• Flowco Production Solutions LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 6, 2023 · IPR2022-01386 · APJ James P Calve · IPR · Institution

  Institution was denied because the petition did not show a reasonable likelihood of proving claims 1–11, 13, 15, 16, 18–21, 23, and 24 unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 5–6. Patent Owner does not dispute Petitioner’s contention. Prelim. Resp. 2; Ex. 2001 ¶ 38. We adopt Petitioner’s proposed level of skill in the art for purposes of this Decision.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “The ’892 patent prosecution history evidences that an unimpeded fluid path does not include valves. During prosecution, Patent Owner amended the independent claims to claim “an unimpeded fluid path” in claims 1 and 23 and “an unimpeded narrow passageway within the fluid path” in claim 18. Ex. 1002, 61–64 (emphasis in original). Patent Owner argued that, The Applicant has amended independent claims 1, 18, and 23 to clarify that the fluid path is unimpeded. The alleged fluid path through the body of the plunger disclosed by Brown identified at page 4 of the Office Action is not unimpeded due to the presence of valves 76 and 102/104. Thus, Brown cannot anticipate claims 1, 2, 4–8, 12, 18, 19 or 23 of the present application. Id. at 66. In response, the Examiner issued a Notice of Allowability but did not provide a Statement of Reasons for Allowance. Id. at 43. “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, Patent Owner’s amendments to claim an unimpeded fluid path/passageway and arguments distinguishing Brown’s fluid path as being impeded by valves 76, 102/104 (versus unimpeded as claimed) clearly and unmistakably disclaimed coverage of plungers having bypass valves in the fluid path and narrow passageway through the plunger body.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “b. Motivation to Combine Further, we are persuaded by Patent Owner’s argument that a skilled artisan would not have modified Gray’s bypass valve with Victor’s stopper because their different principles of operation would render Gray’s plunger unsuitable for its intended purpose of providing lift in early stage wells. See Prelim Resp. 35–38 (citing Ex. 2001 ¶¶ 66–75, 103–107, 111). Mr. Cosby testifies that Gray and Victor operate differently so adding a narrow passage of Victor to Gray’s plunger would reduce the ability of Gray’s plunger to work in high pressure wells. Ex. 2001 ¶¶ 103–07; see Ex. 1005 ¶¶ 57, 91, 98, 111–12. The record supports Mr. Cosby’s testimony, and Petitioner’s attorney arguments do not address the arguments and evidence. Pet. 14–15. For this additional reason, Petitioner has failed to show a reasonable likelihood of demonstrating the unpatentability of any of claims 1–11, 13, 15, 16, 18–21, 23, and 24 under Ground 1.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,627,892
• Twitter, Inc. / Google LLC v. B.E. Technology, L.L.C.Some claims unpatentable
  PTAB · Sep 1, 2022 · IPR2021-00483 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–24 and 26–37 are unpatentable, principally under the Guyot-based grounds; claim 25 was not shown unpatentable under Guyot or Robinson.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “review claims 1−37 of U.S. Patent No. 8,769,440 B2 (“the ’440 patent”) owned by B.E. Technology, L.L.C. We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 47.73. For the reasons discussed below, Petitioner has shown by a preponderance of the evidence that claims 1−24 and 26−27of the ’440 patent are unpatentable. And Petitioner has not shown by a preponderance of the evidence that claim 25 is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in network-based technologies.” 482 Pet. 10 (citing Houh Decl. ¶¶ 57−61). Patent Owner “only disagrees with Petitioner’s and Dr. Houh’s assessment of the applicable level of skill in the art with respect to its failure to acknowledge that a person of ordinary skill in the art would have a working knowledge of network-based targeted advertising.” PO Resp. 9. We agree with Petitioner’s proffered level or ordinary skill in the art and with Patent Owner’s clarification because the prior art of record is in the field of network-based targeted advertising, and knowledge of such a field would assist a person of ordinary skill in the art in appreciating the tools necessary to implement it. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown). Accordingly, we adopt Petitioner’s proffered level of ordinary skill in the art with the caveat proposed by Patent Owner that the level of skill includes working knowledge of network-based targeted advertising.” slip op. at 33

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “identifier” and Subscriber Data was not presented in the Petition and to the extent it was vaguely alluded to, the extent of that combination was not explained. The claim requires determining the “unique identifier” associated with the computer, which Guyot may be able to perform with “unique proprietary identifier.” But the claim also requires that “the identifier”—not some other piece of information separate and distinct from that identifier— identify information sent from the computer to the one or more servers. The Petition, for the “determining a unique identifier” limitation (limitation 1.3), alludes to Guyot’s “unique proprietary identifier” identifying the computer, and without argument or explanation concludes that it is “used again by the system in selecting an appropriate advertisement to be displayed on the specific computer associated with the user of that computer, as described further in limitation [1.4].” Pet. 19. The supporting testimony from Dr. Houh is verbatim what is asserted in the Petition and offers no explanation for such a conclusion and no support in Guyot for those assertions. Accordingly, we give Dr. Houh’s testimony in this regard no weight. Reviewing the further explanations for “limitation [1.4],” Petitioner again presents the argument that Guyot’s “unique proprietary identifier” is assigned and thus identifies the computer itself. Id. at 21 (citing Ex. 1041, 3:20−21). But in discussing advertisement selection and the information on which that selection is based, Petitioner relies on the Subscriber Data and Subscriber Statistics without explaining how or why Guyot’s unique” slip op. at 48

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

    “presented by Petitioner concerning the terms “computer’ and “computer user.” Indeed, there is no dispute between the parties that the claim may encompass situations in which a single computer is operated by a single computer user, though the claim could also encompass multiple computers and multiple users. See Reply 1; Sur-reply 1; see also KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Accordingly, because the parties’ disputes center around other claim terms, we are not persuaded that the scope of “computer” and “computer user” needs further clarification.” slip op. at 14

  Patent outcomesUS 8,769,440 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,769,440
• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,603,708
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · Jun 9, 2022 · IPR2021-00136 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1–3, 5–7, 14, and 15 over CIII and Rio; claim 4 over CIII, Rio, and Widdrington; claims 9–13 over CIII, Rio, and Smolders; and claim 8 over CIII, Rio, and …

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “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). slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Petitioner’s contentions Petitioner contends that a person having ordinary skill in the art” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “(f) Conclusion-motivation to combine and reasonable expectation of success In conclusion, for the reasons discussed above, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and CIII’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 82

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Inc., No. 2020-1350, 2022 WL 499843 (Fed. Cir. Feb. 18, 2022), is instructive. The Federal Circuit held that the Board properly found that the objective indicia evidence “says nothing to suggest non-obviousness of one of the two types of systems and methods within the claims’ coverage,” where one of the embodiments within the scope of the claims was found in the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 89

  Patent outcomesUS 9,908,571 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,908,571
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00380 · APJ Hyun J Jung · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim 1–19.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “In inter partes reviews, the petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To institute an inter partes review, a petitioner must show “a reasonable likelihood” of prevailing with respect to at least one of the challenged claims. 35 U.S.C. § 314.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that one of ordinary skill in the art “would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, and systems.” Pet. 17 (citing Ex. 1002 ¶¶ 82–84). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. Prelim. Resp. 30 n.24. We adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’236 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8

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

    “Petitioner proposes interpretations for “mobile device,” “point-of-sale terminal,” “mobile enablement center,” “service data point,” and “register.” Pet. 10–16. Patent Owner responds that “[t]he Board does not need to expressly construe any claim elements to deny the Petition.” Prelim. Resp. 10. likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “asserted merchant identifier in Krasnyansky, the site’s creditID, identifies a merchant terminal, as required by claim 1. As Patent Owner points out, Krasnyansky expressly discloses that creditID identifies an account in a database, not a terminal. Prelim. Resp. 31–36. In particular, Krasnyansky teaches that “both the Wallet and the seller-site must present a unique identifier to the Payserver,” the identifiers “are the key[s] to all accounts in the Payserver’s database,” “each account has a pair of identifiers, both uniquely identifying the account in the database,” “[o]ne of the two identifiers is used in all account-debiting operations,” the identifiers “are seller-site requires the debitID of the Wallet and the creditID of the site.” Ex. 1005, 9:10–18; see also id. at 36:28–37:8 (describing similarly). Petitioner appears to argue that identifying an account in a database would also identify the merchant and merchant terminal. See Pet. 24–26. Petitioner, however, does not point to any portion of Krasnyansky that supports a site’s creditID further identifying a Web site or the computer hosting the Web site. See id. Krasnyansky, instead, only provides express support for the site’s creditID identifying the account. See Ex. 1005, 9:10–18. Krasnyansky also indicates that a site nickname, rather than the site’s creditID, identifies the Web site in one embodiment (see id. at 15:20–22), which further undermines Petitioner’s argument that identifying the account would identify the Web site and the computer running and hosting a Web site. Furthermore, Krasnyansky describes using site nickname and creditID to complete the transaction without any need for identifying the computer running and hosting debit-site 400. See id. at 15:12–16:22. Petitioner does not address these portions of Krasnyansky. See Pet. 24–26. Petitioner, thus, does not argue sufficiently that Krasnyansky requires identifying the computer running and hosting a site to complete any transaction. See id.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,589,236
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00379 · APJ Hyun J Jung · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, chiefly due to the missing terminal-identifier showing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2

  • Skill levelSkill level board ownOther

    “bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, and industry practices and standards for point-of-sale and payment processing systems.” Pet. 16 (citing Ex. 1002 ¶¶ 87–89). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. Prelim. Resp. 30 n.24. determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’058 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9

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

    “Because determining whether Petitioner shows a reasonable likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (Fed. Cir. 1999)). As discussed below, even if we applied Petitioner’s proposed interpretation of “terminal,” we would come to the same determination.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “asserted terminal identifier in Krasnyansky, the site’s creditID, identifies a terminal, as required by claim 1. As Patent Owner points out, Krasnyansky expressly discloses that creditID identifies an account in a database, not a terminal. Prelim. Resp. 31–34. In particular, Krasnyansky teaches that “both the Wallet and the seller-site must present a unique identifier to the Payserver,” the identifiers “are the key[s] to all accounts in the Payserver’s database,” “each account has a pair of identifiers, both uniquely identifying the account in the database,” “[o]ne of the two identifiers is used in all account-debiting operations,” the identifiers “are called debitID and creditID,” and a “payment transaction from a Wallet to a seller-site requires see also id. at 36:28–37:8 (describing similarly). Petitioner appears to suggest that identifying an account in a database would also identify the seller’s Web site and, in turn, identify the computer running and hosting the seller’s Web site. See Pet. 24–26. Petitioner, however, does not point to any portion of Krasnyansky that supports a site’s creditID further identifying the Web site or the computer hosting the Web site. See id. Krasnyansky, instead, only provides express support for the site’s creditID identifying the account. See Ex. 1006, 9:10–18. Krasnyansky also indicates that a site nickname, rather than the site’s creditID, identifies the Web site in one embodiment (see id. at 15:20–22), which further undermines Petitioner’s argument that identifying the account would identify the computer running and hosting a Web site. Furthermore, Krasnyansky describes using site nickname and creditID to complete the transaction without any need for identifying the computer running and hosting debit-site 400. See id. at 15:12–16:22. Petitioner does not address these portions of Krasnyansky. See Pet. 24–26. Petitioner, thus, does not argue sufficiently that Krasnyansky requires identifying the computer running and hosting a site to complete any transaction. See id. Even if we adopted Petitioner’s proposed interpretation of “terminal” to mean “any type of computer which enables the input of information” so that “terminal identifier” would identify such a computer, Petitioner does not explain adequately how a site’s creditID identifies any computer when Krasnyansky expressly describes that creditID identifies an account in a database. See Pet. 24–26; Ex. 1002 ¶¶ 111–117.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,535,058
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · May 19, 2022 · IPR2021-00050 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1 and 7 over Swisher and Rio; claims 2–6 and 12–13 over Swisher, Rio, and CIII; claims 4 and 13 also over Widdrington; and claims 8–11 over Guntert, with or …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Public accessibility of a reference centers on whether the reference is disseminated or otherwise made available to persons having ordinary skill in the art. See Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–56 (Fed. Cir. 2018). As such, we start by defining the level of ordinary skill. 1. Petitioner’s contentions Petitioner contends that a person having ordinary skill in the art “would have had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 12 (referencing Ex. 1002 (Declaration of Dr. William Singhose) ¶ 22). Petitioner also contends that “[a]dditional education could substitute for professional experience and significant work experience—such as working with, servicing, or operating heavy machinery in the field— could substitute for formal education.” Id. at 12–13. Other than providing his understanding of the types of information considered in determining the level of ordinary skill, Dr. Singhose does not provide any additional support for this definition. See Ex. 1002 ¶¶ 21–22. 2. Patent Owner’s response Patent Owner contends that the level of ordinary skill in the art is a person having “a Bachelor’s degree in mechanical engineering, or a related field, and approximately two years of experience designing or developing heavy machinery, including their components and/or control systems.” PO Resp. 12 (referencing Ex. 2030 (Declaration of Dr. Carl Nelson) ¶ 21). Like Dr. Singhose, Dr. Nelson provides his understanding of the types of information considered in determining the level of ordinary skill, but does not provide any additional support for this definition. See Ex. 2030 ¶¶ 19–21.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “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). slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “C. Ground 1: Claims 1 and 7 as anticipated by Swisher Petitioner contends that Swisher anticipates claims 1 and 7. Pet. 6, 18–33. We address Petitioner’s contentions with respect to how Swisher discloses the subject matter of independent claim 1, below.18 1. Independent claim 1” slip op. at 40

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “(3) Conclusion-reasonable expectation of success We find, on the complete trail record, that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s teaching directed to its actuators, sensors, and control system with Swisher’s control system, with a reasonable expectation of success. We weigh heavily Rio’s own disclosure on using a rotary actuator in conjunction with a jacking column. We also agree with Patent Owner’s declarant, Dr. Nelson, that any problem that may be encountered in combining the teachings of Swisher and Rio is the type a mechanical engineer may encounter with many types of machines and mechanisms, and the physics and math involved in solving these problems are the same. Cf. Ex. 1157, 13:11–16:13. d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and Swisher’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 69

  Patent outcomesUS 9,708,020 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,708,020
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · May 19, 2022 · IPR2020-01698 · APJ James J Mayberry · IPR · Final written decision

  The Board held claims 1–20 unpatentable: claims 1–11, 13–17, 19, and 20 over CIII and Rio; claim 18 over CIII, Rio, and Smolders; and claims 11–12 over CIII, Rio, and Widdrington.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “the level of ordinary skill. That is, our conclusion of public accessibility of CIII does not depend on the actual dissemination of the manual to customers. We find, independent of this actual dissemination, a person having ordinary skill in the art, exercising reasonable diligence, could have accessed CIII prior to the earliest filing date of the ’749 patent, by locating a dealer or user of the underlying machine, and requesting a copy. See, e.g., Ex. 1012 ¶¶ 3, 13; Ex. 1164 ¶ 6. The lack of any restrictions on disseminating the manual supports a finding that this approach would have been successful. See, e.g., Ex. 1012 ¶¶ 3, 26; Ex. 1164 ¶ 6.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “4. Analysis and Conclusion – Level of Ordinary Skill The level of skill in the art is “a prism or lens” through which we view” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and CIII’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 61

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “where one of the embodiments within the scope of the claims was found in the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 86

  Patent outcomesUS 10,029,749 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,029,749
• Haas Automation, Inc. v. Olati LLCAll claims unpatentable
  PTAB · May 13, 2022 · IPR2021-00146 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1, 2, 4, and 6 are anticipated by Oraby; claims 7 and 8 are obvious over Oraby and Edie, among other grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we agreed with Patent Owner’s arguments and adopted Patent Owner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 10. Petitioner indicates that it does not challenge this determination for the purposes of this proceeding. Pet. Reply 1. Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “1. “at least one controller . . . adjusts the power” In the Decision on Institution, we determined that there was no need to construe explicitly the phrase “at least one controller . . . adjusts the power.” Dec. Inst. 11–12 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Neither party disagrees with this determination. Pet. Reply 7 & n.4; PO Resp. 8–9. Thus, on the full record, there is no controversy between the parties regarding the construction of this phrase. Furthermore, explicitly construing this phrase would have no effect on the analysis below. Accordingly, we need not construe this phrase to resolve the issues in dispute in this proceeding. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). After considering the parties’ arguments regarding Patent Owner’s proposed claim construction for the phrase “adjusts the power exerted by at least one of the spindle drive system and the feed drive system in real-time based on the real-time determinations,” we declined to adopt the proposed construction in the Decision on Institution. Dec. Inst. 13–16 (citing Prelim. Resp. 9–11; Paper 8, 2–4; Paper 9, 2–3). Neither party has addressed this proposed construction in their post-institution briefing. Therefore, on the complete trial record before us, we need not construe this phrase to resolve Realtime Data, 912 F.3d at 1375.” slip op. at 11

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

    “d) Conclusion In summary, we construe “real-time” to mean “autonomously during a machining operation and performed quickly enough to achieve a desired machining system performance.”” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Like the database in Lister, the University of Sheffield’s University Library database allowed members of the public, at least as early as 2004, to “electronically search[] the University Library index” via the internet or the library’s computer terminals, and using any of the author, department, date, and, most importantly, title. See Ex. 1010 ¶ 7. Indeed, Ms. Abbs states that, once a thesis such as Oraby is received by the library, “at least the title, author, related department, and date of completion are recorded in the University Library’s records.” Id. ¶ 3 (emphasis added). Furthermore, like the manuscript in Lister, Oraby has a title that is descriptive of its subject matter—“Mathematical Modelling and In-Process Monitoring Techniques for Cutting Tools” (Ex. 1004, 1)—as Oraby indeed covers “mathematical models which describe the cutting tool-workpiece interaction” and “accurate on-line monitoring of tool-state” (see id. at 3). Thus, a reasonably diligent researcher in the field of CNC machining interested in ways to improve the 11 The court ultimately held, however, that the manuscript did not qualify as prior art because there was insufficient evidence that the aforementioned “date that [the manuscript] was included in either [of the two] databases that permitted keyword searching of titles” had actually antedated the patent’s critical date. Lister, 583 F.3d at 1316–17. library’s database by title for references disclosing such improvements. Furthermore, given Oraby’s title that describes its subject matter covering particular improvements in the CNC machining process, Oraby would have been discovered through such an electronic search. As such, Ms. Abbs’ declaration is sufficient evidence to establish by a preponderance of the evidence that Oraby was publicly available before the ’432 patent’s critical date and therefore qualifies as a printed publication.” slip op. at 21

  Patent outcomesUS 8,136,432 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,136,432
• Askeladden L.L.C. v. Aml IP LLCInstitution denied
  PTAB · May 11, 2022 · IPR2022-00319 · APJ Michael L Woods · IPR · Institution

  The Board denied institution on all grounds and claims 1–13 because the Petition did not show a reasonable likelihood that Armes, alone or with Steury or Maritzen, rendered the claims unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “to satisfy both the “bridge computer” and at least one “service provider computer,” we do not see how the method steps recited in limitations B, Ci, and Cii are satisfied. Petitioner’s attempt to satisfy these steps with Armes’s card provider 3 computer (i.e., as the “bridge computer”) raises multiple questions that persuade us Petitioner has not demonstrated by a reasonable likelihood that these limitations are satisfied. For example, to satisfy the recited “service providers,” Petitioner relies on “incentive rewards [or MR] companies.” Pet. 25 (citing Ex. 1005 ¶¶ 52, 59, 87); see also id. at 40 (relying on MR company to satisfy limitation B); see also id. at 41 (relying on MR company to satisfy limitation Ci); see also id. at 43 (relying on MR company to satisfy limitation Cii). Petitioner also cites to the testimony of Mr. Zatkovich. See, e.g., id. at 39– 41 (citing Ex. 1002 ¶¶ 120–124). The Petition does not clearly explain how Armes’s “bridge computer” (i.e., the card provider’s computer system) makes a “determin[ation] from among the plurality of service providers,” however, when the card provider itself is a service provider. The testimony of Mr. Zatkovich does not relieve our confusion. Mr. Zatkovich’s testimony merely parrots, verbatim, that which is in the Petition. Compare Ex. 1002 ¶¶ 120–124, with Pet. 39–41. Although Petitioner and Mr. Zatkovich cite to Armes, the citations are to disjointed disclosure whose relevance is not clearly apparent. See Fritch, 972 F.2d 1266 (“one cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art”); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”). For instance, Mr. Zatkovich cites to both Armes’s back end application service 8 and STN system 18 for performing the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider.” See Ex. 1002 ¶¶ 122, 124; see also Pet. 40; see also supra § I.D. It is not clear to us, however, how “STN system 18” and “backend application service 8”—both acting as the “bridge computer”—perform the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider,” as recited in claim 1. In support of his assertions, Mr. Zatkovich quotes Armes’s disclosure that “CAS 7 recognizes the transaction as involving a STN 15, and forwards the request to the STN system 18” (Ex. 1002 ¶ 122, citing Ex. 1005 ¶ 109)) and “backend application service 8, upon receiving a STN 15, recognizes the associated PPC originated with another card issuer 92” (Ex. 1002 ¶ 124 (citing Ex. 1005 ¶ 95)). Even if “CAS 7 recognizes the transaction as involving a STN 15,” for example, we do not see this as performing the step of “determining whether the given vendor is associated with the same service provider,” as Petitioner asserts. See Pet. 40. As explained above, Armes uses STNs to improve credit card security (supra § II.D.1), and the computer system’s mere recognition that “the transaction [] involve[es] a STN” is not a determination of “whether the given vendor is associated with the same service provider.”” slip op. at 36

  • Skill levelSkill level board ownDecided for patent owner

    “We are not persuaded that a POSITA “would have at least one or two years of experience with payment or credit systems,” as Petitioner proposes (see Pet. 17), or “would have at least a Master of Science [] Degree . . . or equivalent work experience in the field of computer networks,” as Patent Owner proposes. See Prelim. Resp. 6. Rather, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed level of skill. For purposes of this Decision, we find that a POSITA at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study along with knowledge of the general structure of payment or credit systems, its hardware and software components.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Both parties acknowledge and agree with the final Claim Construction Order. See Pet. 14; see also Prelim. Resp. 4. We further note that the claims of the ’979 patent “shall be construed using the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021). For purposes of this Decision, we consider and adopt the District Court’s claim construction of “bridge computer” in our analysis. Id. (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). 2. “service provider” In the Claim Construction Order, the court concluded that the term “service provider” shall mean “a business that provides internet-related services to customers.” Ex. 1017, 1. Petitioner does not propose a construction of this term. See Pet. 11– 16. Patent Owner, on the other hand, expounds upon the District Court’s claim construction, submitting that there are two different types of “service providers”: (1) “A service provider of [the] type may maintain a virtual presence on the web in the form of a web site”; and (2) one that “may offer on-line access to customers (e.g., broadband or dial-up Internet access using an Internet account associated with the service).” See Prelim. Resp. 4–5. Patent Owner does not dispute the District Court’s interpretation, however, and acknowledges that “[t]hese different types of service providers are referred to collectively herein as ‘service providers’ or ‘Internet service providers’.” Id. 5. For purposes of this Decision, we consider and adopt the District Court’s claim construction of “service provider” in our analysis. 37 C.F.R. § 42.100(b).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Specifically, we agree with Patent Owner that Petitioner improperly uses hindsight “to pick and choose among isolated disclosures in [Armes] to deprecate the claimed invention.” Prelim. Resp. 28 (quoting In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988))); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”).” slip op. at 34

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,876,979

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.