- Adb Safegate Sweden AB / Adb Safegate BV et al. v. Honeywell International Inc.All claims unpatentablePTAB · Feb 12, 2025 · PGR2023-00053 · APJ James P Calve · PGR · Final written decision
Claims 1–20 are unpatentable under § 101; claims 1, 6–10, and 13–20 are also unpatentable over Berkmo, and claims 1–20 over Berkmo and Richman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan would have “held at least a degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing, planning, or implementing sensor networks using LIDAR, radar and/or cameras and corresponding data analysis” and “[a]dditional work or research experience can substitute for less or different education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18– 23). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 14. Having considered the record, we adopt Petitioner’s uncontested level of ordinary skill as articulated above. Petitioner’s description appears to be consistent with the prior art cited and the skill reflected in the Specification of the ’349 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We reject Patent Owner’s interpretation because it limits the claims to an exemplary embodiment that “can, for example, provide the remaining distance and the horizontal deviation with respect to the center line of a path” (Ex. 1001, 10:8–11), and it reads limitations of that embodiment into the claims. Absent a lexicographic definition or a disavowal, such claim interpretations are not permissible. See Phillips, 415 F.3d at 1312, 1316 (claims are given their ordinary, customary meaning in the context of the entire patent and the specification absent a lexicographic definition or a disclaimer or disavowal of claim scope by the inventor); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’”) (citation omitted). Patent Owner has not asserted a definition or a disclaimer to support its interpretation. PO Resp. 16–17. The parties agree that “directional guidance” includes “navigational instructions” and “maneuvering guidance information.” PO Resp. 16 (“the claims make clear that this guidance refers to the navigational instructions to be provided to the pilot guiding the airplane”), 17 (a skilled artisan “reading the challenged claims in light of the specification would understand that ‘directional guidance’ refers to navigational instructions including the horizontal deviation with respect to the center line of a path”); Reply 21 (Berkmo teaches providing “pilot maneuvering guidance information . . . for aiding a pilot of the approaching aircraft towards [a] parking position”); Pet. 54 (Berkmo provides maneuvering guidance information). We interpret “directional guidance” as navigational instructions and maneuvering guidance information. This interpretation is consistent with the claims, which do not recite features of “directional guidance,” much less a horizontal deviation with respect to a center line as Patent Owner asserts.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree with Petitioner that the merging recites mental processes because the algorithms described in the specification (Ex. 1001, 8:50–9:10) can be performed as mental processes. Pet. 20–22; Reply 9–11; Ex. 1044 ¶¶ 56–58; Elec. Power Grp., 830 F.3d at 1351–52, 1353–54 (receiving time stamped synchronized phasor measurements at different points of an electric power grid and analyzing and updating the measurements in real time using limits, sensitivities, and rates of change of dynamic stability metrics derived from voltages, power flows, phase angles, damping, and oscillation modes recite mental processes); id. at 1354 (analyzing data by mental steps or mathematical algorithms is an abstract mental process). Merging data by transforming and converting it from one format to another is an abstract idea. See AI Visualize, Inc. v Nuance Commc’ns, Inc., 97 F.4th 1371, 1379 (Fed. Cir. 2024) (“But ‘converting information from one format to another . . . is an abstract idea.’” (citation omitted); creating virtual views in real time by “creating the requested frames of the requested views from the volume visualization dataset” created a virtual view from the existing volume visualization dataset as “abstract data manipulation”); Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023) (the method receives, displays, converts, stores, and transmits digital video data using result-based functional language); FICEP Corp. v. Peddinghaus Corp., No. 2022-1590, 2023 WL 5346043, *3–4 (Fed. Cir. Aug. 21, 2023) (the focus of the advance is on automating the identification, extraction, and transfer of a 3D rendering of an object by a CAD design model including dimensions and intersection parameters without specifying how intersection parameter data was generated or used to create a design model and therefore encompasses a human deriving intersection parameters and adding this data to the design model for extraction); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“[A] process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”) (quoting Parker v Flook, 437 U.S. 584, 595 (1978) (“If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”)); MPEP § 2106.04(a)(2) (mathematical relationships include converting binary coded decimal numerals to pure binary numerals as did the claims in Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972)); see also Tr. 22:24–25:23.” slip op. at 20
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The ordered combination of elements recites no more than when the elements are considered individually and thus does not provide an inventive concept. We disagree with Patent Owner’s argument that “[w]hen considered individually or in combination with the other claimed elements, the reliance on this merged data from a camera and LIDAR/RADAR sensor is itself an inventive concept because it was not conventional and improves the technology of aircraft tracking and guidance.” PO Resp. 49–50. Merging data from two different sensors is part of the abstract idea and therefore cannot provide an inventive concept that makes that abstract idea patent eligible. See, e.g., BSG, 899 F.3d at 1291–92; Guidance at 56. “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG, 899 F.3d at 1290–91. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” Id. at 1290. Even if merging camera and LIDAR/RADAR sensor data is treated as an additional element, the description of the point cloud process and iterated point cloud algorithm indicates Patent Owner did not invent or improve the merging process. Ex. 1001, 8:64–9:40; MPEP § 2106.05(d)I.2. (a generic description indicates that elements are conventional enough that no further description is needed to satisfy § 112(a)); see AI Visualize, 97 F.4th at 1379 (converting data from one format to another is an abstract idea); Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900, 903 (Fed. Cir. 2020) (encoding and decoding image data and converting data formats are abstract ideas). Dr. Campbell and Mr. Wilson testify that merging data is known for detecting and tracking objects and navigation. Ex. 1044 ¶¶ 41–51, 56–59; Ex. 1003 ¶¶ 54–65, 81–87; Ex. 1045, 20:6–23:18. A “data fusion process” is not claimed, much less one of any particular features. See PO Resp. 50. Nor do the claims recite a non-conventional arrangement of sensors. See Ex. 1003 ¶¶ 42–67, 83; iLife, 839 F. App’x at 538 (because sensors for measuring static and dynamic acceleration were known, and claim 1 did not recite unconventional means for processing that data, sensing and processing the static and dynamic acceleration information using generic components did not transform the nature of claim 1 into patent eligible subject matter).” slip op. at 39
Patent outcomesUS 11,538,349 unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Phillips · KSR · GrahamPatents in suitUS 11,538,349 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentablePTAB · Jan 24, 2025 · IPR2023-01344 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1, 3–7, 11–13, and 15–17 over Sinharoy; claims 2 and 10 over Sinharoy and Xu; and all challenged claims under the listed Tang grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In the Institution Decision we determined Petitioner’s description was consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of that decision, we adopted Petitioner’s proposal in the Institution Decision. Inst. Dec. 10–11. Now Patent Owner argues for a “more precise definition” offered in the Horst Declaration and adopted in the Brogioli Declaration. PO Resp. 6–7 (citing Ex. 2002 ¶ 25). effects any patentability issue. The only difference between the two is the addition of “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems” as the experience level of a person of ordinary skill in the art. Compare Inst. Dec. 10–11 (citing Pet. 8) and Ex. 1007 ¶ 30 and Ex. 2001 ¶ 25. No mention of the difference between the two levels of ordinary skill is made in any of the papers filed. Regardless, inasmuch as both experts agree to the level of ordinary skill, we find the experience associated with the level of ordinary skill is “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems.” The level of education is unchanged from the Institution Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded to change our preliminary construction. First, Patent Owner misstates our construction of “single caching agent” by adding the language “each associated with a corresponding one of the plurality of cores.” That language is present in the claim as a separate limitation. See Section I.E (limitation [1g]) above. This added language is not present in our preliminary construction, which states only that a “single caching agent” means “one caching agent for the processor, which may be formed from distributed portions.” Inst. Dec. 12. Thus, that each “single caching agent” is “associated with a corresponding one of the plurality of cores” is a separate limitation. Second, none of the above citations to the ’895 patent is contrary to our construction. Our construction states that a “single caching agent” is recited. That is what is repeated in Patent Owner’s citations. Third, the ’895 patent’s description of Figure 6 explains that a “single caching agent” may be formed from distributed portions, as do the claim limitations in question. See Ex. 1001, 6:35–37. Other than tacking on the second recitation of “distributed portions” to the “single caching agent” portions” part of our construction is incorrect. The Brogioli Declaration repeats the above citations to the ’895 patent” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Services AG v. Instradent USA, Inc., 903 F. 3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.” Medtronic, 891 F.3d at 1380 (citations, quotations, and alterations omitted). The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot. slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot.” slip op. at 41
Patent outcomesUS 9,575,895 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,575,895 - Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.Some claims unpatentablePTAB · Aug 7, 2024 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 5–10, 13–18, 20–22, 24, 31, and 32 are unpatentable; claims 2–4, 23, and 25–30 were not shown unpatentable. The revised motion to amend was granted in part and denied in part.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“d. Summary For the above reasons, we determine that Patent Owner has not shown” slip op. at 100
- ExcludeMotion to exclude, deniedOther
“IV. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner seeks to exclude Exhibit 1034 and page 10 of the Reply” slip op. at 86
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“A. “housing” Patent Owner proposes that we construe the term “housing” to mean” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“suggested to one skilled in the art, objective evidence of non-obviousness (“secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted). For us to give substantial weight to objective evidence of nonobviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-” slip op. at 21
Patent outcomesUS 9,365,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentablePTAB · Jul 18, 2024 · IPR2023-00539 · APJ James P Calve · IPR · Final written decision
The Board held original claims 1–18 and 20–22 unpatentable over the asserted obviousness grounds, denied the revised motion to amend, and held substitute claims 23–43 ineligible and unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“f. Conclusion We determine that Petitioner has established by a preponderance of” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“2. Motivation to combine a. Petitioner’s contentions Petitioner contends that a skilled artisan would have combined the teachings of LeFebvre and Barone to monitor the condition of railcar wheels and bearings using sensors connected over a wireless mesh network and to analyze collected data to determine if a wheel bearing failure is imminent and issue an alert to the locomotive or central station. Pet. 42–43 (citing Ex. 1007, code (57), Abstr., ¶¶ 45, 86, 201–220; Ex. 1003 ¶¶ 157–162). b. Patent Owner’s arguments Patent Owner does not contest these assertions regarding a motivation to combine LeFebvre and Barone. See generally PO Resp.; Sur-reply. c. Conclusion We determine a skilled artisan would have combined the teachings of” slip op. at 51
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“(4) Conclusion We determine that Patent Owner has demonstrated that the inventors” slip op. at 59
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“(4) Conclusion We determine that the above-described lack of clarity in the meaning” slip op. at 72
Patent outcomesUS 9,981,673 unpatentable§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Enfish · Electric Power · Phillips · KSR · GrahamPatents in suitUS 9,981,673 - PTAB · Mar 14, 2024 · IPR2024-00366 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on all petition grounds: claims 1–11 over Amanatides and Kohn, and claim 2 over Selzer and Fiske, based on a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution is issued pursuant to 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and in the Realtek IPR, we institute inter partes review.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Reasons to Combine the Teachings of Lindholm ’685 and Lindholm ’913 Noting that Lindholm ’685 and Lindholm ’913 are both directed to a multithreaded shader and much of their Specifications and figures are the same, in the Realtek IPR Petitioner contends that a person of ordinary skill would have recognized the Lindholm references disclose different details of the same unified shader architecture. Realtek IPR Pet. 21–22. In the Realtek IPR, Petitioner also states that an ordinarily skilled artisan would have looked to the additional disclosure in Lindholm ’913 for additional details about scheduling threads for execution independent of other threads. Id. at 22. In the Realtek IPR, we agreed that a person of ordinary skill would have had reason to combine the teachings of the Lindholm references. We apply the same reasoning to this Decision do not repeat that analysis here.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable
“Analysis in the Realtek IPR In the Realtek IPR we were persuaded that Patent Owner antedated the Lindholm references and therefore they are not prior art. Therefore, in this proceeding we are not persuaded that Petitioner will succeed on its challenge based on the Lindholm references. Realtek IPR Dec. to Inst. 23– 41. We apply the same reasoning in this Decision and do not repeat our analysis here. In the Realtek IPR, we also noted that if the Lindholm references were considered applicable prior art, we are persuaded that Petitioner has cited sufficient evidence to demonstrate that a person of ordinary skill would have been motivated to combine the teachings of Lindholm ’685 and Lindholm ’913, and that in combination, the references would have taught, or at least suggested, all the limitations of claims 1–11 to a person of ordinary skill in the art. We apply the same reasoning to this Decisions and do not repeat that analysis here. Id.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,760,454 - PTAB · Mar 11, 2024 · PGR2023-00053 · APJ James P Calve · PGR · Institution
The Board instituted PGR on claims 1–20 on all asserted grounds because the petition showed it was more likely than not that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- BurdenInstituted
“review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing, planning, or implementing sensor networks using LIDAR, radar and/or cameras and corresponding data analysis” and “[a]dditional work or research experience can substitute for less or different education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18– 23). Patent Owner does not address the level of ordinary skill in the art. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’349 patent and the prior art of record, and we adopt it for consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[n]o terms require construction to determine that claims 1–20 are invalid under §§ 101, 102, 103.” Pet. 9. At this stage, Patent Owner does not address the construction of any term or phrase. On the present record, we determine that we do not need to construe any claim terms to reach our decision. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 9
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,538,349 - Entain Corporate Services Ltd. / MGM Resorts International et al. v. Gan (UK) LimitedAll claims unpatentablePTAB · Feb 29, 2024 · IPR2023-00027 · APJ James P Calve · IPR · Final written decision
Original claims 11–18, 21, and 22 and proposed substitute claims 23–39 were held unpatentable; the revised motion to amend was granted in part and otherwise denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“For reasons discussed below, we grant in-part Patent Owner’s RMTA and cancel original claims 1 and 3–10. We otherwise deny Patent Owner’s RMTA to enter revised substitute claims 23–31, which non-contingently amend original claims 1 and 3–10, and we deny Patent Owner’s RMTA to enter revised substitute claims 32–39, which contingently amend original claims 12–14, 16–18, 21, and 22.” slip op. at 3
- ExcludeMotion to exclude, deniedOther
“V. PETITIONER’S MOTION TO STRIKE Because our findings and determinations do not rely on the paragraphs of Dr. Shamos’ declaration that Petitioner’s Motion to Strike seeks to strike, we dismiss Petitioner’s Motion to Strike as moot.” slip op. at 104
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having reviewed the arguments and evidence, we determine Petitioner has shown, by a preponderance of the evidence, that original claims 11–18, 21, and 22 of the challenged claims of the ’296 patent are unpatentable.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionUnpatentable
“We determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are unpatentable. Specifically, we determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are not eligible for patenting under 35 U.S.C. §§ 101, and claims 23–39 are unpatentable under prior art asserted under 35 U.S.C. § 103 as discussed below. See Opp. RMTA 4–6, 8–28.” slip op. at 3
Patent outcomesUS 8,821,296 unpatentable§ 101 eligibility§ 103 obviousnesscites Alice · Berkheimer · Enfish · Electric PowerPatents in suitUS 8,821,296 - Wellmatics, LLC / GR Energy Services Management, LP et al. v. Canatex Completions Solutions, Inc.Institution deniedPTAB · Jan 8, 2024 · IPR2023-01149 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not dispute” these qualifications. Prelim. Resp. 10. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’122 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the example of “a fluid line that provides gas or liquid to expansion chamber 38 from [the] surface” in the specification, does not require that a fluid line be a source of fluid pressure. We further agree that Petitioner’s analysis ignores the fact that this example makes clear that the source of fluid pressure is at the surface. Prelim. Resp. 20 (citing Ex. 2001 ¶¶ 66–67). Both Patent Owner and Petitioner agree that “source” should be construed in accordance with its ordinary meaning. Prelim. Resp. 13, 18; Pet. 18–19 (Patent Owner has not “identified any clear definition or clear and unambiguous disclaimer that would justify departing from the ordinary meaning of the claim language.”). ordinary meaning of “source.”2 See Prelim. Resp. 13–18 (citing Ex. 1001, 3:55–65, 4:5–12, Ex. 2001 ¶¶ 52–63, Ex. 2003, 7, 8, Ex. 2004, 5, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010. Patent Owner provides dictionary and declaratory evidence that the ordinary meaning of “source” is ‘“origin’— i.e., the place from which something originates.” Id. at 13 (citing Ex. 2001 ¶ 52, Ex. 2003, 7, 8, Ex. 2004, 5). Patent Owner provides further evidence and explanation as to why that definition is consistent with the usage of “source of fluid pressure” in the ’122 patent. Id. at 13–15 (citing e.g., Ex. 1001, 3:55–65, 4:5–12). Patent Owner provides further evidence of how the term “source” is used in other patents and documents “in the oil and gas industry” that is consistent with its definition. Id. at 15–18 (citing Ex. 2001 ¶¶ 57–63, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010). Thus, based on the current record, we construe “source of fluid pressure” to mean the place from which the fluid pressure originates.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“As noted by Patent Owner, Petitioner’s declarant merely asserts that Bebak’s hydraulic pump would have been considered part of the second part of a releasable connection, and thus it is entitled to little weight. Prelim. Resp. 28; see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (Aug 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.”) (citing 37 C.F.R. § 42.65(a)). For all of the above reasons, we determine that the Petition does not provide a reasonable basis to determine that Bebak teaches “a second part [of the releasable connection] comprising: . . . a source of fluid pressure,” as required by independent claims 1 and 13.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,794,122 - Hebei Huatong Wires And Cables Group Co, Ltd. v. Gulf Coast Downhole Technologies LLCInstitution deniedPTAB · Nov 22, 2023 · IPR2023-00908 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We find, upon review of the information in the Petition and evidence of record, that Petitioner fails to demonstrate a reasonable likelihood that Hurley discloses that its separation layer 52, even when formed of flexible armor (see Pet. 26) is structured to be hermetically sealed or maintain a positive or negative pressure as required by claim 1. Petitioner fails to direct us to sufficient evidence to support a finding that separation layer 52 is structured to be hermetically sealed or maintain a positive or negative pressure. Dr. Ballato does not provide any testimony in support.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc., (denying institution after determining that showing that the references are analogous art and could be combined does not necessarily establish a sufficient rationale for combining the references). The Petition does not provide any contentions directed to why a person having ordinary skill in the art would have been motivated to combine Bowker’s teachings with Hurley to arrive at the claimed invention. As such, the Petition fails to provide a reason, supported by rational underpinnings, to combine the teachings of Hurley and Bowker and, accordingly, fails to demonstrate obviousness. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Dr. Ballato’s Declaration adds nothing to Petitioner’s analysis. The Declaration merely repeats what is in the Petition and provides no support for the testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). Accordingly, the Petition fails to provide information sufficient to demonstrate for institution that the combination of Hurley and Bowker renders claims 1–5, 11, 13, 18–20, and 22 unpatentable under 35 U.S.C. § 103(a) over Hurley and Bowker. Cf. Apple Inc. v. Corephotonics, Ltd., 81 F.4th 1353, 1360 (Fed. Cir. 2023) (“We held that, under the [Administrative” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc.,” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,581,565 - PTAB · Nov 14, 2023 · IPR2023-00718 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1, 4, and 11–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“We authorized the parties to submit additional briefing to address Patent Owner’s request for discretionary denial under 35 U.S.C. § 314. See Prelim. Resp. 5–11. Petitioner filed a Reply (Paper 7, “Prelim. Reply”) and Patent Owner filed a Sur-reply (Paper 8, “Prelim. Sur-reply”). We note that in the Sur-reply, Patent Owner has withdrawn its request for discretionary denial and the request is now moot. Prelim. Sur-reply 1.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’825 patent. Accordingly, we institute an inter partes review of claims 1, 4, and 11–16 of the ’825 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelOther
“We perceive no significance to how any difference between the two definitions might affect our analysis. To the extent either party believes its proposed level of skill affects part of the unpatentability analysis, it should explain how during the instituted trial.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner
“Petitioner proposes to construe the term “means coupling” as governed by 35 U.S.C. § 112, ¶ 6, with a function of “coupling suitable power for energizing said thermostat from said space conditioning equipment to said thermostat” and a structure of “a (power) line and any equivalents.” Pet. 10–11. Patent Owner does not dispute this construction. Prelim. Resp. 4. Based on the record at this stage of the proceeding, we adopt Petitioner’s proposed constructions of this term.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,185,825
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.