- Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - Meta Platforms, Inc. v. Sitnet, LLCAll claims unpatentablePTAB · Sep 8, 2025 · IPR2024-00530 · APJ Thu A Dang · IPR · Final written decision
Claims 1–16 are unpatentable as obvious; the Board denied the contingent motion to amend proposing substitute claims 17–32.
RulingsFinal written decision- Expert testimonyOther
“iv. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Gage teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Gage. v. Independent claim 8 Independent claim 8 recites a method of “providing situation related information to a situation authority via a situational network,” wherein the method comprises “receiving, by a participant device, a roll call query soliciting a reply related to a status of a participant based on the participant being determined, by the situation authority, to be geographically proximate to the situation,” “receiving, by the participant device, a selection of a status response from the participant,” and “sending the status response to the central authority, wherein the status response is included in a roll call list.” Ex. 1001, 34:46–57. Petitioner generally refers to its contentions with respect to claim 1. Pet. 34–36. In particular, Petitioner contends that Gage teaches a subscriber device that communicates a status indicator to the disaster response system through a subscriber status reporting system that implements a “situational network” configured for use during disasters. Id. at 34 (citing Ex. 1005 ¶¶ 19, 25). Petitioner additionally contends that Gage’s “disaster response system” is a “situation authority” because the disaster response system detects an occurrence of a disaster affecting a region, receives and aggregates information related to the disaster, and then provides the information to various participants in the network. Id. (citing Ex. 1005 ¶¶ 8–9, 21, 36, 45; Ex. 1003 ¶ 104). With respect to the “situational network” limitation, Patent Owner” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “situational network” (claims 1, 8, 13) Patent Owner points out that the district court has already construed” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“viii. Ground 1 Conclusion In light of the above analysis, we determine that Petitioner’s evidence” slip op. at 46
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“c. Conclusion on Petitioner’s Patentability Challenges based on Obviousness for Proposed Substitute Claims For the above reasons, we determine that Petitioner has shown by a preponderance of evidence that the subject matter of proposed substitute claims 17–32 would have been unpatentable. IV. CONCLUSION9 For the foregoing reasons, we conclude that Petitioner has shown by a” slip op. at 82
Patent outcomesUS 9,877,345 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · GrahamPatents in suitUS 9,877,345 - Tiz Inc. D/B/A Provi v. Jason K. SmithAll claims unpatentablePTAB · Mar 23, 2022 · CBM2020-00029 · APJ Frances L Ippolito · CBM · Final written decision
Claims 1–19 are unpatentable under § 101 because they claim an abstract idea without integrating it into a practical application or adding an inventive concept.
RulingsFinal written decision- BurdenDecided for petitioner
“For the reasons expressed below, we conclude that Petitioner has demonstrated by a preponderance of evidence that claims 1–19 are unpatentable as being directed to ineligible subject matter.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill in the Art Based on the full trial record, including our review of the ’585 patent and the types of problems and solutions described in the ’585 patent and cited reference materials, we agree with Dr. Min that a person of ordinary skill in the art would have had “the equivalent of a Bachelor’s degree or higher in electrical engineering, computer science or computer networking, and at least 2 years working experience designing communication systems.” See Ex. 1008 ¶ 21. Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art.2 See generally PO Resp. 2 In opposing Petitioner’s Motion to Exclude, Patent Owner states that “the Board should modify its definition of person of ordinary skill in the art,” Opp. Exclude 5 n.1, but never proposes a different definition and does not dispute Petitioner’s definition in its Response or Sur-Reply.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner does not propose any explicit constructions for any claim terms. See Pet. 44. Patent Owner also does not propose any explicit constructions for any claim terms. See PO. Resp. We determine that no explicit construction is necessary in order to resolve the issues before us.” slip op. at 19
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“items by collecting, analyzing, and transmitting information related to inventory, promotions, and particular sellers” is not an abstract idea because it “requires multiple steps that may or may not be implicated (collecting, analyzing, and transmitting) for information from multiple sources that may or may not be used (inventory, promotions, distributors, i.e., ‘particular sellers’).” PO Resp. 33–34. Contrary to Patent Owner’s position, we do not agree that this abstract idea (or the claims) requires a complex or complicated, multi-step process. Rather, the claims are directed to the collecting, analyzing, and transmitting of information. Claim 1, for example, requires only a list and inventory order of “one or more products” (i.e., the claim may be satisfied with only a single product). The Federal Circuit has explained that, generally, “claims focused on ‘collecting information, analyzing it, and displaying certain results of the collection and analysis’ are directed to an abstract idea.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (quoting Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). “Information as such is an intangible,” hence abstract, and “collecting information, including when limited to particular content (which does not change its character as information), [i]s within the realm of abstract ideas.” Electric Power, 830 F.3d at 1353 (citing cases). Thus, even assuming that different types of information may be implicated by a claim limitation, the fact remains that the type or source of information, e.g., inventory, promotions, distributors,” slip op. at 45
Patent outcomesUS 10,467,585 unpatentableClaim construction§ 101 eligibilitycites Mayo · Bilski · Berkheimer · Enfish · Electric Power · PhillipsPatents in suitUS 10,467,585 - Marketdial, Inc. v. Applied Predictive Technologies, Inc.Institution deniedPTAB · Mar 3, 2021 · CBM2020-00025 · APJ Justin T Arbes · CBM · Institution
The Board denied institution of CBM review of claims 1–35 under Fintiv because the district court had already held the same claims invalid under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“institution decision.” Prelim. Resp. 6–7 (citing Snap, Paper 8). We agree. There will be no trial as to patent infringement because the district court already concluded that all claims of the ’916 patent are invalid under § 101. Patent Owner indicates that it will appeal that decision once the remainder of the district court case concludes. Id. at 3. The statutory deadline for a final written decision in this proceeding would be one year from institution. Under the particular factual circumstances of this case, we find that this factor strongly weighs in favor of exercising our discretion to deny the Petition.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8
§ 101 eligibilityDiscretionary denialPatents in suitUS 8,571,916 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCAll claims unpatentablePTAB · Oct 30, 2019 · CBM2018-00035 · APJ Frances L Ippolito · CBM · Final written decision
Claims 1, 2, 5, 6, 9, 10, 13, and 14 are unpatentable under § 101; proposed substitute claims 17–20 are unpatentable under § 101, and the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelOther
“F. Level of Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”)” slip op. at 32
- Expert testimonyOther
“For the above reasons, we are persuaded that Petitioner has met its” slip op. at 62
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1. Principles of Law Use of the word “means” in a claim gives rise to a rebuttable” slip op. at 12
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Further, based on the entirety of the record, we determine that proposed substitute claims 17–20 are unpatentable by a preponderance of the evidence based on 35 U.S.C. § 101. Motion to Amend Outcome Claims Substitute Claims: Proposed in the Amendment 17–20 Substitute Claims: Motion to Amend Denied 17–20” slip op. at 101
Patent outcomesUS 8,423,402 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 8,423,402 - Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentablePTAB · Aug 18, 2017 · CBM2016-00039 · APJ Brian J Mcnamara · CBM · Final written decision
Claims 1–22 are unpatentable under § 101 and § 103 over Friesen, Jones, and Kirwin; Patent Owner’s motion to amend with substitute claims 23–44 is denied.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ORDINARY SKILL IN THE ART Petitioner contends that one of ordinary skill in the art includes someone who, through education or practical experience, possesses the equivalent of a bachelor’s degree in computer science, information science, or a related field and has at least two years of work experience developing or implementing user interfaces for electronic trading systems. Pet. 13 (citing Ex. 1002, Declaration of Bernard S. Donefer (“Donefer Decl.”) ¶ 45). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in computer science or equivalent experience, and at least three years of experience in designing and/or developing user interfaces, including experience designing and/or developing graphical user interfaces for electronic trading. PO Resp. 13 (citing Ex. 2027, Declaration of Nazaar Molokhia in Support of Patent Owner Response (“Molokhia Resp. Decl.”) ¶¶ 14–15). Notwithstanding their one year difference in experience level, we find the parties’ assessments of the level of ordinary skill not to be materially different.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“At his level of professional responsibility Mr. Donefer works on system architecture to accommodate trader needs—he acknowledges that he does not code programs and in the college courses he teaches Mr. Donefer does not teach programming. Donefer Tr., 30:10–33:18, 36:19–22. Nevertheless, Mr. Donefer takes courses in programming languages, such as C++, R and Python, to keep up with languages that his students are using. Id. at 54:4–56:5. The college level courses Mr. Donefer teaches in IT in financial markets and financial information systems address order management systems, and Mr. Donefer occasionally invites order management vendors to demonstrate such systems to students. Id. at 35:10– 36:13. Mr. Donefer teaches prospective business analysts about business processes and business problems in order to design solutions, focusing on turning requirements into documentation a coder can use to implement a business process, rather than on coding itself. See id. at 38:10–41:8 There is no requirement imposed by the Federal Rules of Evidence that an expert’s qualifications perfectly match the field of the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The patent claims before us concern a method and an apparatus for providing an interactive graphical representation of a market. Independent method claim 1 recites displaying a graph and a trading dialog box on a display of a workstation. Dependent claims recite the elements of the displayed trading dialog box and user selection options. Independent apparatus claim 9 recites a processor programmed to cause a computer to display a graph and trading dialog box. In the independent and dependent apparatus claims, the programmed processor carries out steps similar to those recited in the method claims. None of the claims in this proceeding recites technical details that require an extensive knowledge of programming or computer design. Mr. Donefer’s background in electronic trading system architectures and supervising the development of graphical user interfaces, along with his many years of experience, are sufficient for him to render opinions as to the subject matter of the claims before us. In addition, the Board can has accord proper weight to the testimony of each party’s expert witness. Therefore, in the context of this covered business method patent review, we are persuaded that we can properly weigh Mr. Donefer’s testimony.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Trading Dialog Box We construed “trading dialog box” to mean “a display on a display terminal through which the user can view values for trading and selected information.” Id. at 13. Patent Owner proposes that we construe this term to mean “an interface that appears as an overlay and enables exchange of input and output between a user and a computer.” PO Resp. 24–29. Petitioner contends that Patent Owner’s construction does present a material dispute, noting that Patent Owner’s testifying expert, Mr. Molokhia states that a popup window, such as that Friesen is an example of an overlay. Pet. Reply 4 (citing Ex. 1024, Transcript of Deposition of Nazaar Molokhia (“Molokhia Tr.”) 54:19–24). Upon review, we agree with Patent Owner that the specification of the ’611 Patent refers to the trading dialog box as an overlay and that the dialog box is used for exchanging information with the computer. PO Resp. 27–28. For purposes of this Decision, we apply Patent Owner’s proposed construction and construe “trading dialog box” to mean “an interface that appears as overlay and enables exchange of input and output between a user and a computer.”” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Workstation Neither party previously sought a construction of “workstation” and in our Decision to Institute, we accorded this term its ordinary meaning. Patent Owner now proposes that we construe “workstation” to mean “a display terminal.” PO Resp. 29–37. Our analysis of the construction of “trading dialog box” in our Decision to Institute we noted that claims 1 and 12 recite that the display is displayed on “the workstation,” a term for which there is no antecedent basis. Dec. to Inst. 13. Method claim 1 recites “displaying a trading dialog box on the display of the workstation.” Patent Owner’s proposed construction effectively amend the claim by substituting “display terminal,” which has an antecedent basis for the term “workstation,” which has no antecedent basis. However, the antecedent in the claim recites “a display terminal of an electronic trading system,” not a display terminal of a workstation. Nevertheless, according to Patent Owner the meaning of the claim would be understood by persons of ordinary skill and Petitioner did not argue that the claim was indefinite under 35 U.S.C. § 112. PO Resp. 31. Patent Owner correctly points out that indefiniteness under 35 U.S.C. § 112 was not presented as an issue in this proceeding and is not an issue we considered. Neither our Decision to Institute nor this Final Decision is based on indefiniteness. In view of Patent Owner’s positon that meaning of the claim would be understood by persons of ordinary skill, that Petitioner has not argued indefiniteness, and that none of our decisions in this covered business method patent review are based on indefiniteness, we need not further construe the term “workstation.”” slip op. at 6
Patent outcomesUS 8,380,611 unpatentableClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Enfish · Electric Power · KSR · GrahamPatents in suitUS 8,380,611 - Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentablePTAB · Aug 18, 2017 · CBM2016-00038 · APJ Brian J Mcnamara · CBM · Final written decision
Claims 1–42 are unpatentable under § 101 as patent-ineligible and under § 103 as obvious over Friesen, Jones, and Kirwin.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We agree with Petitioner that the term “interactive graphical representation of a market” in the preamble is not limiting. Pet. Reply. 4–5. The organization of claims 1 and 9 is similar—claim 1 recites a method for providing an interactive graphical representation of a market and claim 9 recites an apparatus for providing an interactive graphical representation of a market. Thus, the argued term merely sets forth an intended use for the claimed method and apparatus, and it is the elements of the claim that define this term in the preamble. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.”).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“serves as a trading interface. Although we consider the term in the preamble to be non-limiting, for purposes of clarity, we address its construction in this Decision. Having considered the above arguments, we determine that our initial construction was not the broadest reasonable interpretation. Both method claim 1 and apparatus claim 9 recite “providing an interactive graphical representation of a market.” Our initial construction reads into the preamble term “interactive” a feature that concerns allowing a user to place a trade. However the preamble term “interactive” does not require such a limited view of user interactions. An “interactive graphical representation of a market” encompasses a broader spectrum of user interactions with the graph of the market than making trades. The provided graphical representation is a graph of a market. The graph is interactive because it is presented to the user in a form that the user can interact with it. Other features recited in the claim, e.g., allowing a user to select a portion of the graph, define the scope of that interaction. Thus, we construe “an interactive graphical representation of a market” to mean a graph of a market presented to a user in such a form that the user can take actions using the graph.” slip op. at 6
- Skill levelOther
“ORDINARY SKILL IN THE ART Petitioner contends that one of ordinary skill in the art includes someone who, through education or practical experience, possesses the equivalent of a bachelor’s degree in computer science, information science, or a related field and has at least two years of work experience developing or implementing user interfaces for electronic trading systems. Pet. 13 (citing Ex. 1002, Declaration of Bernard S. Donefer (“Donefer Decl.”) ¶ 45). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in computer science or equivalent experience, and at least three years of experience in designing and/or developing user interfaces, including experience designing and/or developing graphical user interfaces for electronic trading. PO Resp. 13 (citing Declaration of Nazaar Molokhia (“Molokhia Decl.”) ¶¶ 14–15). Notwithstanding their one year difference in experience level, we find the parties’ assessments of the level of ordinary skill not to be materially different.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony because he lacks requisite education and experience to satisfy either party’s definition of a person of ordinary skill. PO Resp. 14–22. Patent Owner acknowledges that Mr. Donefer “may well be experienced with the business considerations of traders and financial institution by virtue of his degrees in two fields of business and his work experience in the business departments of various financial institutions.” PO Resp. 20. Patent Owner argues, however, that Mr. Donefer’s business experience is not a substitute for the relevant technical experience needed to testify as to claim construction, the scope of the ’190 Patent claims, the state of the art, anticipation or obviousness. Id. at 21–22. In addition to the arguing that Mr. Donefer does not have the technical background that his testimony states is a baseline for one of ordinary skill, Patent Owner notes that Mr. Donefer has always held non-technical positions as a project manager and testified that he never used trading software allowing a trader to place a trade directly from a graph and that he does not know when products with such features were introduced to the market. Id. at 18–19. Petitioner contends that Mr. Donefer is more experienced than a typical end user of an electronic trading system and has been developing such systems for many years. Pet. Reply 3. Petitioner emphasizes that, in addition to his bachelor’s in economics and MBA in finance, Mr. Donefer also minored in information systems. Id. at 2. Petitioner further notes that, as a consultant and project manager, Mr. Donefer has extensive experience developing, designing, and implementing graphical user interfaces (GUIs) and that Mr. Donefer was recognized by Fidelity Investments for his work in developing an electronic trading system. Id. at 3. Although, that system did not represent market information in a graph, information it provided to other terminals, such as those used by Bloomberg, may have been presented as graphical information. Ex. 2026, Transcript of Deposition of Bernard S. Donefer (“Donefer Tr.”), 72:16–73:11. At his level of professional responsibility, Mr. Donefer works on system architecture to accommodate trader needs—he acknowledges that he does not code programs and does not teach programming in the college courses he teaches. Ex. 2026, Donefer Tr., 30:10–33:18, 36:19–22. Nevertheless, Mr. Donefer takes courses in programming languages, such as C++, R and Python, to keep up with languages that his students are using. Id. at 54:4–56:5. The college-level courses Mr. Donefer teaches—in IT in financial markets and financial information systems—address order management systems, and Mr. Donefer occasionally invites order management vendors to demonstrate such systems to students. Id. at 35:10– 36:13. Mr. Donefer teaches prospective business analysts about business processes and business problems in order to design solutions, focusing on turning requirements into documentation a coder can use to implement a business process, rather than on coding itself. See id. at 38:10–41:8. There is no requirement imposed by the Federal Rules of Evidence” slip op. at 9
Patent outcomesUS 7,113,190 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power · KSR · GrahamPatents in suitUS 7,113,190 - Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibilityPatents in suitUS 6,996,538 - Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentablePTAB · Jun 28, 2016 · CBM2015-00037 · APJ Jacqueline Wright Bonilla · CBM · Final written decision
Claims 52, 62, 67, 70–76, 81, 83–85, and 96 are unpatentable under § 101 because they claim the abstract idea of inventory management using generic computer components.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“degrees in inventory management or similar fields such as supply chain control or logistics” per se, and has “not studied, for a profession, the history of inventory management.” Id. at 34–35 (citing Ex. 2005, 16:14–21, 41:22– 42:3). According to Patent Owner, “Dr. Siegel admits he has no expertise in information management history and only attempted to educate himself in order to prepare his declaration.” Id. at 35. It is clear from Dr. Siegel’s testimony, however, that he has extensive experience in “the use of information technology with business strategy and operations,” has handled professionally “issues related to the integration of information” using computer and software systems, and holds advanced degrees in engineering and computer science. Ex. 1006 ¶¶ 3–11. We are satisfied that Dr. Siegel possesses sufficient qualifications to testify on matters that are relevant to our analysis here, including matters that do not concern the alleged “ancient” history of inventory management. PO Resp. 35. For example, Dr. Siegel testifies that relevant aspects of automated inventory management and VMI were well known before the priority date of the ’538 patent. Ex. 1006 ¶¶ 25–28 (citing Ex. 1018); Ex. 1027 ¶¶ 5–22 (citing Exs. 1020-1022, 1024, 1025). Dr. Siegel also testifies that the ’538 patent specification describes hardware and software that “require only generic computer implementation—not specialized hardware or software.” Ex. 1006 ¶¶ 43–54, 78–79, 89. In addition, Dr. Siegel discusses general concepts of inventory management using a computer and whether certain limitations of the challenged claims can be performed mentally, using pen and paper, or manually, without use of a computer. Id. at ¶¶ 40, 58–66, 80, 90.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Both Petitioner and Patent Owner present constructions for several claim terms. Pet. 19–24; PO Resp. 12–23. For example, Patent Owner asserts that Petitioner misconstrues the term “customer” by defining it as “a buyer (person or organization) that uses the claimed inventory management.” PO Resp. 15; Pet. 19–20. Consistent with the specification of the ’538 patent, we adopt Patent Owner’s construction of “customer” as referring to a “buyer of products via the present invention” (Ex. 1001, 5:52– 56), i.e., a buyer of products using the inventory management system recited in the respective claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner also presents constructions in relation to other claim terms such as “inventory restocking parameters provided by said customer,” “tracks” or “tracking,” “access” to information according to “assigned permissions or roles,” and “detecting.” PO Resp. 18–23. For many of the reasons stated in Petitioner’s reply to those constructions, we decline Patent Owner’s invitation to import inappropriately “computerized” aspects into those general terms, notwithstanding the fact that the challenged claims elsewhere recite computer components, such as a “computer,” “databases,” and “software.” Reply 23–25; see also Ex. 1001, 3:3–10 (stating that Customer Inventory System 130 allows manual inventory tracking). For purposes of this Decision otherwise, however, we need not expressly construe claim terms further. 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 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Based on the complete record before us, we determine that claim 67 is directed to the abstract idea of managing inventory in view of information. We are persuaded that managing inventory in view of collected and analyzed customer inventory, cost information, restocking information provided by a customer, as recited in claim 67, describes the basic concept of inventory management, i.e., a “fundamental economic practice.” Alice, 134 S. Ct. at 2356. The method of claim 67 is sufficiently similar in this regard to the method of hedging against financial risk at issue in Bilski, 130 S.Ct. 3218 (2010), and the idea of intermediated settlement at issue in Alice, 134 S. Ct. at 2356–57 (discussing Bilski). See also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” (citation omitted)).” slip op. at 22
Patent outcomesUS 6,996,538 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 6,996,538
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.