- Siemens Industry Software Inc. v. Synopsys, Inc.All claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01212 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–8, 11–20, and 23–25 are unpatentable as obvious over Sano; the Board found the Cheng grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Thus, we look to the language of the claims, the description in the patent disclosure, and the prosecution history to determine to what extent the claims require the registers to be at a fixed location. We begin with the language of the claims. Using claim 1 as an example, the only mention of “fixed locations” occurs in its first step, which recites, “receiving a placement for a chip layout, where the placement includes a set of registers at fixed locations in the chip layout.” Ex. 1001, 10:57–59. The remaining limitations of claim 1 do not address the locations of the registers, instead setting forth generating a timing criticality profile (Ex. 1001, 10:60–63) and clustering the registers based on that profile (Ex. 1001, 10:64–11:7). Thus, the fixed location of the registers is limited, by the plain language of the claim, to the placement for the chip layout that is being received in the first step.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“persuaded by Petitioner’s arguments and disagree with Patent Owner’s. Our claim construction requires that the registers be fixed only during the step of receiving a placement for a chip layout that includes fixed registers, and Patent Owner does not contest that Sano receives a placement of registers at fixed locations in a chip layout. Moreover, even if claim 1 was interpreted to inherently require fixed register locations throughout its recited steps, Petitioner has shown by a preponderance of the evidence that a person having ordinary skill would have found it obvious to perform each of claim 1’s steps of receiving a register placement, generating a timing criticality profile, and clustering the registers based on the timing criticality profile, without physically moving the registers, based on the teachings of Sano. We credit the statement of Dr. Robins that, “[t]he timing information used to create the setup evaluation value depended on the locations of the FFs. Thus, if the FFs were moved during this process then the evaluation values would become inaccurate.” Ex. 1003 ¶ 85. Dr. Robins further clarified that “if registers were allowed to move . . . during the clock synthesis phase. . . . “any timing-based information would then become inaccurate . . . because it was based on the old positions of these registers and not their purportedly new positions,” and therefore, a person having ordinary skill in the art would know that “you should keep the registers in fixed locations and not move them because otherwise you are creating moving targets with respect to timing behavior and possible timing violations.” Ex. 2022, 43–44. This reasoning is consistent with Dr. Friedman’s explanation of how setup timing evaluation is determined. Dr. Friedman stated that it involves determining “the delay of the data signal to propagate through” the data path between two registers. Ex. 1018, 11–12. Dr. Friedman separately characterized Figure 3 of the ’567 patent as an abstraction of a clock-tree structure that is “about data paths and there’s a long path and a short path and you treat them differently.” Ex. 1018, 74. Dr. Friedman contests the obviousness of keeping the registers in fixed locations in Sano’s first embodiment because the locations could be changed for reasons such as satisfying a power dissipation or speed criterion. Ex. 2019 ¶¶ 62, 66. However, Dr. Friedman does not contest Dr. Robins’ statement that such a change in locations would create inaccuracies in Sano’s timing-based clustering process. Thus, considering the arguments of the parties and the entirety of the evidence, we determine that Petitioner has sufficiently shown that a person of ordinary skill in the art reading Sano would have found it obvious to maintain the physical locations of the registers during clustering, particularly in situations not requiring consideration other possible factors such as satisfying a power dissipation or speed criterion. Furthermore, we agree that Petitioner’s citations to the first embodiment alone, located at Sano column 17, line 20 through column 26, line 3, provide teachings for each claim element. Thus, Patent Owner’s arguments that registers move in the fourth embodiment (Resp. 38–39) do not show that Sano’s first embodiment requires register movement. Moreover, we agree with Petitioner’s arguments that claim 1’s generation of a clock tree ends with the clustering steps, and any movement of registers after that step, such as Sano’s subsequent optimization method (Resp. 39– 41) or Sano’s moving clusters of registers into a placement restriction area (Response 41; Sur-reply 5–7), does not bear on whether Sano teaches the steps set forth in claim 1. Reply 8; Ex. 2001 (“the location of the registers [in the ’567 patent] do not change during clock-tree generation but may change during post processing optimization”). Patent Owner argues that these arguments are newly presented because Petitioner did not argue that Sano’s silence discloses the “fixed location limitation,” and should not be considered. Sur-reply 1. We do not agree. The Petition advanced the assertion that the claimed “fixed registers” were met by Sano’s receiving a network placement having registers in fixed locations, without setting forth any separate description in Sano to show that those registers were fixed. Thus, Petitioner’s assertion of Sano’s silence on this issue is not a different theory of obviousness, but a further explanation provided to address arguments presented in Patent Owner’s Response. In view of the foregoing, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 would have been obvious over Sano.” slip op. at 31
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We agree that Petitioner has made the requisite showing. Patent Owner admits that Sano’s evaluation values are based on data path delays. Sur-reply 9. Dr. Friedman states that a person of ordinary skill in the art in the computer science world would be familiar with timing slack with respect to a setup requirement. Ex. 1018, 14–16. Dr. Friedman further states that a person of ordinary skill in the art in the electrical engineering world would also “definitely understand” the concept, which is the “idea that you’ve got clock period minus the path delay plus any effective skew.” Id. at 27–28. Dr. Friedman further states that such a timing slack calculation would involve not only subtraction of data path delays, but also any effect of clock skew and “all the delays from getting out of that initial register . . . to set up into that register,” including the “setup time into the final register.” Id. at 17, 26, 29–30. Dr. Robins states that Sano’s Figure 9A–E illustrate that setup error depends on the length of time it takes data to travel from the output Q of launcher FF 502A to the input D of capturer FF 502B (i.e., the data path delay), a time Ts by which the changing data must precede the rising clock edge at the capturer FF 502B (i.e., setup time or setup requirement of the FF), the relationship between the rising clock edge CK1 at the launcher FF 502A and the rising clock edge CK2 at the capturer FF 502B (i.e., the clock skew), and the time between rising edges of the clock CK (i.e., the clock period). Ex. 1003 ¶ 104 (citing Ex. 1004, 22:48-65, 23:8-17). Based on the cited description of Sano, which describes setup error, Dr. Robins’ statements explaining how Sano’s Figure 9 illustrates each of the claimed variables to be considered in determining setup error, and Dr. Friedman’s statements explaining how timing slack, including the claimed calculation, would have been known to the person of ordinary skill in the art, we determine that Petitioner has shown, by a preponderance of the evidence that claims 2 and 14 would have been obvious to one having ordinary skill in the art.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner argues, and we agree, that Cheng teaches only a binary (true/false) determination of whether a violation exists for each pair. Resp. 59–60; Sur-reply 22–23. There is no teaching in Cheng that such values should be stored for later use for the claimed purpose of clustering a pair of registers having a higher timing criticality and clustering a second pair of registers having a lower timing criticality. Resp. 60; Ex. 1001, 10:64–11:3. As Patent Owner points out, “Cheng does not disclose clustering a pair of registers that does not violate a timing condition.” Id., n.4. Petitioner counters that Cheng must store such values in order to perform its step 490, clustering the registers “as needed in order to correct any setup time and/or hold time violations.” Reply 23–24 (citing Ex. 1005, 8:278–30; Ex. 1019 ¶ 55). Petitioner argues that Cheng performs all violation analysis at step 480, and that information from the analysis is used at step 490 to generate a clock-tree. However, Patent Owner argues, and we agree, that Cheng does not describe how the presence of a violation is used in a comparison of timing calculations. Sur-reply 23–24. Although Cheng “attempts to correct the violations by changing positions of registers in the clock tree . . . registers can be swapped from cluster to cluster in the clock tree,” or “change the order in which a pair of dependent registers are clustered,” Petitioner does not explain how this correction relies on any comparison of timing value calculations between register pairs, either in Cheng or in the knowledge of a person having ordinary skill in the art.” slip op. at 51
Patent outcomesUS 7,546,567 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,546,567 - Delta T, LLC v. Macroair Technologies, Inc.All claims unpatentablePTAB · Dec 12, 2022 · IPR2021-01214 · APJ Tina E Hulse · IPR · Final written decision
The Board held claim 15 unpatentable as obvious over Madsen, finding the mounting shaft could be detachably secured in the hub openings and have a constant cross section.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a substantive difference between the parties’ respective definitions of the level of ordinary skill in the art, nor do the parties assert that there exists any such difference. Although Petitioner’s definition includes specific knowledge of fans or other rotary machines, we understand Patent Owner’s broader definition to include such knowledge. We, therefore, adopt Petitioner’s definition of the level of ordinary skill in the art as reasonable and consistent with the level of skill reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the prior art itself may reflect an appropriate level of skill in the art). We also find Drs. Sheard and Paulus are qualified to opine on the perspective and understanding of a person of ordinary skill in the art, as they have at least ordinary skill in the art. See Ex. 1002 ¶¶ 3–11; Ex. 1003; Ex. 2001 ¶¶ 4–11; Ex. 2002; see also Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F. 4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case— like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”).” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“2. District Court Constructions In the related district court proceeding, the district court construed certain claim terms of the ’588 patent. Ex. 1014. Petitioner proposes claim constructions that are consistent with the district court’s constructions. Pet. 10–17. Patent Owner states that it “adopts the district court’s claim constructions for the purposes of this Response.” PO Resp. 10 (citing Ex. 1014). The district court has construed the following ’588 patent claim terms: Term Construction “hub assembly” “a hub with multiple parts that are assembled together” (Ex. 1014, 13– 14) “openings” “one or more locations where the arm members may be detachably secured” (Ex. 1014, 12–13) “detachably secured”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Rather than rely on the definitions of “secure” from a general dictionary, we focus on the Specification as the “single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation omitted). The Specification describes the use of nuts and bolts that can be used to fix or attach the arms into the slots of the hub. Ex. 1001, 4:47–51 (stating “nuts 212 can then be used to secure the arms 144 in the slots 202”) (emphasis added). But that is not the only use of “secure” in the Specification. As Petitioner notes, the Specification also describes a “securing assembly 152 that inhibits the hub from falling when the motor shaft breaks or the hub otherwise disengages from the shaft.” Id. at 3:42–45 (emphasis added). We also credit Dr. Sheard’s explanation of the operation of the ’588 patent’s securing assembly as allowing for rotational movement while preventing loss: [T]he hub 110 of the ‘588 Patent is “secured” to the motor mount 106 by way of the “securing assembly 152.” This securing assembly prevents the hub from “falling away from the motor mount” (i.e., prevents the hub from becoming lost or coming loose), but the relative engagement between the first member 154 and the second member 170 of the securing assembly continues to allow for relative rotation between the hub 110 and the motor mount 106. This relative rotation between the hub 110 and the motor mount 106 of the ‘588 Patent is not only allowed, but is absolutely necessary if the hub is going to rotate so that the fan blades may turn. Ex. 1024 ¶ 67. Patent Owner argues that the securing assembly is irrelevant to the construction of “secured” because it does not refer specifically to the arm members being detachably secured in the openings. PO Sur-reply 13. We disagree. Claim terms must be read in light of the specification and must not import limitations from the specification into the claims. Phillips, 415 F.3d at 1323. Moreover, we presume the specification uses a word consistently throughout the patent, even if describing a different embodiment. See Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012) (relying on the specification’s use of the word “programmable” to describe a different embodiment to construe the same term in the claim, as “there is no reason to construe the term ‘programmable’ differently when used to describe [the embodiment of the claimed invention]”); see also Phillips, 415 F.3d at 1314 (noting “claim terms are normally used consistently throughout the patent”). Thus, we decline to limit the construction of “secured” to the preferred embodiment, as proposed by Patent Owner, and consider the Specification’s description of the “securing assembly” to inform the meaning of “secured” as encompassing rotational movement and preventing loss. Accordingly, we construe the term “secured” to mean the arm members are “fixed or attached (while allowing for rotational movement) so that the arm members cannot be lost.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“presented at trial, we find Petitioner has the better position. We are persuaded that a person of ordinary skill in the art, seeing the unlabeled fasteners identified by Petitioner, would have found it obvious to use removable fasteners such as screws or bolts to detachably secure the mounting shafts in the openings formed by the bearing housings. See Ex. 1006, Figs. 3 and 5 (reproduced and annotated at Pet. 41). We credit the testimony of Dr. Sheard that a person of ordinary skill in the art would have been motivated to make the fan blade mounting shaft of Madsen detachably secured in the openings of the hub to “allow for the replacement of worn or broken parts, or for replacement of parts according to an ordinary course of maintenance.” Ex. 1002 ¶ 119. Dr. Sheard explains that the bearings of Madsen facilitate the rotation of the fan blade mounting arms within the bearing housing and are subject to wear and tear by the nature of the friction to which they are exposed during normal use. Id. ¶ 120. Thus, we are persuaded that a person of ordinary skill in the art would understand that the bearings of Madsen may need to be repaired, replaced, or maintained over time, which would require a user to access the inside of the bearing housing. Id. According to Dr. Sheard, “the [person of ordinary skill in the art’s] general knowledge of the need to repair, replace, or maintain fan parts such as bearings would motivate the [ordinary artisan] to combine this knowledge with Madsen in order to make the bearing housing 54 detachable from the hub.” Id. Moreover, as Dr. Sheard further explains, we find that the ordinary artisan “would be motivated to make the unlabeled fasteners illustrated in Figure 3 of Madsen . . . to be removable fasteners (e.g. screws, bolts, or other threaded fasteners). This use of removable fasteners provides a well known and easy manner for the user to access these parts in need of replacement.” Id. Dr. Sheard opines that because fans of different sizes may require blades of different lengths and fan blade mounting shafts of different designs, a person of ordinary skill in the art would have been motivated to make a single hub that accommodates different mounting shafts and blade lengths using a detachably secured mounting shaft. Id. ¶ 123. In doing so, manufacturers could avoid the cost of making multiple different hubs for different sized mounting shafts and would allow the end user the advantage of choosing different blades lengths and types for a given hub. Id. Thus, we are persuaded that these known problems in the art would have motivated a person of ordinary skill to modify Madsen to use a detachably secured mounting shaft. See ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350, 1360 (Fed. Cir. 2015) (“It is well settled that, even where references do not explicitly convey a motivation to combine, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”) (internal quotations and citation omitted). Finally, we find a preponderance of the evidence supports Petitioner’s assertion that because detachably secured connections between an intermediate arm member and hub were well known to a person of ordinary skill in the art, it would have been obvious to combine those known connections with the design of Madsen “as an art equivalent type of connection, yielding the predictable result of restraining movement of the intermediate arm member with respect to the hub.” Id. ¶ 124; see also KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 25
Patent outcomesUS 8,579,588 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,579,588 - PTAB · Sep 21, 2022 · IPR2022-00706 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–10, 12–17, 19, and 20 on all petitioned grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314, the Office may not institute review of fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). For the reasons expressed below, we determine that Petitioner has demonstrated a reasonable likelihood of establishing that at least claim 1 is unpatentable. In accordance with the SAS decision and 37 C.F.R. § 42.108(a), we institute an inter partes review of all challenged claims of the ’176 patent on all grounds alleged by Petitioner. D. THE CHALLENGED CLAIMS” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Here, neither party proposes an interpretation of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to depart from that approach. B. LEVEL OF ORDINARY SKILL IN THE ART” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not contest Mr. Crevelt’s testimony, and we discern no reason to question Mr. Crevelt’s credibility. Thus, for purposes of institution, we adopt the level of skill in the art proffered by Petitioner. C. LEGAL STANDARDS” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner challenges claims 1, 2, 4–10, 12–17, 19, and 20 as obvious based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,466,176 - PTAB · Aug 31, 2022 · IPR2022-00614 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1, 2, 6–11, 14–20, and 22–26 based on a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 9 (citing Ex. 1001 ¶ 37). Patent Owner does not presently challenge Petitioner’s definition of the level of ordinary skill in the art. On this record, we adopt Petitioner’s formulation regarding the level of ordinary skill in the art. We also find that Petitioner’s formulation is consistent with the level of skill reflected by the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes construction for any of the claim terms. Pet. 9–10. Accordingly, we decline to construe any claim terms at this time. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,809 - PTAB · Aug 31, 2022 · IPR2022-00663 · APJ Carl M Defranco · IPR · Institution
Review instituted for claims 1, 2, 4–9, 11–17, 19, and 20; Everi showed a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion We have fully considered Everi’s showing with respect to how Smith discloses or renders obvious each of the steps of method claim 1. See Pet. 14–27. In doing so, we conclude that Everi demonstrates a reasonable likelihood that the method of challenged claim 1 is unpatentable as obvious over Smith.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“over Smith. See Pet. 10–47. In challenging claim 1, Everi provides a detailed mapping of how Smith satisfies each of the recited steps. See id. at 17–27. Although Sightline does not respond to Everi’s challenge at this stage, we nonetheless consider Everi’s showing with respect to each of the recited steps of method claim 1.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. Here, neither party proposes an express construction of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to further construe any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“Everi’s declarant, Mr. Crevelt, testifies that one skilled in the art during the relevant time frame “would have at least a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Ex. 1001 ¶ 37. At this stage, Everi’s formulation of the relevant skill in the art appears reasonable. Hence, we adopt it for purposes of institution. We also note that Everi’s formulation appears consistent with the level of skill reflected in the asserted prior art.” slip op. at 6
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,196,123 - PTAB · Jul 14, 2022 · IPR2022-00411 · APJ Paul J Korniczky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6–9, 11, or 13 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“authority to institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a) (2018). After considering the Petition, Preliminary Response, and other evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we deny Petitioner’s request to institute an inter partes review of claims 1, 2, 6–9, 11, and 13 of the ’690 patent.” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“2 The substantive discussion in Petitioner’s three declarations are essentially identical to each other and to the Petition. For example, pages 40–74 of the Petition are essentially identical to a single paragraph in each of the declarations –– Hopkins Decl. ¶ 88 on pages 54–92, Keough Decl. ¶ 88 on pages 63–97, and Denton Decl. ¶ 65 on pages 46–81. Thus, we question whether the declarations provide independent analysis and we give the declarations little, if any, weight. See Intex Recreation Corp. et al. v. Team Worldwide Corp., IPR2018-00875, Paper 129 at 40, n. 15 (PTAB Sept. 11, 2019) (“We further note that Dr. Stevick’s testimony is nearly identical to the language appearing in the Patent Owner Response, down to the case citation. This identity in language causes us to attribute less weight to a declarant’s testimony.” (citations omitted)).” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that Petitioner’s definition is unclear. Prelim. Resp. 14. Petitioner’s definition includes unclear and subjective requirements such as that the person of ordinary skill in the art have (a) worked “long enough to be aware of” certain items, including unexplained “primary existing RV features,” (b) familiarity with unexplained “common terminology,” (c) “good mechanical aptitude,” (d) “good spatial perception,” (e) “significant experience” with a wide variety of roles, and (f) “sufficient awareness of the various governmental regulations applicable to RVs.” Id. (citing Pet. 18–20). Patent Owner’s proposed definition of the person of ordinary skill in the art appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’690 patent. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Patent Owner.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“While we generally agree with Patent Owner that a person of ordinary skill in the art would understand that a truss and beam, as used in the ’690 patent, are two different structures, serve different purposes, and provide different benefits to the overall design of a chassis, Patent Owner identifies the function, but not the structure, of a truss and beam. After considering the extrinsic and intrinsic evidence, we construe: (1) a beam to be a “body, with one dimension large compared with the other dimensions, configured to carry lateral loads (perpendicular to the large and bending dimension) and bending movements;” and (2) a truss to be a “frame built from members in tension and compression.” These definitions are consistent with the support structures shown in Figures 7 and 9 and discussed in column 3, lines 21–48 of the Specification. Referring to Figures 7 and 9, for example, truss 93C is a frame built from members in tension and compression and beam 93D has one large dimension and supports loads applied to its perpendicular axis. In addition, third section 93 of chassis 90 has beams, not trusses. Ex. 1001, 3:26–28.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,046,690 - Interactive Communications International, Inc. v. Blackhawk Network, Inc.All claims unpatentablePTAB · Mar 15, 2022 · PGR2020-00084 · APJ Frederick C Laney · PGR · Final written decision
Claims 1–19, 21–42, and 44–53 are unpatentable as obvious over Szrek; claims 20 and 43 are unpatentable as obvious over Szrek and Gilmore.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s contention persuasive. We agree that the description of a POSA in this case, which is most consistent with the scope and content of the ’894 patent and the prior art, properly includes a working knowledge of both POS activation systems and lottery systems. Therefore, the level of skill in the art for this case is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Although Patent Owner’s proposal most accurately reflects the background of the hypothetical person of ordinary skill in the art, the differences between the parties’ proposed formulations are not material to any issue in dispute and the parties do not contend otherwise. All of the findings and conclusions set forth below would have been the same had we instead adopted Petitioner’s proposed formulation.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“After considering the parties’ arguments and evidence, we determine that the plain meaning of “transaction processor”/“transaction processor system” applies, which is a processor [system] that processes transactions between two devices.8 We agree with Petitioner that adding “third party” to the plain meaning simply creates uncertainty. For example, it is unclear whether “third party” imports a limitation for the owner/manufacturer of the processor/system to be a different entity than the owner/manufacturer of the retailer and lottery administration devices (which is unrelated to the functionality or structure of the processor/system) or whether “third party” 8 Rather than “between two devices,” Patent Owner refers to “between a lottery administration system and retailer.” PO Resp. 20. Because other elements in the claims dictate the particular devices with which the transaction processor communicates, we determine that it would be improper to import that limitation into the meaning of “transaction processor”/“transaction processor system.” Nevertheless, even if those particular devices were imported, it would not change our obviousness analysis because no issue rests on whether the alleged transaction processor in the prior art is processing a transaction between a lottery administration system and retailer. imports a limitation for the processor/system to be a separate and distinct device from the retailer point of sale and lottery administration devices. Although Patent Owner’s counsel made clear that the latter interpretation was intended (Tr. 41:10–42:7, 43:2–43:15), we do not agree that the use of the words “third party” in Figures 7 and 8 of the ’894 patent limits the “transaction processor” and “transaction processor system” to being a separate and distinct device from the retailer and lottery administration devices. Identifying the transaction processor as a “Third Party Processor” in two illustrative figures depicting a process (Ex. 1001, Figs. 7, 8), without anything more in the written description to explain why a “third party processor” may be an important or significant aspect of the transaction processor or invention as a whole, does not justify limiting the plain meaning of a “transaction processor” to the “third party processor” shown. Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (explaining that an invention will only be limited to its preferred embodiment when “the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Therefore, we construe “transaction processor” and “transaction processor system” in accordance with their plain meaning, which is a processor [system] that processes transactions between two devices. Additionally, we decline to limit “transaction processor” and “transaction processor system” to “third party” processors or systems because the intrinsic record does not justify such a modification and it would create uncertainty. However, we do construe the “transaction processor”/“transaction processor system,” “retailer”/“retailer POS,” and “lottery administration system” as separate and distinct components.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“processing unit, causes payment confirmation for the pre-printed lottery ticket to be provided to the lottery administration system. And Patent Owner disputes whether Petitioner has sufficiently shown Szrek discloses the transaction processor (store back office 240) provides payment confirmation to the lottery administration system (game provider 250). PO Resp. 13–14, 48–53; Sur-reply 19–20. We are persuaded by Petitioner, however, that Szrek’s description of the inter-operational characteristics of store back office 240, cash register/POS terminal 230, and game provider system 250 would have suggested to a skilled artisan at the time of the invention that store back office 240 would include an instruction to cause payment confirmation for the pre-printed lottery ticket to be provided to the game provider system 250. Ex. 1007, 4:28–29, 4:56–67, 5:17–20, 6:44–47; Ex. 1005 ¶¶ 62–64.” slip op. at 43
Patent outcomesUS 10,769,894 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,769,894 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCNo claims unpatentablePTAB · Mar 7, 2022 · IPR2020-01367 · APJ Scott C Moore · IPR · Final written decision
Claims 1–36 were not shown unpatentable because Kennewick did not teach the claimed ambiguity of words having different meanings in different contexts or the required context identification.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art (a “POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4–5 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not dispute Petitioner’s assertion, and Patent Owner and its declarant, Dr. Gershman, both apply Petitioner’s definition of a POSITA. Resp. 3. On this record and given the absence of any dispute, we adopt and apply Petitioner’s proposed formulation regarding the level of ordinary skill in the art, which we find is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In its Petition, Petitioner asks us to construe the “implicit hypothesis” term of claims 38, 40, and 42. Pet. 7–8. As discussed above, however, Patent Owner filed a disclaimer that eliminated these claims from this proceeding. Petitioner does not ask us to construe any terms in the remaining challenged claims. See id.; see generally Reply. Patent Owner also does not ask us to construe any claim terms. See generally Response. On this record, we decline to adopt constructions of any claims. See Nidec, 868 F.3d at 1017. slip op. at 9
- Expert testimonyPetitioner expert discountedMixed
“Dr. Smyth’s declaration testimony about words having different meanings in different contexts is unpersuasive. Dr. Smyth testifies that the keyword “‘temperature’ could be interpreted as an outdoor temperature or as a body temperature depending on context.” See Ex. 1002 ¶ 69. This testimony is not persuasive because the word “temperature” refers to a measurement of warmth or coolness in both examples. That is, “temperature” has the same meaning in both contexts. Moreover, as Dr. Gershman points out, Kennewick does not teach or suggest a body temperature. Ex. 2001 ¶ 26. Dr. Smyth’s testimony is unpersuasive for this additional reason. See Ex. 1002 ¶ 69.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“forth by both parties, we are not persuaded that Kennewick teaches or suggests that the word “temperature” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. As detailed above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with the ordinary and customary language of the claims, the specification of the ’681 patent, and the disclosure of Kennewick. See id. In contrast, Petitioner’s arguments are inconsistent with the ordinary and customary meaning of the claim language and the specification of the ’681 patent, and are not adequately supported by the disclosure of Kennewick. On this record, and having considered the evidence and arguments put forth by both parties, we also are not persuaded that Kennewick teaches or suggests that the phrase “what about flight one hundred and twenty too?” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 6–7; Ex. 2001 ¶¶ 28–30. Moreover, even if the “flight” example did describe two contexts (one in which “flight 122” exists, and one in which it does not), Petitioner’s argument would still fail because Petitioner has offered no persuasive evidence that Kennewick teaches or suggests identifying one of these two alleged contexts based on Kennewick’s short-term shared information (dialog history) and long-term shared information (user profiles) as required by independent claims 1, 13, and 25. For the reasons explained above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with and supported by the claims and specification of the ’681 patent and the disclosure of Kennewick. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. In contrast, Petitioner’s arguments are not consistent with or supported by the ordinary and customary meaning of the claim language, the specification of the ’681 patent, or the disclosure of Kennewick.” slip op. at 20
Patent outcomesUS 8,073,681 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,073,681 - PTAB · Feb 11, 2022 · IPR2021-01341 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–10, finding a reasonable likelihood of success on the Tan and Boies obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s witness, Mr. Andrews, may not be credible because of some past relationship with Petitioner or its related companies. Prelim. Resp. 50–52. Patent Owner offers mere unsubstantiated allegations and cites no persuasive evidence that causes us to question Mr. Andrews’s credibility at this stage of the proceeding.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: An ordinary artisan would have been a person having, as of October 24, 2001, a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶40.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Prelim. Resp. For the purposes of this Institution Decision, we accept Petitioner’s unopposed, proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’994 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,713,994 - PTAB · Feb 11, 2022 · IPR2021-01353 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on all challenged claims, 1–7 and 14–16, under all three §103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: An ordinary artisan as of October 24, 2001 would have been a person having a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶19.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Prelim. Resp. For the purposes of this Institution Decision, we accept Petitioner’s unopposed, proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’709 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“one of ordinary skill in the art, and therefore no claim construction is necessary at this time.” Pet. 5. Patent Owner argues that Petitioner appears to provide some interpretation of the claims in its challenges and states that Petitioner’s assertion that the claims carry their plain and ordinary meaning is “flawed,” but does not expressly assert that any claim language requires express construction by the Board. See Prelim. Resp. 9–10, and generally. At this stage of the proceeding, we do not find it necessary to construe any claim language. The language of the claims appears to be readily understandable on its face. If any claim language is in dispute at trial, we encourage the parties to further develop the record thereon. C.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,532,709
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.