- First Solar, Inc. v. Rovshan SadeInstitution deniedPTAB · Nov 16, 2023 · IPR2023-00881 · APJ Kevin W Cherry · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claim 1 was unpatentable over Wattsun, RayTracker, or their combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 inter partes review). slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Relying on the declaration testimony of Edward C. Kern, Jr., Petitioner contends that an ordinarily skilled artisan for the ’17,546 patent “would have had a bachelor’s degree in mechanical engineering or equivalent with 2–3 years of experience involving design, development, and manufacturing of support and mounting structures for solar trackers, with additional education substituting for experience and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 34). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’17,546 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits the claims be interpreted “according to 37 C.F.R. § 42.100(b)” and that no terms require explicit construction. Pet. 16. Patent Owner does not “believe that any claim terms require express construction in order to deny institution.” Prelim. Resp. 10. Patent Owner also asserts “that providing a construction of the claims at issue is the duty of Petitioner, and the Petitioner has failed to comply.” Id. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“d) Analysis We observe that Patent Owner’s arguments in connection with its challenge to Wattsun as prior art do raise meaningful questions, on this record, as to Wattsun’s status as a printed publication before the priority date of the challenged patent. In particular, we take note of Patent Owner’s contention (see Prelim. Resp. 20–21) that Petitioner has failed to present sufficient evidence or argument that an interested party exercising reasonable diligence would have located Wattsun. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1349 (Fed. Cir. 2016).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,917,546 - First Solar, Inc. v. Rovshan SadeInstitution deniedPTAB · Nov 16, 2023 · IPR2023-00827 · APJ Josiah C Cocks · IPR · Institution
Institution denied for claims 5 and 6 because Petitioner did not show a reasonable likelihood of success on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner 1 The ’57,546 patent is the parent of U.S. Patent No. 9,917,546 B2 (“the ’17,546 patent”). A Petition challenging claim of the ’17,546 patent (IPR2023-00881) was filed on the same day as this IPR2023-00827 proceeding. would prevail in establishing the unpatentability of any challenged claim of the ’57,546 patent. Accordingly, we deny institution of the Petition for inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on the declaration testimony of Edward C. Kern, Jr., Petitioner contends that an ordinarily skilled artisan for the ’57,546 patent “would have had a bachelor’s degree in mechanical engineering or equivalent with 2–3 years of experience involving design, development, and manufacturing of support and mounting structures for solar trackers, with additional education substituting for experience and vice versa.” Pet. 14–15 (citing Ex. 1003 ¶¶ 34). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’57,546 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits the claims be interpreted “according to 37 C.F.R. § 42.100(b)” and that no terms require explicit construction. Pet. 15. Patent Owner does not “believe that any claim terms require express construction in order to deny institution.” Prelim. Resp. 8. Patent Owner also asserts “that providing a construction of the claims at issue is the duty of Petitioner, and the Petitioner has failed to comply.” Id. at 8–9. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“a) Legal Standards for Public Accessibility “[T]he burden is on the petitioner to 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 16 (PTAB Dec. 20, 2019) (precedential). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). In certain situations, such as for manuscripts or dissertations stored in libraries, courts may inquire whether a reference was sufficiently indexed, catalogued, and shelved. See, e.g., In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986); In re Lister, 583 F.3d 1307, 1315 (Fed. Cir. 2009) (manuscript became publicly accessible once it was placed in a searchable database). Analogously, electronic documents may be publicly accessible if they were indexed or catalogued, or if there were other tools for customary and meaningful research. See SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). “[I]ndexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media.” Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,057,546 - PTAB · Jul 18, 2023 · IPR2023-00350 · APJ Cynthia L Murphy · IPR · Institution
Review instituted for claims 1–8 on all asserted grounds, based on a reasonable likelihood of success on the Publicover anticipation challenge and the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In Part Two of the Advanced Bionic framework, we determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact the patentability of the challenged claims.” Id. at 8 n.9. Here, the prosecution history of the ’687 Patent reflects that the Office materially erred by overlooking Publicover’s non-illustrated embodiments. As discussed above in Section V, the prosecution history reflects that the different treatment of Application Claim 1 (i.e., rejected as anticipated by Publicover) and Application Claim 11 (i.e., not anticipated by Publicover) seemed to rest on Application Claim 11 requiring the support members to be connected to the barrier net only at or near an upper peripheral part of the barrier (i.e., a top-only connection (c)), while Application Claim 1 did not. As discussed above in Section VI, a claim that did not required a top-only connection (c) could be anticipated by Publicover’s non-illustrated embodiment. And Petitioner demonstrates that when Publicover’s non-illustrated embodiment is taken into consideration, there is a reasonable likelihood that Issued Claim 1 is anticipated by Publicover. Infra § VIII. Thus, we decline to exercise our discretion to deny the Petition under § 325(d).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that Petitioner demonstrates a reasonable likelihood that it will prevail on its challenge to Issued Claim 1 as anticipated by Publicover. We have reviewed Petitioner’s cited evidence and explanation regarding why Publicover anticipates claims 2–8 and find them sufficient at this stage. At this stage, Patent Owner raises no other arguments regarding these claims other than those considered above with respect to claim 1. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Publicover anticipates claims 2–8.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). “[A] reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“With respect to Ground 2—Obviousness of claims 3 and 4 over Publicover and Coan, Petitioner relies on Coan “[i]f Publicover is determined not to teach ‘so that in their natural rest state the enclosure support members extend away from the mat.” Pet. 40. Patent Owner contends that Coan does not teach this limitation, and because the rigid nature of Coan’s enclosure, Coan teaches away from the combination with Publicover. Prelim. Resp. 50–53. Patent Owner further argues that Petitioner only offers a conclusory motivation to combine the references. Given our conclusion above, we do not resolve this argument, which may have some merit. The parties should address these arguments further during trial.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,854,687 - Iapartments, Inc. v. Edst, LLCInstitutedPTAB · Apr 11, 2023 · IPR2022-01468 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, Petitioner has demonstrated on the record before us a reasonable likelihood that it will prevail in showing that claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and 33 of the ’273 patent are unpatentable. Although we express concern as to Petitioner’s showing for the Kraus-based grounds and determine that the record would benefit from further briefing on an issue related to Petitioner’s showing for the ground of anticipation by Cahill, we institute trial on all challenged claims and all asserted grounds of unpatentability. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) (holding that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 5 (Nov. 2019), available at https://www.uspto.gov/ sites/default/files/documents/tpgnov.pdf (“In instituting a trial, the Board will either (1) institute as to all claims challenged in the petition and on all grounds in the petition, or (2) institute on no claims and deny institution. The Board will not institute on fewer than all claims or all challenges in a petition.”). We have not, however, made a final determination with respect to the patentability of the challenged claims. V. ORDER For the reasons given, it is ORDERED that inter partes review is instituted as to all challenged claims of the ’273 patent, namely, claims 1, 2, 5–11, 14, 15, 17, 18, 20, 21, 23, 25, 26, 28, 29, 31, and 33, based on all grounds presented in the Petition; and” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16, 2013. Because the application from which the ’273 patent was filed before this date, the pre-AIA version of §§ 102 and 103 apply. 2 Cahill, U.S. Publ’n No. 2019/0043289 A1, published Feb. 7, 2019 (Ex. 1005). 3 Deros et al., U.S. Publ’n No. 2018/0110093 A1, published Apr. 19, 2018 (Ex. 1007). 4 Kraus et al., U.S. Publ’n No. 2010/0283579 A1, published Nov. 11, 2010 (Ex. 1006). 5 Ho et al., U.S. Publ’n No. 2021/0319639 A1, published Oct. 14, 2021 (Ex. 1008). 6 Michael McCole, How to Make Nest’s Thermostat Your Smart-Home Hub, WIRED (Feb. 10, 2016, 5:42 AM), https://www.wired.com/2016/02/ iotcookbook-nest/ (Ex. 1013). the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner proposes constructions for the claim terms “offline door lock” and “credential device.” Pet. 34–35. Patent Owner does not respond. See generally Prelim. Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“We disagree with Patent Owner. As discussed above, Petitioner argues that modifying Cahill’s system to use a LoRaWAN protocol as taught by Deros would have been a simple substitution of one communication protocol for another. Pet. 56. Petitioner points to where Cahill teaches considering not only satellite, broadcast radio, and microwave, but also various other communication methods including the well-known protocols Wi-Fi and Ethernet, as options for wired or wireless communications. Ex. 1005 ¶ 43 (cited by Pet. 43). Petitioner also points to where Deros teaches considering Wi-Fi, Ethernet, and LoRa, among various other communication methods, as options for wired or wireless communications. Ex. 1007 ¶ 38 (cited by Pet. 62). This teaching in Deros suggests using various communication methods including Wi-Fi, Ethernet, or LoRa interchangeably, thus supporting Petitioner’s simple substitution argument. A claimed invention that involves “the simple substitution of one known element for another” to “yield a predictable result” is obvious. KSR, 550 U.S. at 416–17. Here, the claimed invention may be obtained by modifying Cahill’s system to use LoRa for communications as taught by Deros. This is the substitution of one known communication protocol for another known communication protocol to obtain a predictable result. That satellite, broadcast radio, and microwave may not be types of protocols, as Patent Owner contends, does not adequately rebut Petitioner’s showing for obviousness. We note Patent Owner’s contention that “Petitioner’s further allegation that a [person of ordinary skill in the art] would have been motivated to use a LoRaWAN in Cahill ‘to improve battery life of the connected smart devices such as smart locks’ is wrong and misguided.” Prelim. Resp. 22–24. Even if this were true, we still find Petitioner’s simple substitution argument sufficient for institution for the reasons given above.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“We disagree with Patent Owner. As discussed above, Petitioner argues that modifying Cahill’s system to use a LoRaWAN protocol as taught by Deros would have been a simple substitution of one communication protocol for another. Pet. 56. Petitioner points to where Cahill teaches considering not only satellite, broadcast radio, and microwave, but also various other communication methods including the well-known protocols Wi-Fi and Ethernet, as options for wired or wireless communications. Ex. 1005 ¶ 43 (cited by Pet. 43). Petitioner also points to where Deros teaches considering Wi-Fi, Ethernet, and LoRa, among various other communication methods, as options for wired or wireless communications. Ex. 1007 ¶ 38 (cited by Pet. 62). This teaching in Deros suggests using various communication methods including Wi-Fi, Ethernet, or LoRa interchangeably, thus supporting Petitioner’s simple substitution argument. A claimed invention that involves “the simple substitution of one known element for another” to “yield a predictable result” is obvious. KSR, 550 U.S. at 416–17. Here, the claimed invention may be obtained by modifying Cahill’s system to use LoRa for communications as taught by Deros. This is the substitution of one known communication protocol for another known communication protocol to obtain a predictable result. That satellite, broadcast radio, and microwave may not be types of protocols, as Patent Owner contends, does not adequately rebut Petitioner’s showing for obviousness. We note Patent Owner’s contention that “Petitioner’s further allegation that a [person of ordinary skill in the art] would have been motivated to use a LoRaWAN in Cahill ‘to improve battery life of the connected smart devices such as smart locks’ is wrong and misguided.” Prelim. Resp. 22–24. Even if this were true, we still find Petitioner’s simple substitution argument sufficient for institution for the reasons given above.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,825,273 - PTAB · Mar 6, 2023 · IPR2022-01472 · APJ Cynthia L Murphy · IPR · Institution
The Board instituted IPR on claims 1–4, 7, and 9–23 on all asserted grounds, finding a reasonable likelihood that the Lennox, Harris, and Nailor combination renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“35 U.S.C. § 314(a) to deny institution in view of the parallel district court litigation involving the challenged claims (“the Parallel Proceeding”). Prelim. Resp. 34. Petitioner contends that “discretionary denial is not appropriate in this case” at least because of its Soreta stipulation (Sotera [Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)]. Pet. 64. In particular, Petitioner stipulates that, if IPR is instituted on the grounds set forth in this Petition, it will not pursue in the Parallel Proceeding the specific grounds asserted in the Petition against the challenged claims, or any other ground that could have been reasonably raised in the Petition against the challenged claims.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying the above standards, and upon considering the Petition, the Preliminary Response, 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 ’988 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–4, 7, and 9–23) of the ’988 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find that Petitioner has shown sufficiently that the combination accounts for the preamble, regardless of whether or not it is limiting. Patent Owner’s arguments that Harris and Nailor do not teach a “linear bar grille” are not persuasive because Petitioner relies on Lennox for that limitation. As for the reason to combine, we find that Petitioner has shown a sufficient reason to combine. As Petitioner explains, extrusion is a well-known manufacturing process with known economic advantages, which at this stage, is a sufficient motivation to combine the teachings of Lennox with Harris and Nailor. See Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1337 (Fed. Cir. 2009) (noting “efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable” generally are obvious); see also KSR, 550 U.S. at 417 (noting “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 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“has made a reasonable showing that Nailor—the document in the record as Exhibit 1006, including the figures, without magnification, was publicly accessible. Nor does Patent Owner dispute that the figures accurately represent enlargements of the figures shown in Nailor. See Prelim. Resp. 11 (acknowledging that the 300% enlarged figure is the “same figure”). Instead, Patent Owner argues that Petitioner must make an additional showing that the magnified drawings, already existed and these magnifications were publicly accessible. See id. We disagree. A party is allowed to magnify and annotate figures to aid its presentation in its papers. See Lubanski v. Coleco Indus., Inc., 929 F.2d 42, 48 (1st Cir. 1991) (allowing photographs and enlargements of photographs, if “the photograph depicts a correct likeness of the scene it purports to represent”); Durant v. Surety Homes Corp., 582 F.2d 1081, 1089 (7th Cir. 1978) (allowing using of “blowups of otherwise admissible pictures” noting “[e]nlarged photographs are frequently used in trials”). Petitioner clearly labels the figures as annotated and enlarged. See Pet. 26–28 (indicating that the figures are “enlarged” and “annotated”). Moreover, contrary to Patent Owner’s argument that the figures are not “substantiated in any declaration,” Petitioner’s expert provides similar enlargements and annotations and explains what they are. Ex. 1003 ¶¶ 54, 55. As Patent Owner acknowledges and we have confirmed, the figures appear to accurately represent 300% magnification of portions of Exhibit 1006. See Prelim. Resp. 11. “It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Thus, we disagree with Patent Owner that Petitioner needed to separately show that the enlargements were publicly accessible apart from showing that Nailor was publicly accessible. We have reviewed Petitioner’s evidence that Nailor was publicly accessible before the effective filing date of the ’988 patent. See Pet. 25–26 (citing Ex. 1030 ¶ 5; Ex. 1028 ¶¶ 5–7; Ex. 1029 ¶¶ 5–7). On this record, we find that it is sufficient to establish a reasonable likelihood that Nailor qualifies as prior art in this proceeding. See Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential). We address Patent Owner’s other arguments about whether Nailor teaches indented slots, or not, Prelim. Resp. 25, below.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,765,988 - PTAB · Mar 6, 2023 · IPR2022-01475 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–4, 8–11, and 14–16 on all asserted grounds, finding a reasonable likelihood that the Lennox, Harris, and Nailor combination renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying the above standards, and upon considering the Petition, the Preliminary Response, 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 ’305 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–4, 8–11, and 14–16) of the ’305 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)] stipulation, which is dispositive on the question of discretionary denial.” Pet. 64. In particular, Petitioner stipulates that, if IPR is instituted on the grounds set forth in this Petition, it will not pursue in the Parallel Proceeding the specific grounds asserted in the Petition against the challenged claims, or any other ground that could have been reasonably raised in the Petition against the challenged claims. Id. at 65 (citing Sotera, Paper 12 at 13–14). We will not discretionarily deny institution in view of parallel district court litigation when a petitioner stipulates not to pursue in that parallel litigation the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 3, 7–8.3 Because Petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, or at least 3 years of experience designing, manufacturing, installing, and/or finishing drywall using accessories such as grilles or grates.” Pet. 12 (citing Ex. 1003 (Kaczkowski Decl.) ¶ 65). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 4–5. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’305 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). C. Claim Construction” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because we find that Petitioner has shown a reasonable likelihood of prevailing on the second challenge—the combination of Lenox, Harris and Nailor— under either party’s construction of the preamble, we find that no construction of the preamble is necessary at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 2. “Flexible” Both parties seek construction of the term “flexible.” See Pet. 19; Prelim. Resp. 10–11. Here, we find that none of the patentability challenges raised in the Petition turn on the meaning of the term “flexible.” Accordingly, we determine that no construction of the term is necessary. See Nidec, 868 F.3d at 1017.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,871,305 - Unified Patents, LLC v. Ideahub Inc.InstitutedPTAB · Feb 6, 2023 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Institution
The Board instituted post-grant review of claims 1–13 on all grounds, finding it more likely than not that at least claim 1 lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a) (2021). Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition, Patent Owner’s Preliminary Response, Petitioner’s Preliminary Reply, Patent Owner’s Preliminary Sur-reply, as well as all supporting evidence, we determine that Petitioner satisfies its burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims of the ’274 patent is unpatentable. Therefore, we authorize a post-grant review to be instituted as to all grounds and all challenged claims. 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Id. at 7:24–8:4 (emphasis added). The ’928 application repeatedly makes clear that directionality and intra mode are related, but distinct concepts. They are not interchangeable as Patent Owner argues. On this point, we find Dr. Freedman’s explanation in paragraph 85 of his Declaration on the relationship between “intra mode” and “directionality” to be particularly well-reasoned and persuasive. As Dr. Freedman explains, [t]hroughout the ’928 application, the text uses the term “directionality” to refer to characteristics of neighboring blocks, whereas the term “intra mode” is used when referring to the current block. For example, the ’928 application describes that “directionality” of neighboring blocks is “estimated from the neighboring blocks” that “have already been reconstructed” while the “intra mode” is selected for the current block for purposes of reconstructing that current block. This is likely because the neighboring blocks “have already been reconstructed” and thus, the intra mode number that was used in reconstructing those blocks is no longer pertinent. Instead, what is pertinent in the ’928 application’s method is the directionality characteristic of those neighboring blocks. Phrased differently, in the ’928 application, directionality is a concept that is evaluated after performance of intra prediction (i.e., after reconstruction), whereas the intra mode or number is a concept used during performance of intra prediction. They are not equivalent in the context of the ’928 application. Ex. 1005 ¶ 86 (citing Ex. 1028, 11:14–12:4, 25:10–15; Ex. 1036, 706 (“The DCT coefficients gathered from the MPEG 2 process are used to estimate the directional features in a picture. The estimated directional features are then used to compute the intra prediction modes in the H.264 encoding stage.”)).8 Thus, we are persuaded by Dr. Freedman’s testimony, supported by Kalva, that these terms are not synonymous, as is Patent Owner’s and its expert’s position.” slip op. at 31
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“F. Anticipation and Obviousness Challenges Based on HEVC265 Petitioner contends that claims 1–4 and 6 are anticipated by, or alternatively, rendered obvious in view of HEVC265. Pet. 49–52. Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,122,274 - Beckman Coulter, Inc. v. Becton, Dickinson And CompanyInstitution deniedPTAB · Dec 1, 2022 · IPR2022-01122 · APJ Michael A Valek · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–13 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of establishing that any of the challenged claims are unpatentable on any of the grounds in the Petition. Accordingly, institution of inter partes review is denied. V. ORDER Accordingly, it is: ORDERED that the Petition is denied, and no inter partes review is instituted” slip op. at 33
- Skill levelOther
“We are sympathetic to Patent Owner’s argument that a POSA would have had at least some experience with the optical systems used in optical analyzers. All of the claims recite an “optical analyzer” and the Specification is replete with references to optical analyzers and their operation. See, e.g., Ex. 1001, Abstr., 1:14–15, 2:3–4, 2:18–29, 3:38–57, 9:55–10:59 (claims reciting an “optical analyzer”). Moreover, Patent Owner cites other evidence that also suggests a POSA would have such experience. See Prelim. Resp. 12–13. However, on the current record, we are not convinced that the ordinary level of skill in the art would necessarily require the amount of specific experience (i.e., two years working and/or designing optical systems in optical analyzers) that Patent Owner urges. Petitioner’s declarant, Dr. Fang, testifies that two years of experience “in the field of optical imaging, with a specific focus on laser optics” would suffice. See Ex. 1002 ¶ 9. Thus, while it seems likely that a POSA would have at least some experience specific to optical analyzers, we see no reason why additional experience with laser optics more generally could not provide the balance of the two years of experience noted in the parties’ definitions. In any event, we need not resolve this issue here because we would reach the same outcome under either parties’ POSA definition.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The testimony Petitioner offers from its declarant, Dr. Fang, does not provide the missing explanation. Paragraphs 115 and 127 of Dr. Fang’s declaration, provide his opinions that “adapting a lens to focus a light beam onto a focal spot within a sample analysis region is no different from adapting a lens to focus a light beam into any region in space in other applications” and that a POSA would “understand that Lynch is generally applicable to light sources emitting collimated beams, and that such light sources were well-known in the art.” Ex. 1002 ¶¶ 115, 127. In paragraph 126, Dr. Fang testifies that a POSA would have a reasonable expectation of success in implementing the system described in Lynch.11 None of this testimony explains why a POSA would have been motivated to modify Lynch for implementation in an optical analyzer. For these reasons and based on the current record, Petitioner has not” slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Whether to treat a preamble as a limitation is a determination ‘resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”’ In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002) (citation omitted). “In general, a preamble limits the claimed invention if it recites essential structure or steps, or if it is necessary to give live meaning and vitality to the claim.” Id. (citation and quotations omitted). This may be ascertained by review of the entirety of the patent to determine whether the preamble “discloses a fundamental characteristic of the claimed invention” as opposed to merely “stat[ing] a purpose or intended use.” Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004). As Patent Owner points out, the ’197 patent is replete with references describing the invention as an optical analyzer. See Prelim. Resp. 24–25 (bullet pointing quotes from the Specification). The Specification begins by explaining that optical or “[p]article analyzers . . . are well known analytical tools that enable the characterization of particles on the basis of optical parameters such as light scatter and fluorescence.” Ex. 1001, 1:16–19. The Specification explains that “[t]he present invention” provides both “illumination optics for use in an optical analyzer” and “an optical analyzer incorporating the illumination optics of the present invention.” Ex. 1001, 2:3–4, 2:18–19. Claims 1–13, each of which recites an “optical analyzer” comprising a set of optical elements, are specifically directed to the latter. Id. at 9:55–10:59. The Specification further demonstrates that the preamble term is limiting by explaining that “the invention addresses a concern specific to” optical analyzers. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 1358 (Fed. Cir. 2012) (finding that the specification “demonstrates that the preamble phrase ‘rotary cutter deck’ is a limitation” because it “explains that the invention addresses a concern specific to rotary cutters”). The Specification explains that in a flow cytometer, i.e., an exemplary type of optical analyzer, “the excitation light from a laser . . . is focused onto a focal spot to illuminate the core stream (the fluid stream containing the particles to be analyzed).” Ex. 1001, 1:39–42. According to the Specification, “[a]ccurate focusing of the excitation light beam on the core stream is important,” “[o]ptimal performance is compromised if the focused light beam is not properly adjusted on the core stream,” and because the particles being analyzed are only a “few microns in size, the precision of the light beam adjustment also needs to be in the micron range.” Id. at 1:42–51; see also id. at 3:38–49 (explaining that “fine control over the focus spot” is useful in optical analyzers). The present invention addresses these concerns by providing an optical analyzer “adapted to focus an illumination beam onto a sample analysis region,” configured to obtain a “high degree of precision over the adjustment of the focal spot using less expensive lens adjusting mechanisms,” and comprising “detection optics for measuring the light emitted from the analysis region.” See id. at 2:18–23, 7:3–8. We also agree with Patent Owner that the recitation of an “optical analyzer” in the preamble informs the meaning of the phrase “a focusing lens . . . adapted to focus the light beam onto a focal spot within a sample analysis region” in the claim body. The term “sample analysis region” refers to a structural feature of the claimed “optical analyzer,” i.e., the area configured to contain the sample to be analyzed. This is confirmed by the Specification, which explains that in addition to illumination optics “[t]he optical analyzer will further comprise detection optics for measuring the light emitted from the analysis region. In a preferred embodiment, the optical analyzer is a flow cytometer, and the sample analysis region is a sample detection region in a fluid stream containing particles to be optically analyzed.” Ex. 1001, 2:21–26. In this regard, the preamble informs the meaning of “sample analysis region” by indicating that the recited “sample analysis region” is configured such that it can contain a sample and that light emitted from that region can be measured by the analyzer. See Deere, 703 F.3d at 1358 (explaining that “rotary cutter deck” in the claim preamble “informs the meaning of the ‘torsional stiffness’ limitation––the claimed structure must possess sufficient stiffness to withstand the torsional loads imposed by the operation of a rotary cutter”). By the same measure, holding that the “sample analysis region” need not be so configured would undermine the benefits the Specification indicates the recited illumination optics achieve. See Ex. 1001, 1:39–55, 2:30–48, 7:3–7 (explaining that “accurate focusing” is important because the sample to be analyzed may be very small and that the present invention obtains “precise positioning control” using less expensive components). The fact that the preamble informs the meaning of a term in the claim body, distinguishes it from “nonlimiting preamble terms” that “merely state a name or a use” by demonstrating that the optical analyzer recited in the preamble of the presently challenged claims is a “fundamental characteristic of the claimed invention.” Deere, 703 F.3d at 1358 (quoting Poly-Am., 383 F.3d at 1310).9 slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,787,197 - Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCAll claims unpatentablePTAB · Aug 16, 2022 · IPR2021-00244 · APJ Kevin W Cherry · IPR · Final written decision
Claims 21 and 22 are unpatentable as obvious over Salahieh and Sands; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”), at the time the ’708 or its parent applications were filed, would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 23 (citing Ex. 1002 ¶¶ 31–34). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes that determination, and that level of ordinary skill is consistent with the record. See Resp. 11 (applying Petitioner’s level of ordinary skill).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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). Furthermore, we expressly construe the claims only to the extent necessary to resolve the issues presented in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this decision, the parties agree that we do not need to construe any claim terms to resolve their dispute. Resp. 12, 13 n.1; Reply 1 (“The Board need not construe any claim terms as the claims are unpatentable under Grounds 1-2.”). Accordingly, we need not construe expressly any claim terms in this decision. Nidec, 868 F.3d at 1017.” slip op. at 8
- Expert testimonyPatent owner expert discountedDecided for petitioner
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“petitioner’s grounds of unpatentability. A petitioner bears the burden of proving that a non-patent reference qualifies as a printed publication. Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (“As petitioner, Blizzard had the burden to prove Lin is a printed publication.”); Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 11 (PTAB Dec. 20, 2019) (precedential) (“To prevail in a final written decision in an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.”). The determination of whether a reference is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). We do not reach Patent Owner’s arguments regarding the McCarthy declaration because we find Petitioner’s other evidence and arguments demonstrate by a preponderance of the evidence that Sands was publicly available.8 Our analysis focuses on the indicia of availability on Sands and Dr. Drasler’s testimony, as outlined below.” slip op. at 11
Patent outcomesUS 9,603,708 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,603,708 - Askeladden LLC v. Authwallet LLCAll claims unpatentablePTAB · Mar 23, 2022 · IPR2021-00005 · APJ Lynne H Browne · IPR · Final written decision
Claims 1–29 are unpatentable: Hogg anticipates claims 1–3, 5, 7–14, 16–23, 25, and 27–29; the remaining challenged claims are unpatentable under the listed obviousness grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Mr. Zatkovich’s testimony that “Hogg discloses that it keeps track of ‘recent transactions’ as a parameter for use with the fraud indicator rules.” Ex. 1002 ¶ 205 (citing Ex. 1005 ¶ 68), which is supported by Hogg’s description of its fraud check module as discussed above. For these reasons, we determine that Petitioner has shown, by a preponderance of evidence, that Hogg anticipates claim 18.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts that the claim terms “determining/determine,” “token,” and “load” should be construed. Pet. 14–18. Construction of these claim terms is not, however, necessary to our decision. Accordingly, we do not construe them at this time.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“identifiers including the purchaser identifier included in the authorization request” appears in claims 3, 14, and 23. Ex. 1001, 27:39–41, 28:44–46, 30:1–3. Patent Owner asserts that ‘“the processing rule applies to a group of purchaser identifiers including the purchaser identifier’ means that the processing rule applies equally to each of the group of purchaser identifiers including the purchaser identifier.” PO Resp. 6 (citing Ex. 2001 ¶ 37) (emphasis added). Patent Owner does not explain why this limitation requires that the rule apply equally to each member of the group. Neither does its expert, Mr. Landers. Ex. 2001 ¶ 37. Instead, Patent Owner directs our attention to the portion of the ’776 patent that describes rules modules including rules for sub-accounts. Id. at 4–6 (citing Ex. 1001, 14:25–43).9 The ’776 patent, however, does not indicate that rules must be applied equally to each member of a group. See Ex. 1001, 14:37–43. Rather, it describes a group (master account) having additional rules that apply only to members of a sub-group (sub or child account). Id. at 14: 37–43. As the 9 Patent Owner only cites column 14 lines 25–27 of the ’776 patent, but the portion of the specification that describes sub-accounts is at lines 27–43 of column 14. members of the sub-account are necessarily members of the master account, the additional rules do not apply equally to every member of the master account. Id. at 14:27–43. For these reasons, we do not adopt Patent Owner’s proposed construction of “the processing rule applies to a group of purchaser identifiers including the purchaser identifier included in the authorization request.” Instead, on this record, we determine that this limitation should be construed in accordance with its ordinary and customary meaning.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Claims 1, 2, 5, 7–9, 11–13, 16–18, 20–22, 25, and 27–29 Petitioner submits that Hogg discloses each and every limitation of claims 1, 2, 5, 7–9, 11–13, 16–18, 20–22, 25, and 27–29. Pet. 19–39, 41–54. Patent Owner does not contest Petitioner’s challenge to these claims. See generally PO Resp. In addition, during oral argument, Patent Owner confirmed that Petitioner’s challenges to these claims are uncontested. Tr. 18–19. We have reviewed Petitioner’s evidence and argument. See Pet. 19–39, 41–54. We agree with it and adopt it as our own. For the reasons provided therein, Petitioner has shown, by a preponderance of evidence, that Hogg anticipates claims 1, 2, 5, 7–9, 11–13, 16–18, 20–22, 25, and 27–29.” slip op. at 13
Patent outcomesUS 8,280,776 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,280,776
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.