• 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
• Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Nov 13, 2020 · IPR2020-00315 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol because the combined teachings establish each challenged limitation.

  RulingsFinal written decision

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

    “Rodermund’s testimony is insufficient because he did not testify, or provide documentary evidence, that email notifications were provided of the actual upload of TR25.835 to the 3GPP server. Id. Here, Mr. Rodermund’s testimony sufficiently demonstrates his personal knowledge of the business practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2, 6, 7, 13. He explains the general practice of emailing persons having ordinary skill in the art as soon as new or additional documents are uploaded to 3GPP’s ftp server. Id. ¶ 19.8 We give substantial weight to Mr. Rodermund’s testimony that persons having ordinary skill in the art were notified by email as soon as new documents, like TR25.835, were uploaded to 3GPP’s ftp server based on his personal knowledge of the business practices of 3GPP. Id.; see Hall, 781 F.2d at 899 (accepting evidence regarding the general library procedure for cataloging as probative value of routine business practice to show the performance of the specific act of cataloging a document). In re Klopfenstein, 380 F.3d 1345, 1350–51 (Fed. Cir. 2004) (“Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.”).” slip op. at 14

  • Strike new argumentNew argument consideredDecided for petitioner

    “Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“Consolidated Practice Guide”) 73 (Nov. 2019)9; Hulu, LLC. v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec. 20, 2019) (precedential) (“For example, if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication”). Here, we determine that Petitioner’s arguments and new evidence in connection with the Petitioner Reply are responsive to Patent Owner’s challenges to TR25.835’s status as a printed publication.” slip op. at 16

  • ExcludeDenied

    “Next, Patent Owner makes several evidentiary objections to Petitioner’s Reply exhibits. Sur-reply 2, 12–13. A party wishing to challenge the admissibility of evidence “must file any objections within five business days of service of evidence to which the objection is directed.” Consolidated Practice Guide 78–79 (citing 37 C.F.R. § 42.64(b)(1)). Patent Owner, however, did not file any objections within five business days of service of the Reply evidence. Tr. 19:25–20:7. Rather, Patent Owner, for the first time, presents its evidentiary objections in connection with its Sur-reply. By disregarding the rules, Patent Owner prevented Petitioner from serving supplemental evidence, and filing an opposition to a motion to exclude as permitted. 37 C.F.R. §§ 42.64(b)(2), 42.64(c); Paper 8, 8–9. Patent Owner’s evidentiary objections, therefore, are not timely and we do not, nor need not, consider them.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide its own assessment of the level of ordinary skill in the art, but argues that the Petition fails to link the subject matter of hybrid ARQ methods to the identified levels of education and industry experience proposed by Petitioner. PO Resp. 14. Patent Owner has failed to show that such a linkage is necessary. Rather, in determining the level of ordinary skill in the art, we consider several factors, such as the type of problems encountered in the art and prior art solutions to those problems, as well as education and industry experience. Here, we agree with Petitioner and find that a person having ordinary skill in the art would have known of the hybrid ARQ methods described in the ’917 patent and closely followed ARQ developments by 3GPP and other network standardization groups. Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36). Moreover, we adopt Dr. Bims’s assessment of a person with ordinary skill in the art as it is consistent with the ’917 patent and the asserted prior art. Ex. 1003 ¶ 27. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 7

  Patent outcomesUS 7,075,917 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,917
• Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Nov 13, 2020 · IPR2020-00224 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol because the combined teachings establish each challenged limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide its own assessment of the level of ordinary skill in the art, but argues that the Petition fails to link the subject matter of hybrid ARQ methods to the identified levels of education and industry experience proposed by Petitioner. PO Resp. 14. Patent Owner has failed to show that such a linkage is necessary. Rather, in determining the level of ordinary skill in the art, we consider several factors, such as the type of problems encountered in the art and prior art solutions to those problems, as well as education and industry experience. Here, we agree with Petitioner and find that a person having ordinary skill in the art would have known of the hybrid ARQ methods described in the ’917 patent and closely followed ARQ developments by 3GPP and other network standardization groups. Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36). Moreover, we adopt Dr. Bims’s assessment of a person with ordinary skill in the art as it is consistent with the ’917 patent and the asserted prior art. Ex. 1003 ¶ 27. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 7

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). For purposes of this decision, we need not expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol” slip op. at 8

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

  Patent outcomesUS 7,075,917 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,917
• Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Nov 13, 2020 · IPR2019-00973 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the testimony of Dr. Harry Bims, who testifies that a person having ordinary skill in the art would have had “a bachelors’ degree in electrical engineering, computer science, or the” slip op. at 6

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). For purposes of this decision, we need not expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol” slip op. at 8

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

    “Rodermund’s testimony is insufficient because he did not testify, or provide documentary evidence, that email notifications were provided of the actual upload of TR25.835 to the 3GPP server. Id. Here, Mr. Rodermund’s testimony sufficiently demonstrates his personal knowledge of the business practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2, 6, 7, 13. He explains the general practice of emailing persons having ordinary skill in the art as soon as new or additional documents are uploaded to 3GPP’s ftp server. Id. ¶ 19.8 We give substantial weight to Mr. Rodermund’s testimony that persons having ordinary skill in the art were notified by email as soon as new documents, like TR25.835, were uploaded to 3GPP’s ftp server based on his personal knowledge of the business practices of 3GPP. Id.; see Hall, 781 F.2d at 899 (accepting evidence regarding the general library procedure for cataloging as probative value of routine business practice to show the performance of the specific act of cataloging a document). In re Klopfenstein, 380 F.3d 1345, 1350–51 (Fed. Cir. 2004) (“Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.”).” slip op. at 14

  • Strike new argumentNew argument consideredDecided for petitioner

    “Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“Consolidated Practice Guide”) 73 (Nov. 2019)9; Hulu, LLC. v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec. 20, 2019) (precedential) (“For example, if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication”). Here, we determine that Petitioner’s arguments and new evidence in connection with the Petitioner Reply are responsive to Patent Owner’s challenges to TR25.835’s status as a printed publication.” slip op. at 16

  Patent outcomesUS 7,075,917 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,917
• Supercell OY v. Gree, Inc.Institution denied
  PTAB · Nov 12, 2020 · PGR2020-00063 · APJ Lynne H Browne · PGR · Institution

  The Board denied institution of PGR on claims 1–9, finding the § 101 arguments previously presented to the Office and the other grounds insufficient to show likely unpatentability.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The Board recently explained a two-part framework that the Board uses under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or 4 “ObjectLabel” (Ex. 1007, “ObjectLabel”). 5 US 2015/0153913 A1, issued June 4, 2015 (Ex. 1008, “Ballard”). substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Board further explained that “[i]f a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute.” Id. at 8–9. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. The Becton, Dickinson6 factors, which address discretion to deny when a Petition presents the same or substantially the same prior art or arguments previously presented to the Office, are instructive. Id. (“[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” (Footnote omitted)).” slip op. at 7

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

    “(“the ’432 patent”). Supercell Oy (“Supercell”) filed a petition requesting post-grant review of claims 1–9 of the ’432 patent. Paper 2 (“Pet.”). GREE, in turn, filed a preliminary response. Paper 8 (“Prelim. Resp.”). After considering the petition and the preliminary response, as well as all supporting evidence, we determine the petition does not demonstrate that it is more likely than not that at least one of the challenged claims of the ’432 patent is unpatentable. 35 U.S.C. § 324(a). Thus, we do not institute post-grant review of claims 1–9 of the ’432 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “‘“the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.’” Prelim. Resp. 11 (citing Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). “Rather, ‘the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had ‘possession’ of the claimed subject matter as of the filing date.’” Id. (citing Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).” slip op. at 13

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

    “information.” Id. at 7:34–41. In particular, Ross explains that “[t]he user may interact with the secondary, tertiary, etc., virtual reality content and then return his view back to the movie wherein the movie has been adjusted to reflect the user’s interaction with the secondary, tertiary, etc., virtual reality content.” Id. at 7:41–45. Ross explains further that “while a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content (e.g., additional characters) is available in a different (e.g., secondary, tertiary, etc.) content area.” Id. at 7:46–50. Thus, we understand Ross to disclose a system wherein a user can turn their gaze from a primary area to a secondary, tertiary, etc., area to view content related to the content in the primary area. See Ross, 7:21–33 (“Responsive to the user turning his view from the primary virtual reality content . . . a sensory cue comprising . . . secondary, tertiary, etc., . . . may be displayed to the user.”). Further, we understand Ross to disclose a system wherein the user’s focus on an item in the primary area may activate a “popup” cue in the primary area directing the user to additional virtual reality content in a secondary, tertiary, etc., area. See id. at 7:46–50 (“[W]hile a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content . . . is available in a different (e.g., secondary, tertiary, etc.) content area.”). We do not, however, understand Ross’ “pop-up” cue to be activated in a secondary, tertiary, etc. area based on the user’s gaze position moving to the second area from the first area as required by claims 1, 8, and 9. See id. Therefore, because Ross describes displaying a “pop-up” cue while a user is viewing primary virtual reality content (see Ross, 7:46–50), Petitioner does not show persuasively that Ross discloses that “a gaze position moving to the second area from the first area” is an “information providing condition.” Furthermore, Petitioner’s cited testimonial evidence does not explain sufficiently how Ross discloses the recited “information providing condition.” See Ex. 1003 ¶ 73. For the reasons above, Petitioner does not show adequately that Ross discloses an “information providing condition [that] is a condition of a gaze position moving to the second area from the first area.”” slip op. at 18

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,406,432
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing denied
  PTAB · Nov 10, 2020 · PGR2019-00003 · APJ Sheridan K Snedden · PGR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–14 are unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3

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

    “public accessibility, . . . . which involves examining the evidence for proof that each non-patent reference was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Req. Reh’g 3 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). We do not agree. On the contrary, we addressed with particularity the substantial evidence tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 12. Specifically, in our Decision, we properly credited indicia on the face of Petitioner’s References, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Using Varenna 2012 as an example, those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including the statement “Advance Access publication 30 November 2012,” and a conventional edition identifier from the journal Rheumatology. Dec. 15–16 (quoting Ex. 1005). In the same manner, the totality of evidence supports our finding that each of Petitioner’s References was publicly available prior to the critical date of the invention. Id. at 15– 18.” slip op. at 3

  § 102 anticipation
  Patents in suitUS 9,867,839
• Grünenthal GmbH v. Antecip Bioventures II LLCRehearing denied
  PTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving unpatentable claims 1-4, 9, 10, 12, 14, 16-18, 23-25, and 27-29 based on Varenna 2012 anticipation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2

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

    “acknowledged Acceleration Bay and addressed with particularity the evidence of record tending to show that each of Petitioner’s References “was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Dec. 15. Specifically, in our Decision, we credited indicia on the face of Verrena 2012, such as printed dates and citation information, which are “part of the totality of the evidence” bearing on the issue of public accessibility. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 17–18 (PTAB Dec. 20, 2019) (precedential). Those indicia included details of the copyright notice, indicating publication of Varenna 2012 “by Oxford University Press on behalf of the British Society for Rheumatology” in “2012;” and also additional legends, including “the statement ‘Advance Access publication 30 November 2012,’” and a conventional edition identifier from the journal Rheumatology. Dec. 17 (quoting Ex. 1005). Patent Owner advanced no” slip op. at 4

  • Strike new argumentNew argument consideredDecided for petitioner

    “We are not persuaded by Patent Owner’s contentions and note that we addressed these same arguments in our Order denying Patent Owner’s motion to strike. Paper 24; see also Paper 13, 1 (Patent Owner contending that “Exhibit 1044 and related argument are new evidence and argument regarding the alleged accessibility of Varenna 2012 (Ex. 1005) that Petitioner could have submitted with the Petition, but chose not to.”). Rather than pointing out any matters that the panel misapprehended or overlooked, Patent Owner expresses disagreement with that decision, and attempts to offer additional reasoning and argument not advanced during trial. Req. Reh’g, 12–15. That effort is ineffective to establish reversible error. Furthermore, in our Final Written Decision, we noted that Even if we set aside Dr. Robinson’s Declaration, . . . we are persuaded that the indicia of publication on the face of Varenna 2012 are sufficient to establish that Varenna 2012 was “sufficiently accessible to the public interested in the art” and “disseminated or otherwise made available” to the interested public before the critical date, and consequently, a printed publication. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). Dec. 19 n.4. For that reason also, Patent Owner shows no reversible error in our Final Written Decision holding that Dr. Robinson’s testimony bolsters” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  § 102 anticipation
  Patents in suitUS 9,820,999
• Energysource Minerals, LLC v. Terralithium LLCRehearing denied
  PTAB · Nov 6, 2020 · IPR2019-01601 · APJ Hubert C Lorin · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution for claims 9–16, finding the petition insufficient on anticipation by Maimoni and Jost and related obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3

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

    “the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 6

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

    “[u]nder these circumstances, where Jost raises the possibility of forming iron (III) hydroxide, while raising a doubt that iron (III) hydroxide even exists – we find that Jost does not describe, expressly or inherently, oxidizing to iron (III) hydroxide as claimed. At best, Jost is ambiguous about oxidizing to iron (III) hydroxide. But ambiguous references do not, as a matter of law, anticipate a claim See Wasica Finance GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (emphasis added) (“Anticipation requires that a single reference ‘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) (emphasis added). For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim. See, e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (refusing to find claims anticipated when the prior art references were ‘unacceptably vague’); see also In re Hughes, 52 CCPA 1355, 345 F.2d 184, 188 (1965); In re Turlay, 49 CCPA 1288, 304 F.2d 893, 899 (1962) (‘It is well established that an anticipation rejection cannot be predicated on an ambiguous reference.’)”). Because Jost discloses only the possibility of iron (III) hydroxide and no other evidence has been provided to show that Jost nevertheless necessarily oxidizes to iron (III) hydroxide as claimed, based on the information, Petitioner has not shown sufficiently that the Jost reference anticipates, expressly or inherently, the claim step of “oxidizing the iron (II) salt to iron (III) hydroxide.” “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “an explanation as to how “the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5, as required by Claim 9” (Pet. 44). But “[t]here is no explanation” (Dec. 24). We reproduced ¶ 162 of the Gallup Declaration in the Decision (see Dec. 23–24), which states in full that The step in the Hazen process of sparging the brine with air (Stream 6) in the iron reactor will reduce the pH. The reduction of the pH is offset by the introduction of calcium hydroxide (Stream 5) to the iron reactor. In my opinion, the Hazen process discussed by Maimoni describes a step of maintaining and controlling the pH of the geothermal brine at an adjusted pH of between 4.5 and 6.5. Given the pH of the feed brine, these pH values occur as a result of the air oxidation and introduction of calcium hydroxide. We did not and still do not see Dr. Gallup providing any meaningful explanation as to why the steps of sparging and the addition of calcium hydroxide per the Hazen process set forth in Maimoni necessarily maintains the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and 6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed] occur as a result of the air oxidation and introduction of calcium hydroxide.” Id. As we stated in the Decision, we do not see how this statement is anything but a “conclusory assertion[ ] backed up by no objective evidence, such as experimental results establishing the adjusted pH of Maimoni’s geothermal brine.” Dec. 24. Accordingly, we are unpersuaded as to error in our conclusion that “Petitioner insufficiently establishes that Maimoni anticipates, expressly or inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on reason (1); that is, Petitioner’s apparent inherency argument made in the Petition, as well as the Gallup Declaration upon which the argument relied, were inadequate (Dec. 21–25).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,051,827
• Microsoft Corporation v. Ipa Technologies Inc.All claims unpatentable
  PTAB · Oct 22, 2020 · IPR2019-00837 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–4, 14–19, 26, and 36–44 are unpatentable as obvious over Kiss and FIPA97, with some claims also challenged over Cohen.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Petitioner’s declarant, Dr. Lieberman, opines that a person of ordinary been someone familiar with the principles and conventions of computer science and computer networking, and also with multi-agent systems and inter-agent communication languages as documented in agent-centered literature by 1999. Ex. 1050 ¶ 32; see Pet. 5 (citing Ex. 1050 ¶ 32). Dr. Lieberman also testifies that a person of ordinary skill in the art may have been a graduate student in mathematics, engineering, or computer science, and may have had an advanced degree in one of these disciplines, and would also have had at least two years of experience working in the field of computer science, or a related field, and may have worked in academia, either as a professor or a graduate student, for a technology company, or for a government. Ex. 1050 ¶ 32. Citing the testimony of its declarant, Dr. Medvidovic, Patent Owner asserts that a person of ordinary skill in the art at the time of the ’560 patent’s effective filing date would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” PO Resp. 28 (citing Ex. 2032 ¶ 41). Patent Owner criticizes Petitioner’s articulation of the level of ordinary skill in the art as being “vague and uncertain” due to Petitioner’s and Dr. Lieberman’s use of the word “may” in their proposed definition. Id. at 28–29. Patent Owner contends that Petitioner’s proposed definition “leav[es] every aspect of the level of skill ‘fluid,’” which is “particularly problematic here, where Petitioner claims that it would have been obvious to create an agent system that is very complex and advanced in its facilitation, goal processing, and inter-agent communication capacities.” Id. at 29 (citing Ex. 2032 ¶ 44). alternatives—i.e., that a Skilled Artisan would have been at least a graduate student in several relevant fields, and would have had at least two years of work experience in those fields.” Pet. Reply 12; see Pet. 5. Petitioner also argues that Patent Owner does not articulate how any differences between the parties’ proposals that would alter or even affect the outcome of this proceeding. Pet. Reply 12. Patent Owner asserts that it has “identified how the difference between the proposals would affect this proceeding” because Patent Owner has pointed out that “it is Petitioner’s burden under the law to address each Graham factor and Petitioner has failed to proffer a coherent level of ordinary skill in the art, [and] Petitioner’s obviousness assertion fails for that reason alone.” PO Sur-reply 16–17 (citing PO Resp. 29).” slip op. at 9

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

    “1. “goal satisfaction plan” The claim term “goal satisfaction plan” is recited in challenged independent claims 1 and 26 of the ’560 patent. Ex. 1001, 30:7–15 (claim 1), 32:43–51 (claim 26). It is also recited in independent claim 50 of the ’560 patent, not challenged in this proceeding. Id. at 35:1–10. Petitioner contends that a “goal satisfaction plan” is a “procedure for sending one or more requests for service to one or more agents in order to satisfy a goal.” Pet. 9. Patent Owner disagrees and asserts that the claim term “goal a complex goal expression in an optimal or near-optimal manner that is consistent with any advice parameters or constraints.” PO Resp. 32. a. Claim Language We begin our claim construction analysis by considering the language of the claims themselves. Phillips, 415 F.3d at 1314. Addressing the claim language of the disputed term, we note that the claim language “a goal satisfaction plan” indicates that the term’s plain meaning is “a plan for satisfying a goal.” In independent claims 1 and 26, the recited “goal satisfaction plan” is further constrained by specific limitations recited in the claims. Claim 1 recites: a facilitating engine . . . further operable for generating a goal satisfaction plan associated with the base goal, wherein the goal satisfaction plan involves: using reasoning to determine sub-goal requests based on non-syntactic decomposition of the base goal and using said reasoning to co-ordinate and schedule efforts by the service-providing electronic agents for fulfilling the sub-goal requests in a cooperative completion of the base goal.” slip op. at 14

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

    “relevant public, exercising reasonable diligence, could have located FIPA 97 Version 1.0 in late 1997 on the FIPA website, housed at the time at http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Ex. 1049 ¶ 21; Ex. 1050 ¶ 146.” slip op. at 50

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “skill in the relevant field to combine the prior art teachings, Petitioner “must show some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. A reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)).” slip op. at 60

  Patent outcomesUS 7,069,560 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,069,560

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.