• Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution denied
  PTAB · 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 · Graham
  Patents in suitUS 10,984,413
• I4f Licensing NV v. Vilox ABInstitution denied
  PTAB · 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 · Graham
  Patents in suitUS 11,421,425
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,096,542
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,096,541
• Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00351 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on all challenged claims because the claims receive the provisional’s earlier priority date, making Gottlieb unavailable as prior art.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 16–22, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot reached

    “Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 13

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 6,575,138
• Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00352 · APJ Carl M Defranco · IPR · Institution

  The Board denied institution because the challenged claims are entitled to the provisional’s earlier filing date, making Gottlieb unavailable as prior art for every asserted ground.

  RulingsInstitution decision

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

    “For a patent to claim the benefit of the filing date of its provisional application, the provisional application must comply with the written description requirement of 35 U.S.C. § 112. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To show sufficient written description support, the provisional must reasonably convey to those skilled in the art that the inventor had possession of the later-claimed subject matter as of the provisional’s filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description inquiry is a question of fact, and, as such, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “The hydraulic link 22 consists of a hydraulic cavity 84 formed by hydraulic chamber 28 and hydraulic chamber cap 86. The cavity 84 is filled with viscous fluid. Within the chamber 28 is located the hydraulic piston part 72 of the needle valve 15. The chamber 28 is fitted around the hydraulic piston 72. O-ring seals 90 are located in the hydraulic chamber cap 86 and in the bottom of the hydraulic chamber 28 to prevent the fluid from leaking out of the cavity 84. The diametrical clearance between the outside diameter of the hydraulic piston 72 and the inside diameter of the hydraulic chamber 28 is extremely small (on the order of 50 to 250 microns). The exact clearance is dependent on the viscosity of the chosen fluid. The hydraulic flow in this clearance . . . is very small. The hydraulic fluid . . . acts as a solid during fast motions, because there is little flow going around the needle piston. Because the actuation occurs suddenly (on the order of 200 μs), the hydraulic fluid between the hydraulic chamber 28 and the needle valve piston 72 does not have the time to flow around the piston 72. Instead, the trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16. Id. at 12:5–13:14 (emphases added). Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Mercedes does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 11

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 6,298,829
• Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstituted
  PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution

  The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition 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 the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11

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

    “We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,803,435
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00379 · APJ Hyun J Jung · IPR · Institution

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level board ownOther

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

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

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

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

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

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,535,058
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution denied
  PTAB · Jan 26, 2022 · IPR2021-01241 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . 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 information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. See, generally Prelim. Resp. We find that Petitioner’s definition of a POSA is consistent with the scope and content of the ’936 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7

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

    “We agree with Patent Owner that the claim language provides a temporal relationship between “first scan data” and “second scan data.” We determine that, in claims 1 and 9, “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Our interpretation is based on the plain language of claims 1 and 9, which recite that “second scan data” includes “surface data of a physically changed portion of the patient’s intraoral cavity.” The claim language as a whole makes clear that a physical change occurs between the first scan and the second scan. Petitioner implicitly agrees with this interpretation by characterizing its arguments as showing that “a dentist or orthodontist makes a physical change to the tooth between scans.” Pet. 12 (emphasis added). In other words, claims 1 and 9 require the following order of steps: first scan, physical change, second scan.” slip op. at 8

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

    “For the reasons discussed above, we determine that claim 1 requires a temporal relationship between “first scan data” and “second scan data.” More specifically, we determine that “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Petitioner contends that “Rubbert’s original scan of the patient’s teeth (without brackets) satisfies the ‘second’ scan data limitation, and the monitoring scan of the patient’s teeth (with brackets) satisfies the ‘first’ scan data limitation, with the teeth without brackets being a ‘physically changed portion’ relative to the teeth with brackets.” Pet. 28. Petitioner’s contention does not satisfy our claim construction for “first scan data” and “second scan data.” Although Petitioner contends that “first scan data” is disclosed by Rubbert’s “monitoring scan of the patient’s teeth (with brackets)” (id.), Petitioner does not show that Rubbert’s monitoring scan is an earlier scan than the one that produces “second scan data.” Instead, Petitioner contends that “second scan data” is disclosed by Rubbert’s earlier scan—an original scan of the patient’s teeth without brackets retrieved from a stored patient record. Pet. 26–28. The temporal relationship between “first scan data” and “second scan data,” as identified by Petitioner in Rubbert, is the reverse of the temporal relationship required by claim 1. According to Petitioner’s contentions, Rubbert’s “second scan data” pertains to an earlier scan than “first scan data.” As properly construed, claim 1 requires the opposite. Furthermore, Petitioner does not show that Rubbert discloses “surface data of a physically changed portion of the patient’s intra-oral cavity,” as recited in claim 1. Petitioner contends that Rubbert discloses this limitation “because the second scan data (without a bracket) is a physically changed portion in the oral cavity relative to the first scan data (with a bracket).” Pet. 28. Petitioner’s contention does not satisfy our claim construction. Petitioner does not identify any disclosure in Rubbert of a physical change that takes place after the alleged first scan (with a bracket) and before the alleged second scan (without a bracket). Rubbert does not disclose physically removing a bracket from the patient’s tooth and then rescanning the tooth after removal of the bracket. Petitioner does not assert otherwise. Although Petitioner asserts that “installing a bracket” is a “physical” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,791,936
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution denied
  PTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.

  RulingsInstitution decision

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

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13

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

    “In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15

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

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,750,151

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.