• Apple Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 30, 2023 · IPR2022-00037 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 8. In proposing a different level of ordinary skill in the art, Patent Owner does not explain why its proposed skill level is more appropriate.12 PO Resp. 16. In addition, the parties’ proposed definitions are materially similar. 12 Petitioner does not address the level of ordinary skill in the art in its Reply. definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 10

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

    “We determine that we need not expressly construe “movement sensor” to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs, 200 F.3d at 803 (Fed. Cir. 1999)). To the extent the parties raise claim construction issues in addressing the asserted grounds, we address such issues below.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Also, the Petition merely states that “Ono supports instances where the user stops the step-counting mode operation using switch S2 after the processor detects that” the target distance or the target number of steps has been reached and notifies the user by generating an alarm sound. Pet. 53 (emphasis added). In this case, supporting the notion of the user stopping the step-counting mode operation in response to the alarm is not the same as teaching or suggesting the notion to one of ordinary skill in the art. The possibility that a user could stop the step-counting operation in response the alarm is insufficient to render claims 1 and 20 obvious to one of ordinary skill in the art. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Petitioner’s reliance on the Hewlett-Packard and Unwired Planet cases (Pet. 56) is unavailing, as the facts in those cases are distinguishable from the facts of the present proceeding. Namely, both of those cases involved prior art references that disclosed operations that satisfied a claimed feature some, but not all, of the time. Hewlett-Packard, 340 F.3d at 1326; Unwired Planet, 841 F.3d at 1002. Here, Ono does not disclose the user stopping the step-counting mode operation in response to the alarm even some of the time. In view of the above, we determine, based on the full record, that the combination of Ono and Hutchings does not disclose limitations [1f] or [20f]. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claims 1 and 20 are unpatentable over the combination of Ono and Hutchings.” slip op. at 28

  • BurdenNot shown unpatentable

    “We have determined incorporated Grounds 1, 2, 3A, 3B, and 4, as well as Ground 5A, deficient for the reasons discussed above. Furthermore, to the extent Petitioner contends that any of these combinations somehow adds something to supplement or strengthen the patentability analysis of the incorporated grounds, we note that neither the Petition nor Dr. Kenny provides sufficient particularity to support such a position. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Accordingly, we are not persuaded on the complete record before us that Petitioner has demonstrated, by a preponderance of the evidence, that: (1) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, Kaufman, and Hickman (Ground 5B); (2) claims 1–5, 8–11, 20, 25, 30, 31, 36, 39–42, 45–47, 49, and 61–65 are unpatentable over the combination of Ono, Hutchings, Amano, and Conlan (Ground 6A); (3) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, and Hickman (Ground 6B); (4) claims 1, 3–5, 8–11, 20, 25, 30, 36, 39–42, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Amano, and Kaufman (Ground 7); (5) claims 1–5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45–47, 49, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Conlan, and Kaufman (Ground 8A); and (6) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Conlan, Kaufman, and Hickman (Ground 8B).” slip op. at 36

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,059,576
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Aug 17, 2023 · IPR2022-00740 · APJ Michael L Woods · IPR · Final written decision

  Petitioner failed to prove claims 1–13, 15, and 17–20 unpatentable under the asserted obviousness grounds, chiefly because Lambert did not teach system-selected virtual bus stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the parties’ arguments and evidence of record, we adopt Petitioner’s asserted level of ordinary skill. We find that Petitioner’s level of skill is consistent with the problems identified and solutions provided in the ’411 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to the backend artificial intelligence components in a ride-sharing system, as Patent Owner contends. See Pet. Reply 6–7; see also PO Resp. 20–23. We disagree with Patent Owner’s assertions that the ’411 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 20–23. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent to explain why the art of the ’411 patent is limited to artificial intelligence components in determining the relevant skill in the art. See id.; see also Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’411 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art for a patent that never even uses the term. We agree with Petitioner that a skilled artisan with an understanding of computer programming and navigation systems, as well as two to four years of experience in location-based systems, would understand the “computer-implemented transportation system” of the ’411 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews’s testimony that he has experience in “locationbased systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. This experience demonstrates that Mr. Andrews had at least two years of experience in “optimization modeling.” The parties agree, however, that Mr. Andrews does not have experience working with ride-sharing systems. Nevertheless, Patent Owner’s definition includes artisans who lack that particular experience. Specifically, Patent Owner’s definition provides that: A person with an advanced degree (a master’s or Ph.D.) in computer science, operations research, industrial engineering, applied mathematics or a related field and a focus on data science, artificial intelligence or operations research would also have been an ordinary artisan in the field of the ’411 patent even if that person lacked two years of specific experience with ride-sharing systems. PO Resp. 20 (emphases added). In other words, even if the first prong of Patent Owner’s definition requires the expert’s experience to be “in the context of ride-sharing systems,” Mr. Andrews would nevertheless satisfy the qualifications of a POSITA under the second prong, which does not require experience with “ride-sharing systems.” See id. This Decision does not turn on the differences between the parties’ characterization of a skilled artisan.” slip op. at 15

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

    “The parties are in agreement. Despite the parties’ briefing on this term, the parties do not dispute the construction of “virtual bus stops.” Absent any controversy, we adopt the parties agreed-upon construction of the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Specifically, we adopt the parties’ construction that “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” Compare PO Resp. 23, with Pet. Reply 4. We further adopt the parties’ construction that the system need not use artificial intelligence—whatever that may mean—to select the virtual bus stops. Compare PO Sur-reply 5, with Pet. Reply 4; see also supra § III.A (“[W]e need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never even uses the term.”).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “performs actions (see, e.g., Ex. 1004, 2:49–52; 2:63–67, 3:19–20, 3:34–35), we decline to infer from Lambert’s single sentence (id. at 4:17–23) that Lambert’s server is also programmed to perform the step of “dynamically selecting pickup and dropoff locations” (i.e., virtual bus stops). In other words, if Lambert’s server was programmed to select pickup and dropoff locations, as Petitioner would have us believe, we find that Lambert’s disclosure would have stated so. It does not.” slip op. at 39

  Patent outcomesUS 10,197,411 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,197,411
• Apple Inc. v. Rfcyber Corp.No claims unpatentable
  PTAB · Jul 18, 2023 · IPR2022-00412 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable because the Dua, GlobalPlatform, and Philips combination did not establish the claimed emulator personalization.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record before us, we agree with Petitioner that a person of ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa. Regarding Petitioner’s assertion that Mr. Gomez’s testimony should be given little to no weight, Patent Owner argues that Mr. Gomez is well qualified under both proposed levels of ordinary skill. Sur-reply 4–5. During the hearing, Petitioner modified its position somewhat, arguing that Mr. Gomez’s “testimony should be accorded little to no weight, particularly where he weighs in on issues specific to financial transactions and smart cards.” Tr. 8:15–18 (emphasis added). Petitioner stated further that “[w]e’re simply asking the Board to take into the account each individual expert’s background knowledge on a per issue basis.” Id. at 59:26–60:2. Based on the full record, we disagree that all of Mr. Gomez’s testimony” slip op. at 12

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

    “Petitioner contends that all claim terms, except “emulator” and “midlet,” should have their plain and ordinary meaning. Pet. 12. As to the claim terms “emulator” and “midlet,” Petitioner contends that the ’787 patent expressly defines those terms “so those definitions are controlling.” Id. (citing Ex. 1001, 4:47–50, 5:20–22). Patent Owner argues that “claim construction is not required to resolve any issues” in this proceeding. PO Resp. 9. We determine that we need not expressly construe any claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

  Patent outcomesUS 9,189,787 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,189,787
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00286 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted combinations failed to teach or render obvious system-selected virtual bus stops and a pair of associated stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Discussion We have considered the parties’ arguments and evidence of record, and we adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’824 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to backend artificial intelligence components in a ride-sharing system as Patent Owner contends. See Pet. Reply 10–11; see also PO Resp. 31–32. We disagree with Patent Owner’s assertions that the ’824 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 31–32. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent in determining the relevant skill in the art to explain why the art of the ’824 patent is limited to artificial intelligence components. See id.; Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’824 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims, without support, that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never uses the term. We agree with Petitioner that an artisan with an understanding of computer programming and navigation systems as well as two to four years of experience in location-based systems would understand the “computer-implemented transportation system” of the ’824 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Having addressed the relevant skill in the art, we address Patent Owner’s contention that Mr. Andrews “is not qualified to offer opinions concerning the artificial intelligence components of a ride-sharing system that are at issue in the ’824 patent.” PO Resp. 37. As discussed previously, we disagree with Patent Owner’s proposed qualifications for a person of ordinary skill in the art, and have adopted Petitioner’s position. Patent Owner does not offer an opinion as to whether Mr. Andrews would be qualified as a person of ordinary skill in the art under Petitioner’s definition. The record reflects that Mr. Andrews possessed an advanced degree in electronic engineering, had a working knowledge of computer programming and navigation systems, and had more than two years of experience with location-based systems, user interfaces, and databases at the time of the ’824 patent. See, e.g., Ex. 1003 ¶¶ 4–19; Ex. 1009. Therefore, we find that Mr. Andrews is qualified to offer opinions as a person of ordinary skill in the art for the ’824 patent under the relevant definition. Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews testimony that he has experience in “location-based systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. Furthermore, given Mr. Andrews’s advanced degree, Patent Owner’s definition would allow Mr. Andrews to have less than two years of experience in the pertinent fields. PO Resp. 30; Ex. 1003 ¶ 6.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Under these circumstances, where the parties now agree that the ordinary meaning should apply to “virtual bus stops” and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning in this proceeding. We therefore apply the plain and ordinary meaning proposed by the parties, where “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” As to the construction of dependent claim 8, we agree with Patent Owner that we need not formally construe the term to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). As to Petitioner’s remaining arguments, we do not read artificial intelligence or other limitations into the claims as Petitioner warns against, and Petitioner does not argue for any specific construction in relation to these arguments that would require us to resolve a specific claim construction dispute. See Pet. Reply 4–10.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Ex. 1004, 4:17–23. The Petition does not cite to any declarant support, additional prior art, other embodiments in Lambert, or any obviousness analysis when addressing “virtual bus stops.” See Pet. 25. Although for later aspects of claim 1 the Petition relies on Poykko and an obviousness analysis when arguing that it would have been obvious to configure Lambert’s server to operate in a certain way (e.g., to access memory that includes a database of locations as taught by Poykko), the Petition does not rely on such an analysis when first addressing “virtual bus stops” alone. See id. The combination of Lambert’s statement above with Poykko and other aspects of Lambert, potentially with allegedly obvious modifications of Lambert, may serve as the basis of Petitioner’s arguments for these later limitations involving “virtual bus stops,” but these later allegations do not reach back and redefine Petitioner’s more limited argument with respect to “virtual bus stops” in isolation.8 To the extent Petitioner argues in its Reply that a combination of Lambert and Poykko or other obviousness arguments 8 In our Institution Decision, we noted that Patent Owner, at that stage of the proceeding, failed to properly address Petitioner’s proposed combination of Lambert and Poykko for various “virtual bus stop” limitations. Inst. Dec. 22–23. That said, we do not view the Petition’s arguments and evidence as to “virtual bus stops” limitation in isolation, prior to addressing the “memory” limitation and adding Poykko and obviousness to the analysis, as relying on a combination of Lambert and Poykko or obviousness. See Pet. 25. satisfy the “virtual bus stops” limitation, we agree with Patent Owner that this introduces an improper new theory in the Reply. See PO Sur-reply 20– 22.” slip op. at 29

  Patent outcomesUS 9,816,824 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,816,824
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

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

    “3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13

  Patent outcomesUS 10,815,764 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,815,764
• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCNo claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00239 · APJ Patrick R Scanlon · IPR · Final written decision

  The Board held that claims 1, 2, 5, 7–11, 13, 14, and 18–23 were not shown unpatentable because the combinations did not establish the claimed carrier-length limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner submits that a person having ordinary skill in the art “would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants,” and “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 21–22 (citing Ex. 1002 ¶¶ 31–34). We adopted Petitioner’s proposed level of ordinary skill in the art in the Decision on Institution, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9–10. In its Response, Patent Owner notes that it and its expert, Dr. Vesely, apply Petitioner’s level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 20. Based on our review of the record before us, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Beyond addressing this new argument, we determine that we need not expressly construe any other claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Instead, we agree with Patent Owner that Leonhardt’s cylindrical end portions change in shape and length, at least to some degree, when stent 26 is expanded or collapsed. See PO Resp. 26–28. We also credit Dr. Vesely’s uncontroverted and well-reasoned testimony on this point. See Ex. 2004 ¶¶ 83–85. Furthermore, we agree that the Petition and Dr. Drasler rely 8 Patent Owner actually cites to Exhibit 2013, but this is an apparent typographical error because the quoted language appears in lines 20–22 on page 195 of Exhibit 2027. We note that the quoted testimony reiterates Dr. Drasler’s other testimony that “[t]he length of the Leonhardt device would be the length of the connecting bar plus the length of the stent components at each end of the connecting bar.” Ex. 2027, 195:11–14. solely on connecting bar 29 holding the cylindrical end portions a predetermined distance apart to support the assertion that the stent’s length is substantially equal in each configuration. See Pet. 46–47; Ex. 1002 ¶¶ 134– 137. As such, Petitioner has failed to explain the effect that the changes in Leonhardt’s cylindrical end portions have on the overall length of stent 26. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that Leonhardt discloses “a length of the carrier element in the moveable configuration being substantially equal to or less than a length of the carrier element in the first expanded configuration.”” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “In view of the above, we are not persuaded on the complete record before us that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 1 is unpatentable over the combination of Leonhardt and Gabbay. Because we are not persuaded Petitioner has demonstrated sufficiently that the combination of Leonhardt and Gabbay renders claim 1 obvious, we need not reach Patent Owner’s assertions regarding objective indicia of nonobviousness.” slip op. at 24

  Patent outcomesUS 8,377,118 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,377,118
• Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11

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

    “We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28

  Patent outcomesUS 7,353,555 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,353,555
• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394
• Apple Inc. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-00812 · APJ Jason W Melvin · IPR · Final written decision

  The Board found claims 1–3, 16, 21–24, 37, and 38 not shown unpatentable over Reber and Franklin because the combination did not establish the claimed access restrictions and information handling.

  RulingsFinal written decision

  • Skill levelOther

    “invention for the ’539 patent “would have a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and approximately two years of work experience in the computer science field including, for example, operating systems, database management, encryption, security algorithms, and secure transaction systems, though additional education can substitute for less work experience and vice versa.” Pet. 10 (citing Ex. 1102 ¶¶ 61–62). Patent Owner submits that the level of skill would involve “a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields.” PO Resp. 17 (citing Ex. 2018 ¶¶ 16– 20). Patent Owner agrees that its “description of the level of ordinary skill in the art is essentially the same as that of the Petitioner, except that Petitioner’s description requires two years of work or research experience (as compared to three years).” Id. at 17–18. We do not understand any of the parties’ disputes to turn on a precise definition of the level of skill in the art and apply the level of skill as defined by the parties.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “To support our analysis of the disputed issues below, we construe “account identifying information” and “third party.” We conclude that there is no need to construe any other term to resolve the issues in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

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

    “We agree the claim language supports that the separately recited “third party” must be different from the claimed “provider” and “entity.” As to the secure registry itself, we agree further with Patent Owner that the claim language mandates that the “third party” cannot be the secure registry system. The claims recite that the secure-registry processor is configured such that “account identifying information is provided to a third party.” By using “provided,” the claim instructs that the secure registry must send account-identifying information somewhere, not simply perform an additional operation on the information.5 Patent Owner further focuses on the party at issue. According to Patent Owner, the “third party” should be “a party other than one of these other parties already recited in the claims.” PO Resp. 24. Although the claims recite the “secure registry” as a system, as opposed to the “provider” and “entity,” which it recites as “parties,” we agree with Patent Owner that for a third party to be distinct from the secure registry, it should be distinct from whomever operates the secure registry. See id. at 24–25, 47–48 n.8; infra at 21. Accordingly, we construe “third party” as “a party that is not the secure registry, the entity, or the provider.”” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “The Petition states that it would have been obvious to perform merchant validation at the processor and database, but gives no reason for making that change. See Pet. 37. Instead, the Petition states a skilled artisan “would have applied the known techniques of Franklin to improve the security of the Reber system” and that doing so would have reduced fraud by merchants. Id. (citing Ex. 1102 ¶ 114). As explained, “the known techniques of Franklin” were to perform merchant validation at the merchant’s bank, not at the secure registry. Ex. 1132, 11:43–46 (“The acquiring bank validates the authorization request by verifying that the merchant is a valid merchant and that the credit card number represents a valid number.”). Thus, a reason to use Franklin’s techniques does not further justify modifying Franklin’s teaching to perform validation at the secure registry as claimed. Petitioner attempts to justify the combination in the Reply, arguing that, in Franklin, “it would have been obvious simply to perform the merchant validation procedure at the issuing bank, depending on the needs of a particular implementation (for example, where the issuing bank and the acquiring bank are the same).” Pet. Reply 12–13. Petitioner reasons that “organizing the system in this way would . . . increase efficiency by reducing the overall number of computations (e.g., conducting only one validation/compliance operation and not two separate operations at two separate places).” Id. at 13. Those statements serve to highlight the deficiency of the Petition. Petitioner’s arguments in the Reply do not respond to Patent Owner, other than attempting to fill in a gap in the we conclude Petitioner’s showing regarding access restrictions at the secure registry is inadequate regardless of the construction of “access restrictions for the provider to secure data for the entity.” Petition. We agree with Patent Owner that Petitioner’s Reply arguments go too far beyond those of the Petition. See PO Sur-reply 15–16; 37 C.F.R. § 42.23(b) (2017); Trial Practice Guide Update 14–15 (Aug. 2018), https://go.usa.gov/xU7GP (“[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered. . . . Examples of new issues are new theories or arguments necessary to make out petitioner’s case-in-chief . . . , such as a newly raised rationale to combine . . . that was not expressed in the petition.”); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in excluding a reply as improper under 37 C.F.R. § 42.23(b) because Petitioner relied on a new rationale to combine). Petitioner failed to make an adequate showing in the Petition regarding a plain requirement of the claims. The Petition identifies no prior-art disclosure that taught or suggested to skilled artisans to implement access restrictions at the secure registry, and provides insufficient reasons why a skilled artisan would have had reason to do so. Thus, Petitioner fails to show that challenged claims 1, 22, or 37” slip op. at 13

  Patent outcomesUS 8,856,539 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,856,539
• Apple Inc. / Visa Inc. et al. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Oct 7, 2019 · IPR2018-00810 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 were not shown unpatentable under § 103 over Maritzen, Jakobsson, and Niwa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 8

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

    “We agree with Petitioner that the Specification identifies fingerprint, voice print, signature, iris or facial scan, DNA analysis, and possibly a picture of a person as examples of biometric information. Furthermore, we credit Dr. Shoup’s testimony that biometric information falls into the category of “things a person is.” See Ex. 1002 ¶ 33. Therefore, in the context of the claims and the Specification of the ’826 patent, we construe the term “biometric information” to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.”” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree Maritzen does not disclose expressly that PTD 100 is a handheld device. The only disclosure from Maritzen cited in the Petition, ¶ 63, describes the architecture for PTD 100 but makes no mention that PTD 100 is a handheld device. Ex. 1004 ¶ 63. The Petition does not direct us to any other disclosure in Maritzen that explicitly describes any of the disclosed PTD embodiments as being handheld, and we are not aware of any such disclosure. Furthermore, the testimony of Dr. Shoup cited by Petitioner merely repeats the same assertion that Maritzen’s PTD 100 is the first handheld device without providing any support or explanation for this assertion, other than citing the same ¶ 63 of Maritzen. Ex. 1002 ¶ 49.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. Maritzen discloses that clearing house 130 verifies that the biometric key (transmitted by PTD 100) is valid by comparing the biometric key to a known biometric key maintained within the clearing house. Ex. 1004 ¶ 48; see also id. at 81 (“Clearing house 130 also validates biometric key 350 against pre-established biometric key 950.”). Maritzen also discloses that “[p]rivacy card 110 only transmits the biometric key. The biometric information identifying the user is not transmitted at any time.” Id. ¶ 44. This disclosure indicates that the biometric key does not contain biometric information. In other words, the biometric key is something different than biometric information, which we have construed to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.” See supra § III.C. Thus, we find that one of ordinary skill in the art would not consider replacing the known biometric key in clearing house 103 with second biometric information as taught by Jakobsson because comparing the biometric key to biometric information, rather than the known biometric key, would not be effective to verify the biometric key. In other words, because the biometric key does not contain biometric information, it could not be compared meaningfully to the second biometric information.” slip op. at 23

  Patent outcomesUS 9,100,826 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,100,826

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.