. at 16

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

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” If the Board institutes trial, it “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’278 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–22) of the ’278 patent, based on the grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Dr. Eskandarian, Petitioner contends that an ordinarily skilled artisan for the ’278 patent “would have been someone knowledgeable in mobile computing systems and location technology.” Pet. 18 (citing Ex. 1002 ¶ 39). Petitioner additionally contends [t]hat person would have had either (1) a Bachelor of Science degree in Electrical Engineering, Mechanical Engineering, Automotive Engineering, Computer Engineering, or an equivalent field, with at least two years of academic or industry experience in the automotive industry; or (2) a Master of Science degree in Electrical Engineering, Mechanical Engineering, Automotive Engineering, Computer Engineering, or an equivalent field, with at least a year of academic or industry experience in the same field. Id. (citing Ex. 1002 ¶ 40). Petitioner also states that “[w]ith more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education.” Id. at 19 (citing Ex. 1002 ¶ 40).” slip op. at 23

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We see no reason, at this stage of the proceeding, to depart from the Board’s previous construction of this term in Omega Patents I and adopted by the Board in the 504 IPR. The Board’s previous construction is soundly premised on the written description of the ’278 patent, in accordance with Phillips. See 504 IPR DI, 415 F.3d at 12 (citing Phillips, 415 F.3d at 1315 (noting that the specification is the single best guide to the meaning of a disputed term)). As the Board noted in the 504 IPR DI, the ’278 patent describes “enabling data” as data that “may be the vehicle device code or codes, an instruction to select a code or codes from among those already stored, or the data or sequence to allow the controller 111 to generate the vehicle device code or codes, for example.” 504 IPR DI at 25 (quoting Ex. 1001, 24:8–13). This supports the Board’s construction of “enabling data” as data that “enables the recited controller to use a particular vehicle device code from among plural such codes for different vehicles by providing either (1) the code itself to the controller, or (2) data that otherwise enables the controller to select or generate the code.” Omega Patents I (Ex. 2005) at 12–13 (citing Ex. 1001, 24:5–25:28, Figs. 10–13). We adopt this construction for purposes of this decision herein. In so doing, we note that our construction is preliminary, and we advise the parties (as we did in the 504 IPR) that “[t]he parties may further develop the record at trial as to how an ordinarily skilled artisan, at the time of the invention, would have interpreted ‘enabling data’ in light of the written description of the ’278 patent, and more clearly explain any relevant differences between their respective interpretations.” 504 IPR DI at 27.” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 8,032,278
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, LtdAll claims unpatentable
  PTAB · Jan 31, 2024 · IPR2022-01094 · APJ Scott A Daniels · IPR · Final written decision

  Claims 3–12 and 15–18 are unpatentable: claims 3–4, 6–11, 15–16, and 18 as obvious over Sanford and Hsu; claims 5, 12, and 17 under their respective additional-reference grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a person of ordinary skill in the art at the time of the ’039 patent “would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1006 ¶ 26). IPR2022-00600, which is that a person of ordinary skill in the art at the time of the ’039 Patent would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of human-machine interfaces and device access security. Additional education or experience might substitute for the above requirements. PO Resp. 6–7; see also IPR2022-00600, Paper 22 at 12 (PTAB October 13, 2023) (Final Written Decision). In this proceeding, Patent Owner’s and Petitioner’s levels of ordinary skill in the art, in particular education, are not substantively different. Petitioner’s proposal requires at least two years of experience in the field of security and access control, compared to one year as proposed by Patent Owner. We maintain our determination of the level of ordinary skill in the art from IPR2022-00600, including at least one year of experience as Patent Owner urges. On this record, Patent Owner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’039 patent and the asserted prior art references. See Okajima, 261 F.3d at 1355. Indeed, the difference between one and two years of experience in the field is fairly minimal considering that neither party asserts that it is necessary to have a significant amount of experience, e.g., 5–10 years in the field. For consistency, we rely on the same level of ordinary skill in the art that we determined in IPR2022-00600.” slip op. at 11

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

    “construction with respect to the phrase “memory location defined by the provided card information” and limitation 3[D](1) as a whole, we maintain the claim construction given in IPR2022-00600 for the reasons provided here and in the Final Written Decision in that proceeding. IPR2022-00600, Paper 22, 29–36. We understand that, during an enrollment process, the claimed “biometric signature,” e.g., a fingerprint, is not yet stored in the memory, and no memory location or address has been “defined,” as in “set” or “established,” in the memory for storing the fingerprint, until card information is received. Once the card information and fingerprint are received during enrollment, the card information provides data that establishes where, i.e., at what memory location or address, the system will store the fingerprint data. The memory location or address where the fingerprint data is stored is, therefore, “contingent” on the card information, as Patent Owner’s construction requires.” slip op. at 17

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

    “Because at least Hsu, Sanford, and Tsukamura each discloses an enrollment process, in this case we need not explicitly determine whether the language from which Patent Owner argues infers “enrollment” in claim 3 is limiting. We can agree that from reading the ’039 patent in context there is As we explained in our Institution Decision the enrollment process includes step 401, which stores the biometric signature “at a memory address defined by the card data 604,” whereas in verification process 205 “step 204 reads the contents stored at a single memory address defined by the card data 604” and compares the stored biometric signature with the input biometric signature. Inst. Dec. 7 (citing Ex. 1001, 9:65–66, 8:24–26). The language of the independent claims and the requirement that where the card information has not been previously provided, “storing the inputted biometric signature,” tracks with the specification description of an enrollment phase. See Ex. 1001, 9:63–65 (“The [enrollment] process 207 is entered from the step 206 in FIG. 5, after which a step 401 stores the biometric signature received by the step 203 in the memory 124.”). Therefore, for purposes of this Decision, we will consider the limitations of claims 3, 15, and 18 to include, at least in part, an enrollment process. However, because the terms “enrolling” or “enrollment” do not create any particular dispute between the parties that we need to resolve, we need not determine whether they are, in fact limitations.” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “4. Means-plus-function terms In our Institution Decision we accepted Petitioner’s proposed constructions for the several “means for” and “code for” limitations recited in claims 15 and 18. See Inst. Dec. 42 (The Board explaining that “we find Petitioner’s proposed constructions of these term under 35 U.S.C. § 112(6) consistent with the record in this case.”). These constructions are also consistent with the District Court proceeding. Inst. Dec. 39–43; see also Ex. 1012, 1–4. Patent Owner does not address the means-plus-function terms in the challenged claims. Because patentability on the claims at issue in this case does not turn on construction of the relative structures and functions of these means-plusfunction terms, and because they are not in dispute, we maintain the constructions from our Institution Decision including that “code for” is an equivalent recitation for “means for.” Inst. Dec. 39–43.” slip op. at 18

  Patent outcomesUS 8,620,039 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,620,039
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, LtdAll claims unpatentable
  PTAB · Jan 31, 2024 · IPR2022-01093 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 13, 14, 19, and 20 are unpatentable as obvious over Hsu and Sanford; the Board did not reach the Hsu, Sanford, and Tsukamura ground.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “In AIT, the Federal Circuit explained that the “Board’s determination that Salesforce was not a real party in interest under § 315(b) relied on an impermissibly narrow understanding of the common-law meaning of the term.” Id. at 1357. For one thing, the Court pointed out that “an agent with an ownership interest in the subject matter of the suit, or one who is the trustee of an express trust or a party in whose name a contract has been made for the benefit of another, may qualify as a real party in interest.” Id. In this proceeding, Patent Owner has failed to point to any persuasive evidence, apart from software compatibility with Apple’s iOS platforms as discussed in the Agreement, that Apple has any overt interest, influence, development or design influence over Petitioner’s “Yale Smart Locks” products or App. In addition, Patent Owner has produced no evidence that Apple holds any ownership interest, assets, or expressly administers any property rights as a trustee or agent for the benefit of Petitioner indicative of real party in interest relationships under common law.” slip op. at 48

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In this proceeding, Patent Owner’s and Petitioner’s levels of ordinary skill in the art, in particular education, are not substantively different. Petitioner’s proposal requires at least two years of experience in the field of security and access control, compared to one year in Patent Owner’s case. We maintain our determination of the level of ordinary skill in the art from IPR2022-00600 including at least one year of experience as Patent Owner urges. On this record, Patent Owner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’039 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. Indeed, the difference between one and two years of experience in the field is fairly minimal considering that neither party asserts that it is necessary to have a significant amount of experience, ordinary skill in the art that we determined in IPR2022-00600.” slip op. at 11

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

    “1. “A method of enrolling” Patent Owner argues that the independent claims are specifically directed to an enrollment process, e.g., “[a] method of enrolling,” recited in the preamble of claim 1, and that the preamble should be considered limiting. PO Resp. 6. Patent Owner argues that “the ‘method of enrolling’ in the preamble of Claim 1 provides antecedent basis for ‘the enrolment method’ in the body of dependent Claim 2.” Id. (citing Ex. 1001, 12:29– 42). Petitioner disagrees, arguing that “a ‘method of enrolling’ is nothing more than a nonlimiting intended use.” Pet. Reply 13. Petitioner also asserts that this term is “not critical to the issues in dispute” and “[e]ven if the phrase is limiting, Hsu, Sanford, and Tsukamura each disclose an enrollment process.” Id. at 14 (citing Pet. 20, 36–37, 78). disclose an enrollment process and Patent Owner does not expressly dispute that they do, in this case we need not explicitly determine whether the term is limiting. We can agree that “[a] method of enrollment” provides antecedent basis for at least dependent claim 2 and that the preamble provides context to the recited method step limitations in the body of independent claim 1. See Ex. 1001 12: 41–42 (dependent claim 2 referring “to the enrollment method of claim 1”). Apart from considering the limitations of claim 1 within the context of an enrollment process, because the term does not create any particular dispute between the parties that we need to resolve, we need not determine whether it is limiting.” slip op. at 12

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

    “Consistent with our prior decision in IPR2022-00600, we determine, also in this proceeding, that Patent Owner’s construction is sufficiently accurate. See Apple, Inc. v. CPC Patent Technologies, Ltd., IPR2022- 00600, Paper 22, 29–39 (Final Written Decision); see also NTP Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (noting that, when construing claims in patents that derive from the same parent application and share common terms, “we must interpret the claims consistently across all asserted patents”). In IPR2033-00600, we explained that [c]onsidering the abstract and the specification of the ’039 patent, what “defining, dependent upon . . .” means as a whole, in the context of claim 1 and “a method of enrolling,” is that during an enrollment process, the claimed “biometric signature,” e.g., a fingerprint, is not yet stored in the memory and no memory location or address has been “set” or “established” for the fingerprint. When the fingerprint, and then the card, is provided to the system during enrollment, the card information provides data that establishes where, e.g., at what memory location or address, the system will store the fingerprint data.8 IPR2022-00600, Paper 22, 30. We also explained that “[i]mportantly . . . we do not understand that ‘defining . . . a memory location,’ or Patent Owner’s alternative wording, ‘establishing’ or ‘setting,’ means ‘[creating] . . . a memory location in a local memory.’” Id. at 32. We explained further that” slip op. at 15

  Patent outcomesUS 8,620,039 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,620,039
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Dec 20, 2023 · IPR2022-01089 · APJ Barry L Grossman · IPR · Final written decision

  Petitioner did not prove claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49

  • Skill levelSkill level board ownOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

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

    “biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. slip op. at 60

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Dec 20, 2023 · IPR2022-01045 · APJ Barry L Grossman · IPR · Final written decision

  Petitioner failed to show claims 1–13 unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “D. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. There is no persuasive evidence of joint funding. There is no persuasive evidence of direct or implied coordination between Apple and Petitioner as to their respective decisions to bring these proceedings. There is no persuasive evidence that Apple was a “litigating agent” for Petitioner.29 Under these circumstances, a finding that Apple is a privy of Petitioner “would be improper.” See Uniloc 2017, 989 F.3d at 1029; see also Google LLC v. DDC Technology, LLC, IPR2023-00708, Paper 29 at 21–37 (PTAB Oct. 25, 2023) (determining that the mere existence of some business relationship was not sufficient to establish an RPI or privy status between the parties). Accordingly, based on the totality of the evidence of record and our” slip op. at 49

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “4. Conclusion on RPI Considering the totality of the evidence and the controlling legal authority discussed above, we determine that Petitioner has met its burden in establishing that Apple is not a real party-in-interest. We recognize that “a nonparty to an IPR can be a real party in interest even without entering into an express or implied agreement with the petitioner to file an IPR petition.” AIT, 897 F.3d at 1354. In RPX, decided on remand from the Federal Circuit in AIT, “the evidence strongly suggest[ed]” that RPX was representing Salesforce’s interests in filing the IPR proceedings at issue in that case. RPX, IPR2015-01750, Paper 128 at 31. There is no such strong evidence in the proceeding before us. Indeed, the evidence is to the contrary. See, e.g., Ex. 1022 (Petitioner’s Interrogatory Responses). “Most critically,” in RPX, “Salesforce paid RPX to reduce Salesforce’s patent litigation exposure, and RPX filed the [ ] IPRs despite having no apparent risk of infringement liability itself.” RPX, IPR2015- 01750, Paper 128 at 31. Again, the evidence in RPX is significantly different from the evidence in the proceeding before us, where Petitioner was sufficiently threatened with infringement by Patent Owner to create jurisdiction for Petitioner’s Declaratory Judgment complaint against Patent Owner to establish that Petitioner did not infringe the ’208 patent. See, e.g., Ex. 2007 ¶¶ 120–128 (Petitioner’s Declaratory Judgment complaint seeking in Count II “a declaration that each entity [comprising Petitioner] does not infringe any claim of the ’208 Patent.”). The Declaratory Judgment complaint was filed on May 23, 2022 (see Ex, 2007 stating “Filed 05/23/22”). The Petition in this IPR proceeding was filed on June 3, 2022 (see Paper 5). The perceived benefits of challenging patentability in an inter partes review rather than challenging validity in a district court are well-known. Apple Inc. v. Vidal, 63 F.4th 1, 17 (Fed. Cir. 2023) (acknowledging “the realistically perceived advantages of the IPR process, including the applicability of a lighter burden of persuasion to prevail in challenging a patent claim than the burden applicable in district court.”). In such circumstances, “equitable and practical considerations” point clearly towards Petitioner having a valid, independent interest in filing the Petition in this proceeding. In AIT, the Federal Circuit also points us to our own Trial Practice” slip op. at 41

  • Skill levelSkill level board ownDecided for patent owner

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning). Patent Owner states it “does not object to the defined level of skill in the art adopted in co-pending IPR2022-00601 (the ’601 IPR) challenging the ’208 Patent.” PO Resp. 8 (citing “IPR2022-00601, Paper 11 at 11–12”). The cited claim construction is from our Decision granting institution of an inter partes review in the ’601 IPR. The level of skill in the ’601 IPR was revised slightly in our Final Written Decision in the ’601 IPR. See ’601 IPR, Paper 31 at 15. The level of skill in the ’601 IPR was based on the arguments and evidence in the ’601 IPR, which differ from the arguments and evidence in the case before us. Accordingly, based on the prior art and the sophistication of the” slip op. at 54

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 8 (citing Ex. 1005, ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 54

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 5, 2023 · IPR2022-00974 · APJ Aaron W Moore · IPR · Final written decision

  Claims 6–9, 11, 13, 14, 18, 22–25, 27, 28, 32, and 36–38 are unpatentable as obvious over Hwang and McFarland.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree.” Pet. 6–7 (citing Ex. 1003 ¶¶ 38–40). Patent Owner has not proposed an alternative, and, having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition, as we did in the Institution Decision, finding it consistent with the ’641 patent and the asserted prior art. C.” slip op. at 9

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

    “Petitioner proposes a construction for the term “radio network information” in dependent claims 9, 14, and 28. See Pet. 7. Patent Owner has not proposed a specific construction for any claim term and has not disputed Petitioner’s proposed construction for “radio network information.” In view of the analysis below, we determine that we need not expressly construe “radio network information,” and that no other claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied
  • Expert testimonyPetitioner expert creditedPetitioner expert discountedMixed

    “Figure from Page 17 of the Akl Supplemental Declaration We find it unclear from this figure and the associated explanation in the Declaration (see Ex. 1038 ¶¶ 30–32) how the map burst and traffic burst blocks in green and blue factor in, because they cannot be received by the 2.5 MHz device. Dr. Akl testified that “McFarland teaches that necessary messages, e.g., including broadcast messages, or any other messages that need to be received by multiple nodes, ‘must be transmitted in a mode that all nodes to which they are directed are able to receive,’ that is, the base mode (e.g., the core-band).” Ex. 1038 ¶ 31 (quoting Ex. 1004 ¶ 60). He then states that one “would understand that because Hwang’s AAS_MAP_Burst_Location_IE contains system information and an index of where the MAP bursts are going to be, it is a message that needs to be received by multiple nodes, and thus is a necessary message that must be transmitted in a mode that all nodes to which they are directed are able to receive.” Id. It does not appear, however, that the blue and green blocks could be part of “broadcast messages” intended for a 2.5 MHz mobile station because they cannot be received by that mobile station. We thus do not agree that McFarland would suggest including map burst blocks in the 2.5 MHz band because they are “broadcast messages.” We also fail to see why the map burst locations would need to be received by multiple nodes, as that seems to be data that is tailored to the mobile device with which the base station is communicating.7 However, we do find it readily apparent that if the base station and the mobile station have determined to communicate using a particular bandwidth, as contemplated by the combination presented in the Petition, the map bursts necessarily would be included in that bandwidth in order for the communication scheme to be successful. The mobile station would need to” slip op. at 16

  Patent outcomesUS 8,953,641 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,953,641
• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 5, 2023 · IPR2022-00972 · APJ David C Mckone · IPR · Final written decision

  Claims 1–10 are unpatentable because Speight anticipates them; the Board found Peisa anticipation and Peisa–Heo obviousness unproven for the challenged claims in those grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field, as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 14 (citing Ex. 1004 ¶¶ 47–49). Patent Owner does not contest Petitioner’s contention or propose a level of skill. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “agreement that this claim term should be read as reciting two mutually-exclusive alternatives with respect to the “third parameter.” Dec. 11. The parties do not challenge this construction in the Patent Owner Response, Reply, or Sur-reply. On the complete record, we construe “wherein resources are allocated for data of each channel having a second parameter above zero prior to another channel’s data for transmission having a third parameter less than or equal to zero” as reciting two mutually-exclusive alternatives with respect to the “third parameter.”” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition is required to identify “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Petitioner argued in the Petition that “as properly construed, the claimed ‘first parameter,’ ‘second parameter,’ ‘third parameter,’ and ‘fourth parameter’ are four different parameters.” Pet. 17–18. In the Institution Decision, Petitioner prevailed on that point and “we agree[d] with Petitioner that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels.” Dec. 14. Patent Owner “relie[d] on the Board’s construction ‘that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels,’” and proposed distinct parameters in the Specification that it alleges are examples of second and third parameters, albeit not the same two parameters proposed by Petitioner. PO Resp. 9, 29. Petitioner now proposes new constructions for the second and third parameters that would limit those parameters to the two examples it advanced in the Petition and improperly supports these new constructions with new expert testimony and an exhibit from the prosecution of a later patent. Reply 20–25; Ex. 1040 ¶¶ 20–29; Ex. 1038. See also Consolidated Trial Practice Guide (“TPG”)10 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). As Patent Owner observes (Sur-reply 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 21), it has no opportunity to introduce rebuttal evidence contesting the new constructions. See TPG 73–74 (Nov. 2019) (“The sur-reply may not be accompanied by new evidence other than deposition transcripts of the crossexamination of any reply witness. Sur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony.”). We agree with Patent Owner that it would be unfair to consider Petitioner’s new construction. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”). Thus, Petitioner has forfeited its new claim construction arguments and they will not be considered. See TPG 74 (“While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). Moreover, these arguments would be unpersuasive even if considered. Petitioner has, at most, cited description in the Specification to show that its identified second and third parameters are examples corresponding to the recited second and third parameters. Ex. 1005 ¶¶ 84–95. This description does not define the second and third parameters nor purport to exclude from the claims any parameter that would otherwise meet the language of the claims. The prosecution history to which Petitioner cites, that of a child application, took place after the prosecution of the ’466 patent and thus, does not constitute a definition or disclaimer of subject matter for claims of the ’466 patent. In any case, the brief argument in the cited response to office action, that “[i]n the algorithm, the first value is provided by the wireless network for each of a plurality of buffers where the buffer having the second value above a threshold transmits data first,” does not define the second and third parameters, disavow any values from those parameters, or even discuss the third parameter. Ex. 1038, 12. Petitioner’s extrinsic evidence, Dr. Akl’s testimony, does little more than repeat the arguments in the Reply and, thus, is of little value. Ex. 1040 ¶¶ 20–29. In sum, we maintain our construction that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels. Under this construction, RAAUq” and RAAUq’, respectively, could potentially be second and third parameters, as could RAAUq’ and RAAUq”, respectively, as long as they satisfy the rest of the pertinent language of the challenged claims.” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “production, we still would find that a skilled artisan would not have been able to ascertain from the disclosure in the ’421 application that RAAUq’ could take values less than zero. Instead, even if we were to credit Dr. Lomp’s testimony, to conclude that RAAUq’ can take negative values, a skilled artisan would need to program computer software to simulate the ’421 application’s algorithm and correctly choose starting parameters and other context variables without guidance from the description in the ’421 application. This case is similar to that in New Railhead, where the written description was insufficient because “one of ordinary skill in the art must first make the patented invention before he can ascertain the claimed features of that invention.” 298 F.3d at 1295. This case also is similar to Los Angeles Biomedical Research Institute, in which an application’s written description was insufficient because assumptions and starting variables were not knowable from the disclosure in the application. 849 F.3d at 1058. Thus, even if we were to conclude that Patent Owner has met its burden of production, a preponderance of the evidence shows that the ’421 application does not provide written description support for Alternative A. In sum, we conclude that the ’421 application does not provide written description support for the challenged claims and that, therefore, Speight is prior art to the challenged claims.” slip op. at 41

  Patent outcomesUS 9,681,466 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 9,681,466
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Nov 30, 2023 · IPR2022-01006 · APJ Barry L Grossman · IPR · Final written decision

  The Board held claims 1–17 not unpatentable because the cited references did not disclose or suggest limitations D(1), D(2), and D(3).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “6. Conclusion Concerning Section 315(b) The totality of the evidence before us does not establish anything other than a traditional business relationship between Petitioner, who manufactures locks and similar security products that interface with smartphones, and Apple, who sells a smartphone. There is a sharing of confidential information between these parties. This common form of conducting business, without more, does not establish a relationship sufficient to make Apple a real party-in-interest or a privy of Petitioner in this inter partes review. There is no persuasive evidence that Apple has any control or substantive involvement over the Petition or over Petitioner’s role in this proceeding. Accordingly, based on the totality of the evidence of record and our” slip op. at 48

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “relationship, involving legally binding contractual relationships between Apple and Petitioner, is sufficient under Taylor to make Apple a privy to this IPR proceeding. Id. Patent Owner also asserts that Apple is a privy to this IPR proceeding because Petitioner is capable of adequately representing Apple’s interests in this IPR proceeding. Id. On the record before us, for purposes of this Decision, we disagree with Patent Owner’s conclusion that Apple is a privy for purposes of this IPR proceeding. Patent Owner ignores the practical consequences of its own actions that precipitated the current situation.” slip op. at 47

  • Skill levelOther

    “not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. §42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 53

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

    “biometric signal.” Accordingly, we determine that we need to construe specifically the term “biometric signal” in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). slip op. at 57

  Patent outcomesUS 9,665,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,705
• Apple Inc. v. CPC Patent Technologies Pty, LtdAll claims unpatentable
  PTAB · Oct 13, 2023 · IPR2022-00600 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 19, and 20 are unpatentable as obvious over Bradford, Foss, and Yamane.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’039 patent would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of human-machine interfaces and device access security. Additional education or experience might substitute for the above requirements. Inst. Dec. 9 (quoting Pet. 4). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. Because there is no express dispute as to the level of ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’039 patent and the asserted prior art, we maintain our reliance on Petitioner’s proposed level of ordinary skill in the art as set forth above.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “litigation that “dependent upon,” recited in claim 1 and 19, should be given its “[p]lain and ordinary meaning, defined as ‘contingent on or determined by.’” Pet. 6 (citing Ex. 1032, 2). Patent Owner agrees, adding that “a contingent upon or determined by, the received card information is not ‘dependent upon’ under Apple’s claim construction.” PO Resp. 7 (emphasis added). Patent Owner contends, however, that despite this agreed upon meaning, the arguments in the Petition are not consistent with the plain and ordinary meaning. Id. For purposes of understanding claim 1, given the plain and ordinary meaning of “dependent upon,” limitation 1[c] would read: [1c] defining, [contingent upon or determined by] the received card information, a memory location in a local memory external to the card; Because neither party disputes the agreed upon meaning of “dependent upon,” we will consistently apply the plain and ordinary meaning of “dependent upon” as “contingent on or determined by.”” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “2. Biometric card pointer system Petitioner also notes that the District Court construed “biometric card pointer system” recited in both claims 1 and 19 “as a ‘[n]onlimiting preamble term with no patentable weight.’” Id. (citing Ex. 1033, 1). Neither party, on this record, disputes this construction, and therefore, to the extent necessary, we rely on the District Court’s construction.” slip op. at 13

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

    “preponderance of evidence that a person of ordinary skill in the art, who was aware of all the prior art in the relevant field, would have recognized that Bradford does not expressly disclose how a user’s ID information entry would have been retrieved from a database. Petitioner and Dr. Sears have further shown that, in turn, the person of ordinary skill in the art would have looked to Foss, which more specifically teaches that information on a user’s ID card was a known way to define, that is to “establish” or “set” a memory location, for example with the user’s player ID record entry, where a user’s input of a second authenticator, e.g., a fingerprint, would be stored. Bradford’s failure to teach (alone, or in combination with Foss) “first receiving card information and then defining a memory location based on that received card information.” See PO Resp. 9–17; PO Sur-Reply 3–4, 7– 10. For example, Patent Owner argues that Petitioner’s expert, Dr. Sears, “testif[ied] that Bradford teaches a process in which the steps are reversed - a memory location is defined before any card information is received.” PO Sur-Reply 3 (citing Ex. 2004, 31:12–18). We do not agree that Dr. Sears’ testimony conflicts with claim 1. When claim 1 is properly interpreted, as we have addressed herein, the creation of a player account in Bradford, or Foss, prior to receiving the card information does not preclude subsequently identifying a memory location (among preexisting memory locations/addresses within the preexisting player ID database) and establishing that memory location as the location where new biometric data, e.g., a player’s fingerprint, is going to be stored. See Pet. Reply 23–24; Pet. 26–28. That is, creating a player account in Bradford does not preclude subsequently “defining, dependent upon the received card information, a memory location,” as recited in claim 1. Pet. Reply 23–24; Pet. 26–28. In other words, we do not agree that claim 1 excludes the existence or creation of a player account record in “a memory location” prior to receiving card information. Claim 1 precludes the establishment or setting of a memory location for the “biometric signature” prior to receiving card information, but “defining” does not mean that the memory location is created or somehow brought into existence only after “receiving card information.” Considering our claim interpretation and the parties’ interpretations and constructions of limitation [1c], we have explained why Patent Owner’s evidence, and why we agree with Petitioner that a person of ordinary skill in the art would have understood that the Bradford-Foss combination teaches all the elements in limitation [1c]. Specifically, we are persuaded on the complete record now before us that where Bradford discloses an enrollment process including receiving card information and biometric information, but does not describe specifically how to store the biometric information, Foss teaches how, i.e., using card data to define, that is—to establish or set a memory location, e.g., the player’s user account, for storage of the biometric information in a local memory.” slip op. at 44

  Patent outcomesUS 8,620,039 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,620,039

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.