• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 7–11 are unpatentable: claim 7 is anticipated by Ryan and obvious over Wycherley and Yamamoto; claims 8–11 are obvious over Ryan and McLaughlin.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “The steps recited in the body of claim 7—providing words spoken by the remote user to a relay, a call assistant re-voicing the words to create a text stream, and presenting a text stream of the spoken words to the assisted user—define a complete method and do not rely on a recitation of a “captioned telephone service” in the preamble. Thus, “operating a captioned telephone service” is not an essential step that is necessary to give meaning to the claim and only states a purpose or intended use of the claimed method steps. Although claim 7 recites some steps associated with providing a captioned telephone service, notably missing from claim 7 is a limitation that requires providing the voice of the remote user to the assisted user. Because claim 7 does not recite that limitation explicitly, and because the phrase “operating a captioned telephone service” in the preamble is not an essential step of the claim, we do not construe the claim to include the additional limitation of providing the voice of the remote user to the assisted user. Reading the claim as a whole and applying the broadest reasonable construction of the claim language, we conclude that the “operating a captioned telephone service” language in the preamble of claim 7 is not a limitation requiring a remote user’s voice to be transmitted to, or received by, the assisted user. Accordingly, claim 7 has an effective filing date of September 8, 1997.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The ’578 patent does not set forth a special definition for “training.” In the “Brief Summary of the Invention,” however, the ’578 patent refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant.” Ex. 1001, 2:44–46 (emphasis added). The ’578 patent incorporates by reference the disclosure of the ’482 patent regarding the use of voice recognition software in a re-voicing relay. Id. at 3:51–53. In that context, the ’482 patent describes “the call assistant operat[ing] at a computer terminal which contains a copy of a voice recognition software package which is specifically trained to the voice of that particular call assistant.” Ex. 1002, 5:44–47 (emphasis added). Thus, the ’578 patent contemplates software trained to “a voice pattern of the call assistant” as well as software “specifically trained to the voice of [a] particular call assistant.” Neither description of training, however, indicates when or how the training occurs. Patent Owner, relying on its declarant Mr. Paul W. Ludwick, asserts that a person of ordinary skill in the art would not have understood software that is “designed” in advance to recognize the voice of particular agents to be software that is “trained to recognize individual voices,” because such technology was not used in telecommunications relay service in 1994. PO Resp. 24 (citing Ex. 2010 ¶¶ 21–22). We note that technology available in 1994 has little probative value here because the earliest date of invention for claims of the ’578 patent is 1997. We give claim language its broadest reasonable construction in light of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant, because the claim language encompasses the invention as disclosed in the written description of the ’578 patent— software trained to a voice pattern of a call assistant. Ex. 1001, 2:39–47 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time at which training must occur or to a particular manner of training that is not found in the claims or the written description of the ’578 patent.” slip op. at 12

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

    “The ’578 patent uses the term “captioned telephone device” consistent with this ordinary meaning. Claim 8 recites receiving spoken words at the captioned telephone device. The written description of the ’578 patent describes a captioned telephone device as a device that receives both voice signals and text information and displays the text information to an assisted user. Id. at 6:36–42 (“The captioned telephone device 72 is constructed to accomplish two objectives. One objective is to filter, or separate, the digital signals carrying the text information from the voice signal. The other objective is to take the digital signals and create a visual display of the text information for the assisted user.”); see also id. at Fig. 4 (showing a simultaneous text and voice connection between captioned telephone device 72 and relay 66). Note that a captioned telephone device need not output any audio signals to the assisted user. See id. at 6:46–48 (stating that a captioned telephone device may be a stand-alone device separate from a telephone at an assisted user’s location); id. at Figs. 4, 5 (illustrating captioned telephone device and telephone as two separate devices). In light of the use of “captioned telephone device” in the ’578 patent and the ordinary meaning of the term, we construe “captioned telephone 7 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 286 (3d ed. 1992) (defining “caption” in relevant part as “2. A subtitle in a motion picture.”); THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 278 (4th ed. 2006) (defining “caption” in relevant part as “2. A series of words . . . that communicate dialogue to the hearing-impaired or translate foreign dialogues.”). device” as a device that transmits and receives voice signals, receives text information, and displays text to an assisted user.” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363–64; see SEB, 594 F.3d at 1372–73; Mytee, 439 Fed. App’x at 886–87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mots. to Exc. 4–5 (arguing that the problems in the pertinent art are not “uniquely related” to the deaf and hard-of-hearing). Moreover, Patent Owner indicates elsewhere that the relevant field of art is telecommunication technologies. See PO Resp. 18 n.1 (Patent Owner indicating its declarant “Mr. Ludwick indisputably is [a person of ordinary skill in the art] in telecommunications technologies, which is the relevant field of art,” to opine on speech recognition software for use in telecommunication relay service settings). Petitioner similarly indicates the relevant field is telecommunication technologies. Pet. Opp. to Mots. to Exc. 6 (“Mr. Occhiogrosso’s qualifications should be analyzed with respect to the pertinent art of telecommunication technologies in which an intermediary facilitates voice-to-text transcription.”). We agree that the pertinent art is telecommunication technologies. The ’578 patent states that the “present invention relates to the general field of telephone communications.” Ex. 1001, 1:25–26. The ’578 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. Id. at 1:25–2:34 (describing various prior art assistive technologies to help characterize the evolution of assistive technologies). The ’578 patent also summarizes the invention as the use of a speech recognition computer program trained to the voice of the call assistant to translate promptly the words spoken by an intermediary call assistant into a “high speed digital communication message [that] is then transmitted electronically promptly by telephone to a visual display accessible to the” hearing-assisted user. Id. at 2:47–50. The qualifications of Mr. Occhiogrosso, as summarized in his curriculum vitae (Ex. 1019), qualify him to give expert testimony on the subject of telecommunication technologies. He possesses a Bachelor of Science in Electrical Engineering and a Master of Science in Electrical Engineering. Ex. 1019, 2. Mr. Occhiogrosso testifies that he has more than thirty years of experience in the field of telecommunications and information technology, and he has planned, designed, implemented, and managed large scale projects involving wired and wireless communication systems, including transmission of voice and data. Ex. 1030 ¶ 7; see also Ex. 1019, 2–6 (detailing Mr. Occhiogrosso’s enterprise consulting engagements, research and development, and wireless experience). Moreover, to the extent Mr. Occhiogrosso is more familiar with” slip op. at 16

  Patent outcomesUS 8,213,578 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,213,578
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00540 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1 and 2 are unpatentable as anticipated by Ryan and obvious over Wycherley and Yamamoto.

  RulingsFinal written decision

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

    “We give claim language its broadest reasonable construction in light of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant. Ex. 1021, 2:41-49 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time in which the training must occur or to a particular manner of training that is not found in the claims nor the Specification. Accordingly, “trained to the voice of the call assistant” does not preclude voice recognition software that is designed or built in advance of implementation at the source code level to the voice pattern of a call assistant. Nor is “trained to the voice of the call assistant” limited to training to the voice of one and only one call assistant. 2. “computer programmed to use a voice recognition computer software” slip op. at 8

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

    “We construe “the computer programmed to use a voice recognition computer software package trained to the voice of the call assistant to translate the words spoken in voice by the call assistant into a digital text stream,” recited in claims 1 and 2, in accordance with these principles. No other claim terms require express construction.” slip op. at 6

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363-64; SEB, 594 F.3d at 1372-73; Mytee, 439 Fed. App’x at 886-87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mots. to Exc. 4-5 (arguing” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “expressly “a speaker” or “a digital computer connected to a microphone,” as recited in claims 1 and 2. Pet. 14-15, 17-18. Petitioner, however, asserts that Ryan inherently discloses those components. Pet. 14-15 (citing Ex. 1014 ¶¶ 28-30), 17-18 (citing Ex. 1014 ¶¶ 28-30). We credit Mr. Occhiogrosso’s explanation that a speaker necessarily must be present in Ryan’s relay system for a relay agent to “listen to the caller,” as Ryan expressly discloses. Ex. 1014 ¶ 30 (citing Ex. 1004, 4, l. 36). Also, we credit Mr. Occhiogrosso’s testimony that the recited “a digital computer 23 connected to a microphone” necessarily must be present in Ryan’s relay system for it to process the voice of the relay operator, and a digital computer necessarily must be present for Ryan’s relay system to use speech recognition software. Ex. 1014 ¶¶ 28-29 (citing Ex. 1004, 4:14, 33). Thus, we find that Ryan inherently discloses the recited “a digital computer connected to a microphone” and “a speaker.”” slip op. at 23

  Patent outcomesUS 6,233,314 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,233,314
• Captioncall, LLC v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00550 · APJ William V Saindon · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by McLaughlin.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The preamble of claim 1 is limiting in that it requires a “captioned telephone device.” This is because it provides antecedent basis for the term “the device” later in the body of the claim, and thus serves “as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notwithstanding, Petitioner is correct in that the claim sets forth all of the elements of a captioned telephone device. Accordingly, claim 1 is limited to a “captioned telephone device,” but the body of the claim recites a complete device; the preamble adds no further limitation. Our reasoning follows.” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather simply “qualified in the pertinent art.” Sundance, 550 F.3d at 1363–64; SEB, 594 F.3d at 1372–73; Mytee, 439 Fed. App’x at 886–87. Notwithstanding, for the reasons we express below in Section II.C, we find Mr. Occhiogrosso to be qualified to testify as to the level of ordinary skill in the art. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See also Pet. Opp. Mot. Excl. 4–5 (arguing that the problems in the pertinent art are not “uniquely related to . . . the deaf and hard-of-hearing”). The technology at issue in the ’082 patent “relates to the general field of telephone communications.” Ex. 1021, 1:21–22. The ’082 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. Id. 1:21–2:28 (describing various prior art assistive technologies to help frame the evolution of assistive technologies). Patent Owner would have us define the pertinent art in the narrowest way: “telecommunications technology for the deaf and hard of hearing.” PO Mot. Excl. 3 (emphasis added); see also id. (additionally characterizing the technology as “assistive telecommunications technology”). The Federal Circuit in Sundance, however, used the phrase “qualified in the pertinent art,” however, and did not set forth a rule requiring an expert in the specific technological solution recited in the claims or the particular motivation behind the inventors’ invention. Sundance, 550 F.3d at 1363–64. We determine the pertinent art to be telecommunications systems, because any communications technology would be pertinent art to the ’082 patent. While assistive technology may be more pertinent, and assistive technology for the deaf and hearing impaired, using voice-to-text relays, may be most pertinent, anything in the telecommunications technology field would be pertinent to the inventors when considering their problem. Mr. Occhiogrosso has established that he has knowledge, experience, and education in the field of telecommunications systems. Ex. 1010 ¶¶ 5– 10; Ex. 1030 ¶¶ 4–11. As such, Mr. Occhiogrosso is qualified sufficiently in the pertinent art to testify under FRE 702 in this proceeding, because his testimony helps us to understand aspects of telecommunications technology used in the ’082 patent. Moreover, to the extent Mr. Occhiogrosso is more familiar with” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Mr. Occhiogrosso has established that he has knowledge, experience, and education in the field of telecommunications systems. Ex. 1010 ¶¶ 5– 10; Ex. 1030 ¶¶ 4–11. As such, Mr. Occhiogrosso is qualified sufficiently in the pertinent art to testify under FRE 702 in this proceeding, because his testimony helps us to understand aspects of telecommunications technology used in the ’082 patent. Moreover, to the extent Mr. Occhiogrosso is more familiar with general telecommunications technology and less familiar with voice-to-text or its application to the deaf or hearing-impaired, or to the extent that Mr. Occhiogrosso’s testimony is inconsistent or unsupported, we will weigh Mr. Occhiogrosso’s testimony accordingly, taking into account the extent of his expertise in these areas. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also PO Mot. Excl. 5–7 and PO Reply Mot. Excl. 2–4 (arguing Mr. Occhiogrosso does not have sufficient experience with the deaf or hearing impaired); PO Mot. Excl. 8 and PO Reply Mot. Excl. 4–5 (arguing that Mr. Occhiogrosso’s statements are unsupported and unreliable). Under the totality of these circumstances, we decline to exclude the testimony of Mr. Occhiogrosso. Accordingly, Patent Owner’s Motion to Exclude to Mr. Occhiogrosso’s testimony is denied.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledge “of all prior art in the field of the inventor’s endeavor and of prior art solutions for a common problem even if outside that field.” In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). As we explained above in Section II.B, the pertinent art is telecommunication systems. Thus, a person of ordinary skill in the art is a person familiar with at least that technology, by way of background and/or experience. The prior art in the record before us is highly indicative of the level of ordinary skill in this art. Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of skill in the art). Patent Owner argues that Mr. Occhiogrosso has no particular experience in telecommunication relay services (“TRS”) for the deaf and hard of hearing and, as such, is not qualified to testify as to the level of ordinary skill in the art. PO Resp. 7–8. Petitioner replies that Mr. Occhiogrosso has “comprehensive industry experience” that includes experience “relating to each of the component technologies at issue” as well as “applications for the deaf and hard-of-hearing.” Pet. Reply 1 (citing Ex. 1030 ¶¶ 4–11). Patent Owner’s argument is, essentially, that Mr. Occhiogrosso is not qualified sufficiently in this field because he has insufficient experience with a particular intended end user of the claimed invention. PO Resp. 7–8. Although those end users may be a large segment of users of this technology, the same technology is used in other contexts, such as translation of spoken languages and captioning of voices, and Mr. Occhiogrosso has experience in those contexts. Ex. 1030 ¶¶ 9–11. Thus, Patent Owner’s argument is unpersuasive. Moreover, Mr. Occhiogrosso testifies he has experience with voice-to-text technology specifically for deaf and hard-of-hearing persons. Id. ¶ 11. Reviewing the testimony of Mr. Occhiogrosso and his supporting documentation (Exs. 1010, 1011, 1030, 2003, 2004, and 2007), we are persuaded that he is qualified to testify as to the level of ordinary skill in the art in this proceeding.” slip op. at 14

  Patent outcomesUS 7,003,082 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,003,082
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00541 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1 and 5 are anticipated by Ryan and obvious over Wycherley and Yamamoto; the remaining claims are obvious over combinations of those references and additional art.

  RulingsFinal written decision

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

    “The Specification of the ’482 patent does not set forth a special definition for “training.” The Specification, however, in its “Brief Summary of the Invention” indicates “a speech recognition computer program which has been trained to the voice pattern of the call assistant.” Ex. 1001, 2:46-48 8 (emphasis added). In the context of describing the relay shown in Figure 1, the Specification describes “the call assistant operat[ing] at a computer terminal which contains a copy of a voice recognition software package which is specifically trained to the voice of that particular call assistant.” Id. at 5:44-47 (emphasis added). The Specification, however, does not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate the voice recognition software is trained for the voice of only one call assistant. As such, the Specification contemplates software trained to “a voice pattern of the call assistant” as well as software “specifically trained to the voice of [a] particular call assistant.” Further, the Specification indicates, in those passages, that the voice recognition software package is trained but does not indicate when or how the training occurs. Id. at 2:46-48, 5:44-47.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Construing a means-plus-function limitation requires first defining the particular function of the limitation and then identifying, in the specification, the structure that performs the claimed function. Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). 12 We agree with Petitioner (Pet. 6) that “noise attenuating means” is a means-plus-function limitation because: (1) the limitation uses the word “means,” (2) the term in the limitation is modified by functional language (“to attenuate the noise of the voice of the call assistant from the sounds heard in the ear of the call assistant”), and (3) the term is not modified by any structure recited in the claim for performing the claimed function. See Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012). Although the limitation recites “connected to the speaker,” this structure does not perform the claimed function of attenuating noise. Id. The Specification of the ’482 patent discloses earphones 38, which “produce the sound of the remote speaking person in the ear of the call assistant” (Ex. 1001, 5:23-24) and “have noise attenuating capability” (id. at 6:18). The Specification also discloses that “computer 42 can be provided with noise canceling sound generation software which would create sound transmitted to the earphone 38 so as to cancel the sounds of the call assistant’s own voice.” Id. at 6:20-23. The Specification further indicates that “noise attenuation or cancellation avoids distracting the call assistant, since he or she would then be less distracted by the words that he or she has spoken.” Id. at 6:23-26. As such, the Specification of the ’482 patent discloses that earphones” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363–64; SEB, 594 F.3d at 1372-73; Mytee, 439 Fed. App’x at 886-87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mots. to Exc. 4-5 (arguing that the problems in the pertinent art are not “uniquely related” to the deaf and hard-of-hearing). Moreover, Patent Owner indicates elsewhere that the relevant field of art is telecommunication technologies. See PO Resp. 19 n.2 (Patent Owner indicating its declarant “Mr. Ludwick indisputably is [a person of ordinary skill in the art] in telecommunications technologies, which is the relevant field of art” to opine on speech recognition software for use in telecommunication relay service settings). Petitioner similarly indicates the relevant field is telecommunication technologies. Pet. Opp. to Mots. to 18 Exc. 6 (“Mr. Occhiogrosso’s qualifications should be analyzed with respect to the pertinent art of telecommunication technologies in which an intermediary facilitates voice-to-text transcription.”). We agree that the pertinent art is telecommunication technologies. The ’482 patent states that the “present invention relates to the general field of telephone communications.” Ex. 1001, 1:14-15. The ’482 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. Id. at 1:15-2:8 (describing various prior art assistive technologies). The ’482 patent also summarizes the invention as the use of a speech recognition computer program trained to the voice of the call assistant to translate promptly the words spoken by an intermediary call assistant into a “high speed digital communication message [that] is then transmitted electronically promptly by telephone to a visual display accessible to the” hearing-assisted user. Id. at 2:41-52.” slip op. at 18

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “As an initial matter, we address Patent Owner’s assertion of an earlier date of invention—June 23, 1997—for claim 1 of the ’482 patent. PO Resp. 23-24. Patent Owner relies on a journal entry from August 5, 1997 indicating “the [call assistant] repeats what voice person says” (Ex. 2011 ¶¶ 3-4) and two declarations regarding the purchase of commercial software (i.e., IBM ViaVoice) (Ex. 2012 ¶¶ 5-10; Ex. 2013 ¶¶ 7-9). PO Resp. 23. The declarations indicate additionally that IBM ViaVoice was released in August 1997 and the patent application was filed shortly thereafter on September 8, 1997. Ex. 2012 ¶¶ 5-10; Ex. 2013 ¶¶ 7-9. 23 Patent Owner’s earliest proffered evidence dates back only to August 5, 1997, not June 23, 1997. Moreover, Patent Owner has not attempted to show diligence in reduction to practice.11 Thus, we do not find that Patent Owner has established a date of invention for the claims prior to September 8, 1997.” slip op. at 23

  Patent outcomesUS 5,909,482 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 5,909,482
• Groupon, Inc. v. Blue Calypso, LLCAll claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00034 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–5 are unpatentable as anticipated by Paul; the Board rejected the Ratsimor anticipation and obviousness grounds because Ratsimor was not proven publicly accessible.

  RulingsFinal written decision

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

    “1. “subsidy” Independent claim 1 recites “recognizing a subsidy, according to the subsidy program, for the subscriber.” The ’670 patent does not set forth a special definition for “subsidy.” Accordingly, we look to the ordinary meaning of the term “subsidy”—financial assistance given by one to another.5 The ’670 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’670 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, col. 3, ll. 39-45 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’670 describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, col. 4, ll. 59-65 (referring to Fig. 3); see id. at col. 4, ll. 16-17. In an example of a bi-directional endorsement process, the ’670 patent further describes an advertiser calculating the amount to” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree the preamble is limiting. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 1 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 1 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 17 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 1. Accordingly, we conclude that the preamble of independent claim 1 is entitled to patentable weight.” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “Having reviewed the parties’ arguments and supporting evidence, we do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude the Ratsimor paper is not a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been 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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”).” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Although the elements must be arranged 30 or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 30

  Patent outcomesUS 8,457,670 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,457,670
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00046 · APJ Michael W Kim · CBM · Final written decision

  Claims 1, 4–6, 10, and 14 are unpatentable as anticipated by Paul; claims 7–9 and 11 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “we determine the meaning of the claims for purposes of this decision. In a covered business method patent review, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below in accordance with these principles.” slip op. at 7

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

    “subscriber according to the incentive program.” Petitioner contends that the express definitions of terms set forth in the “Definitions” section of the ’055 patent are the proper constructions of those terms. Pet. 10. We agree. Accordingly, we accept those definitions as proper constructions of “incentive” and “incentive program.” Furthermore, through their assertions concerning standing, Petitioner asserts that “incentive” and “incentive program” are financial in nature. We agree. Pet. 6–7. The ’055 patent repeatedly, and almost exclusively, discloses “incentive” and “incentive program” in a financial context. For example, the ’055 patent discloses that cash incentives are provided on debit cards or as cash distributions. Ex. 1001, 2:28–29. In another example, incentives are disclosed as “payments,” “payouts,” and “distributions.” Ex. 1001, 2:51, 6:34–45, 7:31–34, 8:3–6. In a further example, incentive programs are disclosed as having financial budgets and accounts that are debited until depletion. Ex. 1001, 6:41–45, 7:18–20, 8:50–56. Accordingly, we construe “incentive” and “incentive program” as being financial in nature.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude that Petitioner has failed to show that the Ratsimor paper is a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been 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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”). The determination of whether a particular reference qualifies as a prior art 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). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been 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 . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 19

  Patent outcomesUS 8,438,055 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 8,438,055
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00035 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–25 and 29 are unpatentable: claims 2–15, 20–23, and 29 over Paul; claims 1–19, 23–25, and 29 for lack of written description. Claims 26–27 were not shown unpatentable.

  RulingsFinal written decision

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

    “Accordingly, we look to the ordinary meaning of the term “subsidy”— financial assistance given by one to another.5 The ’516 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’516 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’516 patent describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs 5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.”). available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, 4:41–43 (referring to Fig. 3). For these reasons, in the Decision to Institute, the Board construed “subsidy” as “financial assistance given by one to another.” Dec. 7–9. Neither party challenges this construction. Having considered whether the construction set forth in the Decision to Institute should be changed in light of evidence introduced during trial, we are not persuaded any modification is necessary. Therefore, we maintain the construction of “subsidy” as “financial assistance given by one to another.”” slip op. at 7

  • BurdenNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art 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). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been 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 . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art 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). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been 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 . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 24

  Patent outcomesUS 7,664,516 mixed
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 7,664,516
• Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “prior art 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). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been 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 . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16

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

    “3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23

  Patent outcomesUS 8,452,646 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,452,646
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00033 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 7-16 and 23-27 are unpatentable as anticipated by Paul; claims 1-6 and 17-22 were not shown unpatentable because Ratsimor was not a publicly accessible printed publication.

  RulingsFinal written decision

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

    “endorsement.” In proffering constructions, neither party provides sufficient evidence of the ordinary meaning of “bi-lateral” or “endorsement.” We determine the ordinary meaning of the terms “bi-,”7 “lateral,”8 and “endorsement”9 collectively mean “both sides giving approval.” The use of “bi-lateral endorsement” in independent claims 7 and 23 indicate that an endorsement occurs between two parties, a subscriber and an advertiser, which is consistent with its ordinary meaning of “both sides giving 7 AMERICAN HERITAGE DICTIONARY 181 (3d ed. 1992) (defining “bi-” as “1. a. Two . . . b. Both . . . c. Both sides, parts, or directions”). 8 AMERICAN HERITAGE DICTIONARY 1017 (3d ed. 1992) (defining “lateral” as “1. Of, relating to, or situated at or on the side”). 9 AMERICAN HERITAGE DICTIONARY 608 (3d ed. 1992) (defining “endorse” as “4. To give approval of or support to, especially by public statement”); id. (defining “endorsement” as “1. The act of endorsing”). 11 approval.” The ’679 patent provides an example of a bi-lateral endorsement in Figure 7a, which describes a bi-directional endorsement process between the subscriber and the advertiser, via an intermediary, during the enrollment process. Ex. 1001, col. 7, ll. 56-58. As part of an enrollment process, the advertiser decides whether to endorse a particular subscriber. Id. at col. 8, ll. 47-48. The bi-lateral endorsement is completed after the subscriber chooses at least one plan and one advertiser for endorsement. Id. at col. 8, l. 66 – col. 9, l. 3. The ’679 patent also describes examples of endorsement by an advertiser of a subscriber and endorsement by a subscriber of one or more advertisers. See id. at col. 3, ll. 39-65, col. 4, ll. 59-65. The use of bilateral endorsement in the ’679 patent is consistent with its ordinary meaning of “both sides giving approval.”” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 7 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 7 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 18 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 7. Similarly, the preamble of independent claim 23 recites “a first communication device,” “a second communication device,” and “a set of advertisers.” The body of claim 23 recites “the first communication device,” “the second communication device,” and “the set of advertisers.” Accordingly, we conclude that the preambles of independent claims 7 and 23 are entitled to patentable weight.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “As an initial matter, we note that there are gaps in Petitioner’s proffered evidence—foremost is Dr. Joshi’s lack of indication that the Ratsimor paper was downloaded or otherwise disseminated, or how persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could locate the Ratsimor paper on the Departmental website or otherwise locate an issued Technical Report in November 2003. 25” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the above disclosures of Paul, we find that the direct e-mail campaign and a “refer-a-friend” campaign are not different methods, but are different tool options provided by the campaign manager computer program in the e-mail communications system disclosed by Paul. Accordingly, as different tool options of the campaign manager in the e-mail communications system, one of ordinary skill in the art would understand that the direct e-mail campaign tool option was to be used in conjunction with the “refer-a-friend” campaign tool option to send “refer-a-friend” e-mail message incentives to a subset of the members based on member demographic characteristics. To determine otherwise would require a finding that one of ordinary skill in the art, when reading Paul, would come to the conclusion that the only option would be to send a “refer-a-friend” e-mail to all members. We do not find that one of ordinary skill in the art would have understood Paul to be so restrictive. Rather, Paul’s disclosure of the campaign manager computer program having multiple tool options to develop marketing campaigns is analogous to a reference disclosing two functions of a word processing program—creating a document and saving a document. One skilled in the art would understand the word processing program reference to disclose how to use those functions together to create and save a document.14 Cf. Transcript 67:9 – 68:11.” slip op. at 37

  Patent outcomesUS 8,155,679 mixed
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,155,679

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.