• Crusoe Energy Systems, LLC v. Upstream Data Inc.Some claims unpatentable
  PTAB · Jan 21, 2025 · PGR2023-00039 · APJ Matthew S Meyers · PGR · Final written decision

  Claims 1 and 24 are unpatentable under § 101 as directed to an abstract idea without an inventive concept; the petitioner did not prove the remaining challenged claims unpatentable.

  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). Petitioner asserts that one of ordinary skill in the art (“POSITA”) would have had “a degree in chemical engineering, petroleum engineering, process engineering, mechanical engineering, or a similar field with 1–2 years of experience in designing power generation systems, Blockchain mining systems, or other comparable hands-on experience.” Pet. 7 (citing Ex. 1003 ¶ 19). Petitioner adds that “[a]lternatively, a person having 3–5 years of experience in the Blockchain mining industry would also qualify as a POSITA” and “[a]dditional education could substitute for professional experience, or vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 19).” slip op. at 10

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

    “We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2024). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “To address that “the mining processors are connected to the network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database,” as recited by limitation [1c_iii], Petitioner asserts that CryptoKube’s system includes “Bitcoin miners such as spondooliestech SP35 servers.” Pet. 25 (citing Ex. 1006, 1–4). And, relying on the declaration testimony of Mr. Kasdorf, Petitioner concludes that one of ordinary skill in the art would have understood that to mine Bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database, which is implemented as a public ledger distributed among many peer-to-peer devices connected to the Internet. Id. (citing Ex. 1004 ¶¶ 108–109; Ex. 1010 ¶ 419). Mr. Kasdorf’s declaration testimony is nearly verbatim to the Petition and similarly provides no indication as to what in CryptoKube constitutes a “mining processor” other than his conclusory opinion that one of ordinary skill in the art “would have understood that to mine bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the 19 We note that Mr. Kasdorf’s reliance on Kheterpal is limited to Kheterpal’s background discussion regarding the Bitcoin protocol inasmuch as it “defines a system in which the creation and distribution of the bitcoin cryptocurrency is governed by consensus among a peer-to-peer network” and includes “a public ledger in which new transactions are verified and recorded by members of the network via cryptography.” Ex. 1010 ¶ 4. Ex. 1004 ¶ 108 (citing Ex. 1010 ¶ 4). Thus, we agree with Patent Owner that in the Petition, neither Petitioner nor Mr. Kasdorf explains or “cite[s] any evidence regarding which component is the ‘necessarily’ present mining processor (limitation 1[c_i]) or how this unspecified mining processor is ‘connected to the network interface and adapted to . . . communicate with the blockchain database’ (limitation 1[c_iii]).” PO Resp. 42–43 (citing Ex. 1004 ¶¶ 104–105, 108–109).” slip op. at 21

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s contention that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation” (Pet. Reply 11 (citing Ex. 1036 ¶ 21)) is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Rather, Petitioner supplements its conclusory assertion that a “mining processor” is necessarily present in CryptoKube’s spondooliestech SP35 servers (Pet. 23, 25 (citing Ex. 1006, 1–4)) with its new assertion that that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation.” Pet. Reply 11. Petitioner does not purport to have presented this theory in the Petition. Id. Instead, Petitioner argues that this theory was properly raised in response to what Petitioner alleges to be an admission by” slip op. at 27

  Patent outcomesUS 11,574,372 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 11,574,372
• 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
• 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
• Supercell OY v. Gree, Inc.All claims unpatentable
  PTAB · Jun 2, 2020 · PGR2019-00018 · APJ Lynne H Browne · PGR · Final written decision

  Claims 1–20 are unpatentable under § 101 as directed to an abstract idea without a practical application or inventive concept; the § 112(b) and § 112(d) challenges were not shown.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionDecided for petitioner

    “We agree with Petitioner that “the holding in In re Smith does not require that the claims be directed to rules for playing a ‘particular’ game.” Pet. Reply 5. Rather, the Federal Circuit held that “claims, describing a set of rules for a game, are drawn to an abstract idea.” In re Smith, 815 F.3d at 819. Notably, the Federal Circuit did not require that such rules only be applicable to a particular game. Id. Further, we agree that the claims at issue are similar to those in Planet Bingo as explained by Petitioner in its Reply. See Pet. Reply 6–8; see also Ex. 1009, 11.” slip op. at 14

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

    “We agree with Petitioner that the challenged claims do not integrate the judicial exception into a practical application. Pet. Reply 9. The claimed “input face” is simply not claimed in sufficient detail to require the type of specific user interface found to transform the claims into a practical application in Core Wireless, DDR Holdings, and other similar cases. Rather, as admitted by Patent Owner’s expert, the claims recite a generic “input face.” See Ex. 1005, 52:16–20, 78:22–79:1, 79:13–18, 108:11–109:8.” slip op. at 25

  • Skill levelSkill level board ownOther

    “2. Level of Ordinary Skill in the Art In the Petition, Petitioner does not proffer a definition of the level of ordinary skill in the art. See generally Pet. In its Response, Patent Owner does not provide a definition either. See generally PO Resp. In its Reply, Petitioner relies on the testimony of Patent Owner’s expert, Dr. Shamos, that a person of ordinary skill in the art has “two years of experience implementing interactive software having touchscreen user interfaces.” Pet. Reply 2 (citing Ex. 2001 ¶ 38). In its Sur-Reply. Patent Owner essentially agrees with Petitioner’s definition, but asserts that this definition does not require such a person to have personally written code for touchscreen user interfaces. See PO Sur-Reply 5. Having reviewed the entire record in this proceeding, we agree with both Petitioner and Patent Owner that a person of ordinary skill in the art would have had “two years of experience implementing interactive software having touchscreen user interfaces” as this is consistent with the level of ordinary skill reflected in the ’799 patent and evidence of record. Pet. Reply 2; PO Sur-Reply 5. We further agree with Patent Owner that such a person need not have personally written code for such implementation for the same reasons.” slip op. at 37

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

    “We find unpersuasive Petitioner’s contentions regarding the claim terms “direction” and “direction operation,” as well as the limitation “moving . . . one or more of the plurality of associated objects as a group.” Dec. 24. Specifically, we credit Dr. Shamos’s testimony that the terms “direction” and “direction operation” is not indefinite and that, although the limitation “moving . . . one or more of the plurality of associated objects as a group” may be broad, it is not indefinite. Id. Having considered the entire record in this proceeding, Petitioner has not demonstrated that claims 1–20 are indefinite. 4. Conclusion Regarding 35 U.S.C. § 112(b) For the reasons discussed above, we are not persuaded that Petitioner has demonstrated that claims 1–20 fail to comply with 35 U.S.C. § 112(b).” slip op. at 41

  Patent outcomesUS 9,891,799 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 9,891,799
• Supercell OY v. Gree, Inc.No claims unpatentable
  PTAB · Oct 15, 2019 · PGR2018-00061 · APJ Hyun J Jung · PGR · Final written decision

  The Board found claims 1–7 and 9–20 not shown unpatentable under §§ 101, 112(a), or 112(b), because Petitioner did not meet its burden on any ground.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “would possess at least an associate degree in the field of computer science (or a related academic field) and at least two additional years of practical (e.g., work) experience in the field of video game programming and development.” PO Resp. 15 (citing Ex. 2004 ¶ 27). Patent Owner alternatively contends that, if the person of ordinary skill in the art did not have a formal degree, then such a person “would have at least four years of practical (e.g., work) experience in the field of video game programming and development, or an equivalent field of study” and “would have training or familiarity with computer processing technology, namely systems for processing the progress of a video game, including the generation of game screens, and the tracking and displaying of in-game player status information.” Id. at 15–16 (citing Ex. 2004 ¶ 27). Petitioner does not present any arguments regarding level of ordinary skill. See generally Pet.; Pet. Reply. We find Patent Owner’s proposed level of ordinary skill credible based on the Specification and apply that level of skill to our analysis of the parties’ disputes. We, thus, adopt Patent Owner’s unchallenged, asserted level of ordinary skill quoted above. slip op. at 8

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Patent Owner, on the other hand, describes how the Specification of the ’793 patent, with supporting declarant testimony, provides adequate written description for the disputed limitations. PO Resp. 69–71 (citing Pet. 53–54; Ex. 1001, 4:32–34; Ex. 2004 ¶¶ 89–105). The Specification states that “a screen information generator that generates information relating to a game screen based on an instruction received by the instruction receiving device.” Ex. 1001, 4:32–34. Patent Owner also presents declarant testimony that explains the quoted portion of the Specification and that the ordinarily skilled artisan would have understood from the Specification that it provides adequate written description support for the disputed recitations. Ex. 2004 ¶¶ 89–105 (citing Ex. 1001, 2:1–7, 3:9–12, 3:46–53, 4:32–34, 4:37–41, 4:47–49, 7:24–58, 8:9–11, 8:18–35, 8:42–45, 8:65–67, 11:5–6, Figs. 2A, 2B). We credit Patent Owner’s declarant testimony because the relied upon portions of the Specification support it.” slip op. at 28

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

    “claims 1, 11, and 17 are limiting. Turning to the language of the claims, claim 1 recites “generating information relating to a game screen based on a received instruction [(‘the generating step’)]; and outputting information relating to the generated game screen to a user terminal at a predetermined time [(‘the outputting step’)].” Ex. 1001, 13:57–60. Claim 1’s wherein clause recites, inter alia, that “the second game screen includes latest state information at a time when receiving a first instruction which is an instruction to update the state information.” Because of the logical link between the “received instruction” in the generating step and the “when receiving a first instruction” in the wherein clause, we determine that the wherein clause must relate to the generating step, not the outputting step, as asserted by Petitioner. Claim 11 also recites “a screen information generation step in which a screen information generator . . . generates information relating to a game screen based on the instruction received” and its wherein clause expressly states “in the screen information generation step.” Ex. 1001, 14:66–15:2, 15:9. Similarly, claim 17 recites “a screen information generator that generates information relating to a game screen based on an instruction received” and expressly states “wherein the screen information generator generates information.” Id. at 16:13–15, 16:19. We, thus, determine that the claims support Patent Owner’s contention that the wherein clauses refer to recitations regarding generating information relating to a game screen based on received instruction. Turning to the Specification, we find that it describes the claimed invention as “capable of reducing the influence of a communication state or performance of hardware by generating a game screen with information to be displayed on the game screen as the latest information at the timing when an instruction to update is received.” Ex. 1001, 1:51–55 (emphasis added); see also Ex. 2004 ¶ 49 (testifying as to why the Specification describes a technological improvement). The wherein clauses of the independent claims reiterate this part of the Specification. See Ex. 1001, 13:61–67, 15:9–17, 16:19–27. We, thus, find that the Specification supports our determination that the wherein clauses refer to recitations regarding generating information relating to a game screen based on received instruction and are limiting.” slip op. at 12

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

    “To resolve the parties’ dispute, we determine that an express interpretation for any of these terms or any other claim term is not necessary. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 17

  Patent outcomesUS 9,700,793 not shown unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric Power · Nautilus
  Patents in suitUS 9,700,793
• Supercell OY v. Gree, Inc.No claims unpatentable
  PTAB · Sep 26, 2019 · PGR2018-00050 · APJ Carl M Defranco · PGR · Final written decision

  The Board held claims 1–10 not unpatentable under § 101, § 112(a), or § 112(b), finding the claims patent eligible and rejecting the written-description and indefiniteness challenges.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “Neither Supercell nor GREE proposes a construction for any particular claim term. See Pet. 20–26; PO Resp. 6. We determine that no express construction of the claim terms is necessary for purposes of this decision, with one exception. We note that the Specification of the ’886 patent describes the claimed “terminal attribute” as follows: “Examples of the attribute information may include the OS version, the browser type, the terminal type, the communication circumstance, and the like.” Ex. 1001, 11:33–35. In that regard, the Specification also explains a communication circumstance as follows: “For example, in a case where an information processing speed or a communication speed in the user terminal . . . is high, the number of rounds is set to be large.” Id. at 11:20–23. As such, we determine that the plain and ordinary meaning of “terminal attribute” encompasses at least the examples listed in the Specification and should be read accordingly.3” slip op. at 5

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

    “We agree with GREE that the claims are drawn to a specific technological improvement in the transmission of online game content by using a terminal attribute to improve the efficiency and functionality of transmitting multiple rounds of an online game to a user terminal, and that this improvement is not an abstract idea.7 Although, as Supercell argues, the recited function of “transmitting game view data” may be result-oriented (see Pet. 33–37; Reply 4–6), the claims nonetheless recite a specific technique for achieving that result-oriented function—identifying a terminal attribute of the user terminal and determining the predetermined number based on the terminal attribute. That particular technique, as made clear by the ’886 patent, solves a specific technological problem with conventional online game systems—long wait times and interruptions in the transmission of multiple rounds of the game. See Ex. 1001, 1:46–54 (describing the problem with conventional online game systems). So, rather than reciting just result-oriented functions, the clear focus” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “As explained by GREE’s expert, a skilled artisan would have known from that description how to determine the predetermined number of rounds using a terminal attribute table. See Ex. 1007, 57:20–62:10, 82:14–23, 87:7– 90:22. That expert testimony, which we find persuasive, is unrebutted and stands in direct contrast to unsupported attorney argument from Supercell. See Pet. 58–61; Reply 19–21. Thus, we determine that Supercell has not established by a preponderance of the evidence that claims 1–10 are unpatentable under 35 U.S.C. § 112(a) as lacking written description support.” slip op. at 14

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

    “Pet. 64–65; Reply 22–23. But aside from that conclusory assertion, Supercell’s Petition simply poses a series of rhetorical questions without further analysis or evidentiary support. See Pet. 65–66. GREE, on the other hand, offers expert testimony as to why the meaning of the claimed “determining” limitation is clear not only from the claim language itself but also in light of the Specification. Ex. 2001 ¶¶ 40– 42 (citing Ex. 1001, 11:20–41). We find that testimony persuasive. We also find persuasive GREE’s reasoning in response to each of the rhetorical questions raised by Supercell, even though it was under no obligation to do so. PO Resp. 47–49; Sur-Reply 17–19. And given the lack of argument, not to mention evidentiary support, in the Petition as to the purported indefiniteness of the challenged claims, we are not persuaded that Supercell has carried its burden of showing that the claims are unpatentable under 35 U.S.C. § 112(b).” slip op. at 15

  Patent outcomesUS 9,675,886 not shown unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Electric Power
  Patents in suitUS 9,675,886
• Supercell OY v. Gree, Inc.All claims unpatentable
  PTAB · Sep 23, 2019 · PGR2018-00055 · APJ Lynne H Browne · PGR · Final written decision

  Claims 1–12 are unpatentable under § 101; the Board denied the motion to amend because substitute claims 13–24 are also patent ineligible.

  RulingsFinal written decision

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

    “claims provide more detail than the original claims, we do not agree that in this instance such detail renders the proposed substitute claims patent eligible. As explained above in Part II.B.2.a, the original claims are directed to a judicial exception (namely a certain method of organizing human activity), which is patent ineligible. The proposed substitute claims do not remedy this deficiency in the original claims. Rather, the proposed substitute claims merely add more detail to the ineligible subject matter. For example, substitute claim 13 recites “controlling . . . an effect of an attack . . . according to . . . a plurality of attack values, each of the plurality of attack values assigned to each attack of the number of attacks within the predetermined time by any characters in the group.” PO MTA 27. This recitation clearly provides more detail than was provided in original claim 1; however, the additional detail specifies how the video game is conducted (i.e., the rules to be followed) as opposed to a technological improvement. In other words the proposed substitute claims, like the original claims, recite following rules (specifically, rules for a battle game), which is a certain method of organizing human activity that has been found to be patent ineligible. Guidance at 52. For this reason, and the reasons discussed above in Part II.B.2.b regarding the original claims, we determine that the proposed substitute claims are directed to a judicial exception (abstract idea). We also determine that the proposed substitute claims do not integrate the recited abstract idea into a practical application for the reasons discussed above in Part II.B.2.c and that the additional elements beyond the recited abstract idea do not recite an inventive concept for the reasons discussed above in Part II.B.2.d. Accordingly, we find that substitute claims 13–24 are not patent eligible.” slip op. at 52

  • BurdenFwd mixedMixed

    “We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept.” slip op. at 27

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

    “Even if Patent Owner’s assertions that the limitations of claim 1 are analogous to the identified limitations in Examples 37 and 38 of the Guidance and do not recite mathematical concepts, this is not dispositive on the issue of whether claim 1 is directed to patent-ineligible subject matter. The Guidance identifies “following rules” such as “rules for conducting a wagering game” as one method of organizing human activity that is patent ineligible. Guidance, 84 Fed. Reg. at 52 (citing In re Smith, 815 F.3d at 818). The preamble to claim 1 recites “[a] method for providing a battle game to each of a plurality of client devices via a network.” Ex. 1001, 7:54– 55. The preamble of Example 37 recites “[a] method of rearranging icons on a graphical user interface (GUI) of a computer system” and the preamble of Example 38 recites “[a] method for providing a digital computer simulation of an analog audio mixer.” USPTO, Subject Matter Eligibility Examples: Abstract Ideas 1 (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_ 20190107.pdf. Neither of the example claims has anything to do with a method of providing a battle game or following rules, and thus, cannot demonstrate by analogy that claim 1 is patent eligible.” slip op. at 22

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

    “We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept. e. Conclusion re Subject Matter Eligibility For the reasons set forth in Parts II.B.2.a–d, we are persuaded that Petitioner has met its burden of showing that claims 1–12 are not subject matter eligible.” slip op. at 27

  Patent outcomesUS 9,687,744 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · Nautilus
  Patents in suitUS 9,687,744
• Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentable
  PTAB · Jun 23, 2017 · CBM2016-00025 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under § 101 as patent-ineligible subject matter.

  RulingsFinal written decision

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

    “II. ANALYSIS A. Claim Construction Although Petitioner presents constructions for several claim terms (Pet. 39), we determine that no terms require express construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

  • BurdenFwd all claims unpatentableUnpatentable

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

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

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

  Patent outcomesUS 6,996,538 unpatentable
  Claim construction§ 101 eligibility
  Patents in suitUS 6,996,538
• Care N’ Care Insurance Co., Inc. / Trizetto Corp. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · CBM2015-00063 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 6, 8, 9, 12, 13, 15, 20, 21, 24, and 25 are unpatentable under § 101; claims 1, 6, 9, 15, and 20 are anticipated by Lech; and claims 6, 8, 12, 13, …

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioners have shown by a preponderance of the evidence that claims 1, 6, 8, 9, 12, 13, 15, 20, 21, 24, and 25 are unpatentable.” slip op. at 2

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

    “Patent Owner proposes construing “field” as “computer software field.” Prelim. Resp. 24–33. We see no reason to interpret “fields” as “computer software fields.” We agree with Petitioners that Patent Owner’s proposed construction is circular insofar as the construction includes the entire term being construed. See Pet. Reply 6. Further, as discussed below, even if “fields” were interpreted as “computer software fields,” the complete record persuades us that Petitioners have shown unpatentability of the challenged claims by a preponderance of the evidence. Petitioners propose that the broadest reasonable interpretation of “digital attachment” recited by claim 9 is “information that can be digitized.” Pet. 5 (citing Ex. 1001 ¶¶ 32, 33, 36; Ex. 1003, 11:18–19, 20– 35). For the purposes of this Decision, we need not construe this or any other term expressly. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPrior construction adoptedDecided for patent owner

    “In the Decision on Institution, we interpreted “unitary data stream” as “transmitted set of information.” Dec. on Inst. 12. Patent Owner states that it “agrees that such definition is the broadest reasonable construction.” PO Resp. 24; see also Pet. Reply 4 (stating “Patent Owner does not dispute that the correct construction of ‘unitary data stream’ for this proceeding is ‘transmitted set of information.’”). Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from this interpretation.” slip op. at 7

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

    “device operatively coupled to a computer network receiving and transferring or transmitting contents of fields of a unitary data stream. Based on the full record before us, we determine that the subject matter of the challenged claims, when considered as a whole, is directed to the abstract idea of transmitting or copying information from a source to a destination. In particular, the complete record persuades us that the idea of transmitting or copying information from a source to a destination represents a disembodied, well-known concept, i.e., a basic building block of human ingenuity and that does not rise beyond the level of an abstract idea. See Content Extraction, 776 F.3d at 1347 (“Applying Mayo/Alice step one, we agree with the district court that the claims of the asserted patent are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”); see also Alice, 134 S. Ct. at 2354 (“[I]n applying the § 101 exception, we must distinguish between patents that claim the ‘“buildin[g] block[s]”’ of human ingenuity and those that integrate the building blocks into something more”) (quoting Mayo, 132 S. Ct. at 1303). We also agree with Petitioners that the” slip op. at 28

  Patent outcomesUS 7,178,020 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Bilski
  Patents in suitUS 7,178,020
• Care N’ Care Insurance Co. / Trizetto Corp. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · CBM2015-00062 · APJ Hyun J Jung · CBM · Final written decision

  Claims 27, 30, 36, 42–45, and 49–52 are unpatentable under § 101; claims 27, 42–45, and 49–52 under § 102; and claims 30, 36, and 42 under § 103.

  RulingsFinal written decision

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

    “In the Decision on Institution, we interpreted “unitary data stream” as “transmitted set of information.” Dec. on Inst. 12. Patent Owner states that it “agree[s] that such definition is the broadest reasonable construction.” PO Resp. 24; see also Pet. Reply 5 (stating “Patent Owner does not dispute that the correct construction of ‘unitary data stream’ for this proceeding is ‘transmitted set of information’”). Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from this interpretation. Patent Owner further proposes interpreting “fields” as “computer software fields.” PO Resp. 24–33. Petitioners dispute the proposed interpretation of “fields.” Reply 4–7. We see no reason to interpret “fields” as “computer software fields.” We agree with Petitioners that Patent Owner’s proposed construction is circular insofar as the construction includes the entire term being construed. See Pet. Reply 5. Further, as discussed below, even if “fields” were interpreted as “computer software fields,” the complete record persuades us that Petitioners have shown unpatentability of the challenged claims by a preponderance of the evidence. Petitioners also propose interpreting “identities” recited by claims 42– 45 and 50–52 as “labels” (Pet. 4), and Patent Owner states that it “does not dispute that such definition is the broadest reasonable construction” (PO Resp. 24). For the purposes of this Decision, we need not expressly construe this or other claim terms further. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”). III.” slip op. at 8

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

    “simply ask whether the claims involve a patent-ineligible concept” and that “some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like.” Enfish, 882 F.3d at 1335. Therefore, the Federal Circuit “f[ou]nd it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea” and that the “first step in the Alice inquiry . . . asks whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–1336. Here, claim 27 recites “a digital device,” “first and second networked components,” and a method that includes receiving and parsing a data stream with N fields and routing portions of the N fields to networked components. Claim 42 recites a “server” that receives a file with identifiable fields and copies a subset of the fields to correlated fields of a second file. Claim 50 does not expressly require any computers and recites a method that includes receiving a file with identifiable fields and copying a subset of the fields to correlated fields of a second file. The claims do not recite an improvement in computer-related technology, “such as a chip architecture, an LED display, and the like.” See Enfish, 882 F.3d at 1335. Patent Owner’s asserted improvement is “an improvement to data processing performed by a mainframe computer system or similar systems, allowing processing text data with associated digital attachments” (PO Resp. 48), but the focus of the challenged claims is not on “processing text data with associated digital attachments.” The claims instead require receiving data with fields and routing or copying a portion or subset of the fields. The asserted improvement is not an improvement in “computer functionality” or capabilities, but instead, as Patent Owner concedes, “an improvement to data processing performed by a mainframe computer system or similar system.” See PO Resp. 48. As discussed further below, the challenged claims invoke computers merely as a tool. See Enfish, 822 F.3d at 1338 (stating “patent-ineligible claims at issue in other cases . . . recited generalized steps to be performed on a computer using conventional computer activity”); see also Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 2015-1763, 2016 WL 3514158, at *5 (Fed. Cir. June 27, 2016) (stating that the “Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities”).” slip op. at 30

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

    “Based on our factual findings from the specification of the ’020 patent described above and the full record before us, we determine that the recited “digital device operatively coupled to first and second networked components” can be at least one of a personal computer, legacy computer, network server, or buffer computer. The complete record does not persuade us that the “digital device operatively coupled to first and second networked components” requires more than generic computer components. See Alice, 134 S. Ct. at 2357–58 (explaining computer implementation not enough when “the process could be ‘carried out in existing computers long in use’” or when “the computer implementation was purely conventional”). Considering the full record before us, for the reasons explained above, we determine that claim 27 recites well-known, routine, conventional activities previously known to the industry and generic computer components. Alice, 134 S. Ct. at 2359 (“Taking the claim elements separately, the function performed by the computer at each step of the process is ‘[p]urely conventional.’”). When considered as an ordered combination, we determine that claim 27 adds nothing that is not already present when its elements are considered individually. See Alice, 134 S. Ct. at 2359 (“Considered ‘as an ordered combination,’ the computer components of petitioner’s method ‘ad[d] nothing . . . that is not already present when the steps are considered separately.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2014) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”); Bancorp, 687 F.3d at 1278 (explaining that a computer “employed only for its most basic function ... does not impose meaningful limits on the scope of those claims”); cf. DDR Holdings, 773 F.3d at 1258–59 (finding a computerimplemented method patent eligible where the claims recite a specific manipulation of a general-purpose computer such that the claims do not rely on a “computer network operating in its normal, expected manner”). Claim 27 “merely recite[s] the abstract idea . . . with the requirement . . . to perform it on a set of generic computer components”; does not “recite a specific, discrete implementation of the abstract idea”; and cannot “be read to ‘improve[] an existing technological process.’” See Bascom, 2016 WL 3514158, at *7. As discussed above, claim 27 recites well-known, routine, conventional activities that are arranged conventionally and generically. See id. at *6 (stating that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces”).” slip op. at 40

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

    “receiving a unitary data stream including N fields of data,” Petitioners cite column 5, line 59 to column 6, line 16 and Figure 2 of Lech, not just column 6, lines 11–16. Pet. 59–60. In the cited portion, we find that Lech discloses that “scanner 210 stores all of the information extracted off of hard copy document 100 in the scanner memory 220” and that the “extracted information is stored in two forms . . . as image information [and] textual information recognized on the hard copy document 100 by, for example, employing standard character recognition software.” Ex. 1009, 5:66–6:7. We find that the portion of Lech cited by Petitioners supports their contention that the “exemplary hard copy document 100 of Fig. 2 is preferably scanned in and fields of information on it are recognized using standard optical character recognition software.” Pet. 59–60 (citing Ex. 1001 ¶ 64; Ex. 1009, 5:66–6:8). We also agree with Petitioners that the stored information is sent to computer 230. The portion of Lech cited by Petitioners discusses first and second operational modes and explicitly states that, in the second mode of operation, the information is displayed on computer 230. Ex. 1009, 6:13–16. The first and second operational modes appear to differ by how much of the document is scanned, not where the scanned information is sent. See id. at 6:63–67 (describing that “[t]hese second modes of operation are efficient for small businesses . . . since the user does not necessarily have to store all of the information that appears on the hard copy document”). Moreover, we find that Lech expressly discloses that the “information from scanner memory 220 or main memory 250 is transmitted to computer 230.” Ex. 1009, 5:1–2. Petitioners provide an asserted understanding of Lech by one of ordinary skill in the art in an “Overview of Lech,” and Petitioners cite this same portion of Lech to assert that the “document image, the extracted textual information, or both are then sent to a computer.” Pet. 56–57 (citing Ex. 1001 ¶ 52). We, thus, find that Lech discloses that the output from the scanner is sent to the computer 230 and that the output includes information in fields, as shown in Figure 2 of Lech, and therefore, discloses “receiving a unitary data stream including N fields of data,” as required by claim 27. slip op. at 55

  Patent outcomesUS 7,178,020 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Bilski
  Patents in suitUS 7,178,020

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.