• Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentable
  PTAB · Oct 21, 2022 · IPR2021-00831 · APJ Sally C Medley · IPR · Final written decision

  Claims 15–25 were shown unpatentable: claims 15–21 and 23–25 as obvious over Gelb and Tivoli, and claim 22 as obvious over Gelb, Tivoli, and Callaghan.

  RulingsFinal written decision

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

    “We begin with the language of the independent challenged claims. Claim 15 recites “[a] method for handling files within a policy-based data management system, the method comprising.” Ex. 1001, 16:21–22. Claim 23 recites “[a] storage device storing computer code executable by a processor to carry out a method comprising.” Id. at 16:61–62. The remaining limitations of the independent claims are the same and directed to (1) providing a policy set with at least one service class rule; (2) receiving one or more attributes of a file from one of a plurality of clients, the clients comprising at least two different computing platforms; (3) applying the service class rule to the file to assign a service class to the file; and (4) conducting operations on the file in a manner according to the service class. Id. at 16:23–31, 16:63–17:4. The involved claims do not recite a “distributed storage system,” a “storage area network system,” or a “networked, distributed system [environment].” Thus, even if Patent Owner were correct that an invention that involves a networked, distributed system environment dictates that the plurality of clients also be in the networked environment, the claims themselves don’t require a networked, distributed system environment. Indeed, the preamble of claim 23 recites “a storage device,” and the preamble of claim 15 recites a “data management system,” terms that are much broader than those the Patent Owner uses to describe “the invention.” PO Resp. 8–10. Although Patent Owner never explains what “clients in a networked environment” means, Dr. White testifies that “a person of ordinary skill in the art would have understood the ‘plurality of clients’ to refer to clients in a networked distributed systems environment, such that each challenged claim requires a networked environment where clients communicate through a network.” Ex. 2024 ¶ 50. But, again, there is nothing in the claims that recites a “networked distributed systems environment,” a “networked environment,” or “clients communicating through a network.” The method claims are directed to performing certain steps to a file from one of a plurality of clients. No networking or clients communicating through a network is claimed or even shown to be relevant to what is claimed. Indeed, in urging us to narrowly construe the term “plurality of clients,” Patent Owner does not discuss the claim language at all. PO Resp. 8–10. But, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Here, Patent Owner fails to direct us to anything in the claim language itself that would support Patent Owner’s construction of “plurality of clients,” and we find nothing that supports the argument.” slip op. at 11

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

    “two different computing platforms.” Patent Owner contends that the limitation “computing platforms” should be construed to mean “operating systems.” PO Resp. 10–12. Petitioner disagrees and argues that “computing platforms” should be construed to mean “the combination of computer hardware and an operating system.” Pet. Reply 4–6. We understand that resolution of this issue is relevant only to Petitioner’s challenge based on Devarakonda. PO Resp. 2–3, 38–39 (arguing that Gelb alone fails to teach a plurality of clients but not addressing Gelb in combination with Tivoli), 55– 59 (arguing that Devarakonda fails to disclose clients that comprise at least two different operating systems); Pet. Reply 15–16; Tr. 5:16–22, 7:24–8:3, 25:22–26:23. For reasons explained below, we need not decide Petitioner’s challenge based on Devarakonda. Accordingly, for purposes of our Decision, we need not construe “computing platforms.” Other Terms We need not otherwise construe any other terms in the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, relying on the declaration testimony of Dr. Christopher Jules White, argues that a POSITA would have had “at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, along with two years of experience in the design, operation, or control of networked data management systems, and/or distributed systems.” PO Resp. 6 (citing Ex. 2024 ¶ 47). Patent Owner further argues that “Dr. White’s opinions and the arguments in this paper apply under either proposed level of ordinary skill in the art.” Id. at 7 (citing Ex. 2024 ¶ 49). We adopt Petitioner’s definition of the level of skill except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9

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

    “construction for “plurality of clients” to mean “clients in a networked environment.” Thus, we disagree with Patent Owner that the claims reflect that the ’132 patent’s field of endeavor is distributed storage systems. During oral argument, Patent Owner represented that its “analogous art argument depends on the construction of clients in a networked environment . . . for the first prong.” Tr. 39:20–40:11; see also Sur-Reply 7–8 (“[t]he lack of clients in a networked environment takes Gelb’s single-machine mainframe out of the ’132 Patent’s field of endeavor of distributed storage systems, which involves networked computers”). Accordingly, we determine that Patent Owner has failed to show that Gelb is not relevant to the obviousness analysis and agree with Petitioner that “Gelb’s teachings align closely to the subject matter of the ’132 Patent and therefore are analogous.” Pet. Reply 6.9” slip op. at 20

  Patent outcomesUS 8,671,132 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,671,132
• Momentum Dynamics Corporation v. Witricity CorporationAll claims unpatentable
  PTAB · Oct 12, 2022 · IPR2021-01127 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–8 are unpatentable because Kanno anticipates them and renders them obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’635 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid including an expert in the definition of the level of skill.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “We agree with Petitioner. The plain language of claim 1 is expansive, requiring only that the partially cancelled first magnetic field is “outside a spatial region through which power is transferred from the first source magnetic resonator to the device magnetic resonator.” The claim does not refer to a specific type of radiation, let alone far field radiation. The claim drafter deliberately chose the broader term “first magnetic field” rather than specifying “far field radiation.” We find nothing in the claim that points to a more restrictive interpretation of “first magnetic field.” The specification does not limit the partially canceled first magnetic field to far field radiation either, as it expressly contemplates that “the fields that need to be minimized or reduced can be either the far-field, or the near field (if the wavelength is much larger than the distance between the wireless power transfer system to the point of interest).” Ex. 1001, 51:33–37 (emphasis added). The specification could not be any plainer than this— referring explicitly to reducing the far field “or the near field.” Id.5” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner. Patent Owner’s arguments rely on a claim construction that we have not adopted. And Kanno discloses at least near-field cancellation by disclosing, for example, that angles “within the range of 90 to 180 degrees . . . minimized leakage of electromagnetic waves into the surrounding space effectively.” Ex. 1005, 28:36–41; Ex. 1003 ¶¶ 56 (citing, e.g., Ex. 1005, 28:18–42), 107 (similar), 111 (similar). Patent Owner does not dispute that Kanno teaches near-field cancellation. See, e.g., PO Resp. 9 (“reducing ‘near field strength’ as described in Kanno”). Thus, under the correct construction of this limitation as encompassing near-field radiation, far-field radiation, or both, we agree that Kanno teaches it. Not only that, but Patent Owner does not dispute Petitioner’s Reply argument that Kanno also discloses the same far-field cancellation as the ’635 patent, as Patent Owner neither filed a sur-reply nor addressed Petitioner’s Reply argument at the oral hearing. See Tr. 14:20–21 (resting on the briefs). And we agree with Petitioner’s argument, as supported by the unrebutted testimony of Dr. Arnold, that even under Patent Owner’s incorrect construction, Kanno teaches this limitation. Reply 6–7 (citing, e.g., Ex. 1003 ¶¶ 114–15). Dr. Arnold asserts that “[a] reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field.” See Ex. 1003 ¶ 114. Dr. Arnold explains in detail how these near and far fields relate to one another as follows: The term “near field” is a technical term that refers to the electromagnetic near field of an antenna, as opposed to the radiative “far field”. The near field for an electromagnetically short antenna is defined as a region within one electromagnetic wavelength of the antenna. The electrical frequency used in the real-world implementation of the power generator is 3 MHz. Id. 27:44-48. A frequency of 3 MHz corresponds to an electromagnetic wavelength of 100 meters. Here, the measurement distance of 5 meters is well within the near field range of 100 meters, and constitutes a near field measurement. A reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field Id. ¶ 114. In other words, if a field closer to an antenna is reduced, then the field farther from the antenna will be reduced too. This fact is unremarkable, as Dr. Arnold explains, “[t]he principles behind magnetic resonators to wirelessly transfer power have been known for over a century.” Id. ¶ 24.” slip op. at 20

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

    “Even in light of Patent Owner’s arguments, which we address below, we agree with Petitioner. We find that one of ordinary skill in the art would have combined Kanno’s Example 1 with its fundamental arrangement because the specific details in Example 1 and test data would have indicated to the skilled artisan the desirability of combining these portions of Kanno. As Dr. Arnold persuasively testifies, “a POSA would have been motivated to look to Example 1 because it provides those specific implementation details for circuit component types and values, as well as test data showing that the power generator achieves high power transfer efficiency while minimizing electromagnetic field leakage.” Ex. 1003 ¶ 150. He further testifies, “given that Kanno describes ‘Example 1’ as a real-world implementation, a POSA would have had a reasonable expectation of success that the power generator using those implementation details would work.” Id. We agree and credit this unrebutted testimony in support of Petitioner’s motivation to combine separate portions of Kanno.” slip op. at 31

  Patent outcomesUS 9,306,635 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,306,635
• Gain Capital Holdings, Inc. v. Oanda CorporationAll claims unpatentable
  PTAB · Mar 16, 2022 · CBM2020-00023 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–12 are unpatentable under § 101; proposed substitute claim 13 is unpatentable under §§ 101 and 103 over Pictet, and the revised motion to amend is denied.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “all directed to “time-based trade analysis” “improperly describes the claims at too high a level of abstraction, as warned against in” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1337 (Fed. Cir. 2016). PO Resp. 5–6. We disagree. Petitioner’s articulation of the abstract idea to which claim 1 is allegedly directed is appropriately focused and tied to the specific language of the limitations of the claim. Petitioner explains how the recited “price data” and “current system position information” are the key inputs for time-based trade analysis and how calculating a trade recommendation using sub-models based on different times of day constitutes such analysis. See Pet. 31–34. Further, “time-based trade analysis” is not a general field, but rather a particular practice, namely the analysis of potential trades based on time. That type of analysis is reflected expressly in claim 1 via the use of a plurality of sub-models where each is based on “a different time of day.” Petitioner’s analysis is persuasive, as it is consistent with the language of claim 1 and supported by the testimony of Mr. Donefer, which we credit.6 Based on the full record developed during trial, we are persuaded that claim 1 recites time-based trade analysis. Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea.” slip op. at 21

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We disagree. Claim 1 does not recite a distributed system architecture, sub-model calculations executed concurrently in parallel, or real-time operation for a large number of users, all of which Patent Owner relies on to show a patent-eligible application of the alleged abstract idea. See Reply 6, 8; Ex. 1038 ¶¶ 22, 25–26. Claim 1 broadly recites “calculating trade recommendation information from each of a plurality of trading sub-models,” each “based on a different time of day,” and “calculating a trade recommendation . . . based on said trade recommendation information from each of said trading sub-models.” The claim does not specify how, when, or by what component the calculations are performed. Thus, Patent Owner’s contention that steps (d) and (e) do not represent well-understood, routine, and conventional activity is not commensurate with the language of the claim. With respect to what is actually recited in the claim, we are persuaded based on the full trial record that the calculations are the abstract idea itself (i.e., the fundamental economic practice of “time-based trade analysis”), rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea. See supra Section II.F.1.b; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[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.”). Regardless, though, Petitioner also has provided persuasive evidence regarding the conventionality of steps (d) and (e), particularly given the broad manner in which they are recited in the claim. See, e.g., Ex. 1004 ¶¶ 69–84; Ex. 1021, 115 (“It is widely documented that return volatility varies systematically over the trading day and that this pattern is highly correlated with the intraday variation of trading volume and bid-ask spreads.”); Ex. 1019, 13 (“Trading models offer a real-time analysis of foreign exchange movements and generate explicit trading recommendations. These models are based on the continuous collection and treatment of foreign exchange quotes by market makers around the clock at the tick-by-tick frequency level.”); Ex. 1031, 728–732 (describing modeling that accounts for time periods of different levels of activity, such as when particular FX markets are open, and using time intervals of “hours, days, weeks or years”). Petitioner also has provided a detailed explanation citing persuasive evidence that, even if claim 1 did require distributed parallel processing and real-time trading model calculations, both were well-understood, routine, and conventional at the time of the ’534 patent. See Reply 9–11, 15–17; Ex. 1038 ¶¶ 23 (citing, for example, Ex. 1031, 228–232), 29–35 (citing, for example, Ex. 1031, 718). We credit Mr. Donefer’s testimony, which is supported by evidence in the record and unrebutted—Patent Owner did not address the evidence discussed in the Petition and Mr. Donefer’s initial declaration in its Response, did not file a Sur-Reply addressing Mr. Donefer’s reply declaration and cited evidence, and did not provide any contrary evidence in the record. See Reply 1, 3.” slip op. at 30

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

    “testimony of Mr. Donefer, for why a person of ordinary skill in the art would have had reason to combine Pictet’s teachings and arrive at the method of proposed substitute claim 13. Id. at 24–25 (citing Ex. 1031, 716–723; Ex. 1038 ¶¶ 52–58, 75–77). Petitioner argues that a person of ordinary skill in the art “would have recognized that Pictet’s data collection and storage steps (i.e., steps (a)-(c)) provide inputs for the subsequent calculations (i.e., steps (d)-[(e)]),” “would have understood Pictet as teaching that the distributed parallel processing . . . applies to the implementation of the trading models performing those calculations,” and would have had “reason to use at least five of the parameters discussed [in Pictet] when configuring the rules governing the ‘grand’ model.” Id. at 24. Petitioner further contends that numerous types of parameters were routinely used when designing and evaluating trade models, and Pictet’s moving average . . . is no different. Moreover, Pictet describes two categories of threshold values (i.e., trend and overbought/oversold) and expressly teaches using “several threshold values of both types,” which at a minimum suggests four such parameters. The voting scheme is also an integral part of the weighted moving average Pictet describes. A [person of ordinary skill in the art] also had reason to incorporate a time parameter setting the amount of time in the past that is considered, since a [person of ordinary skill in the art] would have understood that price data from the distant past is less 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that “the Board need not address issues that are not necessary to the resolution of the proceeding”). relevant to a moving average. Pictet also teaches using stop-loss and stop-profit parameters as part of its model implementation. Id. at 24–25 (citations omitted). We have reviewed Petitioner’s analysis and find it persuasive. Petitioner’s reasoning is consistent with the disclosure of Pictet and supported by the testimony of Mr. Donefer, which we credit. For the reasons stated by Petitioner and Mr. Donefer, we find that a person of ordinary skill in the art would have had reason to combine the cited teachings of Pictet in the manner asserted with a reasonable expectation of success.” slip op. at 53

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “3. Patentability Pursuant to 37 C.F.R. § 42.221(d)(2), Petitioner “bears the burden of persuasion to show, by a preponderance of the evidence,” that proposed substitute claim 13 is unpatentable. Petitioner argues that proposed substitute claim 13 fails to recite patent-eligible subject matter under 35 U.S.C. § 101, is indefinite under 35 U.S.C. § 112, second paragraph, and would have been obvious under 35 U.S.C. § 103(a). Opp. 3–25. For the reasons explained below, we determine that Petitioner has met its burden to show, by a preponderance of the evidence, that claim 13 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103(a), and need not reach Petitioner’s arguments regarding definiteness under 35 U.S.C. § 112, second paragraph.” slip op. at 39

  Patent outcomesUS 7,496,534 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR · Graham
  Patents in suitUS 7,496,534
• Google LLC v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00756 · APJ Michael R Zecher · IPR · Final written decision

  Claims 9–12 are unpatentable under § 103(a) as obvious over Paulson and Surprenant; additional grounds combine those references with Beenau and, for claim 11, McConnell.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Relying on the testimony of Mr. Lipoff, Google provides the following assessment of the level of skill in the art: A person of ordinary skill at the time of the alleged invention of the ’952 patent would have held at least a bachelor’s degree in electrical engineering or computer science and had one year of relevant experience in the field of wireless communications. Less work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 8–9 (citation omitted) (citing Ex. 1003 ¶¶ 33–35). Uniloc argues that Google’s proposed assessment is improper because it does not define thresholds for “[l]ess work experience” or “higher level of education.” PO Resp. 6 (alteration in original). Uniloc, however, does not offer its own 4 In its Patent Owner Response, Uniloc does not present arguments or evidence of secondary considerations. See PO Resp. assessment of the level of skill in the art, much less indicate that the resolution of any issue depends on a specific type of work experience or a specific level of education. See id. We, therefore, adopt Google’s proposed assessment of the level of skill in the art and apply it to our obviousness analysis below because it is consistent with the ’952 patent and the asserted prior art.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a person of ordinary skill in the art would have recognized these frequencies to be within the scope of a “plurality of predetermined frequencies” because the frequencies are set initially, before communication takes place, and are based on the capabilities of the communicating devices [(i.e., the transmit device and the receive device)], which are known in advance in at least one disclosed embodiment. Ex. 1003 ¶ 68 (citing Ex. 1005, 13:23–26). In his Declaration accompanying the Reply Brief, Mr. Lipoff clarifies how the “initially determined” frequencies at step 402 preset the range of frequencies discussed in the context of steps 404 and 406 by testifying that, “[t]o achieve [Paulson’s] goal of reducing the probability of interference from noise, one of ordinary skill [in the art] would have understood that it is essential for the noise characteristic created at Step 404 to cover at least the frequencies initially set in Step 402.” Ex. 1027 ¶ 11. Mr. Lipoff further clarifies that “[o]ne of ordinary skill [in the art] would have understood that the phrase ‘initially determined,’ in conjunction with Paulson’s disclosure about further refining the available frequencies in light of the noise characteristic in the surrounding environment, conveys that the range of frequencies identified at Step 402 is related to the later steps in Paulson’s process,” specifically steps 404 and 406. Id. ¶ 19. We credit the aforementioned testimony of Mr. Lipoff because it takes into account the reasonable inferences a person of ordinary skill the art would draw to explain how Paulson’s “initially determined” frequencies at step 402 preset the range of frequencies that are further refined based on the noise characteristic in the surrounding environment at steps 404 and 406. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 30

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

    “Owner Response, Uniloc provides a table listing the parties’ proposed constructions in the district court case, but does not argue that any particular claim term requires construction for purposes of this Final Written Decision. See PO Resp. 6–8. After considering the fully developed trial record, the issues raised by the parties do not turn on the construction of a particular claim term. As a result, we need not construe any claim term for purposes of determining whether Google has demonstrated by a preponderance of the evidence that claims 9–12 of the ’952 are unpatentable as obvious under § 103(a). See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In our obviousness analysis below, we address the scope and meaning of the claim term “non-user-configurable data,” as this term pertains to the teachings of Surprenant contested by the parties. See infra Section II.B.5.c. More specifically, we address below whether Surprenant’s acoustics modulation protocol identification (“AMP ID”), which is described as being a “unique identification string” specific to “transmit device 101,” teaches or suggests the claim term “non-user-configurable data” as that term is used in the context of the ’952 patent. See infra id. B. Obviousness Over the Combined Teachings of Paulson and Surprenant” slip op. at 9

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

    “At the outset, we note that Uniloc advocates—and Google does not dispute—that the claim term “non-user-configurable data” should be construed in accordance with its plain and ordinary meaning—namely, data that is not configurable by a user. See PO Sur-reply 10 (arguing that “non- user-configurable data . . . must be data that is not configurable by the user”); Tr. 31:13–17, 32:21–23 (arguing the same). Instead, the parties’ dispute appears to turn on what types of data amount to data that is not configurable by a user. The specification of the ’952 patent provides important guidance in this respect because it discloses that “[n]on-user-configurable data includes data such as hardware component model numbers, serial numbers, and version numbers, and hardware component parameters such as processor speed, voltage, current signaling, and clock specifications.” Ex. 1001, 6:37–41 (emphasis added). Dependent claim 8 of the ’952 patent, which was not challenged in this proceeding, further limits “non-user-configurable data” to only “hardware component numbers, serial numbers, and version numbers.” Id. at 14:50–52. In contrast, independent claim 9 is broader in scope because it does not limit “non-user-configurable data” to any specific type of data and, therefore, encompasses all the examples from the specification identified above. With this in mind, we turn to Google’s reliance on Surprenant’s AMP ID to teach the “non-user-configurable data,” as recited in independent claim 9. Based on the fully developed trial record, we agree with Google that Surprenant’s AMP ID teaches the “non-user-configurable data” because it discloses that it is a “unique identification string” specific to “transmit device 101.” Pet. 45 (quoting Ex. 1006, 7:45–49). Although Surprenant does not provide further clarification as to what might qualify as a “unique identification string,” Mr. Lipoff provides testimony accompanying the Petition that explains the following: “[b]ecause the AMP ID is disclosed as a ‘unique identification string’ specific to a transmit device, one of ordinary skill [in the art] would have understood it to be derived from a unique property of the device itself that is not user-configurable.” Ex. 1003 ¶ 107. As just one example, Mr. Lipoff testifies that it would have been obvious to a person of ordinary skill in the art for Surprenant’s AMP ID “to take the form of . . . the device’s serial number,” because it is a “unique identification string” that is nothing more than “data [that] helps uniquely identify the transmit device.” Id. ¶ 109. We credit the aforementioned testimony of Mr. Lipoff because it is consistent with Surprenant’s disclosure that the AMP ID is a “unique identification string” specific to “transmit device 101,” and his testimony also is consistent with the examples of “non-user-configurable data” set forth in the specification of the ’952 patent.” slip op. at 43

  Patent outcomesUS 9,564,952 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,564,952
• Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00540 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–6, 9, 24, 26, 27, 29, 30, 32, 42, 44, 73, and 74 are unpatentable as obvious under § 103.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “At least with respect to the portions of Dr. Mazumder’s declaration that supports Intel’s arguments on which we rely for our decision, and any cross-examination relevant to that testimony, we disagree that Dr. Mazumder was improperly recalcitrant, or demonstrated a lack of knowledge of the subject matter to the extent that it would discredit him as a credible expert witness. Given the circumstances, we also do not fault Dr. Mazumder for refreshing his recollection during cross-examination. Thus, we do not agree with PACT that we should, as a general proposition, disregard or give less credit to Dr. Mazumder’s testimony for these reasons.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Intel argues that a person of ordinary skill in the art “would have had at least an M.S. degree in electrical engineering, and at least three years of experience with multiprocessor systems design.” Pet. 14 (citing Ex. 1001 ¶ 72). Dr. Mazumder testifies that this level of skill “was the typical level of experience of persons working with multiprocessor systems, including the design of processor, cache, memory, and bus architectures, at the time of the alleged invention.” Ex. 1001 ¶ 72. Dr. Wolfe does not disagree, and in his declaration he applies Dr. Mazumder’s proposed articulation of the level of ordinary skill. See Ex. 2026 ¶ 40. For this decision, we adopt Dr. Mazumder’s uncontested declaratory testimony, which we find consistent with the level of technical expertise assumed by the ’807 patent disclosure and the asserted prior art references.” slip op. at 12

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

    “Neither Intel nor PACT argues that any claim terms need an explicit construction. See Pet. 5 (“Intel does not believe any terms need to be construed to resolve the prior art issues presented in this Petition.”). However, according to Intel, in the co-pending litigation the parties “stipulated that the preambles are not limiting” for all independent claims challenged in the Petition. Id. (citing Ex. 1014). PACT does not challenge this statement, and whether the preambles are limiting does not appear to be material to Intel’s contentions in the Petition. Absent a controversy, we do not need to explicitly construe any terms for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that our decision involves interpreting claim language, we discuss that language below in our analysis of the claim limitations.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “(quoting Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Indicia on the face of the reference, such as a copyright date or ISBN number, “are considered as part of the totality of evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Based on the evidence as a whole, Intel has shown persuasively that the IEEE published the Barroso article in 2000 as part of a physical volume accessible to researchers in the field. In addition to having a copyright notice dated 2000, Barroso is part of a non-consecutively paginated article, bearing the ISBN number “1-58113-232-8.” Ex. 1005, 282. The document also provides instructions for copying and republication, and specifies a copying fee of $5.00. See id. We also find it credible that Mr. Grenier would be familiar with the publication practices of the IEEE in 2000, and the IEEE’s practices with respect to maintaining publication metadata for articles such as Barroso. Although we would reach this conclusion without the new evidence that Intel submitted with its Reply, this new evidence also supports our finding. We find credible the librarian testimony that copies of Barroso were publicly available in two university libraries before the earliest priority date of the ’087 patent. See Exs. 1053, 1054. We also find credible the testimony of Dr. Colwell that Barroso was well-known in the field, and that it is standard practice to submit a physical, bound copy of proceedings at the ISCA conference. Ex. 1055 ¶ 10. So the evidence suggests that about 230 people would have received a bound copy of Barroso at that time. See id. ¶ 9. Dr. Annavaram’s testimony, as a witness appearing on behalf of PACT in another case, corroborates this, although according to him, attendees to the ISCA conferences might have received an electronic copy rather than a bound copy. See Ex. 1051, 165:6–166:5. Thus, we find that Barroso was a printed publication at the time of the claimed invention.” slip op. at 21

  Patent outcomesUS 9,037,807 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,037,807
• Samsung Display Co., Ltd. v. Solas Oled Ltd.All claims unpatentable
  PTAB · Mar 31, 2021 · IPR2020-00140 · APJ Julia Heaney · IPR · Final written decision

  Claims 1–9, 11–13, and 15–18 are unpatentable under § 103 over Utsugi alone, Utsugi and Manabe, or Utsugi and Eida.

  RulingsFinal written decision

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

    “No. 6,072,450 (Ex. 1001, “the ’450 patent”). Paper 1 (“Petition” or “Pet.”). Solas OLED Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–9, 11–13, and 15–18 of the ’450 patent, and we instituted this inter partes review as to all challenged claims. Paper 9 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s formulation of the level of ordinary skill in the art and determined that a person of ordinary skill in the art at the time of the invention “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Dec. on Inst. 9 (quoting Pet. 13) (adopting Petitioner’s formulation, which is supported by Dr. Fontecchio’s testimony, because it is consistent with the ’450 patent and the asserted prior art). In its Patent Owner Response, Patent Owner argues that a person of ordinary skill would need approximately two years of experience working in design and development related to active matrix organic light emitting diodes (“OLED”) displays, in addition to a Bachelor’s degree in Electrical Engineering, Physics, and/or Materials Science and Engineering or equivalent training. PO Resp. 7–8 (citing Ex. 2001 ¶¶ 30–31). Patent Owner also states, however, that its arguments in opposition to the Petition apply under Petitioner’s definition of the level of ordinary skill as well. Id. at 8. Accordingly, having considered the parties’ arguments and evidence, we maintain our determination from the Institution Decision adopting Petitioner’s proposed level of ordinary skill in the art, as it is consistent with the problems and solutions in the ’450 patent and prior art of record. We also determine our decision would be the same under either side’s formulation of the level of ordinary skill.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22

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

    “transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22

  Patent outcomesUS 6,072,450 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,072,450
• Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Nov 13, 2020 · IPR2020-00315 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol because the combined teachings establish each challenged limitation.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Rodermund’s testimony is insufficient because he did not testify, or provide documentary evidence, that email notifications were provided of the actual upload of TR25.835 to the 3GPP server. Id. Here, Mr. Rodermund’s testimony sufficiently demonstrates his personal knowledge of the business practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2, 6, 7, 13. He explains the general practice of emailing persons having ordinary skill in the art as soon as new or additional documents are uploaded to 3GPP’s ftp server. Id. ¶ 19.8 We give substantial weight to Mr. Rodermund’s testimony that persons having ordinary skill in the art were notified by email as soon as new documents, like TR25.835, were uploaded to 3GPP’s ftp server based on his personal knowledge of the business practices of 3GPP. Id.; see Hall, 781 F.2d at 899 (accepting evidence regarding the general library procedure for cataloging as probative value of routine business practice to show the performance of the specific act of cataloging a document). In re Klopfenstein, 380 F.3d 1345, 1350–51 (Fed. Cir. 2004) (“Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.”).” slip op. at 14

  • Strike new argumentNew argument consideredDecided for petitioner

    “Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“Consolidated Practice Guide”) 73 (Nov. 2019)9; Hulu, LLC. v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec. 20, 2019) (precedential) (“For example, if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication”). Here, we determine that Petitioner’s arguments and new evidence in connection with the Petitioner Reply are responsive to Patent Owner’s challenges to TR25.835’s status as a printed publication.” slip op. at 16

  • ExcludeDenied

    “Next, Patent Owner makes several evidentiary objections to Petitioner’s Reply exhibits. Sur-reply 2, 12–13. A party wishing to challenge the admissibility of evidence “must file any objections within five business days of service of evidence to which the objection is directed.” Consolidated Practice Guide 78–79 (citing 37 C.F.R. § 42.64(b)(1)). Patent Owner, however, did not file any objections within five business days of service of the Reply evidence. Tr. 19:25–20:7. Rather, Patent Owner, for the first time, presents its evidentiary objections in connection with its Sur-reply. By disregarding the rules, Patent Owner prevented Petitioner from serving supplemental evidence, and filing an opposition to a motion to exclude as permitted. 37 C.F.R. §§ 42.64(b)(2), 42.64(c); Paper 8, 8–9. Patent Owner’s evidentiary objections, therefore, are not timely and we do not, nor need not, consider them.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide its own assessment of the level of ordinary skill in the art, but argues that the Petition fails to link the subject matter of hybrid ARQ methods to the identified levels of education and industry experience proposed by Petitioner. PO Resp. 14. Patent Owner has failed to show that such a linkage is necessary. Rather, in determining the level of ordinary skill in the art, we consider several factors, such as the type of problems encountered in the art and prior art solutions to those problems, as well as education and industry experience. Here, we agree with Petitioner and find that a person having ordinary skill in the art would have known of the hybrid ARQ methods described in the ’917 patent and closely followed ARQ developments by 3GPP and other network standardization groups. Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36). Moreover, we adopt Dr. Bims’s assessment of a person with ordinary skill in the art as it is consistent with the ’917 patent and the asserted prior art. Ex. 1003 ¶ 27. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 7

  Patent outcomesUS 7,075,917 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,917
• Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Nov 13, 2020 · IPR2020-00224 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol because the combined teachings establish each challenged limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide its own assessment of the level of ordinary skill in the art, but argues that the Petition fails to link the subject matter of hybrid ARQ methods to the identified levels of education and industry experience proposed by Petitioner. PO Resp. 14. Patent Owner has failed to show that such a linkage is necessary. Rather, in determining the level of ordinary skill in the art, we consider several factors, such as the type of problems encountered in the art and prior art solutions to those problems, as well as education and industry experience. Here, we agree with Petitioner and find that a person having ordinary skill in the art would have known of the hybrid ARQ methods described in the ’917 patent and closely followed ARQ developments by 3GPP and other network standardization groups. Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36). Moreover, we adopt Dr. Bims’s assessment of a person with ordinary skill in the art as it is consistent with the ’917 patent and the asserted prior art. Ex. 1003 ¶ 27. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 7

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). For purposes of this decision, we need not expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
  • Strike new argumentNew argument consideredDecided for petitioner

  Patent outcomesUS 7,075,917 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,917
• Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Nov 13, 2020 · IPR2019-00973 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the testimony of Dr. Harry Bims, who testifies that a person having ordinary skill in the art would have had “a bachelors’ degree in electrical engineering, computer science, or the” slip op. at 6

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). For purposes of this decision, we need not expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Rodermund’s testimony is insufficient because he did not testify, or provide documentary evidence, that email notifications were provided of the actual upload of TR25.835 to the 3GPP server. Id. Here, Mr. Rodermund’s testimony sufficiently demonstrates his personal knowledge of the business practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2, 6, 7, 13. He explains the general practice of emailing persons having ordinary skill in the art as soon as new or additional documents are uploaded to 3GPP’s ftp server. Id. ¶ 19.8 We give substantial weight to Mr. Rodermund’s testimony that persons having ordinary skill in the art were notified by email as soon as new documents, like TR25.835, were uploaded to 3GPP’s ftp server based on his personal knowledge of the business practices of 3GPP. Id.; see Hall, 781 F.2d at 899 (accepting evidence regarding the general library procedure for cataloging as probative value of routine business practice to show the performance of the specific act of cataloging a document). In re Klopfenstein, 380 F.3d 1345, 1350–51 (Fed. Cir. 2004) (“Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.”).” slip op. at 14

  • Strike new argumentNew argument consideredDecided for petitioner

    “Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“Consolidated Practice Guide”) 73 (Nov. 2019)9; Hulu, LLC. v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec. 20, 2019) (precedential) (“For example, if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication”). Here, we determine that Petitioner’s arguments and new evidence in connection with the Petitioner Reply are responsive to Patent Owner’s challenges to TR25.835’s status as a printed publication.” slip op. at 16

  Patent outcomesUS 7,075,917 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,917
• Tradestation Technologies, Inc. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Nov 17, 2017 · CBM2016-00086 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–21 are unpatentable under § 101 because they claim an abstract economic practice without an inventive concept.

  RulingsFinal written decision

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

    “I. INTRODUCTION TradeStation Technologies, Inc., (“Petitioner”)1 filed a Petition requesting a covered business method patent review of claims 1–21 of U.S. Patent No. 7,818,247 B2 (Ex. 1001, “the ’247 patent”) under the transitional program for covered business method patents.2 Paper 2 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1–21 of the ’247 patent (Paper 8 (“Dec.”)).” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “We have considered Petitioner’s showing and all of Patent Owner’s arguments, and determine, for all of the above reasons, Petitioner has shown sufficiently that claims 1–21 of the ’247 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101. IV. ORDER It is: ORDERED that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101; and” slip op. at 28

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “we determine that Petitioner has shown4 that claim 1 is directed to the abstract idea of receiving market information, color-coding graphical areas based on market information, and then updating the display based on newly received market information to assist a trader to make an order, which is a fundamental economic practice. Claim 1, the sole independent claim, recites in the preamble a method for displaying market information corresponding to a commodity being traded at an electronic exchange. The method steps include receiving market data including a quantity of an order at a first price level, displaying a first and second graphical area corresponding to a first and second price level in an axial direction, color-coding the first and second graphical areas with a first and second color respectively, and updating the first and second graphical area such that the first graphical area is color-coded with the second color and the second graphical area is color-coded with the first color. We agree with Petitioner that claim 1 encompasses the abstract idea of displaying financial information in a manner that makes it easier to understand and facilitate trades on an exchange, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 31–38 (citing CyberSource Corp. v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (unpatentable mental process performed with aid of pen and paper)); Ex.” slip op. at 18

  Patent outcomesUS 7,818,247 unpatentable
  § 101 eligibilitycites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,818,247

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.