• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

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

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Minerva Surgical, Inc. v. Hologic, Inc.All claims unpatentable
  PTAB · May 8, 2018 · PGR2017-00002 · APJ Meredith C Petravick · PGR · Final written decision

  Claims 1–19 are unpatentable under § 112(a) for lack of written description; Petitioner did not prove lack of enablement.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23

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

    “Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot shown unpatentable

    “Under 35 U.S.C. § 112(a), enablement is separate and distinct from the written-description requirement. Ariad, 598 F.3d at 1344. “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “[A] patent specification complies with the statute even if a ‘reasonable’ amount of routine experimentation is required in order to practice a claimed invention.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands factors, include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breath of the claims. Wands, 858 F.2d at 737. It is Petitioner’s burden to show by a preponderance of the evidence that the claims of the ’989 patent lack enablement. 35 U.S.C. § 326(e). Petitioner’s evidence and argument does not sufficiently establish that the ’989 patent fails to teach those in the art to make and use the claimed invention without undue experimentation. See PO Resp. 58–66. The Petition does not address the Wands factors sufficiently so as to show that undue experimentation is required to make or use the claimed invention. For example, neither the Petition nor Dr. Pearce sufficiently addresses the state of the prior art or the relative skill of those in the art. See Pet. 64–65; Ex. 1002 ¶¶ 145–152; PO Resp. 62. As Patent Owner argues, this is an “omission[] that [is] particularly fatal” to Petitioner’s enablement argument, because Petitioner argues that mechanical expansion and inflation expansion are incompatible and cannot be combined. PO Resp. 62; see Pet. 30–38, 64. Dr. Grundfest, however, testifies that it was well known to combine mechanical and balloon-based expansion in surgical devices. Ex. 2005 ¶¶ 132–136; PO Resp. 56. During cross-examination, Dr. Pearce testified that he “thought about the state-of-the-art in minimally invasive surgery during the 1990s.” Ex. 2003 18:1–14. Dr. Pearce’s testimony is conclusory and does not sufficiently address whether he considered whether it was well known to combine mechanical expansion and inflation expansion in surgical devices. For another example, relying upon the testimony of Dr. Pearce, the Petition asserts that a redesign of the expansion design disclosed in the ’989 patent “would take a substantial amount of time and cost to achieve.” Pet. 65 (citing Ex. 1002 ¶ 149). Likewise, Dr. Pearce testifies, “[s]uch a redesign would take a substantial amount of time and cost to achieve.” Ex. 1002 ¶ 149. Dr. Pearce, however, does not explain sufficiently why combining mechanical expansion and inflation expansion would require a substantial amount of time and cost. See id. For these reasons, we determine that Petitioner has not met its burden of showing by a preponderance of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for lack of enablement.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). We are not persuaded that Dr. Pearce’s testimony concerning the level of skill in the art is erroneous to the extent it does not explicitly require experience related to devices used for uterine surgical procedures or surgical devices that employ expandable inflation-based and mechanical-based components. Patent Owner’s argument and Dr. Grundfest’s testimony is inconsistent with the ’989 patent, which does not disclose an ablation device or method of using an ablation device that solves problems unique to endometrial ablation or unique to surgical devices that employ expandable inflation-based and mechanical-based components. The ’989 patent does not limit the art to be “the field of minimally invasive surgical and uterine devices” (Ex. 2005 ¶ 60). The ’989 patent states: “The present invention relates generally to the field of apparatuses and methods for ablating or coagulating the interior surfaces of body organs. Specifically, it relates to an apparatus and method for ablating the interior linings of body organs such as the uterus and gallbladder.” Ex. 1001, 1:20–24; see also id. at 2:36–38 (“The present invention is an apparatus and method of ablation and/or coagulating tissue, such as that of the uterus or other organ”).” slip op. at 16

  Patent outcomesUS 9,247,989 unpatentable
  § 112 disclosure
  Patents in suitUS 9,247,989
• Ultratec, Inc. v. Captioncall, L.L.C.Institution denied
  PTAB · Feb 22, 2017 · PGR2016-00037 · APJ Barbara A Benoit · PGR · Institution

  The Board denied institution on all challenged claims because the petition did not show that any claim was more likely than not unpatentable under § 101 or § 103.

  RulingsInstitution decision

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

    “review of claims 1–23 of U.S. Patent No. 9,197,745 B1 (Ex. 1001, “the ’745 patent” or “the challenged patent”). Paper 1 (“Pet.”). Patent Owner, CaptionCall, L.L.C., filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). After considering the Petition and the Preliminary Response, we determine that the information presented in the Petition does not demonstrate it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.200(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable construction standard in inter partes review9). Consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for “message” recited in claims 2, 4–8, and 12 and for “module” recited in claims 2–6 and 8. Pet. 9–11. Patent Owner challenges Petitioner’s proposed claim constructions as overly narrow. Prelim. Resp. 8–9. We determine, however, that no claim terms need express construction for this decision.” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “We agree with Patent Owner (Prelim. Resp. 12) that claim 1, as a whole, is directed to an apparatus that facilitates voice communication and captioned text communication using a relay for hearing-impaired users over one or more communications networks and, under specified circumstances— when captioning has been enabled by the hearing-impaired user and the system determines that an attempted connection has failed—automatically reconnects to a captioning communication service. In other words, the claim is directed to a communication device that automatically reconnects to a captioning communication service following an unwanted interruption to the 12 captioning communication service in certain circumstances. See Ex. 1001, 1:13–16 (describing the field of the disclosure as relating to a communication device that automatically reconnects to the captioning communication service “following an unwanted interruption to the captioning communication session”). We determine that claim 1 as a whole is not directed to redialing a telephone as “callers have performed for as long as there have been telephones.” See Pet. 20. Moreover, the claim is directed to an apparatus having communication elements and a processor, and requires two connections and captioning, which, taken as a whole, distinguish claim 1 from a conventional telephone and further supports our determination that the claim merely involves, but is not directed to, the concept of reconnection or redialing. Moreover, looking at the elements individually, claim 1 requires communication elements coupled with a processor configured to able to connect a communication device and connect with a captioning session over two connections. Claim 1 recites a function—“automatically connect with the captioning communication service through a second connection to establish a captioning communication session during the voice communication session responsive to a determination that an attempted connection to the captioning communication service failed during a time in which a caption select option has been enabled by the hearing-impaired user, wherein the attempted automatic connection through the second connection is not made during a time in which the caption select option has been 13 disabled by the hearing-impaired user”—which requires more than “redialing” a telephone. See Prelim. Resp. 11–12. Specifically, the claimed apparatus only performs the “automatically connect” function if three conditions are met: (i) responsive to a determination that an attempted connection to the captioning communication service failed (ii) during a time in which a caption select option has been enabled by the hearing-impaired user, and (iii) “the attempted automatic connection through the second connection is not made during a time in which the caption select option has been disabled by the hearing-impaired user.”” slip op. at 12

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

    “excerpts from Parker as purportedly describing aspects of the automatically reconnect limitation. Id. at 40–42. Petitioner does not assert that either the Ultratec User Guide or Parker alone would have conveyed to one of ordinary skill in the art the automatically connect function with the three conditional limitations (id.), nor is such an assertion required under 35 U.S.C. § 103. Petitioner is required under 35 U.S.C. § 103, however, to explain how the combination of the references would have conveyed to one of ordinary skill 25 in the art the recited automatically connect function with its three conditional limitations. Petitioner has not provided such an explanation, much less adequate analysis by Mr. Zatkovich or factual support as to how one of ordinary skill in the art would understand the separate disclosures of the references to teach the automatically connect limitations. Specifically absent from the Petition is any discussion as to how Petitioner’s combination of references would have conveyed to one of ordinary skill in the art the limitations of automatically connecting under the required conditions—the failed attempt limitation, the when-enabled limitation, and the when-not-disabled limitation. Petitioner’s combination relies on Parker’s reconnection function to establish a lost persistent connection, but Parker’s reconnection function does not do so conditionally, much less under the specific conditions required by claim 1. Petitioner does not explain how the combination of Parker’s unconditional reconnection function would be understood by one of ordinary skill in the art to retry conditionally based on whether the Ultratec User Guide’s caption button was enabling captioning and had not been disabled by the caption telephone user. Furthermore, Petitioner contends that “adding an auto-retry and/or auto-reconnect feature as in Parker to a captioned telephone device as disclosed in [the Ultratec User Guide and Engelke] would amount to simply adding a known technique to a known system, wherein the technique operates in the same way as it was already known to operate and dos not have any unpredictable result.” Pet. 34. As such, Petitioner’s combination 26 expressly relies on Parker’s auto-retry and/or auto-reconnect feature “as in Parker,” which is an unconditional retry in the event of a lost connection. In sum, neither reference by itself describes the automatically reconnect limitation and Petitioner fails to articulate how one of ordinary skill in the art would have understood the claimed automatic reconnect in view of the cited disparate disclosures from the references. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner asserts in a conclusory manner that the combination of a teaching of a button to enable or disable captioning with a teaching of automatic reconnection unrelated to whether captioning is enabled or disabled would have conveyed to one of ordinary skill in the art the automatic reconnection limitation. Petitioner fails to provide adequate explanation or factual support. This flaw of the Petition is particularly problematic when the threshold for institution is “more likely than not,” as here, rather than the threshold of “a reasonable likelihood” required to institute an inter partes review. Compare 35 U.S.C. § 324(a), with 35 U.S.C. § 314(a).” slip op. at 25

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR
  Patents in suitUS 9,197,745
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35

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

    “understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22

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

    “3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43

  Patent outcomesUS 8,908,838 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,908,838
• Shinn Fu Company Of America, Inc. / Shinn Fu Corporation v. The Tire Hanger CorporationAll claims unpatentable
  PTAB · Apr 22, 2016 · IPR2015-00208 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–5 are unpatentable under the stated §102 and §103 grounds; the motion to amend is granted, and substitute claims 6–10 are patentable over the prior art of record.

  RulingsFinal written decision

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

    “that requires construction beyond what was done at the time of institution. Specifically, substitute claim 6 replaces the term “placing” with the new term “hanging.” We see no reason to interpret “hanging” apart from its plain and ordinary meaning. Thus, consistent with its dictionary definition, we construe “hanging” as “to fasten to some elevated point without support from below.” Merriam-Webster’s Collegiate Dictionary, 10th ed. (2000) (emphasis added). The substitute claims also use the transitional phrase “consisting essentially of,” which Shinn Fu argues should be construed presumptively as equivalent to “comprising.” Opp. 3–4 (citing Manual of Patent Examining Procedure § 2111.03). Tire Hanger argues for a narrower construction because, in its view, any additional steps would “materially change the basic and novel characteristics of the claimed method,” pointing to column 1, lines 26–59, of the ’897 patent. Reply 3 (citing Ex. 1002). We are not persuaded that a skilled artisan would view adding a simple extra step, such as raising the wheel to trip a safety latch while removing the wheel from the support arm (see, e.g., Ex. 1012, Fig. 2, 2:61–70), as materially changing the basic objective of the claimed invention in terms of being “easily accessible within the work space,” “remain[ing] out of the way,” and “not requir[ing] workers to bend over,” as made clear in the specification. Ex. 1002, 1:54–59. Thus, we determine that the phrase “consisting essentially of” should be construed as equivalent to “comprising,” so long as any additional unlisted steps “do not have a material effect on the basic and novel characteristics” of the claimed method. PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354–55 (Fed. Cir. 1998).” slip op. at 6

  • ScopeMotion to amend, grantedDecided for patent owner

    “enlarge the scope of the claims of the patent or introduce new matter.” Shinn Fu argues that claim 9, which Tire Hanger proposes as a substitute for original claim 4, impermissibly enlarges claim scope by deleting the requirement that the individual “does not have to bend significantly at the waist to guide the wheel over the hanger.” That omission, in Shinn Fu’s view, makes claim 9 broader, not narrower, because it infers that an individual may indeed be bending over while handling the wheel on the support arm. Id. at 21–22. We disagree. Claim 9 depends from substitute claim 6, which recites that, when the vehicle is elevated, “the human can remove the wheel without bending over,” and when the wheel is on the support arm, the wheel can be removed “without the human bending over.” Thus, as a matter of dependency, claim 9 incorporates the limitations from claim 6 that entail handling the wheel on the support arm “without the human bending over.” That an amendment simply removes a limitation from a dependent claim and adds it 11 Shinn Fu also argues that the Motion to Amend should be denied because Tire Hanger failed to comply with its obligation of first “conferring with the Board” before filing the Motion, as required by 37 C.F.R. § 42.121(a). Opp. 2. We are not inclined to deny the Motion to Amend on this procedural ground. Before filing the Motion, Tire Hanger’s legal representative contacted the Board to seek clarification on whether a conference call was necessary and was advised it was not. Ex. 2008 ¶¶ 1–4. As such, we are satisfied that Tire Hanger fulfilled its obligation of conferring with the Board. to the claim from which it depends does not mean that the amendment has broadened the scope of the dependent claim from which the limitation has been removed. As such, we are not persuaded by Shinn Fu’s argument. Rather, we find that Tire Hanger’s amendment does not violate the prohibition on enlarging claim scope.” slip op. at 17

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

    “support for its use of the term “human” in the proposed substitute claims. Opp. 23. According to Shinn Fu, the specification only refers to a “worker” performing the steps of removing and replacing the vehicle’s wheel, not a “human.” Id. In Shinn Fu’s view, by using the term “human,” rather than “worker,” in the substitute claims, Tire Hanger has broadened the claims to include “such embodiments or species as newborns, toddlers, children, disabled people, and decrepit people,” for which the specification purportedly lacks written description support. Id. We construe claims based on a reasonable interpretation in light of the specification and prosecution history. Shinn Fu’s proposed construction is unreasonable. The specification of the ’897 patent speaks expressly in terms of “individuals in handling tire/wheel assemblies when mounting and removing them from vehicles.” Ex. 1002, 1:41–43 (emphasis added). Likewise, the original claims refer to “a person” and “an individual” in describing removal of the wheel from the vehicle. Id. at 8:24–30. Those disclosures provide clear support for use of the term “human” in the substitute claims. Thus, we are not persuaded that Tire Hanger’s proposed amendment of the claims lacks written description support.” slip op. at 18

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

    “Komorita, on the other hand, presents a different picture because it clearly discloses what is called a “tire hanger” on an automotive lift. Ex. 1004, Abstract, Fig. 29. Even so, Tire Hanger asserts that the claimed method is patentable over Komorita because Komorita “merely teaches placing a wheel in a cradle” for holding the wheel from below, not “hanging the wheel on the support arm” or “guiding a hole in the wheel over the support arm,” as required by substitute claim 6. Mot. 13–14; Reply 9; Tr. 30–31. Thus, the question arises as to whether “hanging” a wheel on “a support arm,” per claim 6, is patentably distinct from supporting the wheel from below in a cradle, per Komorita. We conclude it is. To begin, we previously construed the term “hanging” to mean “to attach or place something so that it is held up without support from below.” See section III.A.2 above. Notwithstanding that Komorita is labeled as a “tire hanger,” it is clear from Komorita that the structure actually disclosed is not a hanger but a cradle that supports the wheel from below. Ex. 1004 ¶¶ 113, 114, Fig. 29. Thus, given our claim construction, Komorita does not appear to meet the “hanging” limitation of substitute claim 6. Moreover, the ’897 patent expressly distinguishes the claimed invention from cradle-like structures, such as that of Komorita. Notably, the ’897 patent describes various embodiments of hangers, each of which is “adapted to fit inside the rim of the tire/wheel assembly.” Ex. 1002, 6:17–21 (emphasis added). Figure 6 of the ’897 patent depicts one such embodiment with the hanger inside of the tire/wheel assembly. The ’897 patent goes on to state that “other structures may be used” to support a tire/wheel assembly, such as “an arcuate cradle” configured “to receive a tire therein . . . to rest the tire in the cradle.” Id. at 6:22–24 (emphases added). Further, another embodiment of a cradle is described that includes “a plurality of arms . . . adapted to receive and hold a tire therein,” and where the tire “rests in the cradle.” Id. at 6:35–37 (emphases added). A plain reading of the ’897 patent reveals that the hanger structures (id. at 6:15–21) are a separate embodiment from the cradle structures (id. at 6:22–42) because they are disclosed as “other structures” and because their modes of retaining the tire/wheel assembly are different. The hanger structure allows the tire/wheel assembly to hang thereon, and includes a specific structure adapted to fit inside a hole in the tire rim. Id. at 6:15–21. In contrast, the cradle structure receives a tire therein, and comprises a structure adapted to fit around and below the outside of the tire. Id. at 6:22–42. As such, we find that there is a structural distinction between hangers and cradles. Although the ’897 patent discloses both hangers and cradles, proposed” slip op. at 22

  Patent outcomesUS 6,681,897 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 6,681,897
• 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
• Mitchell International, Inc. v. Audatex North America, Inc.All claims unpatentable
  PTAB · Feb 19, 2016 · CBM2014-00174 · APJ Lora M Green · CBM · Final written decision

  Claims 1–31 are unpatentable under § 101 and anticipated by or obvious over Reimel; the motion to amend with substitute claims 32–62 is denied.

  RulingsFinal written decision

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

    “We have carefully considered Patent Owner’s arguments, but we do not agree that the broadest reasonable interpretation of “insurance claim,” when read in light of the Specification, is a “request to recover market value or repair cost in association with an insurance policy.” The portion of the Specification Petitioner is relying upon is only describing the state of the art at the time of invention. Moreover, it uses terms such as “may” and “typically,” and, thus, does not explicitly define “insurance claim” as Patent Owner would have us do. Thus, we see no reason to deviate from the construction of the claim term “data relating to an insurance claim for a damaged vehicle” that we adopted in the Decision on Institution; that is, as encompassing, but not being limited to, any data that would be used in making an insurance claim. Dec. 12. Moreover, even if we were to adopt Patent Owner’s more limited construction of “insurance claim,” Patent Owner does not explain how that would further limit the data that would be entered, and in fact, Patent Owner notes (PO Resp. 1) that it does not disagree with the interpretation of “data” we adopted in the Decision on Institution.” slip op. at 10

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

    “Here, we observe that each challenged claim is directed to the fundamental concept of providing a vehicle valuation using information about the vehicle. Patent Owner contends that, unlike the claims in Parker v. Flook, 437 U.S. 584 (1978), the claims at issue in the instant proceeding are not drawn to an algorithm. PO Resp. 12–14. When the claims are analyzed as a whole, as urged by Patent Owner (PO Resp. 10), however, the claims recite nothing more than the collection of information to generate a valuation report for a damaged vehicle. Moreover, all the steps could be performed without the use of a computer. Specifically, the steps and calculations covered by the claims essentially require determining the value of a damaged vehicle by entering data related to an insurance claim, such as mileage and vehicle condition, and processing the data to generate a valuation report for the damaged vehicle; a calculation that can be performed by the human mind, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., No. 2015-1415, 2016 WL 362415, at *7 (Fed. Cir. Jan. 20, 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea). The fact that the claims at issue are not per se drawn to an algorithm does not insulate them from being found an abstract idea. The claims in Alice were drawn to “a computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary.” Alice, 134 S. Ct. at 2351–52. The claims at issue in Mortgage Grader were drawn to a computer-implemented system that allowed borrowers to shop anonymously for loan packages from a plurality of lenders. Mortgage Grader, 2016 WL 362415, at *1. Thus, the fact that the claims in those cases were not specifically drawn to an algorithm did not prevent them from being drawn to an abstract idea. We are persuaded that, similar to the concept of intermediated settlement in Alice, the concept of risk hedging in Bilski, and the concept of shopping anonymously for loan packages in Mortgage Grader¸ the concept at issue here—obtaining a vehicle valuation report for a damaged vehicle— is “a fundamental economic practice long prevalent in our system of commerce,” and “squarely within the realm of ‘abstract ideas.’” Alice, 134 S. Ct. at 2356–57; Bilski, 130 S. Ct. 3231. Accordingly, we determine that Petitioner has demonstrated that the challenged claims are directed to a patent-ineligible abstract idea.” slip op. at 16

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

  Patent outcomesUS 8,200,513 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · Graham
  Patents in suitUS 8,200,513
• Mitchell International, Inc. v. Audatex North America, Inc.All claims unpatentable
  PTAB · Feb 19, 2016 · CBM2014-00173 · APJ Lora M Green · CBM · Final written decision

  Claims 1–31 are unpatentable under § 101 and §§ 102(b)/103(a) over Reimel; the motion to amend with substitute claims 32–62 is denied.

  RulingsFinal written decision

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

    “not agree that the broadest reasonable interpretation of “insurance claim,” when read in light of the Specification, is a “request to recover market value or repair cost in association with an insurance policy.” The portion of the Specification Petitioner is relying upon is only describing the state of the art at the time of invention. Moreover, it uses terms such as “may” and “typically,” and, thus, does not explicitly define “insurance claim” as Patent Owner would have us do. Thus, we see no reason to deviate from the construction of the claim term “data relating to an insurance claim for a damaged vehicle” that we adopted in the Decision on Institution; that is, as encompassing, but not being limited to, any data that would be used in making an insurance claim, so long as the data includes a vehicle year, model, and geographic location. Dec. 12–13. Moreover, even if we were to adopt Patent Owner’s more limited construction of “insurance claim,” Patent Owner does not explain how that would further limit the data that would be entered, and in fact, Patent Owner notes (PO Resp. 1) that it does not disagree with the interpretation of “data” we adopted in the Decision on Institution.” slip op. at 11

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

    “3. Other Claim Terms We determine that we need not interpret expressly other claim limitations for purposes of this decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (internal citations omitted).” slip op. at 14

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

    “Here, we observe that each challenged claim is directed to the fundamental concept of providing a vehicle valuation using information about the vehicle. Patent Owner contends that, unlike the claims in Parker v. Flook, 437 U.S. 584 (1978), the claims at issue in the instant proceeding are not drawn to an algorithm. PO Resp. 12–14. When the claims are analyzed as a whole, as urged by Patent Owner (id. at 10), however, the claims recite nothing more than the collection of information to generate a valuation report for a damaged vehicle. Moreover, all the steps could be performed without the use of a computer. Specifically, the steps and calculations covered by the claims essentially require determining the value of a damaged vehicle by entering data related to an insurance claim, such as mileage and vehicle condition, and processing the data to generate a valuation report for the damaged vehicle; a calculation that can be performed by the human mind, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., No. 2015-1415, 2016 WL 362415, at *7 (Fed. Cir. Jan. 20, 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea). The fact that the claims at issue are not per se drawn to an algorithm does not insulate them from being found an abstract idea. The claims in Alice were drawn to “a computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary.” Alice, 134 S. Ct. at 2351–52. The claims at issue in Mortgage Grader were drawn to a computer-implemented system that allowed borrowers to shop anonymously for loan packages from a plurality of lenders. Mortgage Grader, 2016 WL 362415, at *1. Thus, the fact that the claims in those cases were not specifically drawn to an algorithm did not prevent them from being drawn to an abstract idea. We are persuaded that, similar to the concept of intermediated settlement in Alice, the concept of risk hedging in Bilski, and the concept of shopping anonymously for loan packages in Mortgage Grader, the concept at issue here—obtaining a vehicle valuation report for a damaged vehicle— is “a fundamental economic practice long prevalent in our system of commerce,” and “squarely within the realm of ‘abstract ideas.’” Alice, 134 S. Ct. at 2356–57; Bilski, 130 S. Ct. 3231. Accordingly, we determine that Petitioner has demonstrated that the challenged claims are directed to a patent-ineligible abstract idea.” slip op. at 17

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

    “We agree with Petitioner’s analysis that the claims do not add additional substantive limitations that transform their nature into a patent-eligible application of an abstract idea. The only technological features recited in the claims at issue in this proceeding are generic computer implementation systems performing generic computer functions. As acknowledged by Patent Owner’s expert, the claims do not improve the function of the computer, they do not solve a problem unique to the internet, nor are they tied to a particular machine or apparatus. Ex. 1015, 223:4–20; 231:9–232:1. Simply utilizing a generic computer system to generate a vehicle valuation report is not enough to transform a patent-ineligible claim into a patent-eligible invention. See Bancorp Servs. LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1279 (Fed. Cir. 2012) (finding a claim not patent-eligible when “the computer simply performs more efficiently what could otherwise be accomplished manually”); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly.”). Nearly every computer has the capability of performing basic calculation, storage, and transmission functions. See Alice, 134 S. Ct. at 2360. At most, the computer implementation involved in the claims at issue here is an attempt to limit use of the abstract concept to a particular technological environment. Claims that simply instruct the practitioner to implement the abstract idea with routine, conventional activity do not transform an abstract idea into patent eligible subject matter. Ultramercial, 772 F.3d at 716. The claims simply instruct the practitioner to use the internet to obtain a vehicle valuation, without reciting further unconventional features of that system.” slip op. at 20

  Patent outcomesUS 8,468,038 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · Graham
  Patents in suitUS 8,468,038
• Mitchell International, Inc. v. Audatex North America, Inc.All claims unpatentable
  PTAB · Feb 19, 2016 · CBM2014-00171 · APJ Lora M Green · CBM · Final written decision

  Claims 1–29 are unpatentable under § 101 and anticipated or obvious over Reimel; the motion to amend with substitute claims 30–58 is denied.

  RulingsFinal written decision

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

    “Here, we observe that each challenged claim is directed to the fundamental concept of providing a vehicle valuation using information about the vehicle. Patent Owner contends that, unlike the claims in Parker v. Flook, 437 U.S. 584 (1978), the claims at issue in the instant proceeding are not drawn to an algorithm. PO Resp. 13–14. When the claims are analyzed as a whole, as urged by Patent Owner (id. at 10), however, the claims recite nothing more than the collection of information to generate a valuation report for a damaged vehicle. Moreover, all the steps could be performed without the use of a computer. Specifically, the steps and calculations covered by the claims essentially require determining the value of a damaged vehicle by entering data related to an insurance claim, such as mileage and vehicle condition, and processing the data to generate a valuation report for the damaged vehicle; a calculation that can be performed by the human mind, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., No. 2015-1415, 2016 WL 362415, at *7 (Fed. Cir. Jan. 20, 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea). The fact that the claims at issue are not per se drawn to an algorithm does not insulate them from being found an abstract idea. The claims in Alice were drawn to “a computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary.” Alice, 134 S. Ct. at 2351–52. The claims at issue in Mortgage Grader were drawn to a computer-implemented system that allowed borrowers to shop anonymously for loan packages from a plurality of lenders. Mortgage Grader, 2016 WL 362415, at *1. Thus, the fact that the claims in those cases were not specifically drawn to an algorithm did not prevent them from being drawn to an abstract idea. We are persuaded that, similar to the concept of intermediated settlement in Alice, the concept of risk hedging in Bilski, and the concept of shopping anonymously for loan packages in Mortgage Grader, the concept at issue here—obtaining a vehicle valuation report for a damaged vehicle— is “a fundamental economic practice long prevalent in our system of commerce,” and “squarely within the realm of ‘abstract ideas.’” Alice, 134 S. Ct. at 2356–57; Bilski, 130 S. Ct. 3231. Accordingly, we determine that Petitioner has demonstrated that the challenged claims are directed to a patent-ineligible abstract idea.” slip op. at 17

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

    “We agree with Petitioner’s analysis that the claims do not add additional substantive limitations that transform their nature into a patent-eligible application of an abstract idea. The only technological features recited in the claims at issue in this proceeding are generic computer implementation systems performing generic computer functions. As acknowledged by Patent Owner’s expert, the claims do not improve the function of the computer, they do not solve a problem unique to the internet, nor are they tied to a particular machine or apparatus. Ex. 1015, 223:4–20; 231:9–232:1. Simply utilizing a generic computer system to generate a vehicle valuation report is not enough to transform a patent-ineligible claim into a patent-eligible invention. See Bancorp Servs. LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1279 (Fed. Cir. 2012) (finding a claim not patent-eligible when “the computer simply performs more efficiently what could otherwise be accomplished manually”); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”). Nearly every computer has the capability of performing basic calculation, storage, and transmission functions. See Alice, 134 S. Ct. at 2360. At most, the computer implementation involved in the claims at issue here is an attempt to limit use of the abstract concept to a particular technological environment. Claims that simply instruct the practitioner to implement the abstract idea with routine, conventional activity do not transform an abstract idea into patent eligible subject matter. Ultramercial, 772 F.3d at 716. The claims simply instruct the practitioner to use the internet to obtain a vehicle valuation, without reciting further unconventional features of that system.” slip op. at 20

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

    “We have carefully considered Patent Owner’s arguments, but we do not agree that the broadest reasonable interpretation of “insurance claim,” when read in light of the Specification, is a “request to recover market value or repair cost in association with an insurance policy.” The portion of the Specification Petitioner is relying upon is only describing the state of the art at the time of invention. Moreover, it uses terms such as “may” and “typically,” and, thus, does not explicitly define “insurance claim” as Patent Owner would have us do. Thus, we see no reason to deviate from the construction of the claim term “data relating to an insurance claim for a damaged vehicle” that we adopted in the Decision on Institution; that is, as encompassing, but not being limited to, any data that would be used in making an insurance claim. Dec. 12–13. Moreover, even if we were to adopt Patent Owner’s more limited construction of “insurance claim,” Patent Owner does not explain how that would further limit the data that would be entered, and in fact, Patent Owner notes (PO Resp. 1) that it does not disagree with the interpretation of “data” we adopted in the Decision on Institution.” slip op. at 11

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

    “As to the anticipation challenge, Patent Owner contends that, if the claim term “valuation report for the damaged vehicle” is construed as “a report that provides a value of the vehicle that was damaged, before the vehicle was damaged, based on factors including mileage, condition, and geographic location,” Reimel cannot anticipate the challenged claims. PO Resp. 7–8. In particular, Patent Owner argues that “Reimel does not explicitly, or inherently, disclose providing a market value for a damaged vehicle before the vehicle was damaged.” Id. That argument is not convincing, because as discussed above, we decline to construe the claim term “valuation report for the damaged vehicle” as “a report that provides a value of the vehicle that was damaged, before the vehicle was damaged, based on factors including mileage, condition, and geographic location.” Thus, Reimel anticipates the challenged claims to the extent they are construed as providing a valuation report for a damaged vehicle for the value of the vehicle after the damage was sustained. Patent Owner contends further that “Reimel does not disclose providing web pages that allow for entry of data related to an insurance claim that request recover[y] of the market value of the vehicle cost or repair cost as required by the claims.” Id. at 7. According to Patent Owner, the only portion of Reimel that relates to use by an insurance company is the following: Insurance companies may use the present invention to evaluate crashed vehicles as well as the damage to stolen vehicles. The present invention will provide a neutral objective standard for assessment of such vehicles by insurance adjusters. Id. (quoting Ex. 1010, 10:13–15). According to Patent Owner, that passage “lacks any disclosure, explicit or inherent, regarding a web page that relates to an insurance claim to request a recovery of market value or repair cost of a damaged vehicle.” Id. (citing Ex. 2006 ¶ 39). That argument by Patent Owner is again not convincing. Claim 1 requires the step of “entering data relating to the insurance claim.” Similarly, the system of claim 10, the server of claim 18, and the computer program storage medium of claim 24 require “web pages [that] allow for receipt of data relating to an insurance claim.” As construed above, data relating to an insurance claim encompasses any data that would be used in making an insurance claim, which encompasses the various characteristics of the vehicle to be valued disclosed by Reimel. We reiterate that there is nothing in the Specification of the ’740 patent that limits the claimed method, system, server, or computer program storage medium to determining a pre-damaged valuation of the vehicle. That is, determining the value of a damaged vehicle as required by the independent claims, as construed above, encompasses determining the value of the vehicle in either” slip op. at 27

  Patent outcomesUS 7,912,740 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · Graham
  Patents in suitUS 7,912,740

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.