• Meyer Products, LLC v. Douglas Dynamics, L.L.C.Rehearing denied
  PTAB · Feb 29, 2016 · IPR2015-01247 · APJ James A Worth · IPR · Rehearing

  The Board denied rehearing, leaving institution on claims 18 under Pruss and Keeler and claims 1, 4–7, and 18 under Coates and Hetrick; other grounds failed the institution threshold.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8

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

    “back bar and a pair of side bars arranged in a triangular or ‘A’ configuration,” the Board misapprehended or overlooked the fact that the Specification of the ’757 patent does not define the term “A-frame,” that the Specification states that the patent is “limited . . . by the scope of the following claims and their equivalents,” and that the Specification also uses the term “frame” without the prefix “A-” or uses the term preceded by “mount,” “lift,” or “A-”. Request 3–6. Petitioner argues that this misapprehension causes the Board’s construction to be divorced from the Specification and the record evidence. Request 6 (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). As an initial matter, we note that Petitioner only cited to two portions of the Specification in the Petition in supporting its construction of “A-frame”: Ex. 1001, 4:62–64, 8:36–40. Pet. 8–9. Accordingly, we restrict ourselves to reconsideration of only this portion of the Specification. And upon reconsideration, we determine that the Board did not misapprehend or overlook the aforementioned cited portions of the Specification in construing “A-frame”; instead, the Board considered those portions expressly, but came to a different conclusion. Specifically, as set forth in the Decision, the fact that other shapes may be referred to in the Specification does not broaden the “A” shape of the “A-frame,” as recited in claims 1 and 4–7. The Decision notes Patent Owner’s suggestion that other claims, not at issue, might still allow for use of the invention with another shape for the frame. Decision 7. Petitioner argues that these other claims do not refer to an “A-frame.” Request 6. We agree. This argument is misplaced, however, as the lack of specificity of shape for the corresponding frame in the other claims is fully consistent with the notion that these other frames use a non-A-frame shape. Therefore, we are not persuaded that the Decision misapprehended or overlooked any arguments with respect to the asserted ground of anticipation by Pruss.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,928,757
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Feb 9, 2016 · CBM2015-00171 · APJ Michael W Kim · CBM · Institution

  The Board denied institution because Petitioner did not show that any existing claim qualified as a covered business method patent under AIA § 18(d)(1).

  RulingsInstitution decision

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

    “that the patent for which review is sought is a covered business method patent.” The AIA defines “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).” slip op. at 6

  • Adverse judgmentAdverse judgmentOther

    “disclaimer under 37 C.F.R. § 1.321(a) of claims 1–10. Prelim. Resp. 13 (citing Ex. 2002). Thus, the question is whether we should consider now-statutorily disclaimed claims 1–10 in determining whether or not the ’177 patent is a covered business method patent for the purposes of instituting a covered business method patent review. We determine that we should not. 37 C.F.R. § 1.321(a) is the rule promulgated by the Office for creating a procedure for a patentee to avail itself of the provisions of 35 U.S.C. § 253. See Manual of Patent Examining Procedure § 1490. Our reviewing court has held that a patent with a statutory disclaimer is to be treated as though the disclaimed claims never existed. See Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Accordingly, for the purposes of whether or not to institute a covered business method patent review, we treat claims 1–10 as never having existed. See Google Inc. v. SimpleAir, Inc., CBM2015-00019 slip op. at 14– 15 (PTAB May 19, 2014) (Paper 11); but see J.P. Morgan Chase v. Intellectual Ventures, Case CBM2014-00157 slip op. at 12–15 (PTAB Jan. 12, 2016) (Paper 40) (although the panel states that “petitioner’s standing to file a petition for covered business method patent review is evaluated based on the time the petition was filed,” in this proceeding, Patent Owner” slip op. at 7

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

    “unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1328 (2015) (affirming use of the broadest reasonable construction standard in a covered business method patent review). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5

  Claim construction
  Patents in suitUS 7,516,177
• Square, Inc. v. Think Computer CorporationRehearing granted
  PTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing

  The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1

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

    “are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 8,396,808
• Arctic Cat, Inc. v. Polaris Industries, Inc.All claims unpatentable
  PTAB · Feb 4, 2016 · IPR2014-01427 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–38 are unpatentable: claims 1–13, 15–34, and 36–38 as obvious over Denney and Furuhashi; claim 14 with Enokimoto; and claim 35 with Johnson.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Petitioner notes that Denney’s existing structure could support a front drive shaft alongside or in place of support truss 40, which would not raise the center of gravity of Denney’s ATV. Pet. Reply 9–10 (citing Exs. 1001, 1003, 1033, 1069). We agree. In particular, we credit the testimony of Dr. Davis that the structure of Denney discloses adequate space to place a front drive shaft with minimal other modifications. Ex. 1069 ¶¶ 16–18. We do not credit Dr. Moskwa’s Declaration testimony in opposition. Dr. Moskwa’s statements (Ex. 2029) in paragraphs 130– 133 concern raising the seats, which we do not find would be necessary to implement the proffered modification; and Dr. Moskwa’s statements in paragraphs 134–137, that there is no room for a front drive shaft in Denney, are undercut by his statements in paragraphs 138–141 that widening the vehicle or running the front drive shaft under or alongside the vehicle would have been possible. To be sure, Dr. Moskwa also opines that such options would have disadvantages. However, as set forth above, preference is not be conflated with known modifications having known benefits, and we are persuaded that the aforementioned evidence shows that Petitioner’s proffered modification, and their attendant benefits/disadvantages, were known, and hence obvious.” slip op. at 21

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

    “completely rearward of every portion of another object. See, e.g., claim 26 (“wherein the rear frame portion is completely rearward of the seats”) (emphasis added); claim 29 (all portions of the engine are located rearwardly of at least a portion of a seat in the seating area) (emphasis added); claim 30 (“wherein every part of the rear frame portion is disposed rearwardly of the mid frame portion”) (emphasis added); claim 34 (“a transmission coupled to the engine, the transmission being completely rearward of the seating area”) (emphasis added). While the doctrine of claim differentiation does not mandate a particular construction, nevertheless, the presence of some claim language requiring that an object must be completely rearward of every portion of another object does weigh in favor of a determination that an object not having such language need not be completely rearward of every portion of another object.” slip op. at 7

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “invention are non-analogous art. A reference is analogous art to the claimed 9 Exhibit 2029, paragraph 35, refers to Petitioner’s side-by-side ATVs and UVs, which undercuts Patent Owner’s position by insinuating that the proper lead reference is a side-by-side ATV such as Denney; and paragraph 117 asserts that one of ordinary skill would have been familiar with four wheel drive ATVs and UVs, and we are unpersuaded by the implication that one of ordinary skill familiar with four wheel drive ATVs and UVs would have been unfamiliar with other ATVs. invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, we disagree with Patent Owner because, as set forth above, we find that the ’405 patent and Denney are both directed to solving problems associated with side-by-side ATVs, which meets either prong of the analogous art test.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Fundamentally, Patent Owner conflates known modifications having known benefits with subjective preferences. It is beyond dispute that something can be known, but not preferred, because preferences are innately subjective, and something subjective is infinitely variable. To say, however, that these infinitely variable preferences can override known modifications having known benefits would effectively eviscerate obviousness law, as any known modification has both benefits and disadvantages, and someone, somewhere, would say that under their subjective preferences, the disadvantages outweigh the benefits. We opine that such a view cannot be correct, and instead discern that an obviousness analysis should focus on whether a modification is known to implement and has known benefits, and recognize further that one of ordinary skill has the ability to weigh the various benefits and disadvantages based on subjective preferences in an analysis largely unrelated to obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); Winner v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) (“the district court did not clearly err in finding that one of ordinary skill in the art would not have reasonably elected trading the benefit of security for that of convenience.” slip op. at 15

  Patent outcomesUS 8,596,405 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,596,405
• Arctic Cat, Inc. v. Polaris Industries, Inc.No claims unpatentable
  PTAB · Feb 4, 2016 · IPR2014-01428 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–20, 22–33, and 35 were held patentable over the presented grounds because the cited combinations did not remedy the missing drive-shaft limitation.

  RulingsFinal written decision

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

    “transmission and the front axle assembly” and “a rear drive shaft extending between the transmission and the rear axle assembly.” Essentially, Patent Owner asserts that a given drive shaft must account for the entire distance between the transmission and the respective axle assembly in order to meet the aforementioned claim limitation, whereas Petitioner asserts that if the given drive shaft accounts for any amount of distance between the transmission and the respective axle assembly, the aforementioned claim limitation is met. PO Resp. 15–18 (citing Exs. 1002, 2029, 2085); Pet. Reply 2–7 (citing Exs. 1002, 1069, 2085). We discern that the key limitation in this regard is “extending between,” or more generically, “extend between.” Patent Owner provides excerpts from Merriam-Webster’s Dictionary concerning the definition of “extend,” of which the pertinent definitions would be as follows: “to stretch out to fullest length”; “to cause to reach (as in distance or scope)”; “to stretch out in distance, space, or time”; “to reach in scope or application.” Ex. 2085, 442–443. Use of words such as “fullest” and “reach” would appear to support Patent Owner’s proposed construction. When these definitions of “extend” are combined with the word “between,” which introduces the concept of discrete distances, we are persuaded that to “reach” a “fullest” discrete distance supports even further Patent Owner’s proposed construction. Patent Owner identifies the following portions of the specification as informing one of ordinary skill as to what is meant by “extend between,” and it is consistent with the aforementioned plain and ordinary meaning of “extend between”:” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “and Reply, as well as all supporting evidence, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1–3, 5–13, 20, 23, and 25–33 are obvious over a combination of Hickey and Hill. Pet. 8–28; PO Resp. 22–46, 56–60; Pet. Reply. 7–25. Independent claim 1, the only independent claim at issue, recites “a front drive shaft extending between the transmission and the front axle assembly.” As set forth above, we construe the aforementioned claim limitations as requiring that a front drive shaft, and only that front drive shaft, must account for the entire distance between the transmission and the front axle assembly. Petitioner cites front propeller shaft 22 of Hickey as corresponding to the aforementioned “front drive shaft.” Front propeller shaft 22 is connected to transmission 14, however, via at least interaxle differential 20 and universal joint 26. Figure 1 of Hickey discloses that that front propeller shaft 22 stops well short of transmission 14, and so does not account for the entire distance between the transmission and the front axle assembly. While there could perhaps be some overlap in the distance covered by front propeller shaft 22, interaxle differential 20, and universal joint 26, Petitioner has not shown such overlap, and in any case, we determine that any such overlapping part of front propeller shaft 22 still would not account for the entire distance between the transmission and the front axle assembly. Accordingly, we determine that Hickey does not disclose or suggest “a front drive shaft extending between the transmission and the front axle assembly,” as recited in independent claim 1. Moreover, Petitioner does not cite Hill for remedying the aforementioned deficiencies of Hickey. Each of dependent claims 2, 3, 5–13, 20, 23, and 25–33 depend ultimately from independent claim 1, and include the same deficiency.” slip op. at 15

  • ExcludeOther

    “claims 1–38 of the ’405 patent are unpatentable. Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 17

  Patent outcomesUS 8,596,405 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,596,405
• Gordon * Howard Associates, Inc. v. Lunareye, Inc.All claims unpatentable
  PTAB · Feb 2, 2016 · IPR2014-01213 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103 based on the instituted combinations of Mohan, Oncore, Roach, and Lewis.

  RulingsFinal written decision

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

    “accompanying description requiring that GPS Receiver 48 and Controller 36 be physically distinct components. Even if there was such a requirement, however, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). LunarEye’s reliance on other figures and descriptions of embodiments in the specification is unpersuasive for the same reason. See PO Resp. 20–21 & n.48; see also Ex. 2031 ¶¶ 14–15 (LunarEye’s proffered expert relying on descriptions of embodiments for opinion that data selecting device is external to GPS receiver). Merely describing a narrower embodiment does not constitute the clear disclaimer required to apply the limitation at issue to the claim. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). In addition, LunarEye also contends the claim language itself indicates the recited GPS receiver (or location-signal generating device) and data selector are physically distinct components. PO Resp. 22. LunarEye asserts claims 1 and 2 recite that the GPS receiver produces “GPS data” first, and that the data selector operates on that output of the GPS receiver to produce “selected GPS data.” Id. at 22–23. According to LunarEye, this claim language requires that the GPS receiver and data selector be “distinct,” i.e., physically separate. See id. at 20–22. The claim language, however, does not support LunarEye’s position. Although claims 1 and 2 recite the GPS receiver and data selector separately and recite distinct functions for each, nothing in those claims indicates these structures must be physically separated or precludes one being housed physically within the other, particularly under their broadest reasonable interpretation. LunarEye does not present any compelling evidence indicating otherwise.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to combine Mohan, Oncore, and Roach. Pet. 12–16. For example, GH argues that both Mohan and Oncore are directed to GPS receiver technology, and that combining them would have involved a simple substitution that would achieve predictable results. Id. at 12. GH also contends that one of ordinary skill in the art would have been motivated by Oncore’s discussion of the advantages of its GPS receiver technology, and that applying that technology in combination with Mohan would have amounted to nothing more than the use of a prior art element for its established function to obtain its stated benefits. Id. at 12–13 (citing Ex. 1007, 1.1). Likewise, GH asserts that combining Roach with Mohan would have involved a simple substitution with predictable results, which would have amounted to the use of Roach’s prior art cellular communications system for its established function to achieve its known benefits. Id. at 13–15 (citing Ex. 1008, 9:6– 30). In addition to the prior art references, GH also relies on the Declaration of Dr. Janky, whose testimony supports GH’s contentions. Ex. 1010 ¶¶ 96– 102. We have considered Dr. Janky’s testimony, including his underlying analysis and reasoning, and find it credible. Based on all of the evidence presented, including Dr. Janky’s testimony, GH has articulated sufficient reasoning with rational underpinning to support the conclusion that one of ordinary skill would have had reason to combine the teachings of Mohan, Oncore, and Roach in the manner advanced by GH. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “are unpersuasive. LunarEye argues that the asserted prior art references teach away from the combinations advanced by GH. PO Resp. 45–57. Specifically, LunarEye contends Mohan states that a device constructed according to its teachings should conform to certain size constraints to achieve adequate miniaturization. Id. at 48–52. The GPS device described in Oncore14 are too large and are, thus, incompatible with Mohan, according to LunarEye. Id. This argument is unpersuasive, however, because none of the claims of the ’035 patent require miniaturization, nor do they include any limitations restricting the size of the claimed apparatus or any recited component device. LunarEye does not identify any portion of Mohan that criticizes, discredits, or otherwise discourages combining Mohan and Oncore in the manner advanced by GH. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Merely describing the benefits of a miniaturized GPS device does not teach away from non-miniaturized devices. See id.; In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Moreover, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 14 LunarEye does not argue that the GPS device of Lewis, or the communications devices of Roach, are incompatible with Mohan’s purported size restrictions. F.2d at 425. Thus, whether the Oncore GPS receiver is too large to be incorporated physically into the Mohan GPS device is inapposite, because the challenged claims do not recite any limitations on size.” slip op. at 27

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “MOTION TO SEAL GH moves to seal Exhibit 1028. Mot. Seal. 2. As this is the Final Written Decision, we consider GH’s Motion to Seal as a motion to expunge Exhibit 1028 from the record pursuant to 37 C.F.R. § 42.56. Exhibit 1028 was not relied on for this Decision. Consequently, GH’s motion is granted, and Exhibit 1028 will be expunged. ORDER Accordingly, it is: ORDERED that claims 1–24 of U.S. Patent No. 6,484,035 B2 are held unpatentable under 35 U.S.C. § 103; and FURTHER ORDERED that Exhibit 1028 is expunged from the record.” slip op. at 29

  Patent outcomesUS 6,484,035 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,484,035
• FFF Enterprises, Inc. v. Amerisourcebergen Specialty Group, Inc.All claims unpatentable
  PTAB · Jan 28, 2016 · CBM2014-00154 · APJ Christopher L Crumbley · CBM · Final written decision

  Claims 1 and 2 are unpatentable as anticipated by both Dearing under § 102(b) and Gibb under § 102(a).

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “For the foregoing reasons, FFF has proven by a preponderance of the evidence that Dearing discloses all elements of challenged claims 1 and 2.10 We, therefore, conclude that these claims are anticipated by Dearing, and thus are unpatentable under 35 U.S.C. § 102.” slip op. at 31

  • Skill levelOther

    “term in light of its broadest reasonable interpretation, as understood by one of ordinary skill in the art and as consistent with the specification of the ’607 patent. 37 C.F.R. § 42.300(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 84 U.S.L.W. 3218 (Jan. 15, 2016) (No. 15-446). In the Decision to Institute, we construed the term consignment product unit as “products that are considered sold when removed from the cabinet or the product packaging.” Dec. 13–15. We also held that the server system creates an invoice when the product units are removed from the inventory should be given its ordinary meaning, and manage the inventory needed no explicit construction. Dec. 11–13, 15–16. In its Response, ABSG challenges our treatment of all three claim terms.” slip op. at 13

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

    “While the broadest reasonable interpretation standard does not require us to construe claims to preserve their validity—and indefiniteness of the claims is not before the Board in this proceeding, in any event—we are mindful that adopting ABSG’s construction would mean that a person of ordinary skill in the art would be unable to determine whether a potentially infringing system falls within the scope of the claim unless he or she has access to the contracts governing the sale of the items within the cabinet. See Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003) (“A claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular composition infringes or not.”). Furthermore, legal ownership is a distinction “discernable only to the human mind,” similar to limitations found to have no patentable weight under the printed matter doctrine unless they have a functional or structural relationship to the physical substrate. See In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015); In re Jie Xiao, 462 F. App’x 947, 950 (Fed. Cir. 2011) (nonprecedential). Though the 19 ownership of the products is not printed matter, the logic of those cases is equally applicable here. See King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of [printed matter] cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.”); see also Ex parte Graff, Appeal 2012-003941, 2013 WL 3873066, at *3 (PTAB July 23, 2013) (property interests are “legal abstractions” that are given no patentable weight), aff’d by In re Graff, 585 F. App’x 1012 (Fed. Cir. 2014) (nonprecedential). While not controlling on the broadest reasonable interpretation analysis, we nevertheless take into account the fact that ABSG’s proffered construction raises these concerns. For these reasons, we reaffirm our prior claim construction analysis, and interpret consignment product units as “products that are considered sold when removed from the cabinet or the product packaging.”” slip op. at 19

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

    “We declined to adopt ABSG’s construction because we concluded it was overly narrow, and nothing in the specification tied invoicing to the “unique RFID serial number” of an exact product. Dec. 12–13. Rather, the specification merely states that the server “generate[s] billing and invoice data according to the reports from cabinets of product units that are delivered . . . or consumed.” Ex. 1001, 5:57–60. This could be a report of a unique RFID serial number, but that is not the only possibility. Indeed, the specification states that “serial numbers” are not required by the invention at all. Ex. 1001, 4:58–61 (“[T]he term ‘serial number’ will be used herein to refer to the unique identifier, although those of skill in the art will recognize that any other style of unique identifier can be used.”). ABSG’s citations from the specification, that products are tracked by RFID serial number, are 24 not in the context of invoicing. In view of the complete record, our reasoning from the Decision to Institute holds, and ABSG’s arguments in its Response fail to persuade us otherwise.” slip op. at 24

  Patent outcomesUS 8,285,607 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,285,607
• Square, Inc. v. Think Computer CorporationAll claims unpatentable
  PTAB · Nov 27, 2015 · CBM2014-00159 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–7, 9–11, 13–17, and 20–22 are unpatentable under § 103; the motion to amend claims 23–43 is denied.

  RulingsFinal written decision

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

    “Beginning with the claim terms themselves, the word “selectively” is used. We discern that the ordinary and customary usage of this word denotes expressly that a particular account need not function simultaneously as both a merchant account and a purchaser account; a user is permitted expressly to select which account mode is desired at the appropriate point in time. The following disclosure in the Specification is consistent with this understanding: An entity (e.g., a person, business, or other legally recognized entity) preferably creates an account within the payment system. The accounts of the payment system are preferably designed so that an account may selectively function as either a merchant or a purchaser during any particular transaction. In other words, within the scope of all transactions, accounts of the payment system can function as bi-directional transaction accounts. Ex. 1001, 3:15–22. Indeed, here, the Specification discloses expressly that being able to select which account mode is desired is the same as “bi-directional transaction accounts.”” slip op. at 13

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

    “more properly considered a claim construction. PO Resp. 9. And indeed, when considered in conjunction with Petitioner’s proposed construction, the two constructions are similar. As noted by both Patent Owner and Petitioner, the Specification only mentions “line item data,” or similar wording, as follows: Additionally, as one of the main benefits of having merchant product catalogs integrated into the payment system, line item transaction data can be communicated. The line item data is additionally stored as part of the transaction record of the accounts. This itemized information can be very useful, such as in one application where tax forms are automatically completed by aggregating each category of line item transaction data as appropriate. Ex. 1001, 8:6–13. From the aforementioned portion of the Specification, we determine that the key to a proper construction of “line item data” is that it is information that is itemized and capable of categorization. In other words, “line item data” is an itemized part of a larger whole, more specifically, but not limited to, product catalogs, purchase lists, and transactions records, i.e., at a most granular level, individual products involved in a purchase or sale, as advocated by Petitioner. This focus on itemization and categorization of products is supported by other portions of the Specification cited by the parties, for example, column 2, lines 15–17, which recites that “[t]he integration of the payment system and product catalog functions to enable recording and tracking transactions with itemized detail” (emphases added). See also Ex. 1001, 5:51–55 (“the method may additionally store purchase list information as a transaction record for the merchant account and/or the purchaser account, which functions to form an itemized purchase history” (emphasis added)); 4:4–6 (“[t]he product catalog preferably includes a listing of product descriptions and prices for each product contained within the product catalog” (emphases added)); 4:6–13 (“[a]dditional information may be included for a product such as categories for tax purposes and other purposes, product-related IDs for each distributor of the product (e.g., Stock-Keeping Unit or ‘SKU’), images or media files related to the product, inventory related information (the number of items on hand, on order, etc. at each warehouse location), or any other suitable product-related data” (emphases added)); 4:13–16 (“[t]he product catalog may be a database accessed by outside applications, but may additionally or alternatively include a hosted web-based store through which products can be added to a shopping cart (i.e., a purchase list)” (emphases added)). Accordingly, we construe “line item data” as “itemized information from a larger group of information, related to individual products involved in a purchase or sale, that is capable of categorization,” where non-limiting examples of “line item data” may include one or more of “quantity, description, type, cost, product identifier (e.g., stock keeping unit), tax, duty, shipping or other fees.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “valid reason for combining Bemmel and Dalzell, because Dr. Sadeh- Koniecpol’s opinions of industry custom are unsupported. We are unpersuaded that Dr. Sadeh-Koniecpol’s opinions are unsupported, and especially unpersuaded that Dr. Sadeh-Koniecpol has not provided adequate support regarding the reasons for combining Bemmel and Dalzell. Dr. Sadeh-Koniecpol includes explicit citations to references, in particular Bemmel and Dalzell, for supporting his conclusions, and we determine that any purported “leaps of logic” taken by Dr. Sadeh-Koniecpol are reasonable given the underlying support. For example, Dr. Sadeh-Koniecpol opines that “one of ordinary skill in the art would have been motivated to combine the mobile payment system of Bemmel with the electronic marketplace of Dalzell.” Ex. 1002 ¶ 136. Of course, this paragraph considered in isolation would be an unsupported opinion. Dr. Sadeh-Koniecpol, however, then goes on to support this opinion with explicit citations to Bemmel and Dalzell. Ex. 1002 ¶¶ 137, 139, 140. Dr. Sadeh-Koniecpol then reaches conclusions that we determine flow logically from those citations. Ex. 1002 ¶¶ 138, 141, 142.” slip op. at 21

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Patent Owner asserts additionally that the Board should exercise its discretion under 35 U.S.C. § 325(d) and deny the Petition, because similar art was already before the Examiner during prosecution. We note that 35 U.S.C. § 325(d) is normally exercised in a Decision on Institution. Moreover, we have already conducted a full trial in this proceeding subsequent to a Decision on Institution. Furthermore, 35 U.S.C. § 325(d) is discretionary, and insofar as Patent Owner is requesting any vacating of the Decision on Institution, we decline to do so for the reasons set forth above.” slip op. at 28

  Patent outcomesUS 8,396,808 unpatentable
  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,396,808
• Google Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23

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

    “After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24

  Patent outcomesUS 6,121,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,121,960
• Square, Inc. v. Unwired Planet LLCAll claims unpatentable
  PTAB · Nov 19, 2015 · IPR2014-01164 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–7 and 11–17 as anticipated by DeLorme, and claims 7–10 or 1–6 and 11–16 as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “its combinations of teachings of the applied references. See, e.g., PO Resp. 34–39. As the Federal Circuit has explained, While it is always preferable for the factfinder below to specify the level of skill it has found to apply to the invention at issue, the absence of specific findings on the level of skill in the art does not give rise to reversible error “where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding that the Board was not required to set forth express findings as to level of skill in art and quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Circ. 1985)). Here, we are persuaded that the prior art adequately reflects an appropriate level of skill. Additionally, Mr. Proctor proposes a definition for a person of ordinary skill in the art—a person with an engineering degree, either computer science or electrical engineering, and around two years of experience working in the wireless communications industry. Ex. 2003, 55:14–56:3. Patent Owner does not dispute Mr. Proctor’s proposed definition. Ex. 2002 ¶¶ 21–23. We agree that this definition is reasonable.” slip op. at 30

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Regarding Dr. Chatterjee’s testimony, Dr. Chatterjee acknowledges that some amount of TRIPS functionality would be available via mobile devices. Ex. 2002 ¶ 48. Dr. Chatterjee, however, is vague with respect to his opinion of which functionalities would be too difficult to implement. See e.g., id. ¶¶ 48, 52, 53, 58. Dr. Chatterjee testifies regarding significant challenges, but does not tie these challenges persuasively to his opinion that DeLorme’s disclosure is inadequate. For example, Dr. Chatterjee testifies that “although distributed computing was known at the relevant time, distributed computing technologies at that time, e.g., the Common Object Request Broker Architecture (CORBA) and Microsoft’s Distributed Component Object Model (DCOM), were difficult to deploy.” Id. ¶¶ 50, 51 (citing Ex. 2014, 14; Ex. 2016, 10). Dr. Chatterjee, however, does not testify persuasively regarding (1) how CORBA and DCOM relate to the elements recited in claim 1 of the ’433 Patent, or (2) how the challenges with implementing CORBA and DCOM undermine the explicit disclosure in DeLorme of TRIPS using stored preferences to narrow search results.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “combine DeLorme and Trask. PO Resp. 51. Petitioner, in reliance on the testimony of Mr. Proctor, asserts that a person of ordinary skill would have found it obvious to combine DeLorme’s system of taxi service providers and Trask, because Trask enhances DeLorme’s system to maximize available taxis and minimize delays by accounting for the location of the taxi. Pet. 56–57 (citing Ex. 1012 ¶¶ 181–184). In the Decision to Institute, we credited Mr. Proctor’s statements, as they are consistent with the teachings of DeLorme and Trask. Inst. Dec. 21. For example, Trask teaches tracking the present position of taxis (Ex. 1007, 2:25–30) and comparing the locations of vehicles with customer requests to determine the most appropriate vehicle to dispatch (id. at 2:31–42).” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “Patent Owner further asserts that Mr. Proctor’s deposition testimony establishes that he improperly relied on hindsight bias and his declaration is not sufficient to establish obviousness. PO Resp. 41–47. Mr. Proctor testified that a person of ordinary skill in the art would have combined Baker and Hall in various ways depending on their objectives. Ex. 2003, 161:10– 162:13. Patent Owner points to a question posed by its counsel asking “[a]nd this example that you just gave me—is how you would combine their teachings if your objective were to create something like the ’433 patent; is that right?” PO Resp. 43–44 (citing Ex. 164:4–12). We disagree that Mr. Proctor’s testimony in the affirmative to this question is an admission that he used hindsight bias, because Patent Owner’s contentions rely on incorrect characterizations of Mr. Proctor’s testimony. Patent Owner additionally alleges that Mr. Proctor belatedly identified the level of skill in the art (PO Resp. 47), which is not persuasive for the same reasons discussed with respect to DeLorme and Trask. We credit the testimony of Mr. Proctor regarding the combination of Baker and Hall as consistent with the teachings of these references.” slip op. at 35

  Patent outcomesUS 7,376,433 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,376,433

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.