- TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution deniedPTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,089,443 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 4, 2024 · IPR2024-00944 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Rao anticipates or renders obvious claims 79 and 83.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’541 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 24
- BurdenNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Neither the Petition nor Dr. Wolfe’s testimony provide any discussion as to why a person having ordinary skill in the art would have modified Rao to teach the additional limitation recited in either claim 79 or 83. See Pet. 22–23; Ex. 1015 ¶¶ 252–257. This stands in contrast to other portions of the Petition where Petitioner clearly set forth both anticipation and conditional obviousness arguments, including a reason to modify Rao. See, e.g., Pet. 13–15 (arguing that Rao discloses limitation 1e or that a person having ordinary skill in the art “would . . . have been motivated” to modify Rao). Thus, although the Petition purports to argue that claims 79 and 83 are obvious,8 the Petition lacks sufficient argument setting forth the basis for such an obviousness argument. At most, there is a conclusory statement that claims 79 and 83 are obvious. See Pet. 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons.”). That is not sufficient. Where, as here, claims are alleged to be unpatentable as obvious over the prior art, Petitioner cannot make its case solely through mere conclusory statements. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Moreover, it is not our role to examine the prior art advanced by Petitioner and fill the gaps in Petitioner’s reasoning and factual assertions. Magnum Oil Tools, 829 F.3d at 1381 (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised 8 See Pet. 1 (“Rao ‘anticipates and/or renders obvious’ claims” 1, 79, and 83), 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons. Rao also renders obvious the remaining limitations discussed under this Ground.”); Pet. Prelim. Reply 1 (“Rao therefore discloses or renders obvious intercepting a stack API level request by its filter requesting priorities from the agent.”). by the petitioner during an IPR.”); see also SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes review the petitioner is master of its complaint”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Because Petitioner has not offered any reason why a person having ordinary skill in the art would have made a modification to claims 79 and 83, Petitioner has not sufficiently shown that claims 79 and 83 would have been obvious. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of [the] prior art to arrive at the claimed invention.”).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00593 · APJ Meredith C Petravick · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 4–20 are unpatentable over Kennedy and Kurani-816. 2. Ground 2 — Kennedy, Kurani-816, and Yago Claim 3 depends from claim 1. We determine that Petitioner has not met its burden to show a reasonable likelihood that claim 3 would have been obvious over Kennedy, Kurani-816, and Yago. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. We are not persuaded by Petitioner that it would have been obvious to a POSITA, based on the disclosures of Kennedy and Kurani-816, to store a digital title in memory 228 of processing server 102 for the purpose of record keeping. See Ex. 2013 ¶ 91. Kennedy discloses that processing server 102 includes a memory 228 for storing data used to perform its function, such as encryption keys, algorithms, and application programs. Ex. 1033 ¶ 46. Kennedy does not disclose memory 228 being a document store for record keeping of transaction messages or other transaction data. See id. In Kennedy, a private blockchain 206 stores data record 208 containing the transaction data. See e.g., id. ¶¶ 48–51; Fig. 2. Kurani-816 discloses digital titles that are specific to an asset and not to a particular financial transaction. Ex. 1034, 3:13–15. The digital titles are stored in a database at a digital title company and provided to the seller or buyer during a transaction. See e.g., id. at 6:34–9:7. Kurani-816 does not disclose transmitting the digital title to a financial transaction processing server, like processing server 102. Id. Thus, neither Kennedy nor Kurani-816 teaches transmitting documents pertaining to a financial transaction and a token corresponding to a financial transaction to identify the document to a first document store, as required by claim elements 1 and 6. For the reasons above, we are not persuaded by Petitioner that claim 1 would have been obvious to a POSITA over Kennedy and Kurani-816.” slip op. at 19
- Parallel petitionsNot reached
“Because we have denied institution in IPR2024-00590 and deny institution in this proceeding based on the patentability merits, we do not need to reach the issue of whether both Petitions should be instituted.” slip op. at 3
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“patent applications, including one filed on August 14, 2015. Ex. 1001, code (30). Petitioner asserts that the ’413 patent is not entitled to priority to August 14, 2015 because the provisional applications do not provide written description support for certain claim terms. Pet. 6–15. Patent Owner disputes Petitioner’s assertion. Prelim. Resp. 20, n.7. As both Kennedy and Kurani-816 were filed after August 14, 2015 (see Ex. 1033, code (22); Ex. 1034, code (22)), if the ’413 patent is entitled to priority to August 14, 2015, then neither Kennedy nor Kurani-816 is available as prior art. We do not need to reach this issue because, regardless of whether Kennedy and Kurani-816 are available as prior art, Petitioner has not shown a reasonable likelihood that it would have been obvious to a POSITA to combine Kennedy and Kurani-816 as proposed by Petitioner.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,984,413 - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Aug 11, 2023 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because Scott did not show a reasonable likelihood of anticipation or obviousness for claims 1–3, 5–10, 16–18, and 21–25, including the continuous retrieval and evaluation limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The server system 12 may [determine the appropriate value of a cash out offer] at any time, such as, and without limitation, at certain discrete time points of a wagering event (e.g., halftime of a sporting event) or it may continuously evaluate the wagering event and incoming wagers and make multiple determinations in real time. Ex. 1001, 17:52–57 (emphasis added). The parties’ witnesses interpret this language in the same manner. Patent Owner’s witness, Dr. Vancura, testifies that, here, “the ’779 patent draws a distinct contrast between ‘discrete points’ (e.g., halftime or other stoppage of play) and ‘continuously’ (e.g., real time during live play and thereby extremely time-sensitive).” Ex. 2001 ¶ 48 (emphasis omitted). Petitioner’s witness, Mr. Crevelt, agrees that the ’779 patent distinguishes performing tasks continuously from doing so at discrete times. Ex. 1007 ¶¶ 122, 137. We agree with this testimony and interpret “continuously” performing a task to exclude performing that task at discrete time points.3” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Scott discloses that the “determination of a current cash value can be triggered by various events.” Ex. 1006 ¶ 36. For example, “as each individual playing card or slot symbol is revealed, a new current cash value may be calculated.” Id. ¶ 67. “Alternatively, current cash value may be determined and presented at the end of each dealing stage of a game,” such 3 We note that “continuously” was not discussed during prosecution of the application resulting in the ’779 patent. See generally Ex. 1002. as “after the initial deal, after one or more cards are held, or after one or more replacement cards are dealt” in a video poker game. Id. Thus, Scott’s retrieval of game information occurs at discrete time points. Petitioner’s contentions acknowledge such triggering events in Scott. See Pet. 39 (arguing that Scott’s value engine retrieves data “as each individual playing card or slot symbol is revealed” or “with newly presented game symbols” (emphasis omitted)). Mr. Crevelt asserts that Scott discloses “a real time and continuous evaluation and determination of the current cash value.” Ex. 1007 ¶¶ 122, 137 (citing Ex. 1006 ¶ 67). However, we do not see any such disclosure of performing tasks “continuously” in Scott. At the disclosure relied upon by Mr. Crevelt, Scott merely discusses presenting current cash values at various discrete times, namely “after each card or other game symbol is dealt to a player” or, “[a]lternatively, . . . at the end of each dealing stage of a game,” such as “after the initial deal, after one or more cards are held, or after one or more replacement cards are dealt” in a video poker game. Ex. 1006 ¶ 67. Neither Petitioner nor Mr. Crevelt explains adequately how Scott’s processor is configured to continuously retrieve data related to a status of a wagering event, recalculate wager information based on the continuously retrieved data, or continuously evaluate the recalculated wager information as recited by the challenged claims of the ’779 patent.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,200,779 - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Jun 21, 2023 · IPR2023-00264 · APJ Hyun J Jung · IPR · Institution
Institution denied on the merits: Petitioner failed to show a reasonable likelihood that claims 1, 2, 24, 28-30, 54-64, and 83 were unpatentable over DeWaal or DeWaal and Schugar.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition 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. Thus, we do not institute an inter partes review of claims 1, 2, 24, 28– 30, 54–64, and 83 of the ’716 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that one of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a similar field; and at least two years of experience in the wager based gaming industry.” Pet. 12 (citing Ex. 1007 ¶ 28). Petitioner also states that “[a] person with less education but more relevant practical experience may also meet this standard” and that the “description is approximate, and a higher level of education or skill may make up for less experience, and vice-versa.” Id. (citing Ex. 1007 ¶ 28). Patent Owner does not dispute Petitioner’s asserted level of ordinary skill in the art and does not propose its own level of skill. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s asserted level of ordinary skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We understand that these independent claims are written in a way that reads on some embodiments (see, e.g., Ex. 1001, 14:61–15:19, describing an embodiment where the wager involves guessing the outcomes of 6 games and the “legs” are the outcomes of each of the underlying 6 games) but not all embodiments (see, e.g., id. at 23:9–34, describing an embodiment where the “legs” are the outcomes of each reel in a slot machine, and thus there is no evaluation of an initial wager to determine whether the player won at each leg—the wager is akin to an entry fee to play). Accordingly, we construe independent claims 1 and 83 to set out a method where the wager (1) enters the player into the event (and thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event. We similarly construe independent claim 54 to require a system wherein the controller receives a wager “in response to input from a player desiring to participate in . . . wagering events” (and thus, before the event) and (2) the wager is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s anticipation challenge does not adequately address the “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal relied upon by Petitioner is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Pet. § IX.A.1.d; Ex. 1004 ¶ 57. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. ¶ 83. In either case, the putative wager in DeWaal serves to allow entry into the event. Petitioner does not explain sufficiently how either wager serves to identify a winner of a leg of DeWaal’s bonus game. See Pet. § IX.A.1.f.; Ex. 1007 ¶¶ 114–119. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., Ex. 1004 ¶¶ 119, 128; see also Ex. 1007 ¶ 118 (“DeWaal’s identification of players that are eligible to win each round of the bonus event is ‘based on the wager,’ and more specifically based on the player’s input selection of one of the wagered upon potential outcome in each round.”) (emphasis added). That is, the player’s choice, not the relied-upon wager, determines whether the player advances at each leg. See, e.g., Ex. 1004 ¶ 119 (“If at least one of the players picks (or makes an input associated with) the designated outcome in a first round, that player advances to a second round.”). As such, Petitioner does not sufficiently show that DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choice in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to the . . . players desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Ex. 1001, 32:27–30. Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claims 1 and 83 require the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, for the reasons above, we determine that Petitioner has not sufficiently addressed each limitation of claims 1 and 83 and does not show a reasonable likelihood of prevailing in its challenge that DeWaal anticipates claims 1 and 83.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,424,716 - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Jun 21, 2023 · IPR2023-00263 · APJ Hyun J Jung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on anticipation or obviousness of claims 1 and 8.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition 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. Thus, we do not institute an inter partes review of claims 1 and 8 of the ’516 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We understand that claim 1 is written in a way that reads on some embodiments (see, e.g., Ex. 1001, 14:61–15:19, describing an embodiment where the wager involves guessing the outcomes of 6 games and the “legs” are the outcomes of each of the underlying 6 games) but not all embodiments (see, e.g., id. at 23:9–34, describing an embodiment where the “legs” are the outcomes of each reel in a slot machine, and thus there is no evaluation of an initial wager to determine whether the player won at each leg—the wager is akin to an entry fee to play). Accordingly, we construe claim 1 to set out a method where the wager (1) enters the player into the event (and thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event. Petitioner does not propose an interpretation of this term. Pet. § VII.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s anticipation challenge does not adequately address the “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal relied upon by Petitioner is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Pet. § IX.A.1.d; Ex. 1004 ¶ 57. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. ¶ 83. In either case, the putative wager in DeWaal serves to allow entry into the event. Petitioner does not explain sufficiently how either wager serves to identify a winner of a leg of DeWaal’s bonus game. See Pet. § IX.A.1.h; Ex. 1007 ¶¶ 134–139. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., Ex. 1004 ¶¶ 119, 128; see also Ex. 1007 ¶ 138 (“DeWaal’s identification of players that are eligible to win each round of the bonus event is ‘based on the wager,’ and more specifically based on the player’s input selection of one of the wagered upon potential outcome in each round.”) (emphasis added). That is, the player’s choice, not the relied-upon wager, determines whether the player advances at each leg. See, e.g., Ex. 1004 ¶ 119 (“If at least one of the players picks (or makes an input associated with) the designated outcome in a first round, that player advances to a second round.”). As such, Petitioner does not sufficiently show that DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choice in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to . . . a player desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Ex. 1001, 32:27–30. Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claim 1 requires the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, for the reasons above, we determine that Petitioner has not sufficiently addressed each limitation of claim 1 and does not show a reasonable likelihood of prevailing in its challenge that DeWaal anticipates claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner does not rely on Schugar for teaching or suggesting the limitations regarding the “wager” of claim 1 and does not provide a rationale to combine the references that addresses the “wager.” See Pet. § IX.B. For the reasons stated above in the anticipation challenge, because Petitioner does not sufficiently show that DeWaal discloses limitations regarding the “wager,” Petitioner does not show a reasonable likelihood of prevailing in its challenge that DeWaal and Schugar would have rendered obvious claims 1 and 8.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,275,516 - Osteomed, LLC v. Stryker European Operations Holdings LLCInstitution deniedPTAB · Aug 12, 2022 · IPR2022-00486 · APJ Hyun J Jung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent [claim] it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). slip op. at 6
- Skill levelSkill level board ownOther
“the parties and the Board agreed that “a [person of ordinary skill in the art] at the time of the invention would be an individual having at least a bachelor’s degree in engineering with at least two years of experience in the field, such as experience with the design of surgical implants, or a clinical practitioner with a medical degree and at least two years of experience as an orthopedic surgeon.” Prelim. Resp. 4. Patent Owner contends that “[f]or purposes of consistency, the same level of ordinary skill in the art at the time of the invention should be used here, given the similarities in the technology” and “disagrees with Petitioner’s asserted level of ordinary skill in the art to the extent that it differs from the previously agreed-upon definition.” Id. We decline to adopt a specific formulation regarding the level of ordinary skill in the art, and instead find that the cited references are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves). We need not provide a specific formulation because our analysis of the issues below would be the same regardless of whether we adopted Petitioner’s or Patent Owner’s proposed level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes interpretations for “a body portion” and “a cross- section.” Pet. 4–8. Patent Owner responds that “a body portion” does not need to be construed for determining whether to institute, and that Petitioner’s proposed interpretation for “a cross-section” should be rejected. Prelim. Resp. 5, 6. 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.’”) (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
“The portion of Jackson cited in the Petition does not disclose that its conical shaped distal limb 3 has threads. See Ex. 1004, 6:21–7:2, 8:6–7. Jackson, instead, states expressly that “[t]he surface of the distal conical limb 3 of the device is scored with oblique ridges 5 that lock the limb 3 in place in the intermedullary cavity of a middle phalanx when it is fitted, by manually screwing and impacting it.” Id. at 6:26–28. Jackson goes on to state that “[t]he oblique ridges are similar in structure to the ridges that would be found on a workshop file giving sufficient abrasiveness that it will be fitted securely within the middle phalanx.” Id. at 6:29–31. None of the portions of Jackson that Petitioner relies upon discloses a “threaded end” as recited in the challenged claims. See id. at 6:21–7:2, 8:6–7. To the extent that Petitioner is contending that Jackson’s description of “manually screwing” discloses the presence of threads on limb 3, Jackson makes clear that limb 3 has oblique ridges 5, not threads. See Ex. 1004, 6:26–31. Petitioner’s arguments do not address why one of ordinary skill in the art would understand Jackson to be disclosing threads when Jackson explicitly states that “[t]he oblique ridges are similar in structure to the ridges that would be found on a workshop file.” See Pet. 15; Ex. 1004, 6:29–31. Because this description is not even addressed and Petitioner’s arguments clearly focus on what Jackson discloses, Petitioner has not sufficiently shown that a person of ordinary skill in the art would understand the oblique ridges on Jackson’s limb 3 to be threads. See Pet. 15; Ex. 1002 ¶¶ 78, 79.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,168,074 - Askeladden L.L.C. v. Mobile Equity Corp.Institution deniedPTAB · 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 · GrahamPatents in suitUS 10,535,058 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution deniedPTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,750,151 - Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution deniedPTAB · Nov 12, 2021 · IPR2021-00717 · APJ Kevin C Trock · IPR · Institution
The Board denied institution on all challenged claims: Grounds 1–3, 6, and 7 failed the institution threshold, and Grounds 4 and 5 were denied under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the list of cited references of the ’203 Patent. Ex. 1001, 2; Ex. 1002, 430. Because the same reference was cited during prosecution, there is no material difference between Christensen and the prior art involved during examination. Given these facts, we need not further evaluate factor (b), whether Christensen is cumulative, nor factor (d), the extent of overlap in arguments regarding Christensen. Thus, we find that the same reference was previously presented to the Office, and we move on to the second part of the Advanced Bionics framework.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account Patent Owner’s Preliminary Response, we conclude that the Petition does not establish there is a reasonable likelihood Petitioner would prevail in establishing at least one of Challenged Claims of the ’203 Patent as unpatentable under certain grounds presented in the Petition, and that the remaining asserted grounds should be denied pursuant to our delegated discretion under 35 U.S.C. § 325(d). Accordingly, we do not institute an inter partes review as to any of the challenged claims of the ’203 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that “[a] person of ordinary skill in the art (‘POSITA’) would have had at least a B.S. in computer science, electrical engineering, or a related field, and three years of experience working in the communications- or Internet-related industries” and that “[m]ore education or skill might make up for less experience, and vice-versa.” C. Pet. 5 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute this level of skill. See generally Prelim. Resp. Petitioner’s description of the level of ordinary skill appears to be generally consistent with the subject matter of the ’203 Patent. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We are not persuaded by Petitioner that the recited database system should be given no patentable weight. The Federal Circuit explains that [p]roduct-by-process claims are not specifically discussed in the patent statute. The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). With respect to patentability, “[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id. The Federal Circuit has clearly stated that “[i]n determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Purdue Pharma, 811 F.3d at 1354 (quoting Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012)). “That is because of the . . . longstanding rule that an old product is not patentable even if it is made by a new process.” Id. Generally, therefore, the recited process steps in a product-by-process claim are not accorded patentable weight. See In re Nordt Development Co., LLC, 881 F.3d 1371, 1375 (Fed. Cir. 2018) (“[T]he Board typically will not accord patentable weight to a process limitation in a product-by-process claim.”) (citing Thorpe, 777 F.2d at 697).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,200,203
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.