- 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 · GrahamPatents in suitUS 11,189,131 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047
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.