• Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Instituted
  PTAB · Nov 1, 2023 · PGR2023-00023 · APJ Brent M Dougal · PGR · Institution

  Instituted PGR of claims 1–20 because at least one challenged claim was more likely than not unpatentable under the asserted grounds.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability under the more likely than not standard. 35 U.S.C. § 324(a); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A claim is unpatentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence,” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA): would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 15. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5

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

    “construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). claim terms. Pet. 25; Prelim. Resp 15–16. We determine that no terms need to be construed at this time. 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 5

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

    “Petitioner also relies on Pankaj Figure 11 to disclose the preamble and the final limitation, with the exception of the fracturing pump/fracturing equipment being electrical. See Pet. 38–40 (discussing e.g., Pankaj’s control method in Figure 11, teachings of computer implementation), 49–51 (discussing e.g., Pankaj’s controlling of production operations, including a fracturing pump). As previously noted, Petitioner relies on Payne for teaching that the fracturing pump can be electrical. Id. at 31, 49–51. Petitioner also provides reasons why one of skill in the art would combine Payne’s electrical fracturing pump with Pankaj’s fracturing system. Id. at 31–38, 51. Patent Owner does not contest that the combination of Pankaj and Payne teaches the above noted limitations. See generally, Prelim. Resp. 50– 57.” slip op. at 9

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR
  Patents in suitUS 11,373,058
• Samsung Electronics Co., Ltd. v. Cardware Inc.Instituted
  PTAB · Aug 11, 2023 · PGR2023-00013 · APJ Sharon Fenick · PGR · Institution

  Instituted PGR on claims 1–27 on all asserted grounds; the Board found it more likely than not that at least one claim is unpatentable.

  RulingsInstitution decision

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

    “A post-grant review may be instituted only if “the information presented in the petition filed under section 321, 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.” 35 U.S.C. § 324(a). For the reasons below, Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’286 patent on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 9

  • Parallel petitionsDecided for petitioner

    “The Trial Practice Guide states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. “Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b), which is identical to 35 U.S.C. § 326(b)). Although rare circumstances may necessitate two petitions, “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Id. To help the Board determine whether multiple petitions are necessary, the Trial Practice Guide further instructs a petitioner filing multiple petitions challenging the same patent to explain “the differences between the petitions, why the issues addressed by the differences are material, and why identifies one petition that satisfies petitioner's burden under 35 U.S.C. § 314(a).” CTPG 59–60. Additionally, the Trial Practice Guide instructs the patent owner to “clearly proffer any necessary stipulations,” where the patent owner asserts that “the differences identified by the petitioner are directed to an issue that is not material or not in dispute.” Id. at 61. The patent owner may, for example, “seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.” Id. In light of the particular facts before us, we decline to exercise our discretion to deny the Petition pursuant to 35 U.S.C. § 324(a) on the basis of the filing of two parallel petitions. In particular, we recognize that the two petitions do not include duplicate attacks on the basis of unpatentability over prior art, but rather break the issues into two distinct parts—prior-art based unpatentability challenges, in PGR2023-00012, and 35 U.S.C. §§ 101 and 112 challenges here. The usual considerations of fairness, timing, and efficiency do not weigh in favor of exercising our discretion to deny institution. In particular, the petitions were filed concurrently, which means that Petitioner did not gain a timing advantage that might otherwise occur if the petitions were filed serially. Additionally, the proceedings can be coordinated, and a similar or common schedule can be adopted. To the extent that Patent Owner argues (see Prelim. Resp. 55–56) that Petitioner was attempting to avoid providing a single stipulation that (upon institution) Petitioner will pursue neither section 103 grounds on certain art, as per the stipulation offered in PGR2023-00012, nor section 101 and 112 grounds as per the stipulation here (see Pet. 49), discretionary denial of this Petition would not provide such a stipulation. Because we institute both here and in is equivalent to our best understanding of Patent Owner’s desired stipulation “tak[ing] into account” the two Petitions. Accordingly, based on the particular facts and circumstances before us, we decline to exercise our discretion to deny the instant Petition under § 324(a) on the basis of the Petitioner’s filing of multiple petitions.” slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “2. Conclusion We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 23

  Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · Enfish · Phillips · Nautilus
  Patents in suitUS 11,328,286
• Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentable
  PTAB · Mar 24, 2023 · IPR2021-01294 · APJ Sheila F Mcshane · IPR · Final written decision

  The Board held all challenged claims 1–25 unpatentable under the asserted obviousness grounds and denied Patent Owner’s contingent motions to amend.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Snap proposes that a person of ordinary skill in the art at the time of the ’599 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of content presentation and context-based systems/processes.” Snap Pet. 3 (citing Snap IPR, Ex. 1002 ¶¶ 30–32); Snap IPR, Ex. 1022 ¶ 32. Snap further asserts that additional “education can supplement practical experience and vice versa.” Id. In the Decision on Institution, we determined that Snap’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’599 patent. Snap Inst. Dec. 6–7. For this proceeding, Patent Owner and Dr. Martin apply this level of skill in the art. Snap PO Resp. 11–12; Snap IPR, Ex. 2003 ¶¶ 48–50. Accordingly, for the reasons given in the Decision on Institution, we adopt Snap’s proposed level of ordinary skill in the art. Snap Inst. Dec. 6–7.” slip op. at 11

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

    “Dr. Martin also provides consistent testimony on this issue. Snap IPR, Ex. 2003 ¶¶ 81–82. Put simply, the Specification’s disclosure is that the set of rules for multiple content packages includes an expected response, and actions are then performed based on whether an expected response is or is not provided. Moreover, as Dr. Almeroth testifies, neither the claims nor the Specification use the term “unexpected response”—rather the Specification only identifies an “expected response.” Snap IPR, Ex. 1022 ¶ 42. Accordingly, the disclosures in Table 1 and the Specification support Dr. Almeroth’s testimony that a person of ordinary skill would have understood that “the claimed ‘determin[e/ing]’ limitation requires what it plainly recites: ‘determin[e/ing] whether the received response matches the expected response[]’. . . . [i]t does not require an unexpected response not known to the system.” Snap IPR, Ex. 1022 ¶ 51.” slip op. at 18

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

    “time,’ ‘type of location,’ and other contextual information to automatically determine whether users would like to undertake learning activities.” Twitter Pet. Reply 18 (citing Twitter IPR, Ex. 1005, 2 3, 5 (“A check . . . to see if the information from the database corresponds with the location sensor (i.e. a check on whether the learner is really keeping his/her schedule).”), Fig.1; Twitter IPR, Ex. 1025 ¶ 49; Twitter IPR, Ex. 1003 ¶¶ 85, 157–162, 238, 435, 451, 517; Twitter Pet. 20–21). Accordingly, the evidence of record support that Yau teaches that context triggers the display of a content piece, such as an exercise/test/quiz. Patent Owner also argues that Twitter asserts that PALLES’ content piece is “‘exercise[s],’ ‘test[s],’ and/or ‘MP Quiz[zes],’” but also contends that Yau’s “formal assessment” is the claimed content piece. Twitter PO Resp. 32. Patent Owner argues that “Twitter points back to its limitation 12.1 PALLAS evidence for the purported ‘content piece’” and also does not mention Yau for limitation 12.5 and 12.6 and “only conclusorily states that ‘PALLAS in view of Yau renders obvious triggering an exercise/test/quiz.’” Id. Patent Owner’s arguments overlook Twitter’s assertion, with Dr. Turnbull’s supporting testimony, that a person of ordinary skill in the art would have understood that Yau’s formal assessments are “tests with answers for comparing against learner’s responses to assess knowledge/performance/skill (contrasting with ‘un-assessed’ exercises whose responses are unchecked).” Twitter Pet. 43; Twitter IPR, Ex. 1003 ¶ 154. Further, Patent Owner overlooks Petitioner’s assertion that it is implementing PALLAS’s context-triggerbased content display using Yau’s teachings of displaying assessments/questions based on context. Twitter Pet. 43. Patent Owner also asserts that in the PALLAS-Yau combination, Twitter does not explain how a person of ordinary skill in the art would have combined the prior art in the manner Petitioner alleges. Twitter PO Resp. 42. Patent Owner argues that “PALLAS says nothing about forcing quizzes, tests, or exercises on its users without the users asking for such exercises,” and a person of skill would understand that the combined system still requires that a student select a learning activity and that PALLAS’s system should be unobtrusive because learners “may have small time slots to engage in learning.” Id. (citing Twitter IPR, Ex. 2013 ¶ 168; Twitter IPR, Ex. 1004, 54). Patent Owner further contends that “Twitter’s conclusory, hindsight-driven statements” do not suffice and PALLAS teaches away from the modifications suggested by Twitter. Id. at 42–43 (citing Twitter IPR, Ex. 2013 ¶ 144). Patent Owner argues that because a learner may not have time to complete a test, a person of ordinary skill in the art would not be motivated to change PALLAS to trigger exercises/tests/quizzes based on location or time. Id. at 43 (citing Twitter IPR, Ex. 2013 ¶¶ 142–144). The evidence of record does not support Patent Owner’s arguments.” slip op. at 115

  • ScopeMotion to amend, grantedGranted

    “2. Enlarging Scope of Claims Patent Owner asserts that it proposes narrowing limitations in direct response to the grounds of unpatentability involved in this proceeding. See, e.g., Snap Mot. 3–4. Facebook argues Patent Owner is “improperly attempting to enlarge the scope of the original claims.” Facebook Pet. Opp. 1. Facebook asserts, “[i]f ‘an expected response’ means one or more expected responses, therefore, determining whether the received response ‘matches the expected response’ means that the received response must match [all of] the one or more previously-recited expected responses in the content package.” Id. at 3 (emphasis omitted). Facebook then argues “the term ‘predefined response’ is broader than ‘expected response,’” because “an ‘expected response’ does not include any conceivable or possible response; it is a response that is expected.” Id. at 4–5 (emphasis omitted). Twitter argues that “‘predefined response’ is broader than ‘expected response’ because a ‘predefined response’ can include any possible response as long as that response has been somehow defined in advance.” Twitter Pet. Opp. 2. We consider the amendments in view of the claim as a whole. Although the term “one predefined response” may be broader than “an expected response,” we also consider the amended portion “wherein the received response is expected if the received response matches one or more of the at least one predefined response,” and “the received response is unexpected if the received response does not match any of the at least one predefined response.” Unless the response had been predefined within the content package, any “received response” could not be considered “expected” under the claims, and the additional clause requires a match of the response with the predefined response to be deemed “expected.” This equates to an equivalent scope to the original claim. This is consistent with Dr. Martin’s testimony, which we credit, that he is not aware of a situation where the substitute but not original claims are infringed because “[t]he substitute claims would only be satisfied when a ‘predefined response’ in the substitute claims is an ‘expected response’ in the original claims.” Facebook IPR, Ex. 2023 ¶ 59.” slip op. at 136

  Patent outcomesUS 8,489,599 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 8,489,599
• Metacluster LT, Uab v. Bright Data Ltd.Instituted
  PTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution

  Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.

  RulingsInstitution decision

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

    “We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, 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.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’034 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10

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

    “At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · Graham
  Patents in suitUS 11,272,034
• Forte Labs, Inc. v. Pocketful Of Quarters, Inc.Instituted
  PTAB · Mar 23, 2023 · PGR2022-00058 · APJ Benjamin D M Wood · PGR · Institution

  The Board instituted PGR on claims 1–17 on all asserted grounds, finding it more likely than not that claim 1 is unpatentable under § 101.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence), the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), the Preliminary Reply, and the Preliminary Sur-reply, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage of the proceeding. See Prelim. Resp. 18 (“[f]or purposes of this Preliminary Response only, Patent Owner uses Petitioner’s proposed level of skill in the art.”). We discern no reason, at this stage of the proceeding, to question Petitioner’s proposed level of ordinary skill, which is supported by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • BurdenDecided for petitioner

    “Section 42.6(a)(3) states that “[a]rguments must not be incorporated by reference from one document into another document.” The purpose of this rule to prevent a party from circumventing page limits and to conserve Board resources. See Cisco, 10 (“incorporation by reference of numerous arguments from Dr. Roy’s 250-page Declaration into the Petition serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 250 pages of Dr. Roy’s Declaration . . . to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioner’s assertions.”). Patent Owner does not identify specific arguments in Mr. Plunkett’s declaration that are not in the Petition, or specific conclusory statements within the Petition that are overly reliant on the Plunkett Declaration. Nor have we found any improper incorporation in the course of our own review. Accordingly, we are not persuaded that we should ignore any portion of the Plunkett Declaration on this basis.” slip op. at 28

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Claim terms using the word “means” are presumed to invoke § 112(f), and terms without the word “means” are presumed not to invoke this subsection. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Because “server gateway” does not include the word “means,” it is presumed not to be a means-plus-function claim term under § 112(f). This presumption can be rebutted, however, by demonstrating that the term fails to “recite sufficiently definite structure,” or recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal quotation marks omitted). It is Patent Owner’s burden to produce sufficient evidence to overcome this presumption. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1367 (Fed. Cir. 2022) (“From a procedural standpoint, this presumption imposes on the party challenging the presumption the burden of going forward with evidence . . . that a person of ordinary skill in the art believes the term does not recite sufficiently definite structure.”) (internal citation, quotation marks, and alterations omitted). There does not appear to be a dispute, at this stage of the proceeding, that “server gateway” denotes at least some structure to persons of ordinary skill: a server connecting a game user computational device and a blockchain. Thus, we are not persuaded, on the current record, that “server gateway” is a “generic term[] or black box recitation[] of structure or abstractions.” MTD Prods. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019). Patent Owner nonetheless argues that although the term may recite some structure, the recited structure is insufficient to perform “the recited functions,” which Patent Owner asserts are: (1) “operating a blockchain” slip op. at 14

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · Graham
  Patents in suitUS 11,189,131
• Ironsource Ltd. v. Digital Turbine Inc.Instituted
  PTAB · Mar 17, 2023 · PGR2022-00053 · APJ Iftikhar Ahmed · PGR · Institution

  The Board instituted PGR on claims 1–22 under § 101, § 102(a) over Pasha, and § 103 over Pasha, Pasha and Yamada, and Pasha and Molinet.

  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 it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition demonstrates it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2

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

    “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons below, we find the plain and ordinary meaning of “invoke” or “invoking” to be to call or activate, as proposed by Petitioner. slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “to mean “to shift user interaction on the device,” and we disagree with Patent Owner that the claim term requires the shifting to take place without requiring a user interaction. We begin with the language of the independent claims. Claim 1 recites “redirect said device to an app store for downloading said first software application on said device.” Ex. 1001, 21:38–40. The claim language, therefore, does not recite any requirement relating to user interaction during the redirect.” slip op. at 15

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

    “3. Other Claim Terms We determine that we do not need to expressly construe any other terms in order to determine whether to institute. The parties are reminded claim terms will be based on the complete record developed during trial.” slip op. at 17

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · Phillips
  Patents in suitUS 11,157,256
• Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.Instituted
  PTAB · Mar 13, 2023 · PGR2022-00055 · APJ Sean P O’Hanlon · PGR · Institution

  The Board instituted PGR on claims 1–4 and 10–13, finding the petition showed a reasonable likelihood of prevailing on § 101 and § 103 grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a). Institution of postgrant review is authorized by statute only when “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.” 35 U.S.C. § 324(a). “When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.208(a)). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated that it is more likely than not that it will prevail with respect to at least one challenged claim. Accordingly, we institute post-grant review of the challenged claims of the ’454 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest Petitioner’s definition or offer a definition of its own. See generally Prelim. Resp. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and, for purposes of this Decision, adopt it as our own.” slip op. at 10

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party presents arguments for the express construction of any term, instead interpreting the claim terms according to their ordinary and customary meaning. Pet. 18; Prelim. Resp. 15. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. slip op. at 11

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

    “Claim 1 recites a system that performs the steps of receiving information (recitations 1.3, 1.8), using received information to generate a set of possible drilling paths (recitation 1.4), removing certain ones of the generated possible paths (recitations 1.5–1.6), selecting a desired one of the generated paths (recitation 1.7), and updating a plan to include the selected path (recitation 1.9). This collection and manipulation of data is similar to the data collection and management concepts that were held to be patent ineligible in previous cases. See Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610, 613 (Fed. Cir. 2016); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351–54 (Fed. Cir. 2016). Although the claim enumerates the type of information (i.e., BHA location, target path, and possible convergence paths) that is acquired and analyzed, the Federal Circuit has explained that the mere selection and manipulation of particular information by itself does not make an abstract concept any less abstract. Elec. Power Grp., 830 F.3d at 1353; Dig. Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Accordingly, on this record, Petitioner sufficiently shows that the claim recites an abstract idea that falls within the grouping of mental processes. See Elec. Power Grp., 830 F.3d at 1355.” slip op. at 19

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · KSR · Graham
  Patents in suitUS 11,170,454
• Freedom To Operate, Inc. v. Compass Pathfinder LimitedInstitution denied
  PTAB · Jun 22, 2022 · PGR2022-00018 · APJ Tina E Hulse · PGR · Institution

  The Board denied institution on claims 1–23 because Petitioner did not show it was more likely than not that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “post-grant review may not be instituted “unless . . . the information presented in the petition . . ., if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence presented by the parties, we determine Petitioner has not demonstrated that it is more likely than not that any of the claims challenged in the Petition are unpatentable.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “G. Remaining Arguments Patent Owner also argues we should deny the Petition for failure to identify all real parties-in-interest in the Petition. Prelim. Resp. 31–44. Because we determine that Petitioner has not sufficiently established that in this Decision.” slip op. at 24

  • Skill levelSkill level petitioner adoptedOther

    “B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had an advanced degree (i.e., a Master’s degree with two or more years of experience, or a Ph.D.) in inorganic or organic chemistry, chemical engineering, pharmacology, or a related discipline” and “would be familiar with medicinal chemistry or pharmaceutical chemistry, and with analytical methods to characterize and differentiate solid forms of compounds, (‘DSC’) and thermogravimetric analysis (‘TGA’).” Pet. 27 (citing Ex. 1106 ¶ 38). Petitioner further contends that “[a]lternatively, one of ordinary skill could have less education and approximately five or more years of relevant experience.” Id. Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. See generally Prelim. Resp. Absent opposition from Patent Owner, we adopt Petitioner’s definition because it is consistent with the level of ordinary skill in the art reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner’s proposed construction, as it is most consistent with the intrinsic evidence. The claim language makes clear that “Polymorph A” is “characterized by” the specific peaks set forth in the claims. Ex. 1101, claims 1, 8, 16. Thus, regardless of the alleged conventional definition of a “polymorph,” urged by Petitioner, the inventors are entitled to act as their own lexicographers to define “Polymorph A” according to the recited peaks on the XRPD diffractogram. See Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1361 (Fed. Cir. 2007) (“When a patentee defines a claim term, the patentee’s definition governs, even if it is contrary to the conventional meaning of the term.”). That the Specification consistently refers to “Polymorph A” as a proper noun and describes Polymorph A as “characterized by” the recited peaks in an XRPD diffractogram further highlights the inventors’ clear intent to act as their own lexicographer. See, e.g., Ex. 1101, 4:4–5:36; Merck & Co. v. Teva Pharms. USA, 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts away from their ordinary meaning, he must clearly express that intent in the written description.”). Finally, we agree with Patent Owner that the prosecution history of the parent ’257 patent is relevant to the construction of the claims of the ’259 patent, which is a continuation of the ’257 patent. Prelim. Resp. 6 (citing Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1350 (Fed. Cir. 2019) (“Statements made during prosecution of a parent application are relevant to construing terms in a patent resulting from a continuation application if such statements relate to the subject matter of the claims being construed.”)). During prosecution of the parent ’257 patent application, the examiner rejected original claim 1 as indefinite because it did not define “Polymorph A,” and required one to “refer to the specification to determine what is Polymorph A.” Ex. 2133, 7. Patent Owner then amended the claims to define Polymorph A by adding the specific XRPD peaks recited in claim 1. Ex. 2134, 2; see also id. at 6. Thus, we find the intrinsic evidence supports Patent Owner’s proposed construction.” slip op. at 9

  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,954,259
• Freedom To Operate, Inc. v. Compass Pathfinder LimitedInstitution denied
  PTAB · Jun 22, 2022 · PGR2022-00012 · APJ Tina E Hulse · PGR · Institution

  The Board denied institution of PGR on claims 1–23 because Petitioner did not show it was more likely than not that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . ., if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence presented by the parties, we determine Petitioner has not demonstrated that it is more likely than not that any of the claims challenged in the Petition are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had an advanced degree (i.e., a Master’s degree with two or more years of experience, or a Ph.D.) in inorganic or organic chemistry, chemical engineering, pharmacology, or a related discipline” and “would be familiar with medicinal chemistry or pharmaceutical chemistry, and with analytical methods to characterize and differentiate solid forms of compounds, particularly XRPD, but also including differential scanning calorimetry (‘DSC’) and thermogravimetric analysis (‘TGA’).” Pet. 28 (citing Ex. 1006 ¶ 35). Petitioner further contends that “[a]lternatively, one of ordinary skill could have less education and approximately five or more years of relevant experience.” Id. Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. See generally Prelim. Resp. Absent opposition from Patent Owner, we adopt Petitioner’s definition because it is consistent with the level of ordinary skill in the art reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner’s proposed construction, as it is most consistent with the intrinsic evidence. The claim language makes clear that “Polymorph A” is “characterized by” the specific peaks set forth in claim 1. Ex. 1001, claim 1. Thus, regardless of the alleged conventional definition of a “polymorph,” urged by Petitioner, the inventors are entitled to act as their own lexicographers to define “Polymorph A” according to the recited peaks on the XRPD diffractogram. See Honeywell Int’l, Inc. v. Universal Avionics a claim term, the patentee’s definition governs, even if it is contrary to the conventional meaning of the term.”). That the Specification consistently refers to “Polymorph A” as a proper noun and describes Polymorph A as “characterized by” the recited peaks in an XRPD diffractogram further highlights the inventors’ clear intent to act as their own lexicographer. See, e.g., Ex. 1001, 4:4–5:36; Merck & Co. v. Teva Pharms. USA, 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.”). Finally, during prosecution of the ’257 patent application, the examiner rejected original claim 1 as indefinite because it did not define “Polymorph A,” and required one to “refer to the specification to determine what is Polymorph A.” Ex. 1060, 7. Patent Owner then amended the claims to define Polymorph A by adding the specific XRPD peaks recited in claim 1. Ex. 1062, 2; see also id. at 6. Thus, we find the intrinsic evidence supports Patent Owner’s proposed construction.” slip op. at 9

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

    “Having considered the parties’ respective arguments and evidence, we find Patent Owner has the better position. Although we agree with Petitioner that some degree of experimental error should be factored into the specific peaks of a diffractogram, the claim language already does so by expressly reciting a variance of “±0.1°2θ.” See Ex. 1001, claim 1. Construing the claims to include an additional degree of variance would effectively read out the “±0.1°2θ” limitation of the claims. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”). Moreover, we note that the express recitation of a specific variance distinguishes the ’257 patent claims from the claims of the Astrazeneca cases cited by Petitioner, which did not recite such a variance. See Pet. 11–12. In addition, the Specification consistently refers to a variance of ±0.1°2θ whenever it refers to peaks on a diffractogram. See generally Ex. 1001, 3:58–5:24. Petitioner acknowledges that the claims recite a range of peak locations, but argues that the Specification “does not explain the basis for the claimed range.” Pet. 10. Petitioner, however, does not explain why the Specification would need to explain that basis, particularly if a person of ordinary skill in the art would understand that ±0.1°2θ is an acceptable variance for XRPD.” slip op. at 13

  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,947,257
• Ironsource Ltd. v. Digital Turbine Inc.Instituted
  PTAB · Jan 6, 2022 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Institution

  Instituted PGR on claims 1–18 under § 101, claims 1, 3–12, and 14–18 under § 102(a) over Pasha, and the listed § 103 grounds.

  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 it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition presents information demonstrating it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “For the purposes of this Decision, we agree with Petitioner. Figure 7 of the ’951 patent shows the Downloader & Installer Module as a module within the “installation client,” not as the installation client itself. Ex. 1001, 14:4–45 (discussing “installation client 700” and its various modules); Fig. 7 (showing Download & Installer 720 as part of Installation Client 700). The ’951 patent states: Installation client 700 is represented as several modules performing separate functions. The division of functionality demonstrated in FIG. 7 is illustrative, and not intended to be limiting. Other embodiments of an installation client may organize the various functions performed by the installation client 700 in a different manner. Id. at 14:6–12. Accordingly, the proper construction of the term “installation client” does not limit the number or arrangement of components” slip op. at 11

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

    “Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). But “failing to account for the specific requirements of the claims” is what Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element not only ignores that that limitation recites installing software, which we are not persuaded is an abstract idea, but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. Nor are we persuaded by Petitioner’s characterization of the claims as directed to multitasking, which Petitioner characterizes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings except in rare circumstances”). Although the claimed invention may result in multitasking on the device, the claims are directed to downloading and installing an application in the background instead of directing the user to an app store, thereby maintaining user experience with the foreground application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps— invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (finding claims that address the problem of retaining website visitors after clicking on an advertisement hyperlink not directed to an abstract idea). Accordingly, based on the current record, we question whether Petitioner establishes sufficiently that the claims are directed to a judicial exception under Step 2A of the Guidance. Nevertheless, because Petitioner has shown that it is more likely than not that challenged claims are unpatentable under 35 U.S.C. §§ 102, 103 (see infra §§ III.F–I), we include this ground in the instituted post-grant review. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to embracing all challenges included in the petition”).” slip op. at 17

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

    “As discussed above (supra Section II.C.1), at this preliminary stage, we do not construe “installation client” so narrowly as to limit the number or arrangement of components required to meet that claim element. Also, as discussed above (id.), the specification of the ’951 patent supports that multiple modules performing separate functions may comprise the installation client. Therefore, based on our review and consideration of the current record, we are not persuaded by Patent Owner’s argument that Pasha fails to disclose the claimed installation client. Petitioner’s arguments are inconsistent across the Petition. The Petition clearly alleges that “the App Manager 180 and Installer 182 disclose the claimed ‘installation client for downloading and installing applications on said device.’” Pet. 58. Petitioner’s description of Pasha’s App Manager is consistent with Pasha’s disclosure itself. For example, although Pasha discloses that “the host application 132 may use an App Manager component 180 and an Installer component 182,” it also states that “[t]he App Manager 180 may control portions of the application download and install process.” Ex. 1003, 17:22–26; Pet. 38. Pasha further discloses that “[t]he App Manager 180 [itself] may perform at least a portion of one or more of the steps 310–350 of FIG. 3,” i.e., including the step of “[i]nstalling the downloadable application on the computer system from the application package by executing program code having permission to install applications.” Ex. 1003, 17:35–36, Fig. 3. Patent Owner’s argument that Pasha’s “App Manager does not have the role of installing software applications,” is therefore contrary to Pasha’s disclosure. Also, Petitioner’s reasoning and evidentiary underpinnings here are based not so much on modifying Pasha, as Patent Owner suggests, as explaining how one of ordinary skill in the art would have understood Pasha’s disclosure. Between its App Manager and Installer, Pasha discloses the claimed functionality of the “installation client,” but, similar to the ’951 patent, Pasha teaches flexibility between the use of those components to implement the claimed functionality. For the purposes of institution, we are unpersuaded that Petitioner fails to meet its threshold burden of showing anticipation under Net MoneyIN. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (explaining that a reference need not always as it teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination). Based on our review of the current record, we therefore determine that the information presented supports sufficiently, for the purpose of institution, Petitioner’s assertion that Pasha discloses this limitation.” slip op. at 26

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · Phillips
  Patents in suitUS 10,782,951

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.