• Tesla, Inc. v. Arsus, LLCInstituted
  PTAB · Dec 23, 2022 · IPR2022-01216 · APJ Hyun J Jung · IPR · Institution

  The Board instituted review of claims 1–21 on all presented grounds, finding a reasonable likelihood of unpatentability based on the Dechamp combinations and Inagaki.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or 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); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors (a)–(f) to consider in evaluating the applicability of § 325(d)).” slip op. at 7

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–21 of the ’877 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art “would have had at least a Bachelor’s of Science in mechanical engineering, electrical engineering, or a related technical field pertinent to automotive control or safety systems, along with two or more years of experience working with automotive control or safety systems.” Pet. 14 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. See generally Prelim. Resp. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “At this stage, Petitioner sufficiently shows that claims 1, 8, and 15 do not recite sufficient structure for performing the recited function. See Pet. 14–15 (citing Ex. 1003 ¶ 51), 20 (citing Ex. 1003 ¶¶ 52–53). Based on the preliminary record, we agree with Petitioner that (1) claims 1, 8, and 15 include functional recitations, (2) the phrase “mode that allows” recited by claims 1 and 8 is equivalent to using the means-plus-function language “means for,” and (3) the “apparatus” recited by claim 15 does not provide sufficient structure to avoid interpreting under § 112(f). See id. at 14–15, 20. Without further argument or supporting evidence from the record, the mere recitations of “vehicle,” “steering wheel,” and “rolling wheel” do not show how these recited components, without others, can perform the recited functions of independent claims 1, 8, and 15. See Prelim. Resp. 16–17, 19. would be required to “prevent[] said vehicle from being steered beyond a rollover threshold of said vehicle,” as recited by claim 1. See, e.g., Ex. 1001, Fig. 1. Patent Owner also does not address at this stage why “mode that allows” should not be considered equivalent to means-plus-function language. See Prelim. Resp. 18. At this early stage, Petitioner sufficiently rebuts the presumption that § 112(f) does not apply. See Pet. 14–21. We, therefore, preliminarily adopt Petitioner’s proposed means-plus- function interpretations for claims 1, 8, and 15. In particular, for claim 1, we agree that the recited function is allows a vehicle to be steered within a maximal non-rollover steering range of motion of said vehicle but prevents said vehicle from being steered beyond a rollover threshold of said vehicle at any rollover capable speed of said vehicle regardless of the source of an oversteer rotational load applied to a steering wheel of said vehicle. Pet. 15–16 (citing Ex. 1003 ¶ 51); Ex. 1001, 10:7–12. We also agree that the corresponding structure for the asserted function is the first embodiment of the ’877 patent (“Corresponding Structure #1”). Pet. 17–18 (citing Ex. 1001, 2:35–39, 2:48–52, 2:57–3:18, 5:15–21, 5:29–57, 5:63–65, 6:17– 7:38, 7:45–54, Figs. 1–4B). We further agree that the corresponding structure can also be the fourth embodiment of the ’877 patent (“Corresponding Structure #2”). Id. at 18–19 (citing Ex. 1001, 7:45–54, 8:12–17, 8:25–34, 8:58–10:4, Figs. 5–7A; Ex. 1003 ¶ 54).” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,077,877
• Configit A/S v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art, but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Dec. 6.” slip op. at 6

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

    “With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10

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

    “Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13

  Patent outcomesUS 6,836,766 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,766
• U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution denied
  PTAB · Dec 20, 2022 · IPR2022-01163 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on its anticipation or obviousness grounds.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 9

  • BurdenDenied

    “Here, Petitioner’s approach of arguing that every limitation in the claims challenged under Ground 1 can be both anticipated by and obvious over Koederitz fails to identify with sufficient specificity the approach that Petitioner intends to invoke. Although arguing in the alternative is generally permissible, in this case, both the Petition and Petitioner’s expert fail to explain in adequate detail which, why or how the identified elements of Koederitz, or the addition of the knowledge of one of ordinary skill in the art to Koederitz’s elements, meet the limitations of the challenged claims. In each subsection discussing the limitations of claim 1, Petitioner relies on Koederitz, seemingly individually, but then adds language indicating that, with respect to limitations 1[c], 1[d], and 1[e], a “POSITA would understand that . . .” or “SPC techniques would be understood by a POSITA to . . . .” Pet. 16–19. This leaves it unclear whether Petitioner intends to rely on Koederitz as an anticipation reference, or Koederitz as an obviousness reference, or something else.” slip op. at 15

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

    “adequately explained how Koederitz’s sensors meet the limitations of at least independent claims 1, 9, 18, and 22. Patent Owner argues that Koederitz discloses “redundant sensor[s] at each respective sensed position, such that each sensing act is performed by two or more sensors at each location.” Prelim. Resp. 30 (citing Ex. 1004, 8:4–7, [sic] 7:5–9). With respect to limitation 1[b], “monitoring a plurality of signals with a computerbased monitoring system, each signal being associated with one of the three or more oilfield equipment subsystems,” Petitioner relies on Koederitz’s disclosure that a “programmable system controller 100 and one or more sensors 80, 82, 84, and 95” may “sense and/or receive information pertaining to one or more well bore and/or drilling parameters.” Pet. 15–16 (citing Ex. 1004, Abstract, 6:19–24, 6:37–44). Petitioner further argues that Koederitz’s disclosure of different parameters “which may be sensed and input to the controller 100” may include, i.e., mud tank volume/level, mud pump rate and/or stroke counter, fluid pressure in the mud system and the drill string, well bore pressure near the surface, and/or the positions of the choke and the blowout preventers, and these are the “type of oilfield equipment subsystems monitored.” Id. at 16 (citing Ex. 1004, 6:37–44). As argued by Patent Owner, however, the portion of Koederitz that discusses comparison of signals from sensors 80, 82, 84, 94, and 95 may pertain only to “duplicate sensors that monitor repeat signals” from the same location. Prelim. Resp. 30–31. The portion of Koederitz that discusses comparison of sensed signals relied upon by Petitioner (i.e. signals from sensors 80, 82, 84, 94, and 95) discloses that the “sensed information from each sensor at a respective position may be compared to the other sensed information at that respective position to determine the accuracy, variance, and/or reliability of the sensed value.” Ex. 1004, 7:9–13; see also id. at 10:66–11:2 (“well bore annulus pressure sensor 84 and the drill pipe pressure sensor 80 may include one or more additional respective sensors to provide a second measurement or sensing of the respective pressure being sensed”). This does not support Petitioner’s argument that each of these signals are compared among each other, and therefore among different subsystems, as required by claim 1. Rather, it appears that Koederitz discloses comparing duplicate signals from the same position, and compares those duplicate signals to each other to ensure accuracy of the signal received from that position. Petitioner does not, therefore, clearly articulate how Koederitz’s sensing and comparison of its redundant signals maps to the required “each signal being associated with one of the three or more oilfield equipment subsystems” limitation of claim 1[b] or the “comparing at least some of the signals” associated with one of the three or more oilfield equipment subsystems limitation of claim 1[d]. Additionally, with respect to limitation 1[e], which requires indicating that “at least one oilfield equipment subsystem’s signal . . . does not agree with at least two other oilfield equipment subsystems’ signals,” Petitioner generalizes that the method and system of Koederitz identifies sensor failures, erroneous data, and sensor inconsistencies with in a system with a multitude of equipment subsystems and therefore “necessarily teaches the step of” limitation 1[e]. Pet. 18–19; Ex. 1003 ¶ 61. This explanation also fails to find support in Koederitz’s disclosure of monitoring duplicate signals from the same location, as discussed above, and fails to articulate with sufficient clarity how these disclosures anticipate or necessarily teach the disclosures of limitation 1[e].” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “secondary references is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure”). “[A] clear, evidence-supported account of the contemplated workings of the combination is a prerequisite” to concluding “that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,574,325
• Inductev Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01166 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 1, 5–8, 15, and 19–22 are anticipated by O’Brien, and claims 1–23 are obvious over O’Brien and Haaster.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSA”) “at the relevant time (around 2008) would have had at least a bachelor’s 5 Ex. 1024 was served, but not filed in this proceeding. Opp. Mot. to Exclude v. degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent research”; “[a]lternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to electrical engineering (or equivalent), with at least one year of industry experience.” Pet. 8 (citing Allen Decl. ¶¶ 31–34). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the specification of the ’935 patent and asserted prior art of record.” slip op. at 10

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

    “Petitioner asserts that “prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning” and “submits that no terms need to be construed to find the asserted claims unpatentable under the grounds set forth herein.” Pet. 9. Patent Owner does not submit any claim construction for any term. See generally PO Resp. We do not discern a dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 11

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

    “Frequency Power Transmission System for Wireless Systems and Devices.” Ex. 1007, Title. Petitioner asserts that O’Brien “was publicly available more than one year prior to the ’935 patent’s filing date” as “O’Brien was completed and approved by faculty members at the University of Dresden on March 11, 2006” and the “‘Machine-Readable Cataloging’ (MARC) record for O’Brien demonstrates that O’Brien was received, cataloged, and indexed by the Verbundzentrale Des Gemeinsamen Bibliotheksverbundes as of March 2, 2007.” Pet. 10–11 (citing Ex. 1005 ¶¶ 38, 40–43). Patent Owner does not challenge Petitioner’s assertions regarding O’Brien’s public accessibility. See generally PO Resp.6 Because Petitioner has shown, by a preponderance of the evidence, public accessibility of O’Brien through the MARC record and the library indexing as of March 2, 2007, as discussed above, and there is no evidence to the contrary, we find that O’Brien was publicly available more than one year prior to the filing date of the 6 We note here, however, Patent Owner’s contention that Petitioner has not properly authenticated O’Brien. Mot. Exclude 1. We address the issue of authentication below in connection with our denial of Patent Owner’s Motion to Exclude. See Section IV. ’935 patent (December 28, 2009), and thus qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 12

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

    “As stated in our Decision on Institution, although we agree with Patent Owner’s explanation of how O’Brien describes source coils and tuning circuits in discrete chapters of the reference, the Petition explains sufficiently that the Tuneable Resonant Circuit is inexorably linked to the source coils and that the circuits are thus tuned to resonance. Dec. on Inst. 20. The arguments presented by Patent Owner do not persuade us otherwise. See Sur-reply 3−4 (arguing that O’Brien’s disclosure of tuning circuits is distinct from its disclosure of coils and, therefore, Petitioner’s discussion of one does not imply the other). As explained above, despite the Petition’s prominent reliance on the source-side Tuneable Resonant Circuit, highlighted in purple in Figure 5-1, Petitioner also relies on the discussions in Chapter 6 that describe the characteristics of the tuning circuits and Chapter 7 that describe source coils and the resonant circuits as “Source side systems.” Pet. 18−20. Accordingly, and as previously noticed in our Decision on Institution, the Petition gives sufficient notice that O’Brien’s source coils are part of the “source resonator.” Dec. on Inst. 20. Therefore, we are not persuaded by Patent Owner’s arguments that the Petition fails to show that O’Brien discloses the claimed “source resonator.” For the same reason, we are not persuaded that Petitioner’s Reply represents a new theory as compared with the position taken in the Petition. Consequently, Petitioner has shown that the “source resonator optionally coupled to an energy source” of claim 1 is taught by O’Brien’s source side system where the tunable resonant circuit (including the source coils) is coupled to the power source. Pet. 18−20; Ex. 1007, Figs. 5−1 (depicting the coupling to the power source), 6−1 (depicting the source side power conversion part of the system with tuning circuits in three different axes in an omni-directional system); 112−112 (Chapter 6 – describing the power converter of the source side and stating that the “power rating of the source side converter is primarily determined by the losses in the source coils for operation at resonance”); 114−115 (Chapter 6 – describing resonant circuit parameters where the source and receiver sides are tuned to a resonant frequency and form a transformer); 139−140 (Chapter 7 – describing “Source side systems,” the source coils operating characteristics, and three resonators connected to three independent power supplies); Allen Decl. ¶¶ 76−78.” slip op. at 23

  Patent outcomesUS 8,304,935 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,304,935
• Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaInstituted
  PTAB · Dec 20, 2022 · IPR2022-01138 · APJ Richard H Marschall · IPR · Institution

  The Board instituted review of claims 1–19 on all petitioned grounds after finding a reasonable likelihood that claims 1 and 7 would have been obvious based on Goss.

  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). 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). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’397 patent on all challenges set forth in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “We agree with Patent Owner that both House and Goss were at least considered by the Examiner, even if the Examiner never discussed the references or relied on them in any manner. See Ex. 1001, code (56) (listing both House and Goss among the references cited, and identifying Goss as cited by the Examiner). Under these circumstances, we find the first part of the Advanced Bionics framework satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art references.” slip op. at 10

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

    “Petitioner provides very little argument or evidence in support of its motivation to combine argument in the Petition. See Pet. 46. We note that Petitioner does not explain why a “PHOSITA would understand that there is a rational underpinning to combine” Goss and House or cite to any declarant support for its argument. See id. Based on the limited argument, evidence, and explanation provided by Petitioner, on the current record, we question whether Petitioner establishes sufficiently that one of ordinary skill in the art would have had a reason to modify Goss with the teachings of House. Even if Petitioner fails to establish adequately a motivation to combine the references, that does not end our analysis. A “patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016); see also Game & Tech Co. v. Activision Blizzard Inc., 926 F.3d 1370, 1381 (Fed. Cir. 2019). For the limitations in independent claims 1 and 7, Petitioner does rely on House, but only as an additional reason why the references disclose a limitation in question. See Pet. 46–61 (relying on Goss for every limitation in claims 1, 3–8, 10–16, and 18). Based on our review of the Petition, Petitioner sets forth an analysis based on Goss alone for at least claims 1 and 7, within the context of its second challenge based on Goss and House. See id. Although Petitioner may not need to rely on a combination of Goss and House for the limitations of independent claims 1 and 7, the additional reliance on House may buttress Petitioner’s arguments as to these and other claims. Consequently, the motivation to combine issue may impact whether Petitioner ultimately prevails as to this challenge. The parties may address the motivation to combine issue further during trial.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “adequately that Goss discloses the surface area limitation. We have also reviewed Petitioner’s arguments and evidence as to the remaining limitations of claims 1 and 7. Based on our review of the current record, Petitioner establishes sufficiently that Goss discloses or renders obvious all of the limitations of claims 1 and 7 for the reasons provided by Petitioner. See Pet. 46–51, 53–55. Accordingly, Petitioner establishes a reasonable likelihood that independent claims 1 and 7 would have been obvious based on Goss alone. We have also reviewed Petitioner’s arguments and evidence as to dependent claims 2–6 and 8–19. See Pet. 62–68. Patent Owner does not separately address the dependent claims. Prelim. Resp. 29–36. Because we institute inter partes review as to the independent claims 1 and 7, we also institute inter partes review as to dependent claims 2–6 and 8–19. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Because Petitioner relies on Goss for every limitation in dependent claims 3–6, 8, 10–16, and 18, the Petition sets forth a challenge based on Goss alone for these claims as well as claims 1 and 7. See Pet. 49–61. These challenges, as well as the challenge to claims 1–19 based on a combination of Goss and House set forth in the Petition, are part of the instituted grounds at issue during the trial. See id. at 46–61; SAS, 138 S.Ct. at 1359–60. We note that Petitioner relies exclusively on House for dependent claims 2, 9, 17, and 19, and any deficiency in Petitioner’s showing as to the motivation to combine Goss and House may impact whether Petitioner can establish the obviousness of those claims, apart from whether House discloses the limitations in question. See Pet. 51, 53, 55, 60–61 (relying on House as disclosing the limitations in dependent claims 2, 9, 17 and 19).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 11,026,397
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01073 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because Teodosiu did not disclose the claimed location identifier, and the proposed combinations did not cure that deficiency.

  RulingsInstitution decision

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

    “For all its grounds, Petitioner relies on Teodosiu for allegedly disclosing “a location identifier separate and distinctive from said callee identifier, said location identifier identifying a location of the mobile telephone” as recited in each of the challenged independent claims of the ’234 patent. See Pet. 19–21 (claim 30), 44–45 (claim 46), 56 (claim 62). Petitioner relies on its showing as to this limitation of claim 30 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 13

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “and 93 of the Mir Declaration. See Pet. 19–20 (citing Ex. 1002 ¶¶ 87–89, 93). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses receiving an access code request message including “a location identifier identifying a location of the mobile telephone” as recited in each independent claim of the ’234 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 87. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that “Teodosiu’s method includes a network server receiving from the mobile device (‘mobile telephone’) a request (‘access code request message’) including a selected contact (‘callee identifier’) and mobile device 110 phone number, which includes geographic information (‘location identifier’).” Id. ¶ 89. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a location of the mobile telephone.”” slip op. at 16

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

    “We interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that it is not necessary to expressly interpret any claim language in order to decide whether to institute review. B. Legal Standards” slip op. at 8

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address each challenge below. slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,630,234
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.

  RulingsInstitution decision

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

    “In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10

  • 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.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,880,721
• Philip Morris Products S.A. v. Healthier Choices Management Corp.All claims unpatentable
  PTAB · Dec 15, 2022 · IPR2022-00454 · APJ Julia Heaney · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by Hammel; the revised contingent motion to amend with substitute claims 9–16 is denied for lack of written-description support.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, or a related field and two to three years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, or a related field, and one to two years of industry experience” and “would have been familiar with electrically powered smoking devices and the components and underlying technology used therein.” Pet. 6–7 (citing Ex. 1003 ¶¶ 24–26). Patent Owner argues that a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree in mechanical engineering, electrical engineering, or a related field, an understanding of combustion reactions in electric smoking articles, and one to three years of practical experience” and would have been “familiar with electrical smoking devices and the components and design considerations thereof.” PO Resp. 8 (citing Ex. 2001 ¶¶ 28–31). Neither party has responded to the other’s position as to the level of ordinary skill, or identified any material difference between their proposals. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Patent Owner, because it is consistent with the disclosures of the ’170 patent and the prior art of record. We note, however, that neither party contends that any issue in this case turns on the differences between the parties’ definitions of one of ordinary skill in the art.” slip op. at 7

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

    “We decline to adopt Patent Owner’s construction because it improperly reads extraneous limitations into the claim from the specification, “wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The ’170 patent discloses multiple embodiments of a combustible material reservoir; Patent Owner does not dispute this. See PO Sur-reply 7–8. Further, Patent Owner does not present a sufficient underlying factual basis to support Dr. Garris’s testimony that a person of ordinary skill in the art would understand “combustible material reservoir” as Patent Owner proposes. See Ex. 2001 ¶¶ 63–64. Therefore, we are not persuaded that the airflow limitations that Patent Owner reads into “combustible material reservoir” are necessary. In view of the foregoing, we construe the term “combustible material reservoir” to have its ordinary meaning, i.e., a reservoir for combustible material.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir.” slip op. at 24

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

    “insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir. For the foregoing reasons, we are persuaded that a preponderance of the evidence shows that Hammel discloses each of the limitations of claims 1 and 5.” slip op. at 24

  Patent outcomesUS 10,561,170 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,561,170
• Philip Morris Products S.A. v. Healthier Choices Management Corp.All claims unpatentable
  PTAB · Dec 15, 2022 · IPR2021-01079 · APJ Julia Heaney · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by Hammel; the revised contingent motion to amend is denied for lack of written-description support for substitute claims 9–16.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “art include: “(1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id.” slip op. at 7

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

    “Petitioner argues that Patent Owner’s proposed construction imports limitations from a single embodiment of the specification into the claims. Pet. Reply 5–6. Petitioner further argues that the ’170 patent expressly describes reservoirs with attributes different than the embodiment relied on by Patent Owner, such as “the combustible material reservoir 165 may be located on the surface of and extends into the second pipe section 140.” Id. (quoting Ex. 1001, 4:57–63; also citing Ex. 1001, Fig. 3, 6:23–45, 9:15–35; Ex. 1028 ¶¶ 48–52). We decline to adopt Patent Owner’s construction because it improperly reads extraneous limitations into the claim from the specification, “wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The ’170 patent discloses multiple embodiments of a combustible material reservoir; Patent Owner does not dispute this. See PO Sur-reply 7–8. Further, Patent Owner does not present a sufficient underlying factual basis to support Dr. Garris’s testimony that a person of ordinary skill in the art would understand “combustible material reservoir” as Patent Owner proposes. See Ex. 2001 ¶¶ 63–64. Therefore, we are not persuaded that the airflow limitations that Patent Owner reads into “combustible material reservoir” are necessary. In view of the foregoing, we construe the term “combustible material reservoir” to have its ordinary meaning, i.e., a reservoir for combustible material.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir.” slip op. at 24

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

    “insufficient because its text descriptions do not state that the heating element protrudes from the top of the case body, or that the porcelain tube has holes in it, do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole. The dispositive question regarding anticipation is whether a person of ordinary skill in the art would reasonably understand or infer from the reference that every claim element is disclosed in that single reference. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). As Petitioner asserts, and Dr. Deevi credibly testifies, a person of ordinary skill would have inferred the shape and location of the heating element in Figure 2 based on the labeled heating element in the exploded view of Figure 3. See Ex. 1007 ¶ 10. We find this assertion to be reasonable. In view of the level of ordinary skill and relative structural simplicity of the claimed subject matter, we also find that a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube. Dr. Deevi’s testimony supports these findings, because he explains that a person of ordinary skill would infer that the heating element within the porcelain tube would not be connected to the battery without holes in the porcelain tube. Ex. 1003 ¶ 244; Ex. 2003, 192–196. We find no contradiction in Dr. Deevi’s testimony, as Patent Owner asserts. Although Patent Owner asserts “Dr. Deevi conceded that Hammel does not describe any holes in the bottom half of the porcelain tube” (PO Resp. 60 (citing Ex. 2003, 193:7–11)), Dr. Deevi explained in his subsequent response that his opinion is based on the inference a person of ordinary skill would draw from Hammel’s disclosure. Ex. 2003, 193:13–16. We disagree with Patent Owner that Hammel’s disclosure provides insufficient evidence to support Dr. Deevi’s opinion, and we find Dr, Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir. For the foregoing reasons, we are persuaded that a preponderance of the evidence shows that Hammel discloses each of the limitations of claims 1 and 5.” slip op. at 24

  Patent outcomesUS 10,561,170 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,561,170
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision

  Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art 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) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8

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

    “construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptMixed

    “As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39

  Patent outcomesUS 10,891,614 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,891,614

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.