- PTAB · Aug 16, 2024 · IPR2023-00658 · APJ Scott A Daniels · IPR · Final written decision
The Board canceled original claim 1, denied the proposed substitute claim as indefinite under § 112, and did not reach the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have, on the complete record now before us, mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that the designer of ordinary skill in the art would be a person who has a bachelor’s degree in furniture design or an equivalent field or alternatively two years of practical experience designing furniture . . . [which] is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop. Ex. 1002 ¶¶ 34–35. Based on the complete record, we adopt Petitioner’s articulation of a designer of ordinary skill as it is supported by the testimony of Mr. Hatch. Id. ¶¶ 33–38. We also note that, based on the complete trial record, our” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In contrast, Patent Owner’s declarant, Mr. Williams, testifies based on his “experience[,] that tenons are generally included in the larger portion of two table top portions.” Ex. 2006 ¶ 55. However, Mr. Williams’ experience does not explain why an ordinary observer would understand such functional and ornamental characteristics of tenon and hole arrangements. Id. Nor does this testimony proclaim that tenons must be in the larger of two table top potions. Indeed, even considering an ordinary observer imbued with Mr. Williams’ level of expertise and experience, and understanding for instance that it may be more likely that the wider portion includes tenons, this does not resolve the glaring inconsistency that Figure 1 illustrates holes and Figure 8 illustrates tenons. In other words, Mr. Williams’ “experience” does not resolve the visible tension that, on one hand, Figure 1 illustrates holes as part of the claimed ornamental design in the wider portion of the table top, and on the other hand, Figure 8 illustrates tenons as part of the same wider portion of the table top. The problem here may be more eloquently explained as “Two roads diverged in a yellow wood[,] And sorry I could not travel both.” Robert Frost, The Road Not Taken, The Poetry of Robert Frost—The Collected Poems, 105, Henry Holt and Co. (1969). Considering the entire record before us in this case we credit Mr. Hatch’s testimony. The issue is not, as Patent Owner has framed it, whether “[o]ne of ordinary skill in the art would understand how the tenons and holes should be positioned on each of the table top portions.” Reply Opp. 7. The question is whether a person of ordinary skill in the art viewing the design for a table top in the proposed substitute claim as would an ordinary observer, understand whether or not the wider portion of the table top as Figures 1 and 6, holes. As Mr. Hatch persuasively explains, in the proposed substitute claim a majority of the drawings for the wider portion, i.e., Figures 1–6, omit the tenons added in Figure 8. Ex. 1011 ¶ 37 (Mr. Hatch testifying that “Figure 8 is the only amended figure that adds tenons/dowels.”) Indeed, Figures 1 and 6 not only fail to illustrate tenons, but actually are amended to include holes rather than tenons, as described in the Motion to Amend. See, e.g., Motion to Amend 6 (Patent Owner describing, “Figure 1: Removal of disclaimer of a total of four holes by amending the outline of the four holes from broken lines to solid lines.”). On the complete record in this proceeding, we determine that a” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“On the complete record in this proceeding, we determine that a designer of skill in the art considering the claim from either their own, or the perspective of an ordinary observer, would be uncertain whether the wider portion of the claimed table top depicted in Figures 1–8 includes tenons, or holes. It is reasonable that anyone observing two distinct ornamental designs for the same wider portion of the table top would be unclear as to the claimed ornamental design where holes are shown in one figure but tenons are shown in another figure illustrating the same wider portion of the table top. Observing as a whole, the figures illustrating the table top in the proposed substitute claim, the question remains, does the wider portion of the table top include tenons, or holes? See Maatita, 900 F.3d at 1376 (“Ultimately, a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). proposed substitute claim fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” See Nautilus, 572 U.S. at 910. Thus, Petitioner has shown, by a preponderance of the evidence, that the proposed substitute claim is indefinite and we accordingly deny Patent Owner’s Noncontingent Motion to Amend.” slip op. at 29
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Federal Circuit recently explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). In Maatita, the Federal Circuit reversed the Board’s finding of indefiniteness of a design for a shoe bottom, i.e., a shoe sole, finding that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective [] shown in the drawing. Id. at F.3d 1378–79. Different from Maatita, the issue in this proceeding is not whether an ordinary observer would sufficiently understand a three-dimensional ornamental design from a two-dimensional figure, but whether inconsistencies between figures of the proposed substitute claim render the scope of the claimed table top uncertain. See Maatita, 900 F.3d at 1376 (The Federal Circuit specifically distinguishing Maatita’s single two-dimensional drawing from indefiniteness issues raised by inconsistent drawings: “[h]ere, we are not dealing with inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but” slip op. at 24
§ 103 obviousness§ 112 disclosurecites Nautilus - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Aug 9, 2024 · IPR2024-00460 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–21 on all petition grounds, finding a reasonable likelihood that claims 1–8 and 12–18 are anticipated by Nishida.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons set forth above, we conclude that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. At this stage of the proceeding, the Board has not made a final determination on the construction of any claim term or the patentability of any challenged claim V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–21 of the ’749 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments that Nishida-US does not disclose the “simultaneously knitting” limitation of the claims of the ’749 patent constitutes “error.” Pet. 86. In our view, whether error or not, there is clear inconsistency on the record before us as to assessment of Nishida’s and Nishida-US’s teachings pertaining to the pertinent “simultaneously knitting” requirement. In that regard, as discussed above, in accounting for that requirement, the Petition unambiguously relies on disclosure in Nishida specifically stating that “when the strip of material (1) is manufactured, the patterns (2) of the uppers are produced, at the same time as the strip of material.” Pet. 25 (citing Ex. 1005, Abstract (emphasis added by Petitioner)). At the very least, there is a reasonable case to be made that such disclosure conveys that the material (1) and the patterns (2) are created simultaneously. The record is devoid of any indication that the Examiner considered or apprehended the extent of that disclosure.15 “[M]isapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims,” as seemingly occurred here, does not lend itself to a conclusion that the exercise of discretion to deny institution is appropriate. See Advanced Bionics, IPR2019-01469, Paper 6 at 8–9 n.9.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“account for limitation 1[a], on this record, is difficult to follow. Nishida makes clear that its shoe making method involves production of material web 1 by knitting and which is “provided with a single or a plurality of unwound web part(s) 2.” Ex. 1005, 5. Nishida’s disclosure also, at this time, appears unequivocal in describing that “patterns (2)” and web material 1 (or “strip of material (1)”) are manufactured or produced “at the same time.” Id. at code (57) (Abstract). Nishida also unambiguously describes its material web 1 as including “surface areas 1.1.” Id. at 7. As is evident from, for instance, Nishida’s Figure 2, surface areas 1.1 surround unwound web parts (or patterns) 2.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Proposed Ground of Obviousness Based on Nishida (Grounds 2 and 6) Petitioner contends that claims 9, 10, 19, and 20 would have been obvious to a person of ordinary skill in the art based on Nishida’s teachings taken with the general knowledge of a skilled artisan. Pet. 50–54. Petitioner supports its contention with citation to Dr. Brookstein’s testimony (Ex. 1003) as well as various record exhibits (e.g., Exs. 109, 1010, 1012, 1023). Id. Patent Owner does not challenge Petitioner recourse to a person of ordinary skill in the art’s general knowledge in accounting for claims 9, 10, 19, and 20. Rather, Patent Owner simply contends that the arguments it advanced in connection with Ground 1 also applies to Ground 2. As discussed above, at this time, we do not agree with Patent Owner’s arguments. Petitioner also contends that claims 11 and 21 would have been unpatentable over Nishida and Zuckerman (Ground 6). Pet. 81–84. Patent Owner also contends that the arguments it advances in conjunction with Ground 1 apply to Ground 6. Prelim. Resp. 37. We do not find those arguments availing. On the record before us, we determine that Petitioner has shown a reasonable likelihood of success in its patentability challenge to claims 9, 10, 19, and 20 based on Nishida (ground 2), and its challenge to claims 11 and 21 based on Nishida and Zuckerman (ground 6).” slip op. at 19
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - Next Step Group, Inc. v. Deckers Outdoor CorporationInstitution deniedPTAB · Aug 6, 2024 · IPR2024-00525 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving the challenged design claim unpatentable on any of its ten asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). After considering the Parties’ papers and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to the one claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“December 15, 2015”). The date that a product was listed as first available on a website, however, is not sufficient evidence that the content of the listing, including the photographs depicted therein, were published at that time. See Ex parte Basulto, Appeal 2020-00129, 2021 WL 1264902, at *2 (PTAB Apr. 2, 2021) (stating “the date [a] product was listed on Amazon.com is not compelling evidence that the content of [the] listing itself as shown in the document, and the photographs relied on within it were published at that time”). Selling products online is dynamic. Id. Product listings may be updated and photographs of the products may change. Id. While a statement on a commercial website as to when a product was “first available” might constitute evidence as to when the product was first offered for sale, such a statement is not sufficient evidence that the listing itself, or any photograph depicted therein, has not changed over time. See Ex parte Zhang, Appeal 2021-000087, 2021 WL 633718 at *3 (PTAB Feb. 16, 2021) (stating “while the [webpage] date indicates that the product information was last updated on [date], there is no additional evidence to corroborate that the picture was publicly accessible on that date”). We have also reviewed the customer reviews that Petitioner asserts show “the listing were [sic] public, printed publications.” Reply 17 (citing Ex. 1009, 6; Ex. 1015 ¶ 17–18. None of the reviews dated prior to the critical date of November 8, 2019, however, contain any images of the UGG Neumel Boot. See Ex. 1009, 6). Thus, Petitioner does not provide sufficient evidence that any of the images on pages 1–9 of Exhibit 1009 were available on the website prior to the critical date.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Here, the pull-tab does serve a useful purpose as it can be used to pull the footwear onto the foot. Based on the evidence presented, however, we disagree with Petitioner that the pull tab is primarily functional and should be removed entirely from the construction of the claimed design. Petitioner presents a number of arguments to support its position that the pull tab is functional, not ornamental. Petitioner asserts that the pull tab is “obviously not ornamentation but instead is a functional element that is used to pull the footwear on to the foot, an important function and part of the Patent Owner’s marketing message.” Pet. 18–19 (citing Ex. 1011 ¶¶ 64–67; possible, the type of pull tab shown in the ’161 patent “is the kind that is generally used in shorter shaft, lower ankle height footwear to make it easier to pull up and put the boot on the foot.” Pet. 19 (citing Ex. 1009, the UGG Neumel Boot). Petitioner further asserts that the pull tab is “securely attached for actual use, countering that it is ornamental” and that “[a]ny other pull tab (e.g., not at the top of the footwear as in the UGG Neumel Boot) would not be as efficient and hence not an acceptable alternative.” Id. (citing Ex. 1011 ¶¶ 64–67; Ex. 1013, 25–27). We are not persuaded by these arguments. The “marketing material” relied on by Petition, as discussed by Mr. Holden, merely states that Ultra Mini Ugg Boots “have a slightly lower ankle to make it easier for you to slip on,” that the UGG boots are “fantastic” for those who “may struggle with pulling on other styles,” and the boots “are fantastic for those who may struggle with pulling on other styles and are looking for more comfort and durability.” See Ex. 1011 ¶ 66 (citing Ex. 1003). None of the marketing material cited by Petitioner even mentions a pull tab. Nor does the present record support Petitioner’s contentions that,” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s arguments are not persuasive. First, the images of the Emu Stinger Micro Boot that Petitioner relies upon are from pages 1–6 of Exhibit 1002, which as noted above, Petitioner has not sufficiently shown to constitute a printed publication prior art. Thus, Petitioner’s arguments are based on images in a reference that does not qualify as prior art to the claimed design. The images found on pages 8 and 9 of Exhibit 1002 are not the same images as those relied upon in the Petition. Compare Ex. 1002, 8– 9, with Pet. 35–36. Thus, for at least this reason, Petitioner fails to demonstrate a reasonable likelihood that it would prevail in showing the ’161 patent is anticipated by the Emu Stinger Boot. Second, even if we were to consider any of these images of the Emu Stinger Micro Boot depicted in Exhibit 1002, Petitioner’s arguments are not persuasive because the arguments fail to adequately address differences between the claimed design and the prior art as viewed by an ordinary observer. See Door-Master Corp., 256 F.3d at 1313 (stating for anticipation to be found, the claimed design and the prior art design must be substantially the same). For example, the Figures of the ’161 patent depict (1) a stitch pattern design that includes a wavy line on the back heel of the boot (see Figs. 1–3, 5), (2) a pull tab that extends over the top part of the back of the boot and opening for insertion of the foot that appears to constitute more than 50% of the length of the boot (Figs. 2, 3, 6), and (4) a backward sloping top line. Petitioner does not address the differences between (1) the stitch pattern (2) the pull tab, or (3) the size of the opening for the foot at all in its anticipation argument. See Pet. 35–38.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham - Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · Jul 8, 2024 · IPR2023-00438 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–5, 7, 9, 12–14, and 17–19 are unpatentable: Amano anticipates claims 1, 5, 7, 12, and 17, and Amano with Gorman or Flach renders the remaining claims obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the Art (“POSITA”) for the technology of the ’413 patent would have had (1) a bachelor’s degree in engineering, computer science, industrial design, biomechanics, or a related field, and (2) at least two years of experience researching, developing, designing, and/or testing fitness or physiological sensors, wearable devices, physiological or biomechanical devices, remotely-controlled systems or interfaces, network-based applications and/or equipment, or the equivalent experience or education.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Sur-reply 4–5; Ex. 1017, 73:13–22; Ex. 2013, 23:10–24:25,17 36:19–37:7. It, therefore, seems unnecessary in our view to contemplate claim constructions that substitute “takes into account” or “is adaptive to” for the actual claim language of “based on.” It is apparent from the record that has developed during trial that a core matter for resolution is whether an exertion level that is “based on” a level of a user’s physical fitness includes, at least in some fashion, a user’s physical characteristics or attributes as a part of assessing or understanding a level of a user’s physical fitness. From a general standpoint, it stands to reason that many of a person’s physical attributes, in at least some respect, do indeed provide for assessing the level of that person’s physical fitness. To be sure, we agree with Patent Owner that certain individual attributes, such as any of sex, age, height, weight, and stride length, taken alone cannot necessarily be “equated” with a user’s level of physical fitness or constitute such a level. See, e.g., PO Sur-reply 3 (quoting Ex. 2012, 148:5-149:16). But, the record reasonably suggests that such attributes when considered in conjunction with one another can provide meaningful guidance or basis for assessing the level of a user’s physical fitness. For instance, Petitioner contends that “weight and height as expressed through BMI can estimate body composition” which is a “component of physical fitness.” Pet. Reply 2. Petitioner’s declarant, Dr. Lynch, testifies that body” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“those here including stride length and body weight, may be factored in as a part of an assessment of a person’s level of physical fitness. Although any one particular physical characteristic of a person may not be indicative of the person’s physical fitness, Amano provides that the interrelationship of at least a person’s stride length, initial pitch, and weight are associated with one another so as to establish that particular person’s exercise intensity. Amano also recognizes that there is a relationship between a person’s exercise intensity and heartbeat rate. See, e.g., Ex. 1005, Fig. 4, 4:6–7 (FIG. 4 is a diagram showing the relationship between exercise intensity and heartbeat rate.”). Patent Owner agrees that heart rate may factor into determining a person’s level of physical fitness. See, e.g., PO Sur-reply 4 (“The specification explains that ‘heart rate’ and ‘breathing’ can be used to determine a user’s physical fitness.”). Amano’s teachings in employing a person’s particular physical characteristics, e.g., stride length and body weight, alongside a person’s pitch, i.e., steps per minute, in the process of determining exercise intensity, which is related to heartbeat rate, in our view, reasonably form a basis for assessment of a level of a person’s physical fitness. See, e.g., Ex. 1002, 12:15–20.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“teach what Petitioner contends they teach. Rather, the core dispute that emerges between the parties is whether those teachings that are applied to wireless devices would also be applicable to wired devices. At the outset, we note that neither the Specification nor the claims of the ’413 patent provides restriction as to any type of communication approach, i.e., wireless or wired communication, or that there is some type of fundamental distinction between those communication approaches that precludes combining aspects of one with the other. Indeed, as Petitioner notes, the ’413 patent recognizes that wireless interfaces are “alternative[s]” for wired interfaces. Pet. Reply 22 (citing Ex. 1001, 5:27–32). And, Petitioner points out that the relevant dependent claims are not limited to wireless communication. Id. Patent Owner’s assertion that wired communication versus wireless communication imposes some type of insurmountable obstacle to one of ordinary skill in the art in combining the teachings of the references is not adequately, if at all, tethered to the record at hand. Indeed, Amano, itself, presents iterations of its device that employ both wired technology (see, e.g., Ex. 1002, Figs. 5, 16, 30, 40) and also wireless technology (see, e.g., id. at Fig. 44). Patent Owner argues that implementing aspects of Gorman and Flach’s wireless devices onto Amano’s wired device “would have required complete redesigns and new components.” PO Resp. 42 (citing Ex. 2008 ¶¶77–78, 81–82) Given the recognition in the art, such as Amano, that a workout device may include either wired or wireless components, it is difficult to reach the conclusion that “complete redesign” would be necessary. Nevertheless, that there may be some design considerations, or even challenges, that a skilled artisan may face in combining those two types of communication technology, does not end the obviousness inquiry. The parties agree that a person of ordinary skill in the art has significant engineering and design experience in connection with wearable workout devices. See Pet. 18, PO Resp. 16. Neither Patent Owner nor Dr. Bergeron adequately explains why any design challenges in combining aspects a wired workout device with a wireless workout device would have been beyond the skill or ordinarily skilled artisan, so as to preclude a determination of obviousness. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 44
Patent outcomesUS 8,620,413 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,620,413 - Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · Jun 26, 2024 · IPR2023-00424 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–10 and 12–19 are unpatentable: claims 1–8, 10, 12–17, and 19 as anticipated or obvious over Acres, and claims 9 and 18 as obvious over Acres and Pyles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner indicates that “[f]or purposes of this Response, Nike applies lululemon’s proposed level of skill in the art.” PO Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal of the level of ordinary skill in the art as reasonable and consistent with the prior 9 Person of ordinary skill in the art. art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Considering the discussion above, we conclude that the meaning of “data” previously offered by Patent Owner as “factual information, from 10 [JUDGE]: Counsel, let me borrow my colleague’s question. Maybe I’m belaboring this, but in your view, information that is sensed or collected or factual information that is sensed or collected, that’s effectively the same thing; and this case does not distinguish between factual information in that context and just information? [COUNSEL FOR PATENT OWER]: Yes. That’s correct, Your Honor. which decisions and subsequent actions can be made” finds support in the record, and also is in accord with the meaning of “data” as “information” that is offered by Petitioner (see, e.g., Pet. Reply 2).11 Accordingly, we adopt the meaning of “data” that Patent Owner offered in its Preliminary Response as “factual information, from which decisions and subsequent actions can be made.” See Prelim Resp. 18. In doing so, we reiterate and restate our view from the Institution Decision that the record does not lend itself to a conclusion that such a meaning of “data” is so restrictive as to convey that any instructions, commands, or signals are “entirely devoid of content recognized as ‘factual information’ so as to be beyond the contours of what a skilled artisan would regard as ‘data.’” See Inst. Dec. 9.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Thus, Acres discloses that, based upon an exerciser’s heart rate, Bug 601 operates to send or transmit commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Petitioner contends that “Acres’s Bug and its associated sensors are together a sensor device.” See, e.g., Pet. 9–10. Patent Owner does not dispute that contention. Patent Owner’s dispute arises from its position that Acres’s transmitted commands do not amount to the claimed “first set of data.” See PO Resp. 21–25; PO Sur-reply 10–14. That dispute is premised on Patent Owner’s proposed claim construction, which requires that the claimed “data” be only information that is sensed or collected in some other specific way by a sensor. As discussed above in our Claim Construction section (§ II.C.1), however, we do not agree that the record substantiates such a narrow meaning for the term “data.” It is difficult to conclude that a command that is generated based on a user’s heart rate that operates to control the functionality of a piece of workout equipment is not readily viewed as “factual information, from which decisions or subsequent actions can be made,” which, as discussed above, is a meaning of “data” that reasonably emerges to one of ordinary skill in the art based on record evidence.12 In its Sur-reply, Patent Owner also briefly states that Acres does not show that “decisions or subsequent actions can be made” from “data.” PO Sur-reply 12–13. It is apparent, however, that Patent Owner does not dispute that decisions or subsequent actions may be made based on the commands transmitted from Acres’s Bug. Id. at 13 (“lululemon has only established that Acres teaches that decisions or subsequent actions are made based on commands transmitted from the Bug.”). Indeed, no dispute is credible because, as noted above, Acres clearly describes the commands the Bug sends operate to control operation of workout equipment, such as increasing its speed. See Ex. 1002 ¶ 89. Rather, Patent Owner simply parallels its prior arguments that a deficiency arises because, in Patent 12 We again note that “factual information, from which decisions or subsequent actions can be made” was the meaning of “data” advocated by Patent Owner as a part of its Preliminary Response. See Prelim. Resp. 18. Owner’s view, the commands do not encompass “data.” As discussed above, we do not agree with that contention. Patent Owner does not contend that any other feature of independent” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“agree with Patent Owner (see, e.g., PO Resp. 27–28; PO Sur-reply 14–17), but rather agree with Petitioner (see, e.g., Pet. 29–31; Pet. Reply 19–21). The record does not demonstrate that there is some type of fundamental dichotomy between local data storage of activity at a piece of workout equipment and remote, central data storage of such activity that prohibits or precludes combining teachings directed to each approach. Rather, the record readily conveys that each type of data storage approach was recognized as known and viable. Even if there may have been some disadvantages with one or both approaches, the obviousness inquiry does not somehow mandate that a combination of teachings must result in something that is free of imperfection. As suggested by Petitioner, a skilled artisan readily would have recognized some benefits accrue to the local data storage approach advocated by Pyles. Even if there may have been some disadvantages to that approach, that does not nullify appreciation of the benefits that may offset such disadvantages. See, e.g., Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“[t]he fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another”). Indeed, as argued by Petitioner, and as attested to by Dr. Houh, the record reasonably establishes that a skilled artisan would have evaluated potential benefits and detriments as part of various data storage approaches in the area of workout equipment in assessing obviousness. See, e.g., Pet. 29–31; Pet. Reply 19–21; Ex. 1005 ¶¶ 68–73; Ex. 1015 ¶ 31. The obviousness inquiry demands as much. Patent Owner’s declarant, Dr. McLean, postulates, without record citation, that some detriments may possibly arise in implementing data storage at an exercise machine, as in Pyles, in lieu of central site storage as in Acres. See, e.g., Ex. 2004 ¶¶ 64–68. Yet, even if such less-than-desirable characteristics may result, neither Dr. McLean nor Patent Owner offers any cogent explanation as to why recognition of those characteristics undermines a determination of obviousness. In particular, Dr. McLean does not dispute that local storage would have the benefits discussed by Dr. Houh (a simplified, less expensive structure with a reduced number of components, which do not need to be connected to the internet), albeit along with the disadvantages discussed by Dr. McLean. Indeed, Dr. McLean and Patent Owner do not explain why a skilled artisan would not reasonably have evaluated any detriments alongside the potential benefits as a part of the obviousness inquiry. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). That test does not objectively fail if a skilled artisan would have recognized some disadvantages in combining the prior art teachings. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”).” slip op. at 33
Patent outcomesUS 10,923,225 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,923,225 - Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00348 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1, 5–7, and 12 are unpatentable: claims 1 and 5–7 are anticipated by Lofi, and claims 1, 5–7, and 12 are obvious over Maeueler and Kitagawa.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’930 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Fischer (Ex. 1005 ¶ 44).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Claim 1 recites, in relevant part, “providing first instructions to a user to perform a first athletic movement.” Ex. 1001, 26:17–18. The claim language itself suggests that “a first athletic movement” is simply the physical exercises, drills, or activities the user is instructed to perform via the first instructions. See Pet. Reply 4 (Petitioner arguing that the “instructions” recited in claim 1 “define the first and second athletic movements”). So, if the “first instructions” (notably plural) instructed a user to run one mile, then running one mile would be the “first athletic movement”; and likewise, if the “first instructions” instructed a user to perform 10 squats, perform 10 push-ups, and run one mile, then performing the 10 squats, performing 10 push-ups, and running one mile would be the “first athletic movement.” Contrary to Patent Owner’s proposed construction, we find no suggestion in claim 1 that “a first athletic movement” should be limited to a single “athletic movement” or “a single type of exercise or athletic activity.” Indeed, a single “type of exercise” or single “athletic activity” both appear to be proverbial “noses of wax,” as Patent Owner provides no explanation for how the skilled artisan would definitively distinguish one type of exercise or athletic activity from another (e.g., “weightlifting” could be considered an athletic activity or a “type” of exercise, yet it comprises countless weighted physical motions and sequences; similarly, “swimming” could be considered an athletic activity or a “type” of exercise, yet it too comprises many physical forms or techniques invoking many different physical motions and sequences (such as breaststroke, backstroke, butterfly, and sidestroke). We note that claim 6, which depends directly from independent claim 1, recites: “[W]herein the first instructions and the second instructions include a plurality of drills configured to test a plurality of fitness attributes of the user and a plurality of athleticism attributes of the user.” Ex. 1001, 26:57–60 (emphases added). Although less than artfully worded, we find that dependent claim 6 plainly requires that the first (and second) instructions provided to the user in claim 1 instruct the user on performing “a plurality of drills” (i.e., more than a single drill), which further supports our interpretation of “a first athletic movement.” See Pet. Reply 4. Patent Owner argues, inter alia, claim 6 specifies that “the first instructions and second instructions must be selected from a specific ‘plurality of drills’— rather than from some other source (e.g., an athletic competition).” PO Surreply 5–6 (emphasis added); see id. at 6–7 (Patent Owner arguing “claim 6 simply requires the first and second instructions to identify a first and second ‘athletic movement’ that are selected from a certain catalog of drills” (emphasis added)). We find Patent Owner’s attempt to contort “includes” to mean “selected from” a certain grouping unavailing, because “including” A, B, and C is simply not the same as “select[ing] [one] from” A, B, and C.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“Both parties argue that the terms “first instructions” and “first activity data” should have their ordinary and customary meanings or otherwise do not require construction to resolve the controversy between the parties. PO Resp. 21–22; Pet. Reply 8–10. We agree.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claims: We turn first to the claim language itself. We are mindful of Judge Rich’s guidance from over thirty years ago: in all aspects of claim construction, “the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims–American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). Claim 1 recites, in relevant part, “providing first instructions to a user to perform a first athletic movement.” Ex. 1001, 26:17–18. The claim language itself suggests that “a first athletic movement” is simply the physical exercises, drills, or activities the user is instructed to perform via the first instructions. See Pet. Reply 4 (Petitioner arguing that the “instructions” recited in claim 1 “define the first and second athletic movements”). So, if the “first instructions” (notably plural) instructed a user to run one mile, then running one mile would be the “first athletic movement”; and likewise, if the “first instructions” instructed a user to perform 10 squats, perform 10 push-ups, and run one mile, then performing the 10 squats, performing 10 push-ups, and running one mile would be the “first athletic movement.” Contrary to Patent Owner’s proposed construction, we find no suggestion in claim 1 that “a first athletic movement” should be limited to a single “athletic movement” or “a single type of exercise or athletic activity.” Indeed, a single “type of exercise” or single “athletic activity” both appear to be proverbial “noses of wax,” as Patent Owner provides no explanation for how the skilled artisan would definitively distinguish one type of exercise or athletic activity from another (e.g., “weightlifting” could be considered an athletic activity or a “type” of exercise, yet it comprises countless weighted physical motions and” slip op. at 19
Patent outcomesUS 10,188,930 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,188,930 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - Alivecor, Inc. v. Apple Inc.Institution deniedPTAB · Apr 3, 2024 · IPR2023-01434 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’898 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have been a person with a working knowledge of physiological monitoring technologies and human interface design. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies and human interface design (Ex. 1003, ¶45). Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline (Ex. 1003, ¶45). More education can supplement practical experience and vice versa (Ex. 1003, ¶45). Pet. 5–6. Patent Owner does not address the level of ordinary skill in the art. 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). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The general rule is that “the indefinite article ‘a’ means ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (2023); see also Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (“An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.”). And, the use of “the” (as in “the detailed view”) indicates that the recited part of the claim is a reference back to the corresponding part of a previous recitation (i.e., “a detailed view”). Finjan LLC v. SonicWall, Inc., 84 F.4th 963, 974 (Fed. Cir. 2023) (“Similar to this court’s holding that ‘said’ indicates part of a claim limitation refers to the corresponding part of a previously claimed limitation, . . . , the use of ‘the’ also indicates the claimed term refers to an antecedent term.”). However, whether “a detailed view” means “one or more detailed views” is a separate issue from whether the claims require the same detailed view to have both of the recited components. See Finjan, 84 F.4th at 974 (“[T]hat is a separate issue from whether the claims require the same component to perform multiple functions or satisfy multiple limitations of a claim.”). The plain language of “a detailed view” followed by the recitation of “the detailed view” comprising two components suggests that the “detailed view” must be tied to both of those components. See id. (“In [Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1143–44 (Fed. Cir. 2021)], we explained that ‘[a]s a matter of plain language, reciting ‘a computer’ (or a ‘first computer’) that performs a function, and then further reciting that ‘the computer’ (or ‘said first computer’) performs multiple additional functions, suggests that such ‘computer’ must be tied to all those functions.’ . . . This same rationale is relevant in analyzing the claims here.”); see also id. (The court agreeing with SonicWall’s argument “that even if the reference to ‘a computer’ may mean ‘one or more computers,’ the subsequent references to ‘the computer’ can only be satisfied by the same ‘one or more computers’ that satisfied the first limitation.”); Salazar, 64 F.4th at 1317 (“We agree with the district court that while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.”). We determine that, even if plural detailed views are allowed, the claim requires a single one of those views to have both a graph representation and a selectable data sharing option.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. For the reasons discussed above, we construe independent claims 1 and 23 as requiring the “detailed view” to have both a graph representation and a selectable data sharing option. See supra Section II.C. Petitioner does not identify adequately any disclosure in Molettiere of displaying a single view having both components. Thus, Petitioner has not shown adequately that Molettiere is anticipatory. Additionally, we agree with Patent Owner’s argument that Petitioner does not articulate adequately any obviousness contentions regarding how or why a person of ordinary skill in the art would have combined the relied-on figures of Molettiere to arrive at the recited detailed view having both components. See Prelim. Resp. 9–10; Pet. 10–14. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and independent claim 23 as anticipated by or obvious over Molettiere. For the same reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to dependent claims 2– 11, 18, 20–22, 25–34, 41, and 43–45 as anticipated by or obvious over Molettiere. E. The Alleged Unpatentability of Claims 1, 3, 9, 10, 16, 18, 23, 26, 32, 33,” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,270,898 - Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentablePTAB · Mar 25, 2024 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Final written decision
Claims 8–22 are unpatentable as anticipated by Lauper or obvious over Lauper, ISO 7816-4, and ISO 14443; claim 23 is obvious over Lauper and Fu, with or without the ISO standards.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: 7 Neither party presents any objective indicia of non-obviousness. As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15–16 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“C. Claim Construction We construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner offers claims construction for the following terms: “transaction controller” (claims 8–23); “smartcard chip” (claims 8, 9); “said processor” (claims 10, 14, 25); “mobile user interface device” (claims 8–11, 13, 15, 16, 18, 21). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. 8 Person of ordinary skill in the art. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. After reviewing the record, we adopt Petitioner’s proposed constructions. See Ex. 1001, 31:39–54; Ex. 1002 ¶¶ 79–100; Pet. 12–15. For convenience, we reproduce them in table format below:” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
Patent outcomesUS 7,110,792 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792
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.