- Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentablePTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision
Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptMixed
“As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39
Patent outcomesUS 10,891,614 mixedClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · NautilusPatents in suitUS 10,891,614 - Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentablePTAB · Oct 26, 2022 · PGR2021-00077 · APJ Meredith C Petravick · PGR · Final written decision
Claim 1 is unpatentable under § 101; claims 2–27 were not shown unpatentable because the other challenges were deficient.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least four years of work experience in identity, transaction, and telecommunication solutions.” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“As can be seen from claim 1 above, all of the claimed method steps occur “at the mobile device” and the final step is to enable completion of a cashless transaction. Claim 1 does not recite completing the purchase. The ’833 patent describes that any commercial transaction is completed at the automatic retail machine, not at the mobile device. Ex. 1001, 11:5–9; see also id. at 21:4–11, 22:18–20, 23:53–61, 30:25–27. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements italicized above recite the concept of obtaining authorization for a purchase and enabling completion of a cashless transaction, prior to user selection of any items or services. See Pet. 22–23 (arguing that the claimed method “is effectively no different than a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and when the customer decides on the item, completing the purchase”); Pet. Reply 5–6 (arguing that the claim recites “obtaining payment authorization and performing a financial transaction, the same as a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and, when the customer decides on the item, allowing the purchase”). In particular, claim 1 recites steps for obtaining authorization prior to user selection of any items or services — steps of identifying the automatic retail machine, obtaining a request from the electronic payment device, sending the request to a server, and obtaining from the server an authorization grant. Claim 1 also recites steps for enabling the completion of a purchase (i.e., cashless transaction) — detecting a trigger condition and sending the authorization grant to the electronic payment device. Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 18
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are not persuaded. Patent Owner’s arguments rest on the alleged novelty of the abstract idea itself, not the “specific limitation beyond the judicial exception,” i.e., the additional elements. “[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Patent Owner and Dr. Shamos do not identify, and we cannot find, anything in the claim suggesting that the mobile device, server, or automated retail device (i.e., the additional elements) are more than generic components. Indeed, the ’833 patent’s specification demonstrates that these elements were well-understood, routine, and conventional to the industry. Ex. 1001, 2:23–29, 37–42, 3:25–38 (explaining that Offer “teaches permitting the cashless utilization of a vending machines via a communications service, such as a cellular telephone;” Khan teaches an application on a user’s “personal trusted device” used to effectuate cashless purchases; and Carlson teaches “a system and a method for using a portable consumer device such as a mobile phone for payments and the like,” the method including prompting a user to select, from his mobile device, a product for purchase at a vending machine, after/if the user is authorized to make the purchase, and sending an authorization response to the vending machine from a “remote payment server”).” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At the institution stage, we determined that no claim term required explicit construction. Inst. Dec. 35–37. Petitioner does not challenge our determination or otherwise advance its claim constructions in its Reply. See generally Pet. Reply. Patent Owner does not advance any explicit claim construction. PO Resp. 7–13. Regarding the identifying limitation, Patent Owner indicates that it is “undisputed between the parties that the claims require automatically determining the identity of the specific automatic retail machine based on an electronic transmission received from an electronic payment device of that automatic retail machine.” Id. at 7–8 (emphasis in original, citing Ex. 2018, 3; Ex. 2016 ¶ 68). Patent Owner submits that Petitioner’s constructions for each of the obtaining, authorization, and payment limitations should be rejected “for lacking accordance with the plain meaning of the claim in view of the specification” or “ignor[ing] the plain meaning of the term.” Id. at 9, 12, 13. As to the detecting limitation, Patent Owner argues that certain prior art asserted in the grounds in the Petition fails to teach the term as construed. Id. at 9. We determine that we need not expressly construe these claim terms” slip op. at 33
Patent outcomesUS 10,719,833 mixedClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · Graham · NautilusPatents in suitUS 10,719,833 - Cloudflare, Inc. / Splunk Inc. v. Sable Networks, Inc.Some claims unpatentablePTAB · Oct 18, 2022 · IPR2022-00228 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 3, 9–13, 19–24, 29–33, and 39–44 are unpatentable under §103; claims 17, 18, 37, and 38 are not shown unpatentable over Yung alone.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that the level of ordinary skill in the art corresponds to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject” and “3–5 years of academic or industry experience in computer networking or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶ 27). In the Institution Decision, we adopted this articulation of the level of ordinary skill. Inst. Dec. 15. At trial, neither party disputed our preliminary finding. See PO Resp.; Pet. Reply. We remain persuaded that this articulation of the level of skill in the art is supported by the ’593 patent, the asserted prior art, and Dr. Jeffay’s testimony. See Inst. Dec. 15 (citing Ex. 1003 ¶ 27). Accordingly, we determine that the level of ordinary skill in the art corresponds to an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 3–5 years of academic or industry experience in computer networking or comparable industry experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“1. Means-plus-function limitations Petitioner contends the challenged claims include means-plus-function limitations that should be interpreted under 35 U.S.C. § 112 ¶ 6, and for each, Petitioner identifies a construction for use in this proceeding. Pet. 11– 14.12 Petitioner submits that no other terms require construction for purposes of this proceeding. Id. at 12. In the Institution Decision, we agreed with Petitioner that the identified limitations are means-plus-function limitations. Inst. Dec. 16 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”)). We also stated that we were persuaded that Petitioner had correctly identified the recited functions and the components in the Specification that perform those functions. Id. at 16– 17. As a result, we preliminarily adopted the following constructions: Limitation” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Instead, Patent Owner points to the Specification, but this also fails to support Patent Owner’s contention. Although claims are read in view of the Specification (Phillips, 415 F.3d at 1315), they are not limited to the embodiments disclosed in it (id. at 1323). Patent Owner identifies (and we perceive) no passage in the Specification that could be read as redefining this claim phrase or disavowing part of its scope. See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012). In fact, the passages cited by Patent Owner are directed to the handling of a single flow, and none expressly indicates that an identical method must be used for each flow processed. See Ex. 1001, 6:25–31, 7:51–52, 8:12–17. Thus, we determine that the Specification does not justify importing the limitation proposed by Patent Owner into the claims. Accordingly, having reviewed the intrinsic record, we disagree with Patent Owner’s contention that claims 9 and 29 require computing a badness factor for each flow or all flows; rather, this claim limitation may be satisfied by computing a badness factor for a single flow.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Other constructions The parties do not propose constructions for any other terms or phrases. See Pet. 11–14; PO Resp. Based on the record before us, we do not find it necessary to provide express claim constructions for any other terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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))).” slip op. at 12
Patent outcomesUS 8,243,593 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,243,593 - Cloudflare, Inc. / Splunk Inc. v. Sable Networks, Inc.Some claims unpatentablePTAB · Oct 18, 2022 · IPR2021-00909 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 3, 9–13, 19–24, 29–33, and 39–44 are unpatentable under § 103; claims 17, 18, 37, and 38 were not shown unpatentable over Yung.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that the level of ordinary skill in the art corresponds to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject” and “3–5 years of academic or industry experience in computer networking or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶ 27). In the Institution Decision, we adopted this articulation of the level of ordinary skill. Inst. Dec. 15. At trial, neither party disputed our preliminary finding. See PO Resp.; Pet. Reply. We remain persuaded that this articulation of the level of skill in the art is supported by the ’593 patent, the asserted prior art, and Dr. Jeffay’s testimony. See Inst. Dec. 15 (citing Ex. 1003 ¶ 27). Accordingly, we determine that the level of ordinary skill in the art corresponds to an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 3–5 years of academic or industry experience in computer networking or comparable industry experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-plus-function limitations Petitioner contends the challenged claims include means-plus-function limitations that should be interpreted under 35 U.S.C. § 112 ¶ 6, and for each, Petitioner identifies a construction for use in this proceeding. Pet. 11– 14.12 Petitioner submits that no other terms require construction for purposes of this proceeding. Id. at 12. In the Institution Decision, we agreed with Petitioner that the identified limitations are means-plus-function limitations. Inst. Dec. 16 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”)). We also stated that we were persuaded that Petitioner had correctly identified the recited functions and the components in the Specification that perform those functions. Id. at 16– 17. As a result, we preliminarily adopted the following constructions: Limitation” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“In particular, claim 9 recites a method for processing a flow that includes computing a badness factor for the flow. Ex. 1001, 11:63–8. Patent Owner identifies (and we perceive) no limitation that requires a badness factor to be computed for each flow. Inst. Dec. 44 (addressing substantially similar argument presented in preliminary response); see also Ex. 1001, 13:32–44 (claim 29). During trial, Patent Owner neither responds to this analysis nor points to a claim limitation that allegedly includes this requirement. Instead, Patent Owner points to the Specification, but this also fails to support Patent Owner’s contention. Although claims are read in view of the Specification (Phillips, 415 F.3d at 1315), they are not limited to the embodiments disclosed in it (id. at 1323). Patent Owner identifies (and we perceive) no passage in the Specification that could be read as redefining this claim phrase or disavowing part of its scope. See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012). In fact, the passages cited by Patent Owner are directed to the handling of a single flow, and none expressly indicates that an identical method must be used for each flow processed. See Ex. 1001, 6:25–31, 7:51–52, 8:12–17. Thus, we determine that the Specification does not justify importing the limitation proposed by Patent Owner into the claims. Accordingly, having reviewed the intrinsic record, we disagree with Patent Owner’s contention that claims 9 and 29 require computing a badness factor for each flow or all flows; rather, this claim limitation may be satisfied by computing a badness factor for a single flow.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having considered the parties’ arguments and evidence, we are persuaded that Copeland discloses this limitation. Copeland analyzes a flow’s statistics (including start time, end time, number of bytes, and number of packets) “to determine if the flow appears to be legitimate traffic or possible suspicious activity” and computes a concern index for the flow if it appears suspicious. E.g., Ex. 1007, 3:31–35, 7:38–67, 16:36–17:5. We find that Copeland’s concern index qualifies as a “badness factor for the flow . . . [that] provides an indication of whether the flow is exhibiting undesirable behavior,” as required by claim 9. E.g., Ex. 1007, 3:31–40, 4:30–33, Fig. 1 (identifying “‘bad’ flow(s)”). As Dr. Jeffay explains, an ordinary artisan would have understood that suspicious activity (such as a probe or network attack) is undesirable behavior. Ex. 1003 ¶¶ 211–212. We also find that Copeland teaches computing a concern index “based at least partially upon the set of behavioral statistics” because, for example, it uses the number of packets to compute the concern index. Ex. 1007, 7:64–67, Fig. 6 (setting concern index to number of packets); see also Ex. 1003 ¶ 213.” slip op. at 22
Patent outcomesUS 8,243,593 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,243,593 - Koninklijke Philips N.V. / Philips North America LLC v. Fitbit, IncSome claims unpatentablePTAB · Aug 15, 2022 · IPR2021-00505 · APJ Stacey G White · IPR · Final written decision
Claims 1, 2, 9–11, 16, 25, and 28 are unpatentable under § 102 as anticipated; claims 3–8, 12–15, 26, and 29 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. Dec. 7. Neither party provides substantive argument as to why its proposed level of skill is correct. Pet. 9; PO Resp. 2–3. We, however, are not persuaded that there is a material difference between the parties’ proposals. Based on this record, we apply the level of skill laid out in our Institution Decision (omitting the open-ended phrases “at least”) because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we find for the purpose of this Decision and based on the record before us, that a person of ordinary skill in the art at the relevant time would have a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and two years of experience in personal monitoring systems. We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In our Institution Decision, we discerned a need to construe the term “activity points.” Dec. 8–11. There, we determined for the purposes of that Decision that “activity points” is broad enough to “include[] measures such as steps taken by the user, number of minutes the user has been active, or measures of energy expenditure such as a number of calories burned.” Id. at 11 (alteration in original). Patent Owner asserts that “the Board need not expressly construe this term to confirm the patentability of the challenged claims.” PO Resp. 4. Patent Owner, however, does not point out any error in our construction and based upon our review of the record, we are persuaded that our prior construction is correct and maintain our prior findings regarding the proper construction of activity points. Dec. 8–11. No other terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find Petitioner’s arguments to be persuasive. The ’377 states that its device may “include one or more motion sensors.” Ex. 1001, 2:52–53. The subject patent further notes that “exemplary motion sensors which include, for example, one or more accelerometers.” Id. at 3:6–8. Indeed, Patent Owner points out that its “PO’s Response explained how the specification of the ’377 patent makes clear that a single claimed ‘sensor’ may include one or more sensing instruments.” Sur-Reply 2 (citing PO Resp. 7–12) (emphasis added). We find that the ’377 patent claims are not limited to a configuration in which multiple accelerometers would compose a single motion sensor. The ’377 patent specification explains that motion sensors may have one accelerometer and that the claimed device may have more than one motion sensor. See Ex. 1001, 2:38–46, 3:6–9. In addition, we are not persuaded that claim 1 requires “multiple different types of sensors.” See PO Resp. 8. While it is true that dependent claims 3–7 require specific types of sensors this does not limit the scope of the independent claims. Claims 1 and 25 recite that the plurality of sensors “generate sensor data which is representative of activity of the user.” Ex. 1001, 43:33–34, 46:3–4. Claim 10 recites that the plurality of sensors “generate sensor data which is representative of ambulatory activities of the user.” Id. at 44:10– 12. As such, we are persuaded that the claim language allows the use of any set of sensors that generates the requisite data (and includes the requisite “at least” one tri-axial accelerometer or three accelerometers as will be discussed below).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As such, Petitioner fails to establish why one of ordinary skill would have believed such a substitution to be desirable or in what way such a substitution would have been an improvement over Damen. Our inquiry into whether a sufficient motivation has been articulated by Petitioner is a flexible, but factual inquiry where we must determine whether sufficient evidence and argument have been presented to establish that one of ordinary skill in the art would have made such a modification. See Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1223 (Fed. Cir. 2022). The Federal Circuit “has recognized that an obviousness showing ‘does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.’” Novartis Pharms. Corp. v. West-Ward Pharms. Int'l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Petitioner, however, still has a burden to establish a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). It is not sufficient to merely show that a person of ordinary skill “could have made but [rather, Petitioner must establish that a person of ordinary skill in the art] would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). That is the missing element in Petitioner’s contentions. Petitioner has not articulated sufficiently a rationale for modifying Damen to replace its three accelerometers with a tri-axial accelerometer. Claims 11 and 16 depend from claim 10 and the arguments and evidence presented for these claims do not address the shortcoming as to motivation to combine we note in reference to claim 10. Thus, Petitioner has not proven by a preponderance of the evidence that claims 10, 11, and 16 would have been obvious over Kroll and Damen.” slip op. at 37
Patent outcomesUS 8,868,377 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,868,377 - Fitbit LLC v. Philips North America LLCSome claims unpatentablePTAB · Oct 4, 2021 · IPR2020-00910 · APJ Norman H Beamer · IPR · Final written decision
Claims 1, 7–10, 13, 15, 16, 22, and 24–26 are unpatentable; claim 14 is not shown unpatentable because the cited grounds do not establish separate data input/output ports.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Although the respective positions are very similar and our analysis would be the same under either Patent Owner’s or Petitioner’s definition of the ordinarily skilled artisan, from our review of the record, we find Patent Owner’s more specific articulation of the relevant experience is appropriate and consistent with the disclosure of the ’233 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent Owner’s description.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“obviousness challenges, we are not persuaded by Patent Owner’s arguments based on its characterizations of the plain meaning of “security mechanism governing information transmitted between the first personal device and the second device.” The ’233 patent explicitly discloses that the use of passwords or encryption can be used to secure information transmitted between devices. Ex. 1001, 8:12–22, 13:25–67. The use of passwords or security keys certainly provides a form of “governing” of information transmitted between devices. We note that the courts in the Fitbit and Garmin cases have concluded likewise: [Patent Owner’s expert] provides minimal explanation for — and cites to no evidence in support of — his opinion that encryption ‘does not govern or control [the] transmission [of information]’ . . . [and] that opinion appears to conflict with the specification and claims. Ex. 1081, 25. [Patent Owner’s expert’s] conclusory opinion should not be afforded any weight. Ex. 2023, 14. We conclude that it is unnecessary to provide an explicit construction of the phrase at issue, and do not agree with Patent Owner that techniques such as the use of passwords or encryption fall outside of the scope of claim 1.” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“directional communications module to transition from the powered-down state to the powered-up state.” Ex. 1001, 16:18–20. Petitioner proposes to construe this portion of the claim pursuant to 35 U.S.C. § 112 ¶ 6, including specifying the disclosed structure corresponding to the recited function as “components capable of providing a magnetic, mechanical, sound or ultrasound, infrared, or radio frequency signal, and structural equivalents thereof.” Pet. 21 (citing Ex. 1001, 14:15–60, 16:16–30; Paradiso Decl. ¶¶ 49–50). Petitioner, however, also states that “[t]he ’233 patent explains that the ‘means for signaling’ can be ‘a mechanical signal, such as throwing a switch or applying pressure to a pad.’” Pet. 83; see Ex. 1001, 14:35–36. Therefore, we are not persuaded that Petitioner’s proposed articulation of the corresponding structure is correct. In our Decision to Institute, we stated that it is sufficient for present purposes to note that the disclosed structure that performs the function recited in claim 26 includes a switch that turns the bi-directional communications module on and off. Dec. 12. Patent Owner agrees that such structure is encompassed by the “means for signaling. . .” of claim 26. PO Resp. 12. We reiterate for purposes of this Decision that it is sufficient to note that the disclosed structure includes a switch as described.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“includes the claimed short-range bi-directional wireless communications module, and explains that this term is meant to “include premises and facility based wireless networks.” Ex. 1001, 5:57–65. Even though wireless communications modules necessarily have inputs and outputs, we preliminarily concluded, based on these disclosures, that the data input/output ports of claim 14 had to be separate from the “short-range bi-directional wireless communications module” of claim 1 — otherwise the requirement of data input/output ports in claim 14 would be superfluous. Dec. 38–39. See Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1399 (Fed. Cir. 2014) (favoring a construction that does not render another limitation “superfluous”). Petitioner points out that there is no example disclosed in the ’233 patent that embodies claim 14 — i.e., no example in which two devices communicate with each other, both using a local area wireless LAW 330 module and a Data I/O port 160. Reply 7. Therefore, argues Petitioner, claim 14 should not be construed to cover subject matter not disclosed in the ’233 patent. Reply 9. However, as both Petitioner and Patent Owner point out, the ’233 patent discloses that both the personal medical device PMD 100 shown in Figure 2 and the medical device interface MDI 600 shown in Figure 4C can include both a wireless communication module 300 and data I/O ports 160, which provides support for claim 14, notwithstanding that the specific connections of components required by claim 14 are not explicitly illustrated. Reply 7–8; Sur-Reply 10–11; Ex. 1001, Fig. 2, 3:47–49, 54–55. Moreover, Petitioner admits that the example of Figure 3A, which uses wireless communication modules 300, “does not include a data I/O port like claim 14.” Reply 8 (emphasis added). This admission contradicts Petitioner’s argument that “wireless communications module” and “data input/output port” are two terms that refer to the same structure. Reply 9 (citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings, not that they necessarily refer to two different structures”)). Accordingly, we maintain our preliminary conclusion as expressed in the Institution Decision that the data input/output ports of claim 14 are separate from the “short-range bi-directional wireless communications module[s]” of claim 1.” slip op. at 20
Patent outcomesUS 7,088,233 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,088,233 - Fitbit LLC v. Philips North America LLCSome claims unpatentablePTAB · Oct 4, 2021 · IPR2020-00783 · APJ Norman H Beamer · IPR · Final written decision
Claims 1, 7–10, 13, 15, 16, 22, and 24–26 are unpatentable; claim 14 was not shown unpatentable because the references did not disclose separate data input/output ports.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Although the respective positions are very similar and our analysis would be the same under either Patent Owner’s or Petitioner’s definition of the ordinarily skilled artisan, from our review of the record, we find Patent Owner’s more specific articulation of the relevant experience is appropriate and consistent with the disclosure of the ’233 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent Owner’s description.” slip op. at 12
- Expert testimonyOther
“From our review of the record, including the testimony of Petitioner’s expert Dr. Paradiso, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combinations of Jacobsen with Quy for Ground 4, Geva for Ground 5, and Reber for Ground 6. For each ground, Petitioner’s reliance on the tertiary references demonstrates that the particular features disclosed (Bluetooth, GPS, and a power button) were well known and readily incorporated into a Jacobson-type system, and that one of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success. Patent Owner’s arguments are unpersuasive, not sufficiently taking into account that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, as Petitioner points out, the fact that an asserted combination introduces “simultaneous advantages and disadvantages [] does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“From our review of the record, including the testimony of Petitioner’s expert Dr. Paradiso, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combinations of Jacobsen with Quy for Ground 4, Geva for Ground 5, and Reber for Ground 6. For each ground, Petitioner’s reliance on the tertiary references demonstrates that the particular features disclosed (Bluetooth, GPS, and a power button) were well known and readily incorporated into a Jacobson-type system, and that one of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success. Patent Owner’s arguments are unpersuasive, not sufficiently taking into account that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, as Petitioner points out, the fact that an asserted combination introduces “simultaneous advantages and disadvantages [] does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Accordingly, we are persuaded that Petitioner has proved by a preponderance of the evidence that claim 13 would have been obvious over Jacobsen and Quy, that claims 24 and 25 would have been obvious over Jacobsen and Geva, and that claim 26 would have been obvious over Jacobsen and Reber.” slip op. at 42
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Like for Grounds 4–6, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combination of Say and Gabai. Although Gabai is directed to an interactive toy, its disclosure relating to bi-directional wireless communications with a base communication unit is pertinent art— satisfying the criterion that “[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). Accordingly, we are persuaded that Petitioner has proved by a preponderance of the evidence that claims 15, 16, and 22 would have been obvious over Say and Gabai.” slip op. at 44
Patent outcomesUS 7,088,233 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,088,233 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Some claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00591 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 3, 6, 9, 12-14, 16, 19, 22, and 23 are unpatentable as anticipated by Avrahami; claims 10, 15, and 25 were not shown obvious.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Avrahami describes its algorithm as providing “for semi-automatic 3D spatial polygon extraction from a pair of colored aerial images with a known external model solution.” Ex. 1004, 43 (emphasis added). Avrahami touts that one of the advantages of its system is that “the operator can identify at a glance which buildings can be mapped by this method so as to combine it with traditional manual extraction or other semi-automatic method.” Id. at 48 (emphasis added). Further to this point, Figure 1 shows a side-by-side comparison of the images in the pair. See id. at Fig. 1 (displaying left and right polygons going through Avrahami’s iterative matching process). Further, we credit the testimony from Petitioner’s Expert, Mr. Schuch, that one skilled in the art would understand Avrahami’s images to be what “you see . . . on a computer screen” as “part of the production.” Ex. 2017, 69:20–21; see also id. at 71:2–4 (explaining that “[t]his is an actual production image”). Therefore, we find that Petitioner has proffered sufficient evidence that Avrahami discloses the disputed limitation.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“We are persuaded by Patent Owner’s extensive evidence of nexus between its Render House and Twister products and the challenged claims. Patent Owner steps through each challenged claim on an element-by-element basis and directs us to images and specific passages from its Render House and Twister user guides that it argues embody the limitations of each challenged claim. PO. Resp. 50–58. Patent Owner also supports its assertion of nexus with testimony in the form of a Declaration from Dr. Chandrajit L. Bajaj that includes a claim chart detailing where each limitation of the challenged claim is found in its Twister and Render House products. Ex. 2010, 44–91.5 The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Patent Owner has put forth sufficient evidence to show that its Twister and Render House products embody the elements of the challenged claims and thus, we look to Petitioner to rebut this presumed nexus and acknowledge that the presumption “cannot be rebutted with mere argument; evidence must be put” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“with the purportedly unique characteristics of the claimed invention and that for which there is alleged commercial success.” Reply 23–24. Our reviewing court has held that for evidence of commercial success to be relevant, “the patentee must establish a nexus between the evidence of commercial success and the patented invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). As noted above, however, Patent Owner has provided extensive evidence that the Twister and Render House products are coextensive with claims 10, 15, and 25 and that the reports sold were created using the Twister and Render House products. Thus, we are persuaded that nexus exists between the challenged claims and the commercially successful products at issue. Petitioner also asserts that “Patent Owner has failed to make any showing as to market share, thus rendering their sales figures irrelevant and not adequately defined.” Reply 24. Patent Owner provided unrebutted evidence that “approximately 96 percent of the top 25 insurance carriers rely on [Eagle View Technologies 3D aerial roof measurement reports] in their claims departments.” Ex. 2020, 1; see also Ex. 2029, 8 (Verisk Analytics presentation noting that 24 of top 25 insurance companies and 30,000 contractors are Eagle View customers). In addition, Patent Owner’s evidence shows that its products are used by “about one-fifth of the roofing contractor market, according to an estimate by market researcher IbisWorld.” Ex. 2024. Patent Owner’s financial reports show both that it sold a significant number of roofing reports and that its sales grew significantly between 2009 and 2015. See PO Resp. 60–61. We find that this information, taken together with statement from others in the industry (see Ex. 2029) gives us a view of Patent Owner’s place in the relevant market and persuades us that Patent Owner’s Twister and Render House products experienced significant commercial success and wide-spread use in the industry.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for patent owner
“iii. Industry Praise Praise from industry participants, especially competitors, is probative as to obviousness because such participants “are not likely to praise an obvious advance over the known art. Thus, if there is evidence of industry praise of the claimed invention in the record, it weighs in favor of the non-obviousness of the claimed invention.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053 (Fed. Cir. 2016). Petitioner described Patent Owner’s products as “[u]sing aerial photography and patent-pending software [to] accurately calculate[] measurements for the roof’s ridges, rafters, valleys, slopes and more.” Ex. 2021, 1. Petitioner further noted that the “process saves contractors and roofers hours of time spent measuring and scoping a roof.” Id.” slip op. at 23
Patent outcomesUS 8,209,152 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,152 - Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCSome claims unpatentablePTAB · Jan 26, 2017 · IPR2015-01611 · APJ Stacey G White · IPR · Final written decision
Claims 91 and 92 are unpatentable over Kniffin; the petitioner did not show claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143 unpatentable.
RulingsFinal written decision- BurdenMixed
“second signal, wherein the second signal is at least one of generated by and transmitted from a second control device.” Ex. 1001, 80:9–10; see also id. 83:25–26 (similar language in claim 42), 85:15–18 (claim 48), 99:13–14 (claim 138). Thus, in each of independent claims 26, 42, 48, and 138, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 13–14. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“second signal, wherein the second signal is at least one of generated by and transmitted from a second control device.” Ex. 1001, 80:9–10; see also id. 83:25–26 (similar language in claim 42), 85:15–18 (claim 48), 99:13–14 (claim 138). Thus, in each of independent claims 26, 42, 48, and 138, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 13–14. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“have modified Kniffin to use the Internet because “conventional wisdom at the time of the effective filing date of the ’130 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 32. In support of this position, Patent Owner cites a 1996 Morgan Stanley “Internet Report” that noted concerns about security and potential limits to Internet access. Id. at 32–34 (citing Ex. 2005, 24).” slip op. at 19
- Skill levelSkill level board ownDecided for petitioner
“have modified Kniffin to use the Internet because “conventional wisdom at the time of the effective filing date of the ’130 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 32. In support of this position, Patent Owner cites a 1996 Morgan Stanley “Internet Report” that noted concerns about security and potential limits to Internet access. Id. at 32–34 (citing Ex. 2005, 24).” slip op. at 19
Patent outcomesUS 6,549,130 mixed§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,549,130
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.