- Valve Corporation v. Immersion CorporationAll claims unpatentablePTAB · Oct 24, 2025 · IPR2024-00714 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–20 are unpatentable: Goldenberg anticipates or renders claims 1–6, 8–13, and 15–19 obvious, and Goldenberg with Cruz-Hernandez renders claims 7, 14, and 20 obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposed levels of ordinary skill are substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’907 patent. See, e.g., Ex. 1001, 1:14–62. Because we discern no dispositive difference between the parties’ proposals, and neither party has argued that the choice between the two would affect the outcome,6 we adopt Petitioner’s proposed level of skill for this decision. We note, however, that our decision would be the same under Patent Owner’s proposal.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“to,” as recited in each of claims 1, 8, and 15, to “require[] a cause-and-effect relationship between a secondary event (e.g., a haptic effect) that occurs in reaction to a first event (e.g., entry of the user input element to one or more positions within the boundary range of positions).” PO Resp. 26–27 (citing Ex. 2004 ¶ 44). Patent Owner argues that “in response to” refers to more than just a coincidence and involves at least some degree of causality. Id. at 27 (citing American Calcar, Inc. v. American Honda Motor Co., 651 F.3d 1318, 1339–40 (Fed. Cir. 2011); Ex. 2007, 12–14 (dictionary definition); Ex. 2008, 7 (dictionary definition); Ex. 2006, 30:13–31:2, 32:8–11, 32:17– 21 (testimony by Mr. Ward)); PO Sur-reply 8–9 (citing Ex. 2009, 34:8–19, 36:5–21 (testimony by Mr. Ward)).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“to,” as recited in each of claims 1, 8, and 15, to “require[] a cause-and-effect relationship between a secondary event (e.g., a haptic effect) that occurs in reaction to a first event (e.g., entry of the user input element to one or more positions within the boundary range of positions).” PO Resp. 26–27 (citing Ex. 2004 ¶ 44). Patent Owner argues that “in response to” refers to more than just a coincidence and involves at least some degree of causality. Id. at 27 (citing American Calcar, Inc. v. American Honda Motor Co., 651 F.3d 1318, 1339–40 (Fed. Cir. 2011); Ex. 2007, 12–14 (dictionary definition); Ex. 2008, 7 (dictionary definition); Ex. 2006, 30:13–31:2, 32:8–11, 32:17– 21 (testimony by Mr. Ward)); PO Sur-reply 8–9 (citing Ex. 2009, 34:8–19, 36:5–21 (testimony by Mr. Ward)).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 18
Patent outcomesUS 10,627,907 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,627,907 - Crowdstrike, Inc. v. Gosecure, Inc.InstitutedPTAB · May 2, 2025 · IPR2025-00068 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Capalik and King.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–21 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Patent Owner argued that we should not institute both petitions. Paper 8, 1–5. Patent Owner argued that the challenged claims are not long and Petitioner’s concerns about the construction of “association” in limitation 1(b) are “contrived.” Id. at 1. Patent Owner contends that Petitioner could have addressed all of the challenged claims in one petition. Id. Noting that both the ’70 petition and the instant Petition challenge all claims of the ’872 patent, Patent Owner argued that the number of claims challenged does not necessitate multiple petitions. Id. at 2–3. Patent Owner also argued that Petitioner could have waited until closer to the statutory due the claim language “association” in the related district court proceeding. Id. at 4–5. Considering the facts holistically, we determine the totality of the circumstances here supports Petitioner’s position that two petitions are warranted. Petitioner has challenged a large number of claims directed to complex subject matter. And the task of challenging those claims is complicated by the potential for Patent Owner to argue for a narrow construction of “association” in limitation 1(b). Patent Owner’s suggestion that Petitioner would not have needed to file multiple petitions if it had waited longer to file a petition is not persuasive. Paper 8, 4–5. Patent Owner does not explain why a petitioner should be encouraged to delay the filing of its petition. See id. And the parties appear to agree that Patent Owner has not weighed in on whether “association” should be interpreted narrowly or broadly. Prelim. Reply. 8; Prelim. Sur-Reply 8. The present circumstances, considered as a whole, warrant two petitions challenging the claims of the ’872 patent.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner explains the applicable level of skill in the art as follows: As of June 24, 2010, a person of ordinary skill in the art (POSITA) would be a person having a bachelor’s degree in computer science, computer engineering, or an equivalent, as well as two years of industry experience. A POSITA would also have had a working knowledge of software security analysis and dynamic malware analysis. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. explanation of the level of skill in the art. See Prelim. Resp. 13. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’872 patent and the prior art of record. 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).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We first look to the claim language itself. It recites “transmitting to one or more computer systems,” not transmitting to “devices.” Ex. 1001, 19:53. Although the claim language “one or more computer systems” may encompass “protected network devices,” we do not see a reason that its plain meaning would be limited to network devices, much less protected network devices. Nor do we see a reason that the plain meaning of “one or more computer systems” is limited to protected network devices to the exclusion of a network that includes protected network devices and one or more other components. In support of its suggestion that the claim language “one or more computer systems” excludes a combination of protected network devices and one or more other components, Patent Owner cites the claim language “for preventing future attacks, to the one or more computer systems.” Prelim. Resp. 20–24; Prelim. Sur-Reply 1–2. But Patent Owner does not provide reasoning or evidence persuading us to read the claim language more narrowly than its plain meaning, which encompasses preventing future attacks to a computer system that includes both protected network devices and one or more other components.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,954,872 - PTAB · Apr 21, 2025 · IPR2024-01489 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–30 on all asserted grounds, finding a reasonable likelihood that Cohen anticipates the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Identity of terminology is not required for a claim element to be met directly by the prior art. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted) (“[T]his is not an ‘ipsissimis verbis’ test.”). For anticipation, we take into account not only the specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). B. Level of Ordinary Skill in the Art” slip op. at 13
- Parallel petitionsDecided for petitioner
“Wrinkl, Inc. v. Slack Technologies, LLC, No. 1:24-cv-00620 (D. Del. May 23, 2024). Pet. 1; Paper 4, 1. Patent Owner also states that a “second IPR was filed against the same patent in proceeding IPR2024-01490.” Paper 4, 1. Patent Owner does not argue that we should exercise discretion under 35 U.S.C. § 314(a) because Petitioner uses more than one petition to challenge the ’731 patent. challenges the alleged priority date of the ’731 patent (IPR2024-01489) (‘First Petition’) and the second petition assumes that the Patent Owner’s claimed priority date is valid, and addresses prior art references predating that priority date (IPR2024-01490) (‘Second Petition’).” Ex. 1019, 1. In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “there may be circumstances in which more than one petition may be necessary” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Such is the case here. Patent Owner does not file any Preliminary Response or other paper disputing Petitioner’s use of two petitions to challenge the claims of the ’731 patent. Based on the record before us, we consider the merits of both petitions because Petitioner’s stated reasons for filing two petitions are consistent with the CTPG. See generally Ex. 1019 (citing CTPG, 59 (“the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references)). C. The ’731 Patent” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9–10 (PTAB Apr. 22, 2014); Mission Integrated Techs., LLC v. Joshua Clemente, IPR2023-01285, Paper 16 at 18 (PTAB Feb. 23, 2024). Then, Patent Owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“two years of experience in the graphical user interface field” or, alternatively “a master’s degree in computer science (or similar discipline) and at least two years of similar experience.” Pet. 16 (citing Ex. 1003 ¶ 40). We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented. C. Claim Construction” slip op. at 14
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,973,731 - 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 - I4f Licensing NV v. Vilox ABInstitution deniedPTAB · Aug 21, 2024 · IPR2024-00602 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were anticipated by Miller or obvious over Miller alone or Miller and Roy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An 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). For the reasons explained below, we do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Considering all of the arguments and evidence, we agree with Patent Owner that Petitioner insufficiently supports its position that Miller discloses a locking recess with a curved horizontal locking surface. Petitioner does not cite any text in Miller that discloses a locking recess with a curved horizontal locking surface. E.g., Pet. 7–8, 14–23. Instead, Petitioner relies on Miller’s Figure 3 as allegedly showing a curved horizontal locking surface. E.g., id. at 15–18, 21–23. We do not find that Miller’s Figure 3 shows a locking recess with a curved horizontal locking surface in the location identified by Petitioner, i.e., the location of the curved red arrow that Petitioner added to Miller’s Figure 3. E.g., Pet. 15, 22. Even assuming that this portion of Miller’s drawing shows a very subtle rise (which we do not find), it does not show clearly a curve, as opposed to, for example, a slightly inclined flat surface. Moreover, we agree with Patent Owner that, at the point of Petitioner’s curved red arrow, Figure 3’s overlapping representation of the tongue’s lower surface and the groove’s upper surface prevents distinguishing one from the other. Prelim. Resp. 45 (“In Figure 3, the lines merge so that no conclusion can reasonably be made by a [person of ordinary skill in the art] as to whether a locking recess is present in the groove or not.”). Accordingly, Figure 3 does not allow discerning a curve in the groove’s upper surface at the point identified by Petitioner.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Additionally, Petitioner does not provide a persuasive reason that a person of ordinary skill in the art would have had to configure Miller’s panel with a curved horizontal locking surface, in addition to an inclined horizontal locking surface, as required by independent claim 1. Pet. 34–39; Prelim. Resp. 54. In support of its argument that it was well-known to use curved locking surfaces, Petitioner provides a vague string cite of evidence that dubiously includes Miller (which has not been shown to disclose a curved horizontal locking surface). Pet. 37 (citing Ex. 1002 ¶¶ 25–26, 56; Ex. 1006, Figs. 2–4, 9, and 10 and associated description; Ex. 1004; Ex. 1006; Ex. 1005; Ex. 1009; Ex. 1010; Ex. 1011; Ex. 1012; Ex. 1013; Ex. 1014). Moreover, to the extent Petitioner is correct that it was well-known and easy to configure a panel with a curved locking surface, that may show that a person of ordinary skill in the art could have added a curved horizontal locking surface to Miller’s panel. But that does not show sufficiently that such a modification would have been obvious, as it does not demonstrate why a person of ordinary skill in the art would have modified Miller’s cladding panel to add a curved horizontal locking surface. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (stating that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1351–1352 (Fed. Cir. 2014)). Additionally, to the extent that Petitioner is correct that a person of ordinary skill in the art would have recognized a strength benefit of having two locking recesses, that does not explain why a person of ordinary skill in the art would have added a curved locking surface, as opposed to, for example, another substantially planar locking surface like the one at Miller’s contact point 42. Pet. 36–39; Ex. 1004, 5:19–34. And Petitioner does not identify, much less substantiate, any other reason that a person of ordinary skill in the art would have had for combining a curved locking surface with an inclined horizontal locking surface in Miller’s cladding panel. Pet. 36–39. Because Petitioner has not persuasively addressed claim 1’s requirement that its dual locking recesses include one with a curved horizontal locking surface, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Miller. E.g., Pet. 7–8, 34–39. Additionally, this deficiency is not remedied in Petitioner’s challenges to dependent claims 2–15 based on Miller. E.g., Pet. 34, 40–50. Accordingly, Petitioner does not establish a reasonable likelihood of prevailing on its position that dependent claims 2–15 would have been obvious over Miller.” slip op. at 23
§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,421,425 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCAll claims unpatentablePTAB · Apr 11, 2024 · IPR2022-01528 · APJ Neil T Powell · IPR · Final written decision
Claims 15–19 are unpatentable: the Board found claims 15–16 anticipated or obvious and claims 17–19 obvious; it did not reach the Yong-Xavier-Cason ground for claim 17.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that the ’435 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected by those sources is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s asserted level of ordinary skill in the art.” slip op. at 12
- Expert testimonyDecided for patent owner
“technologies, [and he admits] that his only retail technology experience is limited to MBA case studies from the early 1990s.” Pet. Reply 3 (citing Ex. 1022, 15:20–22, 16:3–7, 17:22–23; Ex. 2010). Based on this, Petitioner advances that we “should afford little weight to Dr. Williams’ testimony.” Id. Patent Owner counters that we should afford full weight to Dr. Williams’s testimony. PO Sur-reply 2. Patent Owner contends that Dr. Williams meets Petitioner’s definition of a person of ordinary skill in the art. Id. According to Patent Owner, “Dr. Williams surpasses the education requirement” and meets the experience requirements. Id. at 3. Addressing Petitioner’s concerns about retail technology experience, Patent Owner asserts that “Dr. Williams testified that his MBA curriculum contained coursework that included study of POS systems, particularly though case studies.” Id. (citing Ex. 2009 ¶ 3; Ex. 1022 16:3–7). “This is precisely the ‘more education’ in the [person of ordinary skill in the art] definition that can ‘supplement practical experience,’” Patent Owner argues. Id. (citing Pet. 12). Patent Owner persuades us that Petitioner’s concerns regarding Dr. Williams’s retail technology and knowledge and experience are not a basis for affording less weight to Dr. Williams’s testimony.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Contrary to Patent Owner’s argument, the ’435 patent’s Specification supports Petitioner’s position. As Petitioner argues, the Specification’s disclosure that “[u]ser identification information may include a username, a password, [or] both a username and password” conveys that “a username, a password, [or] both a username and password” is a short, non-exhaustive list of user identification information according to the ’435 patent. Ex. 1001, 6:2–4 (emphasis added). This comports with the plain meaning of “user identification information,” which seemingly would refer to information that identifies a user. Consistent with this, the claim language does not convey any meaning of “user identification information” other than its plain meaning. See, e.g., id. at 24:7–9. Accordingly, we do not adopt Patent Owner’s suggestion that limitation 16a’s “user identification information” requires a username, a password, or both. PO Resp. 72; PO Sur-reply 30. Instead, we conclude that “user identification information” encompasses information that identifies a user.” slip op. at 16
- BurdenPetitioner expert creditedUnpatentable
“Weighing all of the parties’ arguments and evidence, we find Petitioner has shown that Fletchall discloses performing all of limitations 15h–15j’s actions by the same server, specifically payment server 130. For example, Petitioner persuades us that Fletchall discloses payment server 130 performing the actions of limitations 15h and 15i: “retrieving . . . payment information to complete the transaction” and “completing . . . the transaction based on the payment information.” Ex. 1001, 23:43–24:2; Pet. 24–26 (citing Ex. 1008, 4:35–49, 11:3–12, 12:42–45, 13:9–14, 13:45–47; Ex. 1002 ¶¶ 199–204, 206–208, 210; Ex. 1001, 10:59–11:3, Fig. 2B). Petitioner’s evidence also shows that Fletchall discloses limitation 15j’s “transmitting . . . a confirmation receipt to the mobile phone in response to completion of payment for the transaction” by payment server 130 on its own. Ex. 1001, 24:3–5; Pet. 26–27 (citing Ex. 1008, 9:26–32, 11:57–61; Ex. 1002 ¶¶ 213–214). For example, Petitioner cites Fletchall’s disclosure of at least one embodiment in which “the electronic receipt is generated by the payment server (130) and provided to the transaction module (106b) of the mobile POS application (106).” Ex. 1008, 9:26–29; Pet. 27. Thus, Petitioner demonstrates that Fletchall discloses performing all of limitations 15h–15j by payment server 130. This showing is not diminished by Patent Owner’s observation that the Petition mentions Fletchall’s product database 121 when discussing limitation 15j. PO Sur-reply 27 n.12 (citing Pet. 26–27). In the passages Petitioner cites, Fletchall contains multiple, alternative disclosures about creating and sending a receipt. Ex. 1008, 9:26–32, 11:57–61; Pet. 27. For example, Fletchall contains (1) a disclosure that a receipt can be generated and transmitted by payment server 130 on its own (Ex. 1008, 9:26–29) and (2) an alternate disclosure that “[t]he electronic receipt may be generated by the product database (121) in cooperation with the payment server (130) and provided to the transaction module 106(b) of the mobile POS application (106)” (id. at 9:29–32). As Dr. Shamos notes, Fletchall also discloses that “[t]he electronic receipt may be generated by the payment server.” Ex. 1008, 11:19–20; Ex. 1002 ¶ 213. Immediately following this disclosure, Fletchall describes handling the electronic receipt by payment server 130 and product database 121 working in cooperation as an alternative to handling the electronic receipt by payment server 130 on its own: The electronic receipt may be generated by the payment server, by the product database in cooperation with the payment server and/or by a mobile application installed on the mobile device directly. Once generated, the electronic receipt may be sent to the mobile device to be stored in a memory or in a storage device of the mobile device. Ex. 1008, 11:19–25 (emphasis added). Petitioner’s reliance on Fletchall’s disclosure of handling the electronic receipt by payment server 130 on its own supports Petitioner’s case, regardless of Fletchall’s alternate disclosure of handling the electronic receipt by payment server 130 in cooperation with product database 121.” slip op. at 28
Patent outcomesUS 10,803,435 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,803,435 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCAll claims unpatentablePTAB · Apr 10, 2024 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–14 are unpatentable as anticipated by Keith; the Board did not reach the alternative obviousness ground over Hanson and Keith.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’” Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). “[T]he hallmark of written description is disclosure,” and the test “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of that application. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. But, “[i]t is not sufficient for purposes of the written description requirement of [35 U.S.C.] § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood, 107 F.3d at 1572.” slip op. at 33
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.”). slip op. at 13
- BurdenFwd all claims unpatentableDecided for petitioner
“preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2022). “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 12
Patent outcomesUS 10,803,435 unpatentable§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,803,435 - Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentablePTAB · Jan 11, 2024 · IPR2022-01175 · APJ Neil T Powell · IPR · Final written decision
Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. Accordingly, we adopt the level of skill in the art as defined by SharkNinja.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“must be a separate and distinct component from the base. Although we agree that “provided on the base” may be construed to mean that the suction nozzle assembly is a separate and distinct component positioned on, or attached to, the base, we also conclude that “provided on the base” may be construed more broadly to mean that the suction nozzle assembly is part of the base or included in the base. That broader meaning comports with the specification of the ’455 patent and the plain and ordinary meaning of the term “provided on.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“assembly is not “provided on the base,” as claimed. See PO Resp. 7–10, 17–21. That is because Bissell’s assertion that the suction nozzle assembly, as claimed, must be a physically separate component from the base relies on an improper claim construction. As discussed above, we construe “a suction nozzle assembly provided on the base” to encompass not only a suction nozzle assembly that is “positioned on” the base, as Bissell asserts, but also one that it is “part of” the base or “included in” the base.” To that end, Beskow discloses that “debris and fluid inlets 724, 726 may be formed entirely or partially as a removable inlet tray 730” and “may be separately removable from the cleaning head 102, integral to or not removable from the inlet portions of Beskow’s suction nozzle assembly are removably attached to Beskow’s cleaning head 102 (i.e., the claimed “base”) necessarily means they are “positioned on” and “included in” the base under the proper construction of “provided on the base.” Indeed, Beskow’s disclosure is no different than the preferred embodiment of the ’455 patent, where suction nozzle assembly 580 “is configured to be received in the upper cover 542,” which indisputably is part of “base 14.” Ex. 1001, 10:48–50, Fig. 8 (emphasis added); see also id. at 8:9–10 (“Upper cover 542 can be configured to releasably receive the suction nozzle assembly 580.”). Thus, we find that Beskow satisfies the claim limitation of “a suction nozzle assembly provided on the base.”” slip op. at 15
Patent outcomesUS 10,925,455 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,925,455 - Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentablePTAB · Jan 11, 2024 · IPR2022-01177 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. See PO Resp. 1–9. Accordingly, we adopt the level of skill in the art as defined by SharkNinja.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Despite that exchange, Bissell still presents no evidence as to the meaning of “selectively provided,” aside from asserting the term is “ambiguous” while at the same time arguing that the term requires more than simply showing that Beskow’s agitator “can” or “cannot” be mounted on the base. Notably, however, Bissell never elaborates on why Beskow must disclose “when” the agitator can be removed, as opposed to simply disclosing it can be removed. In contrast, SharkNinja presents Beskow’s Figures 1A and 7A to show that agitator 110 is removable. Thus, without more from Bissell, we fail to see why we should construe “selectively provided” any more narrowly than simply requiring that the agitator “can” or “cannot” be mounted on the base, as SharkNinja proposes. To that end, we find that Beskow’s agitator, as depicted in Figures 1A and 7A, clearly falls within the meaning of “selectively provided on the base,” as properly construed.” slip op. at 9
- Strike new argumentNew argument consideredDecided for petitioner
“We disagree that SharkNinja’s proposed construction of “selectively” in its reply is untimely or not supported by the evidence. At the outset, we note that Bissell did not provide any meaningful construction of the term in the Patent Owner Response. See PO Resp. 2–5. By opening the door in its Response to the meaning of “selectively” and by disputing that Beskow teaches this limitation, Bissell cannot reasonably fault SharkNinja for proposing its own construction of the term in its Reply. This is especially true given Bissell’s refusal to construe the term itself, despite recognizing some ambiguity in the claim’s use of that term. See Hrg. Tr. 46 (Bissell’s counsel explaining that “the word selectively is ambiguous” and that “[i]n the Patent Owner’s response we pointed out the ambiguities.”); see also id. at 49 (“[PTAB JUDGE]: Okay. So it’s your position that it’s an ambiguous term then? [BISSELL’S COUNSEL]: Yes, Your Honor.”). Thus, in the absence of any construction of “selectively” from Bissell in contending that Beskow lacks this claim limitation, SharkNinja was fully within its right to propose its own construction in its Reply to support of its assertion that Beskow teaches this limitation. As such, we reject the notion that SharkNinja’s proposed construction was untimely or otherwise not properly within the scope of its Reply.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 11,096,542 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,096,542 - Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentablePTAB · Jan 11, 2024 · IPR2022-01176 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. Accordingly, we adopt the level of skill in the art as defined by SharkNinja. B. Claim Construction” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Bissell that, as claimed, the suction nozzle assembly must be a separate and distinct component from the base. Although we agree that “provided on the base” may be construed to mean that the suction nozzle assembly is a separate and distinct component positioned on, or attached to, the base, we also conclude that “provided on the base” may be construed more broadly to mean that the suction nozzle assembly is part of the base or included in the base. That broader meaning comports with the specification of the ’541 patent and the plain and ordinary meaning of the term “provided on.”” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find unpersuasive Bissell’s assertion that Beskow’s suction nozzle assembly is not “provided on the base,” as claimed. See PO Resp. 7–10, 17– 21. That is because Bissell’s assertion that the suction nozzle assembly, as claimed, must be a physically separate component from the base relies on an improper claim construction. As discussed above, we construe “a suction nozzle assembly provided on the base” to encompass not only a suction nozzle assembly that is “positioned on” the base, as Bissell asserts, but also one that it is “part of” the base or “included in” the base.” To that end, Beskow discloses that “debris and fluid inlets 724, 726 may be formed entirely or partially as a removable inlet tray 730” and “may be separately removable from the cleaning head 102, integral to or not removable from the cleaning head 102.” Ex. 1004, 20:6–7, 29–32. That the debris and fluid inlet portions of Beskow’s suction nozzle assembly are removably attached to Beskow’s cleaning head 102 (i.e., the claimed “base”) necessarily means they are “positioned on” and “included in” the base under the proper construction of “provided on the base.” Indeed, Beskow’s disclosure is no different than the preferred embodiment of the ’541 patent, where suction nozzle assembly 580 “is configured to be received in the upper cover 542,” which indisputably is part of “base 14.” Ex. 1001, 10:52–54, Fig. 8 (emphasis added); see also id. at 8:12–13 (“Upper cover 542 can be configured to releasably receive the suction nozzle assembly 580.”). Thus, we find that Beskow satisfies the claim limitation of “a suction nozzle assembly provided on the base.”” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“SharkNinja also challenges claims 1–20 as being rendered obvious by either Beskow alone or the combined teachings of Beskow and Li. See Pet. 25–26. Bissell responds that SharkNinja’s showing for these challenges fails “for the same reasons discussed with respect to Ground 1.” PO Resp. 33. Because we determine that claims 1–20 are unpatentable as anticipated by Beskow, we need not address whether those same claims are unpatentable under SharkNinja’s additional grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding that petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Scientific Scimed, Inc. v. Cook Grp. Inc., 809 F. Appx 984, 990 (Fed. Cir. 2020) (nonprecedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding” and, thus, has “discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 23
Patent outcomesUS 11,096,541 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,096,541
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.