- Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - Entain Corporate Services Ltd. / MGM Resorts International et al. v. Gan (UK) LimitedAll claims unpatentablePTAB · Feb 29, 2024 · IPR2023-00027 · APJ James P Calve · IPR · Final written decision
Original claims 11–18, 21, and 22 and proposed substitute claims 23–39 were held unpatentable; the revised motion to amend was granted in part and otherwise denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“For reasons discussed below, we grant in-part Patent Owner’s RMTA and cancel original claims 1 and 3–10. We otherwise deny Patent Owner’s RMTA to enter revised substitute claims 23–31, which non-contingently amend original claims 1 and 3–10, and we deny Patent Owner’s RMTA to enter revised substitute claims 32–39, which contingently amend original claims 12–14, 16–18, 21, and 22.” slip op. at 3
- ExcludeMotion to exclude, deniedOther
“V. PETITIONER’S MOTION TO STRIKE Because our findings and determinations do not rely on the paragraphs of Dr. Shamos’ declaration that Petitioner’s Motion to Strike seeks to strike, we dismiss Petitioner’s Motion to Strike as moot.” slip op. at 104
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having reviewed the arguments and evidence, we determine Petitioner has shown, by a preponderance of the evidence, that original claims 11–18, 21, and 22 of the challenged claims of the ’296 patent are unpatentable.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionUnpatentable
“We determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are unpatentable. Specifically, we determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are not eligible for patenting under 35 U.S.C. §§ 101, and claims 23–39 are unpatentable under prior art asserted under 35 U.S.C. § 103 as discussed below. See Opp. RMTA 4–6, 8–28.” slip op. at 3
Patent outcomesUS 8,821,296 unpatentable§ 101 eligibility§ 103 obviousnesscites Alice · Berkheimer · Enfish · Electric PowerPatents in suitUS 8,821,296 - Risen (Suzhou) Pharma Tech. Co. Ltd. v. Alzheon, Inc.Institution deniedPTAB · Jan 13, 2023 · PGR2022-00051 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution on all challenged claims, finding no reasonable likelihood of unpatentability under §§ 101 and 112(a), and denying Grounds 4–6 under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence, we determine that the information presented fails to demonstrate it is more likely than not that at least one of the challenged claims of the ’742 patent is unpatentable for ineligibility, lack of written description, or non-enablement. We also exercise our discretion to deny institution of post-grant review under 35 U.S.C. § 325(d). slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“tramiprosate “showed a significant overall treatment effect” in “an APOE4+ sub-group,” including APOE4 homozygotes; “therapeutic interventions applied earlier in the course of AD more likely might achieve the goal of disease modification;” and that “AD would be optimally treated before significant cognitive impairment, during its pre-symptomatic or pre-clinical stages …”) (emphases removed). Accordingly, Caltagirone was previously presented to the Office and we also find that Caltagirone’s disclosures are substantially similar to, or cumulative of, other references previously considered by the Examiner.” slip op. at 49
- Adverse judgmentAdverse judgmentOther
“D. Statutory Disclaimer After the filing of the Petition in this proceeding, Patent Owner filed a statutory disclaimer, disclaiming claims 9 and 11–15 of the ’742 patent, effective October 7, 2022. Prelim. Resp. 12; Ex. 2001, 1. “No post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.207(e). We do not analyze the validity of claims 9 and 11–15 based on Petitioner’s challenges (e.g., Grounds 2 and 3) because these claims have been statutorily disclaimed.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least an M.D. or Ph.D. degree in a biomedical science or equivalent field. They would also have several years of clinical experience treating and/or conducting clinical trials of drugs for AD patients, or professional experience working in clinical trial design and execution related to drugs for AD or supervising such work. Pet. 14–15 (citing Ex. 1003 ¶ 62) (internal citation omitted). Patent Owner does not contest the characterization offered by Petitioner. Prelim. Resp. 12–13. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’742 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · GrahamPatents in suitUS 11,191,742 - Gain Capital Holdings, Inc. v. Oanda CorporationAll claims unpatentablePTAB · Mar 16, 2022 · CBM2020-00023 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–12 are unpatentable under § 101; proposed substitute claim 13 is unpatentable under §§ 101 and 103 over Pictet, and the revised motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“all directed to “time-based trade analysis” “improperly describes the claims at too high a level of abstraction, as warned against in” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1337 (Fed. Cir. 2016). PO Resp. 5–6. We disagree. Petitioner’s articulation of the abstract idea to which claim 1 is allegedly directed is appropriately focused and tied to the specific language of the limitations of the claim. Petitioner explains how the recited “price data” and “current system position information” are the key inputs for time-based trade analysis and how calculating a trade recommendation using sub-models based on different times of day constitutes such analysis. See Pet. 31–34. Further, “time-based trade analysis” is not a general field, but rather a particular practice, namely the analysis of potential trades based on time. That type of analysis is reflected expressly in claim 1 via the use of a plurality of sub-models where each is based on “a different time of day.” Petitioner’s analysis is persuasive, as it is consistent with the language of claim 1 and supported by the testimony of Mr. Donefer, which we credit.6 Based on the full record developed during trial, we are persuaded that claim 1 recites time-based trade analysis. Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea.” slip op. at 21
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We disagree. Claim 1 does not recite a distributed system architecture, sub-model calculations executed concurrently in parallel, or real-time operation for a large number of users, all of which Patent Owner relies on to show a patent-eligible application of the alleged abstract idea. See Reply 6, 8; Ex. 1038 ¶¶ 22, 25–26. Claim 1 broadly recites “calculating trade recommendation information from each of a plurality of trading sub-models,” each “based on a different time of day,” and “calculating a trade recommendation . . . based on said trade recommendation information from each of said trading sub-models.” The claim does not specify how, when, or by what component the calculations are performed. Thus, Patent Owner’s contention that steps (d) and (e) do not represent well-understood, routine, and conventional activity is not commensurate with the language of the claim. With respect to what is actually recited in the claim, we are persuaded based on the full trial record that the calculations are the abstract idea itself (i.e., the fundamental economic practice of “time-based trade analysis”), rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea. See supra Section II.F.1.b; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Regardless, though, Petitioner also has provided persuasive evidence regarding the conventionality of steps (d) and (e), particularly given the broad manner in which they are recited in the claim. See, e.g., Ex. 1004 ¶¶ 69–84; Ex. 1021, 115 (“It is widely documented that return volatility varies systematically over the trading day and that this pattern is highly correlated with the intraday variation of trading volume and bid-ask spreads.”); Ex. 1019, 13 (“Trading models offer a real-time analysis of foreign exchange movements and generate explicit trading recommendations. These models are based on the continuous collection and treatment of foreign exchange quotes by market makers around the clock at the tick-by-tick frequency level.”); Ex. 1031, 728–732 (describing modeling that accounts for time periods of different levels of activity, such as when particular FX markets are open, and using time intervals of “hours, days, weeks or years”). Petitioner also has provided a detailed explanation citing persuasive evidence that, even if claim 1 did require distributed parallel processing and real-time trading model calculations, both were well-understood, routine, and conventional at the time of the ’534 patent. See Reply 9–11, 15–17; Ex. 1038 ¶¶ 23 (citing, for example, Ex. 1031, 228–232), 29–35 (citing, for example, Ex. 1031, 718). We credit Mr. Donefer’s testimony, which is supported by evidence in the record and unrebutted—Patent Owner did not address the evidence discussed in the Petition and Mr. Donefer’s initial declaration in its Response, did not file a Sur-Reply addressing Mr. Donefer’s reply declaration and cited evidence, and did not provide any contrary evidence in the record. See Reply 1, 3.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony of Mr. Donefer, for why a person of ordinary skill in the art would have had reason to combine Pictet’s teachings and arrive at the method of proposed substitute claim 13. Id. at 24–25 (citing Ex. 1031, 716–723; Ex. 1038 ¶¶ 52–58, 75–77). Petitioner argues that a person of ordinary skill in the art “would have recognized that Pictet’s data collection and storage steps (i.e., steps (a)-(c)) provide inputs for the subsequent calculations (i.e., steps (d)-[(e)]),” “would have understood Pictet as teaching that the distributed parallel processing . . . applies to the implementation of the trading models performing those calculations,” and would have had “reason to use at least five of the parameters discussed [in Pictet] when configuring the rules governing the ‘grand’ model.” Id. at 24. Petitioner further contends that numerous types of parameters were routinely used when designing and evaluating trade models, and Pictet’s moving average . . . is no different. Moreover, Pictet describes two categories of threshold values (i.e., trend and overbought/oversold) and expressly teaches using “several threshold values of both types,” which at a minimum suggests four such parameters. The voting scheme is also an integral part of the weighted moving average Pictet describes. A [person of ordinary skill in the art] also had reason to incorporate a time parameter setting the amount of time in the past that is considered, since a [person of ordinary skill in the art] would have understood that price data from the distant past is less 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that “the Board need not address issues that are not necessary to the resolution of the proceeding”). relevant to a moving average. Pictet also teaches using stop-loss and stop-profit parameters as part of its model implementation. Id. at 24–25 (citations omitted). We have reviewed Petitioner’s analysis and find it persuasive. Petitioner’s reasoning is consistent with the disclosure of Pictet and supported by the testimony of Mr. Donefer, which we credit. For the reasons stated by Petitioner and Mr. Donefer, we find that a person of ordinary skill in the art would have had reason to combine the cited teachings of Pictet in the manner asserted with a reasonable expectation of success.” slip op. at 53
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“3. Patentability Pursuant to 37 C.F.R. § 42.221(d)(2), Petitioner “bears the burden of persuasion to show, by a preponderance of the evidence,” that proposed substitute claim 13 is unpatentable. Petitioner argues that proposed substitute claim 13 fails to recite patent-eligible subject matter under 35 U.S.C. § 101, is indefinite under 35 U.S.C. § 112, second paragraph, and would have been obvious under 35 U.S.C. § 103(a). Opp. 3–25. For the reasons explained below, we determine that Petitioner has met its burden to show, by a preponderance of the evidence, that claim 13 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103(a), and need not reach Petitioner’s arguments regarding definiteness under 35 U.S.C. § 112, second paragraph.” slip op. at 39
Patent outcomesUS 7,496,534 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR · GrahamPatents in suitUS 7,496,534 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · 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 · NautilusPatents in suitUS 9,891,799 - Supercell OY v. Gree, Inc.No claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric Power · NautilusPatents in suitUS 9,700,793 - Supercell OY v. Gree, Inc.No claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Electric PowerPatents in suitUS 9,675,886 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · NautilusPatents in suitUS 9,687,744 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · Aug 14, 2019 · PGR2018-00029 · APJ Michael W Kim · PGR · Final written decision
Claims 1–15 are unpatentable: the Board found them ineligible under § 101 and also found claims 1–15 unpatentable under § 112(a).
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“division” to “way of managing a game and playing a game” does not alter our analysis, because “displaying a panel selection in a division” is no more than identifying high level details of a game that are substantively analogous to how “wagering game,” “dice game,” and “bingo game” are identified in the aforementioned cases. Accordingly, we find that independent claim 1 recites “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which, under the Guidance, is one of certain methods of organizing human activity and, thus, an abstract idea.” slip op. at 26
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“way of managing a game and playing a game involving displaying a panel selection in a division.” Accordingly, Petitioner is not required to account for any limitations within this characterization, at least for the purposes of determining whether a claim limitation is “well-understood, routine, conventional.” And when this framework is applied properly, we see how most of Patent Owner’s assertions fall away. First, Patent Owner argues that Petitioner has provided no evidence that the claimed use of panels is well-understood, routine, or conventional. PO Resp. 32–39 (citing Ex. 1001, 6:36–38, 6:42–46, 7:27, 7:36, 7:44–53. 7:55–56; Ex. 2002, ¶¶ 22–30). More specifically, Patent Owner asserts that the panels disclosed in the ’583 patent may “display a still image,” “display a movie when the panels are emphasized and displayed,” “zoom in,” and may have portions of frames, in which the panels are disposed, that “display the texts showing the sound effect and/or an effect display portion.” PO Resp. 32–33 (citing Ex. 1001, 7:27, 7:36, 7:44–53, 7:55–56). Patent Owner asserts that these elements provide an interactive and dynamic format using panels that was unique and unconventional. PO Resp. 34. However, Petitioner is not required to show that those properties of the panels described in the ’583 patent, whether in an interactive and dynamic format or otherwise, are well-understood, routine, and conventional, because these elements are not recited in any of the independent claims.11 Relatedly, Petitioner is not slip op. at 45
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“2. Analysis Petitioner asserts that the Specification of the ’583 patent fails to provide adequate written description support for the following limitations of representative claim 1:” slip op. at 58
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Pet. Reply 25; see also Tr. 37:3–11 (continuing line of argument). Here, once again, Petitioner mistakes breadth, which is permitted, for indefiniteness. See In re Miller, 441 F.2d at 693. As admitted by Patent Owner, the limitation and, in particular the term “allowed,” is certainly broad. See Tr. 73:15–74:2. But as stated by Mr. Crane, a person of ordinary skill would have understood that “one character would not be allowed to dispose a panel . . . into a division that is occupied by a panel belonging to another character,” or if “an attempt is being made to dispose a panel into a space where the panel will not fit, it will also not be allowed to be disposed.” PO Sur-Reply 22–23 (citing Ex. 2002 ¶ 44; Ex. 1009, 107:24–108:4). Petitioner has not provided sufficient evidence or analysis to show that such an example from the ’583 patent is insufficient guidance to one of ordinary skill and compels a determination of indefiniteness.17 For these reasons, we are not persuaded that Petitioner has met its burden of showing that claims 1–15 are indefinite under 35 U.S.C. § 112(b).” slip op. at 69
Patent outcomesUS 9,636,583 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Enfish · Electric Power · NautilusPatents in suitUS 9,636,583 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5
§ 101 eligibilitycites BerkheimerPatents in suitUS 9,669,308
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.