• Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.All claims unpatentable
  PTAB · Feb 22, 2024 · PGR2022-00055 · APJ Sean P O’Hanlon · PGR · Final written decision

  Claims 1–4 and 10–13 are unpatentable under § 101; claims 1–4 and 11–13 are also unpatentable as obvious over Pirovolou, Panchal, and Budiman, and claim 10 over those references plus Downton.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(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.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations omitted). “The patent’s purpose can also be informative.” Id. (citation omitted).” slip op. at 9

  • 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; PO Resp. 29. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. slip op. at 10

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

    “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).” slip op. at 20

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

    “removing illogical options as the “pruning” step, rather than both of the “removing” steps as asserted by Patent Owner. See Ex. 1001, 6:21–34, 6:42–43, 6:50. The two “removing” steps noted by Patent Owner reduce the number of cost considerations that the computer must perform (by increasing the number of other comparisons (regarding illogical options and rule violations)), but do not change the way in which the computer performs the cost analyses. And, as explained above, neither the “removing” steps nor any other recitation alters the way in which drilling is performed. Moreover, as also noted above, the “removing” steps relied upon by Patent Owner are part of the abstract idea itself and, therefore, cannot evidence an inventive concept. See Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290–91 (Fed. Cir. 2018). As noted above, the additional elements of the processor and memory are recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. The ’454 patent also describes the processor and memory as generic computer components. See Ex. 1001, 4:50–5:29. The claim includes the additional recitations of a memory and processor to send a control signal. A memory for storing data and a processor for processing data and sending signals are well‐understood, routine, and conventional computer components, which in this claim are recited at a high level of generality and perform generic computer functions (e.g., storing, processing, and transmitting information). See Ex. 1003 ¶¶ 104–105 (citing Ex. 1006 ¶ 22, Fig. 2, code (57)). Generic computer components performing generic computer functions, alone, do not amount to significantly more than the abstract idea, as the Supreme Court has explained that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Viewing the limitations in combination also fails to amount to significantly more than the abstract idea. The claimed system seeks to use a processor and memory to generate possible convergence paths, remove certain ones of the generated possible paths, select a desired one of the generated paths, update a plan to include the selected path, and send a signal, but these functions reflect ordinary usage typically performed by a generic computer, as would be recognized by those of ordinary skill in the field of mining. See, e.g., Ex. 1006 ¶ 22, code (57). The claim here does not invoke any of the considerations that courts have identified as providing significantly more than an exception; the combination of elements is no more than the sum of their parts. Additionally, as the Federal Circuit has explained, claims that do not include a requirement for performing “claimed functions of [data] gathering, analyzing, and [transmitting] by use of anything [other than] conventional, generic technology” fail to provide an inventive concept. Elec. Power Grp., 830 F.3d at 1356. Accordingly, on this record, Petitioner sufficiently shows that the claim as a whole does not amount to significantly more than the recited exception.” slip op. at 29

  Patent outcomesUS 11,170,454 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · KSR · Graham
  Patents in suitUS 11,170,454
• 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
• 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
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision

  Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8

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

    “construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11

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

    “All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17

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

    “As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39

  Patent outcomesUS 10,891,614 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,891,614
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution denied
  PTAB · Dec 6, 2022 · PGR2022-00035 · APJ Ken B Barrett · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–17 was unpatentable on the asserted grounds.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that, if unrebutted, it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’580 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have a Bachelor of Science in Electrical Engineering, Computer Science, or another degree related to electromechanical systems, as well as at least 3 years of academic or industry experience in electronic payment systems.” Pet. 25–26 (citing Ex. 1003 ¶ 22). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7

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

    “Petitioner states that, “[u]nless otherwise noted, Petitioners submit that the claim terms should be given their plain and ordinary meaning since the claim terminology appears to be the same as that used in the [Multi-Drop Bus] protocol.” Pet. 28. Patent Owner does not propose any constructions, asserting that “the Board need not reach any claim constructions in order to deny this petition.” Prelim. Resp. 12. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “in Anderson of a mobile device making, or the receipt from a mobile device of, a request to access peripheral device-generated signals. See Prelim. Resp. 17–24; see, e.g., id. at 17 (“Petitioners point to no evidence that any external device in Anderson ever requests access to the signals generated by the peripheral.”). We find this argument persuasive. Petitioner, in the section for “receiving” limitation 1.5(f), cites paragraph 44 of Anderson several times. See Pet. 36–39. That paragraph concludes with the statement: The IC 125 may also include a modem (not shown) to display content on external devices such as cellular phones via cellular network or any other network know[n] in the art. Thus, in one implementation, a user may receive nutritional information or balance information on his cell phone. Ex. 1005 ¶ 44. That is a disclosure of data flowing to the cell phone in the form of content to display, and it is ambiguous as to what component could be said to have requested that data flow. Limitation 1.5(f) recites data flow in the opposite direction, from the mobile device, and pertains to a specific message—“a request to access signals generated by the first peripheral device.” Ex. 1001, 53:22–24. Petitioner does not explain adequately how the disclosure in Anderson’s paragraph 44 could support a finding that there was received, from the cell phone, a request to access signals generated by a peripheral device. See, e.g., Pet. 36–37 (quoting Anderson’s paragraph 44).” slip op. at 13

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,074,580
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · Apr 24, 2017 · CBM2016-00008 · APJ Stacey G White · CBM · Final written decision

  Claims 1, 5, 9, and 11 are unpatentable under § 101 and obvious over IAB 1 and IAB 2; claims 5 and 11 are also obvious over IAB 1, IAB 2, and Laurent.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a first code on the server side computing device . . . sending said first code to said at least one device over a communication network. PO Resp. 144. According to Patent Owner, Petitioner “inconsistently pointed [] to cookies as constituting a first code,” and Patent Owner alleges that this is insufficient because claim 1 does not discuss cookies. Id. at 146. Patent Owner contends that Petitioner has equated code generation with cookies and that is improper because cookies are used only to store the code after it has been generated. Id. We do not agree with Patent Owner’s analysis. Petitioner’s declarant, Stephen Gray, asserts that “[c]ookies are set by servers that store the cookie in the client. That cookie is then transmitted back from the client to the server upon subsequent accesses by the user to the origin server that set the cookie.” Ex. 1006 ¶ 60. Gray opines that one of ordinary skill in the art would have known that “when a user clicks a cookie-enabled website, a cookie is generated on the server and this cookie is stored on the client computer along with all of the information.” Ex. 1006 ¶ 105. We find that this comports with IAB 1’s description of measuring the number of visits to a web site by using a “Unique Cookie with Heuristic.” Ex. 1004, 5. IAB 1’s server stores “a small piece of information with a browser.” Id. IAB 2 notes that “[t]he web server responds to the user browser by checking for an existing cookie and creating one if one does not exist.” Ex. 1005, 27 (emphasis added). As described in the IAB references, cookies are designed to be unique to each browser, or if possible, the cookies should be unique to each user. Ex. 1004, 5, Ex. 1005, 21–22, 27. We find that these disclosures from IAB 1 and IAB 2 would have taught one of ordinary skill in the art the claimed first code.” slip op. at 32

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

    “analyze patentability using the broadest reasonable construction of the claims in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Neither party makes an explicit claim construction argument in the proceeding. See generally PO Resp., Reply. For purposes of this Final Written Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 17

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

    “Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (citation omitted). Thus, we must determine whether the claims are directed to “longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. What we are presented with is a system for marking the occurrence of two events and making a determination about the validity of the second occurrence based on the time elapsed between occurrences. We find that this is a longstanding business practice as exemplified by Petitioner’s pharmacy example. See Pet. 47. Patent Owner asserts that the ’057 patent is different from the sort of fraud detection that may be performed by a pharmacist because the challenged claims are “able to handle millions of clicks in real time whether from the same or different users.” PO Resp. 90. We do not agree. The claims recite only two data points, a time associated with click one and a time associated with click two. Thus, a pharmacist comparing the dates or times for two prescription requests is performing the same comparison as the one recited in the claims. There is no requirement in the claims that the system be able to handle millions of data points. Further, there is no discussion of the determination being made in real time and to the contrary the specification states that “by observing a metric like the number of clicks for a given period of time, be it a short time or a longer period, such as a day or a week, the system can automatically determine if certain clicks are illegitimate.” Ex. 1001, 2:64‒3:2. In addition, while the claims recite the creation of codes and encoded codes none of this is used by the claimed method to perform its determination. That data merely is sent from one place to another while the system marks the time associated with a click. The only information used in the determination is the time of the two clicks. The claims are not directed to improving the function of the computer or its associated software; instead, they are directed to using a computer to perform a well-known business task. See Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). Therefore, we are persuaded that the challenged claims are directed to a longstanding economic task and not to an improvement to the computer functionality itself. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). For all of the foregoing reasons, we find that Petitioner has established that claims 1, 5, 9, and 11 are directed to an abstract idea.” slip op. at 23

  Patent outcomesUS 8,671,057 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish
  Patents in suitUS 8,671,057
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 24, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Final written decision

  Claim 6 is unpatentable under § 103 over Higgins and Metcalfe and over Furukawa; the contingent motion to amend with substitute claim 30 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “implementation of communications systems and controlling these systems (or similar types of systems) through the use of computer technology.” Ex. 1001 ¶ 33. Patent Owner’s declarant, Dr. Samuel H. Russ (“Dr. Russ”) stated that, a person of ordinary skill in the art relevant to the ’956 patent would have had a bachelor’s degree in digital electronics, electrical engineering, computer engineering, computer science, and two to five years of post-degree experience in a similar field. Ex. 2018 ¶ 27. Thus, the parties’ assessments of the level of ordinary skill in the art are roughly equivalent. Based on our review of the ’956 patent, the types of problems and solutions described in the ’956 patent and cited prior art, and the testimony of Petitioner’s declarant and Patent Owner’s declarant, we adopt Patent Owner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 13

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

    “instructed that “claims should always be read in light of the specification and teachings in the underlying patent.” PO Resp. 12 (emphasis omitted) (quoting Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). Furthermore, the specification “is the single best guide to the meaning of a disputed term.” Translogic Tech., 504 F.3d at 1257 (quoting Phillips, 415 F.3d at 1315). Accordingly, we must construe the term “module” for claim 6 of the ’956 patent in light of the disclosure in the ’956 patent specification regarding “modules.” In accordance with the ’956 patent specification, there are various types of modules, such as program modules, object modules, and data modules; thus, the general term “module” cannot be construed to be limited to one of these types of modules. Patent Owner acknowledges that the ’956 patent specification discloses a “data module” as a type of “module.” PO Resp. 15 (citing Ex. 1003, 248:58–249:30). Patent Owner fails, however, to persuasively explain how the disclosed “data module” would meet its proposed definition of a “module” being “a discrete unit of a larger computer program . . . .” For example, it is unclear how a “data module” containing the “particular cost-of-a-trimmed-pork-belly-unit” (Ex. 1003, 189:4–9) constitutes a discrete unit of larger computer program. Patent Owner fails to cite any disclosure in the specification of the ’956 patent that restricts a “module” to be “a discrete unit of a larger computer program.” Although the specification of the ’956 patent does not limit modules to be a discrete unit of a larger computer program, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Ex. 1003, 186:10–17, 188:35–37, 188:59–61. For example, with respect to one embodiment of the data module, the ’956 patent specification discloses that “[e]xecuting the information of said intermediate generation set causes computer, 73, also to generate a particular associated data module.” Id. at 188:59–61. Similarly, with respect to one embodiment of the object module, the ’956 patent specification discloses that “computer, 73, compiles the information of said instance and places the resulting so-called ‘object module’ at particular memory.” Id. at 188:35–37. Likewise, with respect to one embodiment of the program module, the ’956 patent specification discloses that computer 73 compiles “formula-and-item-of-this-transmission information into a machine language program module; and . . . link[s] said module to other program modules.” Id. at 186:10–17. Accordingly, we are persuaded to modify our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Dec. to Inst. 8) to incorporate being executed by a computer to perform a specific function. Therefore, we construe the term “module,” in view of the specification of the ’956 patent, as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” We note that a discrete unit of digital data can be a set of commands or instructions that can be executed and/or processed to perform a specific function.” slip op. at 8

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

    “subscriber specific action in respect to said problem or interest.” Petitioner argues that the “recommending” limitation not be assigned patentable weight as printed matter. Pet. 6 (citing In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) and MPEP § 2111.05). In Kao, the Federal Circuit determined that the printed matter doctrine applied because there was “no functional relationship” between the disputed limitations (Kao, 630 F.3d 1073), but here the “recommending” step in claim 6 requires outputting the “subscriber specific action” in “video, audio, or print.” Therefore, we are not persuaded by Petitioner that the printed matter doctrine is applicable to the “recommending” step in claim 6. Patent Owner argues, regarding this “recommending” step, the term “recommend” should be construed to mean “to suggest a choice or a course of action.” PO Resp. 19.4 In support of its proposal, Patent Owner cites two dictionary definitions of the term “recommend.” PO Resp. 20 (citing Exs. 2006, 2007). The first definition, from Cambridge Dictionaries, defines “recommend” as “to suggest that someone or something would be good or suitable for a particular job or purpose, or to suggest that a particular action should be done.” Ex. 2006, 1. The second definition, from the American College Dictionary, defines “recommend” as “to advise a person, etc. to do something.” Ex. 2007, 3. The specification of the ’956 patent uses the term “recommended” to describe a proposed planting plan for minimum cost and maximum revenue: When accessed, the instructions of said module cause a microcomputer, 205, to analyze any given crop planting plan and generate information of a recommended planting plan and growing method that minimizes the expense of insect and other crop pest damage given maximum revenue. Ex. 1003, 275:11–16. We determine the dictionary definitions of “recommend” comport with the use of that term in the specification ’956 patent and with the ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech, 504 F.3d at 1257. Therefore, we are persuaded by Patent Owner’s proposed definition. Accordingly, we construe the claim 6 limitation of “recommending in outputted video, audio, or print subscriber specific action in respect to said problem or interest” to mean “suggesting a 4 We note that claim 6 does not include the term “recommend” but recites “recommending.” choice or a course of action in outputted video, audio, or print subscriber specific action in respect to said problem or interest.”” slip op. at 10

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

    “teach the claim 6 step of “generating at least a portion of a module including said selected generally applicable information.” PO Resp. 33. Specifically, Patent Owner argues that the proposed combination fails to teach generating a module that is a “discrete unit of a larger computer program that is executed and/or processed to perform a specific function,” in accordance with Patent Owner’s proposed construction of “module.” Id. As discussed above, we do not adopt Patent Owner’s construction of “module” but construe “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” Petitioner proposes that the generation of an Ethernet packet according to Metcalfe would result in a “module including said selected generally applicable information” to communicate the trade information disclosed in Higgins from a branch computer to a work station. Pet. 28–29 (citing Ex. 1001 ¶¶ 75–78, 89, 95– 96; Ex. 1007, 3:1–3; Ex. 1009, 395). Petitioner argues that this packet is generated at the branch computer before it is transmitted to the work stations. Ex. 1001 ¶¶ 94, 96. In view of Higgins’s disclosure of regarding the processing of the trade information, including the stock symbol, prices of the stock, and volume traded (Ex. 1007, 4:45–49, 2:24–47), to generate a price limit alert to be displayed on the work station CRT in Higgins (Ex. 1007, Fig. 2), we determine that Higgins in view of Metcalfe teaches or suggests “generating at least a portion of a module including said selected generally applicable information,” wherein a “module” is construed to mean “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 21

  Patent outcomesUS 7,864,956 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 7,864,956
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 22, 2016 · IPR2014-01534 · APJ Georgianna W Braden · IPR · Final written decision

  Claim 9 is unpatentable as obvious over either Monat or Calo; the motion to amend with substitute claim 22 is denied because Patent Owner did not establish its patentability under § 101.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Based on our review of the ’587 patent, the types of problems and solutions described in the ’587 patent and cited prior art, the testimony of Petitioner’s declarant, and the testimony of Patent Owner’s declarant, we find that a person of skill in the art relevant to the ’587 patent would have had a Bachelor of Science in Electrical Engineering or a closely related field and at least two to five years of post-degree experience in a similar field. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 23

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

    “explicitly the term “incomplete processor instructions,” and the embodiments in Examples Nos. 93 and 10, as discussed by Patent Owner, do not use or recite the term “incomplete processor instructions.” See Ex. 1002, 183:1–220:21. In fact, the term is not used in the specification except in claims 9 and 10. Although, the embodiments in Examples Nos. 9 and 10 as cited by Patent Owner are instructive, we are unpersuaded by Patent Owner’s argument that claim construction should only be guided by those examples and not by the specification in its entirety, especially in light of the patent applicant’s statements during the prosecution the ’587 patent discussed above. Rather, the disclosure in the ’587 patent teaches embodiments that use the word “incomplete” to refer to commands, signals or other instructions that are not yet in the form in which they will be transmitted to a subscriber station. See id. at 28:34–49. Specifically, the specification discloses that “[i]n a system that communicates information only in words that are multiples of eight, a signal whose information is represented in twenty-one” slip op. at 17

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

    “claimed invention and any commercial success or industry praise. Patent Owner also failed to demonstrate a long-felt but unmet need for the claimed invention. We, thus, find that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over Monat. f. Conclusion of Analysis Regarding Monat For the foregoing reasons, and weighing the evidence as a whole, Petitioner has proven by a preponderance of the evidence that Monat teaches all elements of challenged claim 9 of the ’587 patent. We determine the record supports Petitioner’s contentions as summarized above and adopt the supported contentions as our own. Furthermore, we conclude that understanding Monat’s teachings as it applies to claim 9 would have been within the level of ordinary skill in the art, as evidenced by the prior art of record. We, therefore, determine that claim 9 would have been obvious at the time of the invention, and thus, is unpatentable under 35 U.S.C. § 103.” slip op. at 45

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Media, Patent Owner has done little more than cite to the declaration of Mr. Gerald Holtzman, which lists licenses and their respective sales revenue. See PO Resp. 50–51 (citing Ex. 2008). The cited testimony of Mr. Holtzman only details the revenues for each license and does not establish whether the licensing program was successful because of the merits of the claimed invention, the merits of other patented inventions, or for other economic reasons, such as to avoid litigation or because of prior business relationships. See Ex. 2008 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294 (affirming Board’s finding that evidence of existence of licenses was insufficient to overcome prima facie case of obviousness). Additionally, Mr. Holtzman’s testimony lists patent family licenses and revenue, but does not discuss the merits of any of the challenged claims as they relate to any particular license for the ’587 patent in the portfolio of licenses. See PO Resp. 50 (citing Ex. 2008). We, therefore, find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’587 patent and the taking of the noted licenses. Although, Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2008 ¶ 14), he does not address whether litigation had been threatened against other licensing parties. Furthermore, evidence of $350M in licensing revenue alone is not enough to show commercial success, because Patent Owner must relate that figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“Declining to find evidence of commercial success because ‘[a]though [the inventor’s] affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.’”). We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’587 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, Patent Owner’s evidence of licensing fails to establish commercial success. Accordingly, we give little weight to Patent Owner’s argument that its licensing program is evidence that the claims are not obvious.” slip op. at 41

  Patent outcomesUS 7,827,587 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Markman · KSR · Graham
  Patents in suitUS 7,827,587
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01533 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 2, 3, 9–13, 18, 24, 49, 52, and 53 are unpatentable as obvious over Powell and Guillou; the motion to amend substitute claims 56–67 is denied.

  RulingsFinal written decision

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

    “We agree with Petitioner’s position. Particularly, we credit the testimony of Petitioner’s witness, Mr. Anthony J. Wechselberger, who explains that Campbell, Block, and Furukawa teach “force” or “automatic” tuning of a receiver, i.e., “sending a signal that forces a receiver to tune to a particular channel” and that such technology was well-known in 1981. Ex. 1035 ¶¶ 122–125. Patent Owner and Patent Owner’s expert, Dr. Weaver, also acknowledged that Furukawa teaches that a television system in which a signal is received from a central facility that causes the television to tune to a different channel. Mot. 15 (stating that “Furukawa describes the operation of a spot channel wherein a television set receiving any channel may be forced by a central facility to receive a spot channel”); PO Reply to Opp. 3 (discussing prior art “disclosure of the ‘automatic channel tuning’ feature which [Patent Owner] has already acknowledged in Furukawa”); Ex. 1038, 137:11–24, 140:16–21, 145:1–11. Patent Owner’s witness testified that “[a] person of ordinary skill in the art before 1981 would have known that you could send a signal to a properly equipped and responsive television and make it change channels.” Ex. 1038, 136:19–24. Additionally, other references (i.e., Hartung and Cogswell) that disclose “automatic channel tuning” are cited in the prosecution history of the ’749 patent. PO Reply to Opp. 3 (citing Exs. 1045, 1046). According to Patent Owner, these references describe “the state of the art.” Id. Thus, we are satisfied that “automatic channel tuning,” as taught by Campbell, Block, and Furukawa, was known to a person of ordinary skill in the art at the time of the invention of the ’749 patent. Although Patent Owner argues that applying such “automatic channel tuning” to digital television systems (rather than using analog television systems) would have been difficult and that one of ordinary skill in the art would not have been motivated to use such technology to change channels and to send encrypted digital data (Mot. 20–23; PO Reply to Opp. 10–11), we are not persuaded given the state of the art as shown by Guillou, discussed in detail previously. Guillou discloses the decryption of digital data (Ex. 2014 ¶ 85) and explains that such technology “could be applied to other systems without difficulty for the man skilled in the art, and notably to the CEEFAX or ORACLE systems or the VIEWDATA or PRESTEL systems” (Ex. 1022, 21:23–28). The Ceefax, Oracle, Viewdata, and Prestel systems are analog systems that send signals over television channels or telephone lines. Therefore, we are satisfied that a person of skill in the art would have had reason to use “automatic channel tuning” and apply digital encryption technology in order to “transmit messages to a receiver station on a first communication channel that, when processed by the receiver station, causes the receiver station to connect [to] a communication channel different from the first channel to receive encrypted programming or data.” Accordingly, we find that Patent Owner has not demonstrated the patentability of proposed substitute claims 56–62.” slip op. at 37

  • BurdenUnpatentable

    “We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”).” slip op. at 16

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

    “We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). Rather, “the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” See id. (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Thus, Patent Owner’s contentions regarding backward compatibility are not persuasive and fail to show that a skilled artisan would have been discouraged from combining the teachings of the cited references in the manner claimed.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “We are not persuaded. In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were a less costly alternative to defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added) (citation omitted). Moreover, our reviewing court has held that “without a showing of [a] nexus, ‘the mere existence of . . . licenses is insufficient to overcome the conclusion of obviousness.’” In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (quoting Iron Grip Barbell, 392 F.3d at 1324). Like the applicant in Antor Media, Patent Owner has done little more than cite to the declaration of Mr. Gerald Holtzman, which lists licenses and their respective sales revenue. See PO Resp. 52 (citing Ex. 2018). The cited testimony of Mr. Holtzman only details the revenues for each license and does not establish whether the licensing program was successful because of the merits of the claimed invention, the merits of other patented inventions, or for other economic reasons, such as to avoid litigation or because of prior business relationships. See Ex. 2018 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294 (affirming Board’s finding that evidence of existence of licenses was insufficient to overcome prima facie case of obviousness). We find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’749 patent and the taking of the licenses. Although Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2018 ¶ 14), he does not address whether litigation had been threatened against other licensing parties. Furthermore, evidence of $350M in licensing revenue alone is not enough to show commercial success, because Patent Owner must relate that figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”); see also In re Huang, 100 F.3d at 140 (“Declining to find evidence of commercial success because ‘[a]though [the inventor’s] affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.’”). We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’749 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, Patent Owner’s evidence of licensing fails to establish commercial success. Accordingly, we give little weight to Patent Owner’s argument that its licensing program is evidence that the claims are not obvious.” slip op. at 26

  Patent outcomesUS 7,805,749 unpatentable
  § 101 eligibility§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,805,749
• American Express Co. / American Express Travel Co. et al. v. Harvey LunenfeldAll claims unpatentable
  PTAB · May 22, 2015 · CBM2014-00050 · APJ Frances L Ippolito · CBM · Final written decision

  Claims 1, 5, 15, 21, 31, and 35 are unpatentable under §§ 101 and 103; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Patent Owner disagrees with Petitioner’s definition of PHOSITA” slip op. at 10

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

    “Accordingly, utilizing this framework, we analyze claims 1, 5, 15, 21, 31,” slip op. at 28

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

    “Accordingly, based on the evidence of record, we determine that the” slip op. at 35

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

    “1. Knowledge Broker is not a Metasearch Engine As discussed previously, we do not agree with Patent Owner’s assertion” slip op. at 57

  Patent outcomesUS 8,239,451 unpatentable
  § 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · Graham
  Patents in suitUS 8,239,451

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.