- MG Freesites Ltd v. Scorpcast, LLCSome claims unpatentablePTAB · Aug 3, 2022 · IPR2021-00510 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 9–11, 18–20, 22, 26, and 27 are unpatentable; claims 13 and 24 are not shown unpatentable, principally because the asserted references fail to disclose the claimed navigation sequence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a skilled artisan “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or equivalent) plus approximately two years of work experience with technologies relating to content annotation and/or content sharing among multiple users.” Pet. 17 (citing Ex. 1002 ¶¶ 1–33). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. See PO Resp. 10. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’063 patent and the prior art of record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We apply the same claim construction standard used by Article III federal courts and the International Trade Commission, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b). Accordingly, we construe each challenged claim of the ’063 patent to generally be “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.” Id.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“Analysis Legal Standard for Corroborating Conception “Conception is a question of law predicated on subsidiary factual findings, one of which is the sufficiency of corroboration.” Apator Miitors ApS v. Kamstrup AS, 887 F.3d 1293, 1295 (Fed. Cir. 2018). We not reach the question of whether co-inventors Mr. Sreenath and Mr. Avedissian conceived of the claimed invention prior to June 4, 2009 unless “there is sufficient corroboration.” Kolcraft Enter., Inc. v. Graco Child.’s Prods., conception must be corroborated by other, independent information.” Id. (citations omitted). We examine all pertinent evidence under a rule of reason analysis “to determine whether the inventor’s testimony is credible.” Id. “Even under the ‘rule of reason’ analysis, however, the evidence of corroboration must not depend solely on the inventor himself.” Apator, 887 F.3d at 1295.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner supports its position that the display of the first and second images in Geer changes from the first segment to the second segment with the testimony of Dr. Porter. Ex. 1002 ¶ 185. Dr. Porter testifies that “when video playback is of the first video segment (e.g., corresponding to the first advertisement), the first image (e.g., image of MP3 player) is displayed both as product icon 312a and within the displayed advertisement, whereas the second image (e.g., image of sunglasses) is displayed only as product icon 312b.” Id. Dr. Porter further testifies that “[w]hen video playback is of the second video segment (e.g., corresponding to the second advertisement), the first image is displayed only as product icon 312a, whereas the second image is displayed both as product icon 312b and within the displayed advertisement.” Id. ¶ 186 (citing Ex. 1005 ¶¶ 47–48, Figs. 3A–3C). Dr. Porter also points to the text of paragraph 47 of Geer that “pop-out window contains a more detailed description of the product represented by the first ¶ 185 (quoting Ex. 1005 ¶ 47). We find that Dr. Porter’s testimony is entitled to substantial weight because it is focused on the actual claim language concerning the “display” of the first image and second image and is supported by the disclosure of Geer. In particular, he explains how the display of the product icons changes and the fact that a larger picture of the product appears when the icon is selected is particularly probative of a change in the “display” of the first image and the second image. This testimony is confirmed by Figures 3B and 3C. In Figure 3B, the sunglasses are displayed only as a small image in scrubber bar 306. In Figure 3C, the sunglasses are displayed both as a small image in scrubber bar 306 and as a larger image in the pop-out window 316. We credit Dr. Porter’s testimony over that of Dr. Valerdi because Dr. Valerdi’s testimony focuses on the images of product icons in the scrubber area, not on the display of the images.” slip op. at 59
Patent outcomesUS 9,899,063 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,899,063 - MG Freesites Ltd v. Scorpcast, LLCNo claims unpatentablePTAB · Aug 3, 2022 · IPR2021-00512 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 5–8, 10, 11, 15–17, 20, 21, and 25–28 were not shown unpatentable because the asserted grounds failed to establish required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a skilled artisan “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or equivalent) plus approximately two years of work experience with technologies relating to content annotation and/or content sharing among multiple users.” Pet. 16–17 (citing Ex. 1002 ¶¶ 1–28). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. See PO Resp. 9. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ‘463 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with the determination in IPR2020-01697 that not all areas in the recited “scrubber area” must perform scrubbing functionality for the following reasons. First, claim 1 recites “the scrubber area comprising a scrubber that includes a draggable scrubber control that indicates video playback progress via a scrubber timeline . . . and which is manipulable to control playback of the first video file by dragging the scrubber control.” Ex. 1001, 50:61–67. The use of the open-ended transition “comprising” indicates the scrubber area may include more than the draggable scrubber control. Second, the Specification of the ’463 patent describes “scrubber area” as including a “scrubber bar” and optionally “an area adjacent to the scrubber bar.” Id. at 2:48–54. But, the description of the optional area the adjacent area must include scrubbing functionality. See id. Third, our determination that the area adjacent the scrubber control does not necessarily include scrubbing functionality is consistent with Figure 10 of the ’463 patent where the right-hand side of scrubber area 1002 includes items unrelated to scrubbing functionality, e.g., volume control.10 For the foregoing reasons, we do not adopt the EDTX construction of scrubber area because doing so would require us to read a limitation into “scrubber area” that, in our view, is not supported by the evidence.” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Pet. 46. We note, however, that Roberts does not use the terms “scrubber” or “scrubber area.” See generally Ex. 1004. Dr. Porter testifies that the red rectangles added to Figures 9 and 13 represent a “scrubber area” but, he cites no persuasive evidence from Roberts to support his opinion concerning the size and shape of the alleged scrubber areas in Roberts’ Figures 9 and 13, nor does he explain why images 904 and 1004 are “adjacent” the timeline. Ex. 1002 ¶¶ 78–79. Therefore, his testimony is entitled to little, if any, weight. See 37 C.F.R. § 42.65(a). In order to satisfy this limitation, Petitioner creates different size scrubbing areas in Figures 9 and 13 of Roberts to fit its obviousness theory. Image 904 in Roberts’ Figure 9 is near the timeline but does not border the timeline. In addition, only one image, not the first plurality of images, is shown in the scrubber area Petitioner identifies in Figure 9. In Roberts’ Figure 13, images 904 and 1004 are shown within Petitioner’s larger proposed scrubbing area, but neither image borders the timeline. In Figure 13, image 904 is further from the timeline than image 1004 and further from the timeline than in Figure 9. Ex. 1004, Figs. 9, 13. Petitioner, however, fails to explain why image 904, which is positioned differently in Figure 9 and Figure 13, is adjacent the timeline in both. See Pet. 45–48.” slip op. at 34
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Analysis The language of limitation 1.5 recites that “at least partly in response to detecting that a user . . . select[s] the first image . . . causing the playback of the first video file to jump to a segment of the first video file corresponding to the first image.” Ex. 1001, 51:1–11. Both parties agree that this language imposes a temporal requirement that the user selects the first image and, then after the user selection, the playback of the first video file jumps to a segment of the first video file corresponding to the first image. Tr. 58:8–18, 109:9–10.” slip op. at 48
Patent outcomesUS 9,703,463 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,703,463 - Content Square SAS v. Medallia Inc.Institution deniedPTAB · Jul 14, 2022 · IPR2022-00316 · APJ Scott A Daniels · IPR · Institution
The Board denied institution on all challenged claims because neither obviousness ground showed a reasonable likelihood of establishing the claims’ required cancellation or abandonment functionality.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“A petitioner in an inter partes review may challenge the claims of a patent “only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that [a] reference was publicly accessible before the critical date of the challenged patent and therefore that there is a” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Claim 1, limitation [1b] recites in part: web site user cancellation or abandonment prediction functionality operative to determine, based on a website action of a given user, that the given user intends to cancel a transaction associated with the website-based process or abandon the web site-based process Id. at 10:30–34 (emphases added). Reading the claim in light of the specification, it is clear that a “transaction” is a business transaction and that a “website-based process” is, for example, a business transaction process or” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“E. Ground 2: Claims 1–19 – Alleged Obviousness over Nickerson Error, and Salle Petitioner explains that “Salle is relied on for the limited purpose of disclosing ‘prediction functionality’ for determining if users are having difficulty completing a transaction and intend to cancel or abandon the transaction.” Pet. 21 (citing Ex. 1006 ¶ 36) (alteration in original). Petitioner does not allege nor rely on Salle to teach the “cancel a transaction associated with the website-based process or abandon the website-based process” as recited in each of independent claim 1, 9, and 19. For the same reasons as discussed above relative to claim 1 in view of Nickerson and Error, we are not persuaded that the Petition supports a reasonable likelihood that claims 1, 9, and 19 are unpatentable as obvious over Nickerson, Error, and Salle. Petitioner’s challenges of dependent claims 2–8 and 10–18 suffer the same deficiency, and we likewise determine that Petitioner falls short in demonstrating a reasonable likelihood that those dependent claims are unpatentable as obvious over Nickerson, Error, and Salle.” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,886,552 - PTAB · May 12, 2022 · IPR2022-00074 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–13 on all petitioned 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(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all other papers and supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Resp. 16; Sur-reply 1. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of follow-on petitions or multiple petitions challenging the ’732 patent. Reply 1; Sur-reply 1. There has only been a single petition for inter partes review filed against the ’732 patent. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are:” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“arguments are persuasive. First, we are persuaded that the ’732 patent is not entitled to priority to the filing date of the ’085 application and the ’689 application because the ’085 application and the ’689 application do not share any common inventors with the ’732 patent. See 35 U.S.C. § 120 (2018) (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”). The ’732 patent names Jared Oehring, Brandon N. Hinderliter, and Arthur Baron as inventors. Ex. 1001, code (72). The ’085 application and the ’689 application name Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1013, code (72); Ex. 1027, code (72). We have reviewed the ’085 application and the ’689 application and determine, on this record, that the applications fail to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations recited by independent claims 1 and 8: “a weight monitoring system,” (Ex. 1001, 9:63, claim 1); “a proppant dispensing system . . . selectively activated by the information handling system,” (id. at 10:1–3, claim 1); “sensing an amount of proppant” (id. at 10:44, claim 8); “comparing the amount of proppant,” (id. at 10:46 claim 8); and “regulating a flow of proppant from the proppant storage container” (id. at 10:49, claim 8).” slip op. at 5
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,254,732 - PTAB · Apr 26, 2022 · IPR2022-00024 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4 for every petitioned ground, 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(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition, the Preliminary Response, the Preliminary Reply, and the Preliminary Sur-reply, as well as all supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time of the invention of the ’181 patent would have had the following education and experience: (1) at least an undergraduate degree in computer science or closely-related field, or similar advanced post-graduate education; and (2) 1–2 years of experience with systems related to secure communications systems, particularly in the transaction context, where more experience may substitute for less education and vice versa.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms that are in controversy need be construed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Other than to the extent we construe the term “counter value” below, no explicit construction of any claim term is required for the purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are not persuaded by Patent Owner at this stage that the language of the claims requires the counter value in the generating step to be a pre-incremented instance of the counter value. We are not persuaded that the claim’s use of the article “a” before counter value in the generating step and “the” before in the incrementing provides anything more than proper antecedent basis for the counter value. And, Patent Owner apprises us of no other claim language that would require a pre-incremented instance of the counter value. See generally Prelim. Resp.; Prelim. Reply. Further, we are not persuaded that the generating step’s counter value is required to be “preincremented” for claim 1 to be consistent with the ’181 patent because, according to Patent Owner, the embodiment of method 300 discloses the creating the RFID transaction device authentication tag (step 306) before incrementing the counter value (step 310) (Ex. 1001, 11:37–59). Contrary to Patent Owner’s argument, the ’181 patent specifically states that “the steps recited in any of the method or process claims may be executed in any order and are not limited to the order present.” Ex. 1001, 16:33–36. For these reasons, we are not persuaded by Patent Owner at this stage that the language of the claims requires the counter value in the generating step to be a pre-incremented instance of the counter value.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,066,181 - PTAB · Mar 16, 2022 · IPR2021-01538 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–8 on all presented grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“We are not persuaded by Patent Owner that the circumstances here warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Resp. 12. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because this is not a case of follow-on petitions or multiple petitions challenging the ’031 patent. Prelim. Reply 3. There has only been a single petition for inter partes review filed against the ’031 patent. Id. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314. Patent Owner contends that we should exercise the Director’s discretion to deny institution for a number of reasons, for example, because Petitioner’s challenges to Patent Owner’s patents are allegedly “an attempt to weaponize the IPR process, and impose increased costs and leverage on USWS’s valuable technology in an attempt to overtake this sector of the market.” Prelim. Resp. 16. We have considered all of Patent Owner’s allegations and are not persuaded that exercising discretion is warranted. Patent Owner’s allegations are not supported by sufficient evidence and, to the contrary, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation. Petitioner expresses reasonable concern that Patent Owner may initiate additional district court litigation regarding its as yet unasserted patents. See Prelim. Reply 2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Dykstra and Omont were disclosed on Information Disclosure Statements, but neither the Examiner nor Applicant substantively discussed these references during prosecution. See Ex. 1002, 220, 545. The Examiner indicated that they were considered during prosecution by annotating the Information Disclosure Statements. Id. Our precedent establishes that applicant, such as on an Information Disclosure Statement, in the prosecution history of the challenged patent.” Advanced Bionics, Paper 6 at 7–8. Thus, we agree with Patent Owner that Dykstra and Omont were previously presented to the Office. Thus, the first part of the Advanced Bionics framework is satisfied. The second part of the Advanced Bionics framework, however, is not satisfied, because Petitioner has shown material error in the Examiner’s failure to apply Dykstra. In his statement of the reasons for allowance, the Examiner stated, “[t]he prior art of record does not disclose or suggest all the claimed subject matter including the automatic fracturing system having the plurality of sensing and control devices for the plurality of systems and controlling the plurality of systems based on the automated instructions.” Ex. 1002, 697. As discussed above, Petitioner asserts that Dykstra discloses this claimed subject matter. Pet. 22–24. On the record before us, we agree that Dykstra meets the limitations pertaining to “plurality of sensing and control devices.” Thus, Petitioner shows error in a manner material to the patentability of the challenged claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“either (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production; or (2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production. Pet. 12. Patent Owner adopts this definition of the level of skill. Prelim. Resp. 8. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior 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 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner provide any explicit construction of any claim terms. Pet. 12; Prelim. Resp. 8. Except to the extent we explain how we interpret the claims in the analysis below, we decline to otherwise expressly construe any claim terms at this time. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then only to the extent Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs in the context of an inter partes review).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,408,031 - PTAB · Feb 22, 2022 · IPR2021-01316 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–17 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Other 314aDecided for petitioner
“This case is unlike other situations in which the Board has exercised its discretion to deny institution. Instead, Patent Owner asks us to deny institution because Petitioner has filed petitions challenging several of Patent Owner’s patents that are not asserted in district court litigation, arguing that the filing of this many petitions by one petitioner against one patent owner is contrary to the purposes of the AIA. Prelim. Resp. 11–21. Patent Owner’s arguments fail to persuade us to exercise our discretion to deny institution in this case. For each of Patent Owner’s patents, Petitioner has filed only one petition. We do not see this action as being contrary to the purposes of the AIA. See, e.g., Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (designated precedential) (citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011)) (noting that the AIA is “not to be used as [a] tool[] for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). Moreover, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation, and Petitioner expresses reasonable concern that Patent Owner may initiate additional litigation regarding its asyet unasserted patents. See Prelim. Reply 2. Accordingly, for the foregoing reasons, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“whether the same or substantially the same art or arguments were presented previously to the Office. It is undisputed that each of the asserted references—Coli, Broussard, and Payne—was submitted to the Office via IDS. Ex. 1002, 13–30. The Examiner indicated that Coli, Broussard, and Payne had been considered. Id. at 117, 121, 128, 132. Our precedent establishes that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Advanced Bionics, Paper 6 at 7–8. Moreover, the Examiner rejected claims based on Payne. See, e.g., Ex. 1002, 269–71. Accordingly, we determine that each of Coli, Broussard, and Payne was presented previously to the Office.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e.g., Ex. 1004, 5:5–10) does not negate the fact that Coli’s pumps are also configured for high pressure applications. Indeed, Coli discloses that the pump may be a “a quintiplex or triplex plunger style pump, for example, the SWGS-2500 Well Service Pump sold by Gardner Denver, Inc.” (Ex. 1004, 7:40–43) and that “[e]ach fracturing module 20 sits on trailer 10 which houses the necessary mounts and manifold systems for low pressure suctions and high pressure discharges” (id. at 13:19–22 (emphasis added)). Patent Owner does not dispute that such pumps are capable of or configured to operate at high pressure. Furthermore, claim 1 is directed to a system that only requires that the pump be “configured to” pump fluid at a high pressure; that is, the recited operation is functional in nature. Because we find that the pump disclosed in Coli is a high-pressure pump designed to operate at “high pressure discharges” and rated at 2500 hp (see id. at 8:8–10), we determine that Petitioner has made a sufficient showing for purposes of institution that Coli discloses the pump “configured to pump fluid into a wellbore associated with the well at a high pressure so that the fluid passes from the wellbore into the subterranean formation and fractures the subterranean formation,” as recited in claim 1. Accordingly, for the foregoing reasons and on this preliminary record, Coli supports Petitioner’s contentions.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“That Coli discloses operating the pump at “medium pressure” (see, e.g., Ex. 1004, 5:5–10) does not negate the fact that Coli’s pumps are also configured for high pressure applications. Indeed, Coli discloses that the pump may be a “a quintiplex or triplex plunger style pump, for example, the SWGS-2500 Well Service Pump sold by Gardner Denver, Inc.” (Ex. 1004, 7:40–43) and that “[e]ach fracturing module 20 sits on trailer 10 which houses the necessary mounts and manifold systems for low pressure suctions and high pressure discharges” (id. at 13:19–22 (emphasis added)). Patent Owner does not dispute that such pumps are capable of or configured to operate at high pressure. Furthermore, claim 1 is directed to a system that only requires that the pump be “configured to” pump fluid at a high pressure; that is, the recited operation is functional in nature. Because we find that the pump disclosed in Coli is a high-pressure pump designed to operate at “high pressure discharges” and rated at 2500 hp (see id. at 8:8–10), we determine that Petitioner has made a sufficient showing for purposes of institution that Coli discloses the pump “configured to pump fluid into a wellbore associated with the well at a high pressure so that the fluid passes from the wellbore into the subterranean formation and fractures the subterranean formation,” as recited in claim 1. Accordingly, for the foregoing reasons and on this preliminary record, Coli supports Petitioner’s contentions.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,280,724 - PTAB · Feb 17, 2022 · IPR2021-01315 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“We are not persuaded by Patent Owner that the circumstances here warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Sur-reply 1–2. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of followon petitions or multiple petitions challenging the ’500 patent. Prelim. Reply 3; Prelim. Sur-reply 1. There has only been a single petition for inter partes review filed against the ’500 patent. Prelim. Reply 3. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314. Patent Owner contends that we should exercise the Director’s discretion to deny institution for a number of reasons, for example, because Petitioner’s challenges to Patent Owner’s patents are allegedly “an attempt to weaponize the IPR process, and impose increased costs and leverage on USWS’s valuable technology in an attempt to overtake this sector of the market.” Prelim. Resp. 15. We have considered all of Patent Owner’s allegations and are not persuaded that exercising discretion is warranted. Patent Owner’s allegations are not supported by sufficient evidence and, to the contrary, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation. Petitioner expresses reasonable concern that Patent Owner may initiate additional district court litigation regarding its as yet unasserted patents. See Prelim. Reply 2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Although Broussard was presented to the Office, we find that the first part of the Advanced Bionics framework is not satisfied, because the Petition does not assert Broussard alone. Rather, Broussard is asserted in combination with Kaarstad in every ground set forth in the Petition. Pet. 14. Kaarstand was not presented to the Office during prosecution. Pet. 14. Patent Owner asserts that Kaarstad is cumulative of Seiver and Kristensen; on the record before us, we agree with Petitioner that it is not. Prelim. Resp. 27–30, Prelim. Reply 5. Specifically, we agree with Petitioner that “Kaarstad includes a power distribution network with two switchgear units and a tiebreaker coupled therebetween.” Prelim. Reply 5 (citing Pet. 24–29). We further agree with Petitioner that these elements disclosed in Kaarstad (i.e. two switchgear units and a tiebreaker coupled therebetween) are the same elements that Patent Owner used to overcome the Examiner’s rejection based on Seiver. Prelim. Reply 5; Ex. 1004, 39. In addition, we agree with Petitioner that Kristensen was never relied on by the Examiner during the underlying prosecution, and that Kristensen merely discloses a single switchgear as opposed to the two switchgears and tiebraker required by the claims. Prelim. Reply 5; Ex. 2002, Abst., 7:52. For these reasons, we determine that Kaarstad is not cumulative of Siever or Kristensen. Thus, the first part of the Advanced Bionics framework is not satisfied because the combination of references asserted in the Petition was not presented previously to the Office. Under the circumstances presented here, we determine that exercising discretion to deny the Petition under § 325(d) is unwarranted.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claims 1–11 and 13–19 of the ’500 patent are obvious over Broussard and Kaarstad.” slip op. at 31
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“arguments are persuasive. Specifically, we are persuaded that the ’500 patent is not entitled to priority to the November 16, 2012, filing date of the ’085 application because the ’500 patent and the ’085 application do not share any common inventors. See U.S.C. § 120 (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor”). The ’500 patent names Jared Oehring and Brandon N. Hinderliter as inventors. Ex. 1001, code (72). The ’085 application names Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). We have reviewed the ’085 application and determine that the ’085 applications fails to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations of independent claims 1 and 14: “at least two switch gear units” (Ex. 1001, 15:44, claim 1; id. at 16:63, claim 14); and “tie breaker electrically coupled between each of the at least two switchgear units” (id. at 15:48–49, claim 1; id. at 16:66– 67). See generally Ex. 1005. Accordingly, on this record, we are persuaded that the effective filing date of the ’500 patent is April 15, 2016.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,893,500 - PTAB · Feb 16, 2022 · IPR2021-01066 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–20 on all six asserted obviousness 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(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as all supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- Other 314aDenied
“We are not persuaded by Patent Owner that the circumstances here warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017). Sur-reply 1–2. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of follow-on petitions or multiple petitions challenging the ’711 patent. Reply 3; Sur-reply 1. There has only been a single petition for inter partes review filed against the ’711 patent. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercise discretion to deny a Petition under 35 U.S.C. § 314.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We are persuaded by Petitioner that Blutke and Roby are not cumulative of the prior art evaluated during prosecution because, as discussed in our analysis below, Petitioner sufficiently shows that Blutke discloses a gas compression system or vaporized gas heating and Roby discloses an inert gas to regulate the fuel provide to the at least one generator as required by the claims of the ’711 patent. During prosecution, the Examiner allowed claim 1 after it was amended to include the inert gas source limitation. See Ex. 1002, 36–42, 69. All of the grounds asserted in the Petition rely upon a combination of references that includes Blutke, and some grounds additionally include Roby. Pet. 20. Therefore, we determine 7 U.S. Patent No. 4,442,665 (Ex. 2001). 8 U.S. Patent No. 7,807,048 B2 (Ex. 2010). that the combinations of reference presented in the Petition were not previously presented to the Office. We, thus, determine that the first part of the Advanced Bionics framework is not satisfied because the Petition includes grounds based on combinations of prior art not previously presented to the Office. We find that § 325(d) is not sufficiently implicated under the circumstances here, and we determine that denying the Petition under § 325(d) is unwarranted.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this level of skill at this stage of the proceeding. Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior 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 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,020,711 - PTAB · Feb 16, 2022 · IPR2021-01238 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that at least one claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only when “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) (2018). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG”) 64 (Nov. 2019) (“The Board will not institute on fewer than all claims or all challenges in a petition.”);1 see also AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019) (“[I]f the Board institutes an IPR, it must . . . address all grounds of unpatentability raised by the petitioner.”).” slip op. at 2
- Other 314aDenied
“This case is unlike other situations in which the Board has exercised its discretion to deny institution. Instead, Patent Owner asks us to deny institution because Petitioner has filed petitions challenging several of Patent Owner’s patents that are not asserted in district court litigation, arguing that the filing of this many petitions by one petitioner against one patent owner is contrary to the purposes of the AIA. Prelim. Resp. 12–23. Patent Owner’s arguments fail to persuade us to exercise our discretion to deny institution in this case. For each of Patent Owner’s patents, Petitioner has filed only one petition. We do not see this action as being contrary to the purposes of the AIA. See, e.g., Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (designated precedential) (citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011)) (noting that the AIA is “not to be used as [a] tool[] for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). Moreover, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation, and Petitioner expresses reasonable concern that Patent Owner may initiate additional litigation regarding its asyet unasserted patents. See Prelim. Reply 2. Accordingly, for the foregoing reasons, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to claim priority to an early-filed U.S. patent application, the earlier-filed application must disclose the invention claimed in the later-filed application “in the manner provided by section 112(a) (other than the requirement to disclose the best mode)” and the later-filed application must “name[] an inventor or joint inventor in the previously filed application.” 35 U.S.C. § 120. For the reasons discussed below, we agree with Petitioner that, on this preliminary record, the ’882 patent is not entitled to claim priority to the filing date of the ’689 application. Each of the independent claims of the ’882 patent recites a first switch gear positioned between a source of electricity and a transmission line and a second switch gear positioned between the transmission line and an electric motor. Ex. 1001, 8:55–57, 9:19–22. “Switchgear” is “[a] general term covering switching and interrupting devices and their combination with associated control, instrumentation, metering, protective and regulating devices.” Ex. 1029, 7. The ’689 application does not disclose a switch gear. See generally Ex. 1004.2 Nor does the ’689 application disclose any switching or interrupting devices or any transformers. See generally id. Therefore, we agree that, on this preliminary record, the ’689 application does not disclose the invention claimed in the ’882 patent in the manner provided by 35 U.S.C. § 112(a). Additionally, the ’689 application lists Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). The ’882 patent lists Jared Oehring and Brandon Neil Hinderliter as inventors. Ex. 1001, code (72); Ex. 1003, 808. Therefore, we agree that, on this 2 Exhibit 1004 is the publication of the ’689 application. Ex. 1004, code (21). preliminary record, the ’882 patent does not name an inventor or joint inventor of the ’689 application. Accordingly, for the foregoing reasons and on this preliminary record, we agree with Petitioner that the ’882 patent is not entitled to claim priority to the filing date of the ’689 application.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,526,882
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.