• Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Mar 13, 2023 · IPR2022-01324 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 9–12 unpatentable over Beyda alone or in combination with Narin and Detering.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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). For the reasons provided below, we determine based on the record before us that there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

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

    “We need not provide an explicit construction for “BT company,” nor an explicit construction for “third party computer system.” The parties agree that the claimed “BT company” and the claimed “third party” are distinct entities, in other words, the BT computer system is controlled by a distinct entity from the entity that operates the third party computer system controlling advertising space. See Pet. 22 (“‘BT company’ . . . means ‘an entity that targets ads for placement in advertising space controlled by another party . . . .’” (italics added), Ex. 1001, 14:13–15 (“a third party computer system controlling advertising space.” (italics added)); Pet. 33 (citing Ex. 1015, 44). The prosecution history and ’615 Patent Specification support the distinction between the BT company and third party. See Ex. 1001, 8:56–63, 9:23–46, 9:66–10:19; Ex. 1004, 102 (cited by Pet. 19).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’615 Patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user profile management and/or web-based targeted content delivery, or a related field. A person could have qualified with more formal education and less technical experience, or vice versa. Pet. 20 (citing Ex. 1002 ¶¶ 8–13). “Patent Owner does not challenge that definition.” Prelim. Resp. 4. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 10

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

    “Based on the record before us, Petitioner does not set forth sufficient argument and evidence to demonstrate that Beyda discloses “[a] computer system controlled by a behavioral targeting company (BT company),” as recited in the preamble, and “a third party computer system controlling advertising space,” as recited in the first limitation of claim 9. See Pet. 22–23, 27–39. As explained above in Section II.A., both parties agree that the BT company and third party are distinct entities. As highlighted above in Section II.A., Petitioner asserts that a “BT company” means “an entity that targets ads for placement in advertising space controlled by another party.” Pet. 22–23 (emphasis added). Petitioner does not direct us to where Beyda discloses a computer system controlled by a first entity that is distinct from the third party (i.e., another party) operating the computer system controlling advertising space. See Pet. 27–39; Prelim. Resp. 10. We agree with Patent Owner that the Petition’s assertion of a distinction between Beyda’s data warehouse and Beyda’s targeting engine, external content computer components performing the operations of the targeting engine and the data warehouse. See Pet. 33–34; Prelim. Resp. 9–10. Therefore, the Petition does not establish that Beyda’s data warehouse is controlled by a first entity that is distinct from the entity (i.e., another party, third party) operating Beyda’s targeting engine, external content servers, and web servers controlling advertising space. To the extent that the Petition asserts that Beyda inherently discloses “[a] computer system controlled by a behavioral targeting company (BT company)” and “a third party computer system controlling advertising space,” we do not agree. The Petition’s assertion that “[t]o a [person of ordinary skill in the art], the description of this functionality [(extractor program, targeting engine program, data warehouse)] existing on multiple servers teaches that one or more parties could operate portions of what Beyda describes as system 10” is insufficient because inherency cannot be established by possibilities and probabilities. Pet. 29 (bolding and underlining added); see Therasense, 593 F.3d at 1332. For these same reasons, we also find insufficient the Petition’s assertion that a person of ordinary skill in the art “would have further understood Beyda to teach that Beyda’s system embodiments could be controlled by a behavioral targeting company.” Pet. 32 (bolding and underlining added).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,830,615
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01209 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–4, 6, and 9–25 are unpatentable; claims 5, 7, and 8 are not shown unpatentable, based on anticipation by Kim and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “C. Claim Construction In inter partes reviews, we interpret claims under the same standard” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner fails to establish that Kim discloses “determining that the individual is a driver of the vehicle based at least in part on acceleration, forces, velocity, the at least one location point, and time.”” slip op. at 46

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

    “nexus and therefore fails to establish that any alleged evidence of objective indicia supports a finding of non-obviousness. Accordingly, we give Patent Owner’s reliance on objective indicia of non-obviousness no weight in our obviousness analysis.” slip op. at 65

  Patent outcomesUS 9,152,609 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,152,609
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01118 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–5, 7, 8, 10–16, and 18 are unpatentable; claims 6, 9, and 17 were not shown unpatentable, because the asserted prior art did not establish all limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 9

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

    “2. Discussion Petitioner argues that Kim discloses every limitation of claim 1, and” slip op. at 23

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

    “2. Discussion We begin our analysis by addressing Patent Owner’s asserted objective indicia of non-obviousness, and then turn to the merits of Petitioner’s specific obviousness challenges before us.” slip op. at 52

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “the combination of Kim and Baker discloses “comparing the at least one current geographic location to the first geographic location; setting the location of the individual to the individual is in an outside of the vehicle location, when a distance between the at least one current and the first geographic locations exceeds a predetermined threshold.” Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 6 would have been obvious based on Kim and Baker.” slip op. at 90

  Patent outcomesUS 8,527,140 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,140
• Allstate Insurance Company v. Atos, LLCInstituted
  PTAB · Jan 25, 2022 · IPR2021-01209 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR of claims 1–25 on all asserted grounds, finding a reasonable likelihood that Kim anticipates at least claims 1–3, 9, 11, and 25.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “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). After considering the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’609 patent. Accordingly, we institute an inter partes review of claims 1–25 of the ’609 patent on all grounds asserted in the Petition.” slip op. at 2

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

    “standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner proposes constructions for “operation indicator” and “on- board component.” Pet. 7–10. Patent Owner disputes Petitioner’s proposed construction for “operation indicator” and proposes its own construction, and argues that we need not construe “on-board component” at all. Prelim. Resp. 7–13. We agree with Patent Owner that we need not construe “on-board component” because, at this time, no issue turns on our construction of that limitation. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We limit our analysis to the construction of “operation indicator.”” slip op. at 9

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

    “agree with Petitioner’s proposed construction and disagree with Patent Owner’s contention that “operation indicators” mean something more than the output of a sensor measurement based on signals from the environment. First, the plain language of the claims does not support Patent Owner’s construction. In claim 1, the limitation appears in a step requiring “monitoring at least one operation indicator . . . wherein the . . . operation indicator is created by an on-board component,” i.e., created by the sensor the specification describes. See Ex. 1001, 3:54–58, 11:4–6. Nothing in that limitation or its analogous limitation in claim 25 suggests anything more than “monitoring” the operation indicator created by the on-board component—no extra converting of that output appears in the claim suggests that mere monitoring of the indicator requires further conversion prior to the monitoring. In addition, to the extent that sensor output such as vibrations per second do not indicate something meaningful enough about the vehicle in Patent Owner’s view, later limitations in the claims provide additional information about the operation of the vehicle, suggesting that the “operation indicators” themselves need not contain all of the information as to the vehicle’s state. See PO Sur-reply 2; Ex. 1001, 11:9–12 (setting forth steps in claim 1 that require detecting when the operation indicator meets predetermined criteria and determining operational states of the vehicle based on that criteria). The specification also supports Petitioner’s construction by equating “operation indicator” with a sensor’s output. Ex. 1001, 3:57–60 (“[A] vibration sensor may measure forces over time (i.e. the signals) and convert them into number of vibrations measured per second (operation indicators).”). The only converting the specification describes in the context of operation indicators involves converting signals from the environment, not converting the output of the sensor as Patent Owner argues. Id. Patent Owner contends that the specification’s description of sensor output in vibrations per second, an operation indicator, may involve some additional converting of sensor output within a two-part sensor, but the specification does not describe such a two-part sensor or the extra conversion step. See PO Sur-reply 3–4; Ex. 1001, 3:52–66, Fig. 1. To the extent that the specification describes conversion of sensor output into something different, it occurs in later steps after the “monitoring” step, and not before the sensor creates operation indicators. See Ex. 1001, 4:12–20 (describing operation of state detector unit that determines operational state of a vehicle after receiving operation indicators from monitoring unit). Finally, although the specification describes a sensor measurement converted from environmental signals and Petitioner’s proposal uses the phrase “determined from signals from the environment,” we view the phrases “converted from” and “determined from” as providing no meaningful distinction as applied to the prior art in this case. See Pet. 7. Patent Owner uses the same phrase in its own proposal when discussing the sensor’s actions on signals from the environment, and we do not view Petitioner’s use of that phrase in its construction as problematic. See Prelim. Resp. 8 (describing a portion of proposed construction as “determined from signals from the environment” (emphasis omitted)). To the extent the parties find the distinction between “converted” and “determined” meaningful, they can address the issue further during the trial.” slip op. at 11

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

    “To anticipate a claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’609 patent has an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and 103. Our decision would not differ based on applying either preor post-AIA law. 3 KR 10-0775006, published June 4, 2007 (Ex. 1005, “Kim”). 4 US 8,065,508 B2, filed November 10, 2008 (Ex. 1006, “Rubin”). 5 Mitrovic, D., Reliable Method for Driving Events Recognition, IEEE Transactions on Intelligent Transportation Systems, Vol. 6, No. 2 (June 2005) (Ex. 1008, “Mitrovic”). 6 US 7,505,784 B2, published March 29, 2007 (Ex. 1007, “Barbera”). 7 US 6,236,937 B1, issued May 22, 2001 (Ex. 1013, “Kohli”). That “single reference must describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,152,609
• Allstate Insurance Company v. Atos, LLCInstituted
  PTAB · Jan 10, 2022 · IPR2021-01118 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that Kim anticipates at least claims 1, 10, and 13.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “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). After considering the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’140 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’140 patent on all grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have been someone with a bachelor’s or master’s degree in the field of mechanical engineering, electrical engineering, or physics, or with a bachelor’s or master’s degree in a related field, and at least three years of experience in designing or developing portable device systems.” Pet. 4 (citing Ex. 1003 ¶ 52). Patent Owner does not address Petitioner’s proposal or offer a competing definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’140 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 8

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

    “Petitioner proposes constructions for “operation indicator” and “on- board component.” Pet. 7–10. Patent Owner disputes Petitioner’s proposed construction for “operation indicator” and proposes its own construction, and argues that we need not construe “on-board component” at all. Prelim. Resp. 8–13. We agree with Patent Owner that we need not construe “on-board component” because, at this time, no issue turns on our construction of that limitation. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We limit our analysis to the construction of “operation indicator.”” slip op. at 9

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

    “First, the plain language of the claim does not support Patent Owner’s construction. The limitation in question appears in a step requiring “monitoring at least one operation indicator . . . wherein the . . . operation indicator is created by an on-board component,” i.e., created by the sensor the specification describes. See Ex. 1001, 3:49–52, 10:65–11:2. Nothing in that limitation suggests anything more than “monitoring” the operation indicator created by the on-board component—no extra converting of that output appears in the claim or suggests that mere monitoring of the indicator requires further conversion prior to the monitoring. In addition, to the extent that sensor output such as vibrations per second do not indicate something meaningful enough about the vehicle in Patent Owner’s view, later limitations in the claims provide additional information about the operation of the vehicle, suggesting that the “operation indicators” themselves need not contain all of the information as to the vehicle’s state. See PO Sur-reply 2; Ex. 1001, 11:3–6 (setting forth steps in claim 1 that require detecting when the operation indicator meets predetermined criteria and determining operational states of the vehicle based on that criteria). The specification also supports Petitioner’s construction by equating “operation indicator” with a sensor’s output. Ex. 1001, 3:51–56 (“[A] vibration sensor may measure forces over time (i.e. the signals) and convert them into number of vibrations measured per second (operation indicators).”). The only converting the specification describes in the context of operation indicators involves converting signals from the environment, not converting the output of the sensor as Patent Owner argues. Id. Patent Owner contends that the specification’s description of sensor output in vibrations per second, an operation indicator, may involve some additional converting of sensor output within a two-part sensor, but the specification does not describe such a two-part sensor or the extra conversion step. See PO Sur-reply 3–4; Ex. 1001, 3:45–61, Fig. 1. To the extent that the specification describes conversion of sensor output into something different, it occurs in later steps after the “monitoring” step, and not before the sensor creates operation indicators. See Ex. 1001, 4:7–16 (describing operation of state detector unit that determines operational state of a vehicle after receiving operation indicators from monitoring unit). Finally, although the specification describes a sensor measurement converted from environmental signals and Petitioner’s proposal uses the phrase “determined from signals from the environment,” we view the phrases “converted from” and “determined from” as providing no meaningful distinction as applied to the prior art in this case. See Pet. 7. Patent Owner uses the same phrase in its own proposal when discussing the sensor’s actions on signals from the environment, and we do not view Petitioner’s use of that phrase in its construction as problematic. See Prelim. Resp. 8 (describing a portion of proposed construction as “determined from signals from the environment”). To the extent the parties find the distinction between “converted” and “determined” meaningful, they can address the issue further during the trial. Based on the foregoing, we construe “operation indicator” to mean “a sensor measurement determined from signals from the environment.” D. Anticipation of Claims 1, 5, 10, 13, and 15 by Kim” slip op. at 12

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,527,140
• Cradlepoint, Inc. / Dell Inc. et al. v. Sisvel International S.A.All claims unpatentable
  PTAB · Dec 13, 2021 · IPR2020-01070 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 10, 11, 13, 17, and 24 are unpatentable; the revised motion to amend proposing claims 36–40 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedOther

    “We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of skill in the art. Neither party explicitly applies or relies on its specific proposed level of skill in the art in support of its contentions relating to patentability. At oral argument, Petitioner’s counsel stated that there was no material dispute relating to the level of ordinary skill in the art. Tr. 7:18–23; see also Paper 51, 11 (“The results of the invalidity analysis are the same regardless of [the] definition used.”). In its Reply, Petitioner acknowledged, “[r]egardless of which POSITA definition is adopted, a POSITA’s understanding of the ’698 patent and prior art, reasons for making the combinations, and expectations of success would have been the same.” been the same.” Sur-reply 1. And, Patent Owner’s technical expert, Mr. Bates, acknowledged the differences between the contentions of the parties relating to the level of ordinary skill in the art are insignificant. Ex. 2006 (Bates Decl.) ¶ 22 (“[A]pplying Petitioner’s level of skill would not change my opinions.”). We agree and would make the same factual findings and reach the same ultimate conclusions with respect to both the challenged claims and the revised substitute claims under either of the contentions of the parties. To the extent necessary to conducting our analysis of the arguments and evidence in this proceeding, we adopt Patent Owner’s contention as to the level of ordinary skill in the art. It is the broader of the two and consistent with the level of skill reflected in the Specification and prior art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “There is no textual basis in the claim language for requiring a GSM or UMTS telecommunications network. Claim 10’s language is not plainly limited to GSM or UMTS telecommunications networks. Patent Owner identifies no disclaimer or explicit definition of “connection rejection message” in the ’698 patent that justifies importing a requirement for a GSM or UMTS telecommunications network. Patent Owner attempts to support its construction with this sentence from the Specification of the ’698 patent: “The invention is applicable in many different cellular telecommunication systems, such as the UMTS system or the GSM system.” Resp. 10 (citing Ex. 1001, 7:41–43). However, this language clearly is permissive, not mandatory. At most, this sentence explains that the cellular telecommunication system can be a UMTS system or GSM system; not that the cellular telecommunication system must be a UMTS system or GSM system.” slip op. at 13

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

    “There is no textual basis in the claims for requiring that the frequency information comprise multiple channels. Patent Owner identifies no disclaimer or explicit definition of “frequency parameter” in the ’698 patent that justifies importing a requirement that the frequency information comprise multiple channels.” slip op. at 15

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

    “Petitioner’s showing with regard to this limitation is well-supported and persuasive. We find Kallin discloses “receiving a connection rejection message” as recited in claim 10.” slip op. at 29

  Patent outcomesUS 7,433,698 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,433,698
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationAll claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00733 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1–5, 8–9, and 11–13 over Kim-based grounds; claims 2–5 over Fiegert-based grounds; claim 3 over Han-based grounds; claims 6–7 over Ohsawa-based grounds; and claim 10 over Kopmann-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as a person having “at least a four year degree in mechanical engineering or electrical engineering or a closely related field and at least one year of experience in the design and implementation of robotics and embedded systems,” where additional education could substitute for experience, or vice versa. Pet. 4 (citing Ex. 1020 ¶¶ 50–54). Patent Owner does not provide an assessment of the appropriate skill level. See generally PO Resp. We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “Petitioner provides several dictionaries and robotics textbooks that it contends confirm that the term “objects” is used in the ’294 patent claims in accordance with its plain meaning. See, e.g., Ex. 1014, 4 (“something material that may be perceived by the senses”); Ex. 1015, 4 (“[s]omething perceptible by one or more of the senses”); Ex. 1016, 293 (describing mapping permanent objects such as walls, desks, filing cabinets); Ex. 1017, 631 (describing mapping walls and furniture). Patent Owner and its declarant accept this plain meaning of “objects” and, as discussed above, present no persuasive reasoning to explain why this meaning does not apply here. PO Resp. 19 (arguing an artisan would “conclude that the recited ‘objects’ are distinct from ‘walls,’ despite the use of plain meaning of ‘objects’ suggesting that walls alone would suffice to satisfy the ‘mapping’ limitation”); Sur-reply 3 (“In the context of detecting, the term ‘object’ may refer more generally to ‘something material that may be perceived by the senses,’ such as walls and furniture, which appear the same to the robot’s sensor.”); Ex. 2029 ¶ 49; see supra § II.C.2.a (addressing arguments that the prosecution history compels rejection of the plain meaning). These dictionaries and textbooks support Petitioner’s contentions. 4. Conclusion For the foregoing reasons, we maintain our preliminary determination that we need not provide an express construction of “objects,” other than to determine that walls are included within the scope of the term, consistent with the plain and ordinary meaning of “objects.” Dec. on Inst. 13–14; see, e.g., Ex. 1014, 4. This determination is supported by the ’294 patent Specification, the ’844 patent incorporated therein, prior art cited in the ’294 patent, and several dictionaries and robotic textbooks. See, e.g., Ex. 1001, 7:8, 7:50, 9:31–33, 16:41–43; Ex. 1005, 4:40–42; Ex. 1014, 4; Ex. 1015, 4; Ex. 1016, 293; Ex. 1017, 631; Ex. 1019, 3:3–15; Ex. 1027, 16:46–47. For the reasons explained above, Patent Owner does not show persuasively that this admitted plain meaning should not apply.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “and Patent Owner fails to demonstrate that its disclosures related to “obstacles” are pertinent to the construction of the claim term “objects.” We invited the parties to address “whether support for the term ‘objects’ can be found in disclosures directed to ‘obstacles.’” Dec. on Inst. 14. In its Response, Patent Owner relies on Dr. Coates’ testimony to assert that it can: “Disclosures directed to ‘obstacles’ in the context of room mapping can provide support for the term ‘objects.’” PO Resp. 3, 11 n.1 (same) (citing Ex. 2029 ¶ 39). But this is not supported by any persuasive evidence or reasoning. For example, Dr. Coates asserts that the challenged ’294 patent produces maps by distinguishing between obstacles that define a work area from those within the work area, which he refers to as “objects,” “obstacles,” or “obstructions,” “consistent with how these words were used in the art.” Ex. 2029 ¶ 39 (citing Ex. 1001, 16:41–43; Ex. 2001, 9:39–43, 18:1–16; Ex. 2004, Figs. 3, 5). Thus, Dr. Coates appears to assert that these terms can be used interchangeably. The evidence that Dr. Coates cites, however, does not support this testimony. Indeed, the ’294 patent does not use the term “obstruction” at all. And although the ’294 patent utilizes the term “obstacle,” neither Patent Owner nor Dr. Coates show where the ’294 patent equates it with “objects,” or explains why a skilled artisan would have considered them to be equivalent. Ex. 2029 ¶ 39; PO Resp. 3, 11. Moreover, the ’294 patent utilizes the term “obstacles” in reference to, inter alia, walls; it does not use 7 The ’278 patent uses “objects” only to describe three goals, or purposes, of the invention. Ex. 2001, 3:14, 21, 26. that term to distinguish between obstacles that define a work area from those within the work area, as Dr. Coates asserts. For example, the ’294 patent plainly states that the robot “maintain[s] its position with respect to an obstacle, such as a wall or a piece of furniture.” Ex. 1001, 9:31–33.8 The remainder of Dr. Coates’ citations also fail to equate “objects,”” slip op. at 15

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

    “k) Summary Accordingly, we determine that Petitioner has met its burden of demonstrating by a preponderance of the evidence that claim 1 is unpatentable as anticipated by Kim.” slip op. at 37

  Patent outcomesUS 9,550,294 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,550,294
• Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentable
  PTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.

  RulingsFinal written decision

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

    “On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2

  • Skill levelDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6

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

    “testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19

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

    “4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56

  Patent outcomesUS 10,445,966 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,445,966
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5

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

    “contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8

  • BurdenDecided for patent owner

    “Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,307,677
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 18, 2020 · PGR2020-00039 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied Supercell’s rehearing request, leaving in place denial of institution of PGR challenging claims 1–24 based on the Fintiv factors and parallel litigation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1024, 1. Even considering these post-Decision developments, this three month delay results in a trial date in the parallel proceeding set six months before our final written decision would be due. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedOther

    “contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was publicly accessible. Dec. 24–25. Specifically, we relied upon Dr. Claypool’s prior testimony that, 4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)” (“Mastermind”), available at https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADSof-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”). it is my opinion that a diligent, skilled researcher engaged in a reasonable search for prior art would not have found Mastermind as a prior art reference even with the benefit of [Patent Owner’s] infringement contentions before the filing of the Petition for Post-Grant Review. A diligent, skilled researcher would not spend time sifting through the suggestions provided on Internet message boards, as they would normally not include useful or sufficiently detailed suggestions. Ex. 2009 ¶ 164 (emphasis added); Dec. 25.” slip op. at 8

  • Other 314aDecided for patent owner

    “different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedent set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–16, 18–20. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,307,676

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.