• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

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

    “5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

  Patent outcomesUS 10,907,459 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,907,459
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

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

    “3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13

  Patent outcomesUS 10,815,764 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,815,764
• Apple Inc. v. Rfcyber Corp.Instituted
  PTAB · Jan 23, 2023 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Institution

  The Board instituted IPR of claims 1–11 based on the § 103 ground over Buhot, GPC, and Zhu, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’724 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–11) of the ’724 patent, based on the ground asserted in the Petition.” slip op. at 2

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

    “Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 9. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, 522 F.3d at 1306; New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008) (“Patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.”). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlierfiled application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. Nor could the claimed subject matter have been “envisioned” from the earlier disclosure to establish written description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010). We agree with Petitioner that, on this record, there does not appear to be support for limitation [1(j)] in the ’653 application. Patent Owner identifies the following disclosure from the ’218 patent (the patent that issued from the ’653 application) as supporting limitation [1(j)]: According to one embodiment, a smart card has a preloaded smart card operation system that provides security framework to control the access to the Smart card (e.g., an installation of external applications into the smart card). In order to manage the life cycle of an external application, a card manager module is configured by using the smart card security framework. For instance, a Java based smart card, SmartMX, is preloaded with an operating system JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card manager functionality. Ex. 2001 (’218 patent), 4:47–56. Patent Owner argues that “this description is substantively identical to that on which Apple relies for disclosure of the “emulator device” and “replace out of the emulator device . . . replacing out of the emulator device . . .” limitations. Prelim. Resp. 26. Patent Owner contends that “Apple relies on Buhot’s discussion of an ‘operating system 314 (running on processor 400) for the ‘emulator device’ limitation (Pet. at 31), and relies on Zhu’s alleged teachings regarding a ‘smart card manager . . . which governs the process of loading and unloading applications out of an emulator’ for the ‘replace out of the emulator device . . . replacing out of the emulator device’ limitations.” Id. (citing Pet. 43). Patent Owner asserts that Petitioner “cannot argue with a straight face that its proposed combination discloses” slip op. at 21

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,018,724
• ROKU, Inc. v. Flexiworld Technologies, Inc.Instituted
  PTAB · Mar 24, 2022 · PGR2021-00112 · APJ Bryan F Moore · PGR · Institution

  Instituted PGR on claims 1–20 because Petitioner showed a reasonable likelihood that claim 1 lacks written description support; all petition grounds were included.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “content for output.” Id. at 89. We determine, however, that Petitioner’s argument under Step 2A Prong One that claim 1 is directed to the “obtaining content for output” is not substantially different from the Examiner’s determination that claims 1‒20 recite “collecting information, analyzing it, and displaying certain results of the collection and analysis.” Compare Pet. 37–88 (citing e.g. Electric Power), with Ex. 2001, 193–194 (also citing Electric Power). In both cases, the argument is the same or substantially the same, i.e., that similarly identified subject matter of the claim is obtaining (collecting) data and displaying (outputting) it. Nevertheless, as to Step 2A Prong Two, we determine that the claims at issue in the ’096 prosecution differ in material ways from the ’903 patent claims at issue in this PGR. Specifically, the ’096 patent claims recite a touchscreen interface not recited in the ’903 patent claims. Additionally, the ’903 claims focus on the “output device” as performing the patented steps but in the ’096 prosecution history the “‘information apparatus performs the patented steps and “is integral to the claims” (as the Applicant argued). See Ex. 2008 [comparison of ’096 prosecution claims and ’903 claims]; Ex. 2001, 150; see also Pet. 89 (“the claims at issue in the ’067 application were different than the claims of the ’903 patent addressed here.”). rejection and arguments in the ’096 prosecution history turns on whether the claims in this PGR recite different elements that must be determined to integrate the judicial exception into a practical application (i.e., Prong Two of Step 2A). Petitioner argues that an essential element different than the ’096 claims, i.e. the output device, does not integrate the judicial exception into a practical application because the claims do not amount to an improvement to computer functionality. Pet. 37–72. We find this a close case. Nevertheless, due to the differences in the claims, we determine that the Examiner’s withdrawal of the § 101 rejection in light of the applicant’s arguments regarding the claim being directed to a specific technical solution is not substantially the same argument that Petitioner’s presents in the Petition as to Prong Two of Step 2A.” slip op. at 22

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

    “C. Lack of Written Description Support Petitioner contends that the challenged claims are unpatentable for lack of written description for the same reasons it contends the ’903 patent is PGR eligible. Pet. 13–36. The Specification of the ’903 patent has substantially the same disclosures as the Specification of the ’413 application relied on by Patent Owner (see Prelim. Resp. 20) to which the ’903 patent claims priority. Having determined that the disclosures in the ’903 patent Specification and the ’413 application is insufficient to provide written description support for the at least claim 1, we also determine that Petitioner has demonstrated a reasonable likelihood that at least claim 1 is unpatentable for the same reasons. Thus, we exercise our discretion and institute post grant review of claims 1–20 challenged under this ground. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018).” slip op. at 33

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateInstituted

    “in the art at the time of the invention] would have understood that an output system/device could be (or include) an information apparatus. Prelim. Resp. 24. We determine that Patent Owner’s argument has a logical flaw––i.e., the fact that a particular device could be used alternately as an information apparatus or an output device does not necessarily mean that it was known by one of ordinary skill in the art to use a combined information apparatus/output device and have the new combined device perform all the additional functions required by the claims. “The knowledge of ordinary artisans may be used to inform what is actually in the specification, but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) (“Rivera”). “The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification . . . . It extends only to that which is 1997). Patent Owner has not pointed to any disclosure in the ’413 application teaching that an “output device” can perform the functions of the “information apparatus” including its interactions with the “output device.” For example, claim 1 recites “wirelessly receiving, by the output system . . . output data from at least one server of the one or more servers over the Internet.” Ex. 1001, 37:28–32. At this stage, we find sufficiently persuasive Petitioner’s argument, which we discuss above, that the only written description support for an “output device” that performs the claimed functions by accessing the Internet provided by Patent Owner is not an “output device” but an “information apparatus.” Prelim. Resp. at 27–29.” slip op. at 29

  § 112 disclosureDiscretionary denialcites Mayo · Bilski · Electric Power
  Patents in suitUS 11,029,903
• ROKU, Inc. v. Flexiworld Technologies, Inc.Institution denied
  PTAB · Mar 14, 2022 · PGR2021-00111 · APJ Bryan F Moore · PGR · Institution

  The Board denied institution because the challenged patent was not eligible for post-grant review; it found the priority applications supported claims 6 and 19 and did not reach the § 101 ground.

  RulingsInstitution decision

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

    “For the above reasons, we are persuaded that the ’031 patent’s priority applications (pre-AIA applications) provide written description support for the claim limitation that “that the “output system” (claim 6) or “output device” (claim 19) can be an “Internet appliance.” Thus, we are not persuaded by Petitioner that claims 6 and 19 have an effective filing date after March 16, 2013. Accordingly, claims 6 and 19 do not render the ’031 patent eligible for post-grant review under AIA § 6(f)(2)(A). Accordingly, the information presented in the Petition does not establish that the ’031 patent is eligible for post-grant review.” slip op. at 16

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Finally, the definition of output device in the priority ’765 Application (as in the Specification of the ’031 patent) is that an “[o]utput device [] is an electronic system capable of outputting digital content … Any device capable of playing or reading digital content in voice (e.g., music, speech) or data (e.g., text, document) is also a possible output device.” Prelim. Resp. 15 (alterations in original) (quoting Ex. 1011 (’765 application) ¶ 89, Ex. 1001, 16:29–41). An Internet appliance does fall within that definition. The ’765 Application also contemplates that an output device is a network device accessible through an IP address. See Ex. 1011, 14 (referring to “[i]dentification of an output device” by “IP address”). Put another way, the priority application adequately describes a device fitting the description of” slip op. at 14

  § 112 disclosure
  Patents in suitUS 10,846,031
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCInstituted
  PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution

  The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 324(a), 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.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2

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

    “These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8

  • Skill levelOther

    “This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and 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). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,815,764
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCInstituted
  PTAB · Feb 8, 2022 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Institution

  The Board instituted PGR on claims 1–28 on all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 324(a), 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.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2

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

    “These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in a selected range of a maximum continuous power (MCP) level,” and “the second output power . . . being in a selected range of the MCP level to a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’459 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8

  • Skill levelOther

    “This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and 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). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11

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

    “We agree with Patent Owner that Petitioner has not explained sufficiently what a “maximum power output value” means in the context of the ’459 patent. Nor has Petitioner explained sufficiently why “maximum intermittent power” should be tied to the “maximum power output value.” In contrast, Patent Owner’s proposed construction is supported by the Specification, although we do not agree with the last clause of the construction because the references to “typical” values do not assist in understanding the claim language. Accordingly, for purposes of this Decision, we preliminarily construe “maximum intermittent power” to mean “an elevated operating output level that the pump unit may operate intermittently throughout its operating life without excessive damage to the pump unit.”” slip op. at 14

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham · Nautilus
  Patents in suitUS 10,907,459
• SZ Dji Technology Co., Ltd. / Parrot Inc. v. Drone-Control, LLCAll claims unpatentable
  PTAB · Jun 11, 2019 · IPR2018-00207 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1, 3–6, 8–11, and 13–15 are anticipated by Thornberg ’983; claims 2, 7, and 12 are obvious over Thornberg ’983 and Karem. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not file a Patent Owner Response and has not otherwise disputed Petitioner’s proposed level of skill. See Tr. 77:1–6. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with Petitioner’s definition. Our findings are supported by the level of ordinary skill in the art reflected by the prior art of record and the ’116 patent. See Ex. 1001, 1:36–37 (“This invention relates generally to radio controlled toys such as airplanes and helicopters.”); Ex. 1006, 1:8–10 (“The present invention relates to the control of remotely operated vehicles, and more particularly to a variable reference for the control of a remotely operated vehicle.”), see id. at 3:41–44 (“The system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.”). Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it to our discussion below.” slip op. at 11

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

    “Ex. 1006, 5:22–29. We further observe that once the disclosed pitch/roll commands (i.e., command data) are provided to the pitch axis and roll axis transformation functions, the pitch axis transformation 410 and roll axis transformation 412 use transformation equations to determine a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS). See Ex. 1006, 6:17–28. In other words, the flight control computer transforms received command pitch/roll data into TPSS and TRSS commands. In performing this transformation, the pitch axis transformation function 410 and the roll axis transformation function 412 also receive a transformation angle (θ) input. Id. at 5:30–32. Thornberg ’983 teaches that the transformation angle θ is determined based on the true heading of the vehicle as determined by the navigation system 36 and the desired vehicle reference and vehicle reference mode. Id. at 5:31–35. As discussed above, we find that the true heading of the vehicle as determined by navigation system 36 provides motion data generated by a sensor. Thornberg ’983 teaches that the transformations into TPSS and TRSS take into account transformation angle (θ), which Thornberg ’983 teaches is determined based on the true heading (i.e., motion data) of the vehicle and the control data (pitch/roll commands) received from control panel 200 of the remote operator control. See Ex. 1006, 4:29–33, 5:23–25, 5:36–38. Further, in the operator reference mode, the orientation of the operator/remote control upon activation of the operator mode is used as the reference axis (i.e., operator’s coordinate system). Additionally, as noted in the Petition (see Pet. 30–31), Thornberg ’983 teaches a variable operator reference mode in which the operator reference changes based on changes in the orientation of the operator control panel. Ex. 1006, 7:32–35. Based on the disclosure discussed above, we find that the pitch and roll commands received at lines 405, 415 in the operator mode teach command data in “a first coordinate system from a perspective of the remote control device” as recited in claim 1. Moreover, we find that Thornberg ’983 teaches that the received pitch/roll command data is transformed into control data in “a second coordinate system that is from a perspective of the RC aircraft.” Specifically, Thornberg ’983 teaches that the transformation equations 1 and 2 transform the pitch command and roll command based on the difference between the aircraft heading and the reference heading. See Ex. 1066, 7:9–11, 7:19–24. Further, Dr. Hansman testifies that TPSS and TRSS control data control the vehicle in the vehicle’s coordinate system, which is from the perspective of the vehicle. Ex. 1003 ¶ 411. We credit Dr. Hansman’s undisputed testimony in this regard because this testimony is consistent with the disclosure of Thornberg ’983, which teaches, among other things, that “[t]he system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.” Ex. 1006, 3:41–44.” slip op. at 19

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

    “[a] POSITA would have been motivated to modify Thornberg’s control panel 200 to “control” the UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair, that Thornberg teaches were “well known” uses of UAVs. Ex. 1006, 1:15-24; Ex. 1003, ¶443. Pet. 45. We are persuaded that Petitioner’s rationale and evidence demonstrate by a preponderance of the evidence that claims 2, 7, and 12 would have been obvious in view of Thornberg ’983 and Karem. For example, Petitioner’s arguments are supported by the disclosure of Karem, which teaches a remotely-operated vehicle in a hovering state (Ex. 1008, 7:13–23, 32–39, and Thornberg ’983 teaches remotely operated vehicles include helicopters (Ex. 1006, 1:14–17). Further, Petitioner’s arguments are supported by Dr. Hansman’s undisputed testimony that a POSITA would have been motivated to modify Thornberg ’983’s control panel 200 to control UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair. Ex. 1003 ¶ 443. This testimony is supported by Thornberg ’983’s teaching that (1) airborne surveillance, inspection, maintenance, and repair were well known uses of UAVs; and (2) remote operation of UAVs apply to remotely operated helicopters. See Ex. 1006, 1:15–24.” slip op. at 29

  • Expert testimonyPetitioner expert creditedOther

    “In the same manner described in the ’116 patent, we find that the orientation of the control panel in Thornberg ’983 indicates the angular displacement (i.e., position data) of the vehicle relative to the operator mode reference axis because the control panel is directed toward the vehicle. Thornberg ’983’s Figure 2 discloses that the control panel is directly facing the remotely operated vehicle, which is nearly identical to placement of the remote control device and RC aircraft in Figure 5 of the ’116 patent. Ex. 1001, 3:67–4:2, Fig. 5; Ex. 1006, Fig. 2.” slip op. at 50

  Patent outcomesUS 9,079,116 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,079,116
• Sega Of America, Inc. / Ubisoft, Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.All claims unpatentable
  PTAB · Mar 10, 2016 · IPR2014-01453 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–11 and 17–20 as anticipated by Schull; claims 10–11 also as obvious over Schull; claims 12–14 as anticipated by Logan or obvious over Haines and Manduley; claims 15–16 as obvious …

  RulingsFinal written decision

  • Skill levelOther

    “between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Moreover, a determination of unpatentability on the ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The obviousness analysis “should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In addition, we do not find credible Dr. DiEuliis’s testimony that the text in Figure 2B, which states “registration no. generated from user details added to serial no. is encrypted and re-arranged,” describes the addition of two numbers (registration no. and serial no.). There is no previous step in the flowchart depicted in Figure 2B that describes the step of generating the registration number to indicate that the registration number is an input, rather than an output. Ex. 1025, Fig. 2B; see Ex. 1026, Fig. 2. Further, as explained next, the “user details” encompass text, which further explains why the flowchart is not discussing the addition of numbers.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Not reached

    “Regarding Petitioner’s assertion that certain claim terms lack definiteness or written description support, because those issues are neither appropriate for an inter partes review proceeding nor briefed by the parties, we do not address them in this decision. See 35 U.S.C. § 311(b). For purposes of this decision and for the reasons expressed by the District Court, we adopt and apply the constructions provided in the table above. See Ex. 1008, 53–54, 58–61.” slip op. at 12

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

    “We are persuaded by Petitioner’s argument that Schull discloses a summation algorithm for generating its Passwordable ID. As explained by Petitioner, Schull’s algorithm combines three ID numbers: Program ID, Feature ID, and Target ID, which Petitioner refers to as X, Y, and Z in its explanation. Pet. 21. The X number has “N” digits, the Y number has “M” digits, and the Z number has “T” digits. Id. The algorithm combines the numbers X, Y, and Z “(e.g., by concatenating them to produce a number” slip op. at 28

  Patent outcomesUS 5,490,216 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 5,490,216
• Sega Of America, Inc. / Ubisoft, Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.All claims unpatentable
  PTAB · Mar 10, 2016 · IPR2015-01026 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–11 and 17–20 over Schull, claims 12–14 over Logan and Haines with Manduley, and claims 15–16 over Logan and Grundy.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We are not persuaded by Patent Owner’s evidence that the Australian provisional applications conveyed to a person of ordinary skill in the art a summation algorithm or a summer and equivalents thereof. The preponderance of the evidence is that the cited disclosures from the Australian provisional applications are insufficient for this purpose.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In addition, we do not find credible Dr. DiEuliis’s testimony that the text in Figure 2B, which states “registration no. generated from user details added to serial no. is encrypted and re-arranged,” describes the addition of two numbers (registration no. and serial no.). There is no previous step in the flowchart depicted in Figure 2B that describes the step of generating the registration number to indicate that the registration number is an input, rather than an output. Ex. 1025, Fig. 2B; see Ex. 1026, Fig. 2. Further, as explained next, the “user details” encompass text, which further explains why the flowchart is not discussing the addition of numbers.” slip op. at 17

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

    “We are persuaded by Petitioner’s argument that Schull discloses a summation algorithm for generating its Passwordable ID. As explained by Petitioner, Schull’s algorithm combines three ID numbers: Program ID, Feature ID, and Target ID, which Petitioner refers to as X, Y, and Z in its explanation. Pet. 21. The X number has “N” digits, the Y number has “M” digits, and the Z number has “T” digits. Id. The algorithm combines the numbers X, Y, and Z “(e.g., by concatenating them to produce a number 3 Patent Owner does not dispute Dr. Madisetti’s observation that Schull contains a typographical error (referring first to P, F, and T-digits and then to N, M, and T-digits) and his determination that N and M are equivalent to P and F. Ex. 1007 ¶ 41. with N+M+T digits)”. Ex. 1002, 7:24–25; Pet. 21; Ex. 1007 ¶ 41. In 1992, concatenating three integers to produce the desired result “boils down to two basic approaches: (1) multiplying the first integer and second integer by a power of ten (dependent on the number of digits of the subsequent numbers) and adding the three integers together, or (2) converting the integers to ‘strings,’ concatenating the strings, and converting the result back to an integer.” Ex. 1007 ¶ 42. Using the former approach to produce a number with the combined number of digits as the numbers being combined, which Petitioner argues is the one disclosed in Schull, Dr. Madisetti describes the mathematical operations that can be performed programmatically. The mathematical operation provided by Dr. Madisetti is X*10(M+T) + Y*10T + Z, which uses multiplication and addition. Id. ¶¶ 44; Pet. 21. According to Dr. Madisetti, this approach is a summation algorithm and is “computationally quicker” for the reason that “it is a matter of performing basic calculations and processing smaller numbers, as opposed to converting, combining and reconverting large strings . . . .” Ex. 1007 ¶ 43.” slip op. at 28

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

    “supports Petitioner’s assertion that claim 12 would have been obvious over the combination of Haines and Manduley. As an initial matter, we find Haines and Manduley to be analogous art. The PTO and its reviewing courts have developed and applied a two-step “test” to determine whether a prior art reference is “analogous” art and therefore may be used as evidence with respect to a question of obviousness under § 103. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992); In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992); In re Wood, 599 F.2d 1032 (CCPA 1979). Step 1 requires an answer to the following question: “Is the reference within the field of the inventor’s endeavor?” If the answer is “yes,” then the reference is “analogous” and therefore may be used as evidence. If the answer is “no,” then Step 2 requires an answer to the following question: “Is the reference reasonably pertinent to the particular problem the inventor was trying to solve?” If the answer is “yes,” then the reference is analogous and therefore may be used as evidence. Haines and Manduley are analogous art because, like the ’216 patent, they relate to systems for remotely permitted use of software on a device. Ex. 1007 ¶ 59. The scope of the ’216 patent is not limited to personal computers, but, rather, any “platform” on which software runs. Ex. 1001, 2:52–55 (“In broad terms, the system according to the invention is designed and adapted to allow digital data or software to run in a use mode on a platform . . . .”), 2:24–30 (“[T]he term ‘platform’ denotes an environment to be associated with a computer device such as a microprocessor or other data processing device which permits execution of the digital data . . . .”). Even if the Haines and Manduley references could be considered in a different field of endeavor than the ’216 patent because their intended use is postage and parcel systems rather than a personal computer, they are analogous art for the additional reason that they relate to the problem of restricting access to software to those who have a right to use it. Ex. 1001, 2:40–44 (“In this specification, ‘use mode’ refers to use of the digital data or software by its execution on a platform so as to fulfill the seller’s/licensor’s obligations in relation to the sale or license of the right to execute the digital data or software in the use mode.”); Ex. 1005, Abstr., 1:41–49 (“only authorized meter reconfigurations can occur”), 11:13–17; Ex. 1006, Abstr, 1:29–32 (“the marketer may wish to charge the customer a separate amount for each software function or each variety of data and the customer may wish to pick and choose among the functions and/or varieties”), 2:31–63.” slip op. at 43

  Patent outcomesUS 5,490,216 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 5,490,216

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.